Most Recent Rulings on Descriptiveness

As discussed on the post regarding merely descriptive marks, when determining whether a mark is merely descriptive or not, the decision must be made in direct relation to the goods or services with which it is being used. An examining attorney at the USPTO must look at the possible significance that the mark would have to the general consumers of the goods or services in the marketplace. Often, marks are considered merely descriptive under §2(e)(1) of the Lanham Act because they are terms that could be used to describe an entire category of goods or services. If a mark has been deemed merely descriptive and therefore unregistrable with the USPTO, an applicant may go before the Trademark Trial and Appeal Board on appeal. The Trademark Trial and Appeal Board will either affirm the refusal for registration or reverse the decision in favor of the applicant. Below are some of the most recent 2019 Trademark Trial and Appeal Board decisions affirming refusal for registration under §2(e)(1) of the Lanham Act:

In a 2019 non-precedential opinion, the Trademark Trial and Appeal Board affirmed the refusal for registration of the merely descriptive mark 19 CRIMES, for video and audio works and production, distribution and rental of recorded entertainment. The Board agreed with the Examining Attorney that the mark conveys an immediate knowledge of a feature of the goods or services, “namely, that the information and entertainment provided relates to the 19 crimes of 18thand 19th Century Britain that led to involuntary colonization in Australia.” The applicant argued that the mark was more suggestive than descriptive because the term 19 CRIMES does not directly provide any information about the goods or services for which it is being used. He explained that though his intended goods and services may revolve around that period of time, the material will be centered on unique stories of a few “incorrigible rogues” and their lives. The Board then stated that the mark could not be looked at in such a specific light, but in the context of the applicant’s goods and services. Continuing, the Board said that mark was broadly worded and encapsulated the 19 crimes wholly. In turn, the applicant argued that the mark was suggestive because his goods and services related to the individuals who were transported to Australia, not the crimes themselves; therefore, the mark does not “immediately or directly describe any feature, characteristic or quality of those goods or services.” The applicant said it would take the consuming public some stretch of the imagination to relate the mark to the goods and services for which it is being used. The Board disagreed but still gave an observation on the mark: “…merely describe[s] the nineteen crimes themselves under the broadly stated subject matter of Applicant’s goods and services.” In this fashion, the Board held the mark to be merely descriptive.

In a 2019 non-precedential opinion, the Trademark Trial and Appeal Board affirmed the refusal for registration of the merely descriptive mark SKEETER BAND, in connection with “mosquito repellent bracelets.”  In the first step of examination, the Examining Attorney submitted dictionary definitions for each term, “skeeter” and “band.” In doing so, the Examining Attorney found “skeeter” to mean a mosquito and “band” to mean “a flat, narrow band of material that you put around something.” Not only did the Attorney submit dictionary definitions, but multiple third-party registrations where either the word “skeeter” or “band” was disclaimed. The Board concurred that the terms SKEETER and BAND were merely descriptive when used in connection with the product. Furthermore, the Board also found that the two words taken together did not create a new or incongruous meaning, they held their original meaning and merely conveyed knowledge of a quality, feature, function or characteristic of the good. The applicant argued that SKEETER had more than one meaning in the dictionary, but the Board pointed out that the meaning of the term must be determined in direct relation to the goods, not in the abstract. Following, the applicant argued that SKEETER is an informal term meaning “mosquito,” however, the dictionary recognizes SKEETER as a common synonym for mosquito and, “is not so informal or obscure as to defy consumer understanding.” In a final argument, the applicant argued that SKEETER BAND did not instantly translate to “mosquito repellent band,” but the Board dismissed this argument in saying, “it is well settled that consumers have a habit of shortening names.” In light of this, the Board held that the mark was merely descriptive.

In another 2019 non-precedential opinion, the Trademark Trial and Appeal Board affirmed the refusal for registration of the merely descriptive mark BIKESTYLE, in connection with cycling apparel ranging from gloves to cycling jerseys and rainwear. The Examining Attorney found that the mark’s “wording merely describes a characteristic of applicant’s goods, specifically, a type of fashion made for riding a bicycle.” To support this statement, the Attorney provided dictionary definitions for the terms “cycling,” “bike” and “style.” In response, the applicant said that the mark did not refer directly to “fashion made for riding a bicycle…” rather it referred to the cyclists’ “way of life.” The applicant went on to argue that the mark was suggestive because it did not immediately convey the idea of clothing, and it would take the consuming public a moment to connect the mark with the goods. In consensus with the Examining Attorney, the Board maintained that the terms together, as a composite, were merely descriptive and did not evoke a “new or unique commercial impression.” As a result, the applicant argued that the term “style” had multiple meanings. Again, the Board rejected this argument saying, “That a term may have other meanings in different contexts is not controlling.” Simply, the mark is to be examined in direct relation with the goods or services for which it is used, not in the abstract. In a final argument, the applicant reasoned that no other third-party used the terms “bikestyle,” “bike style” or “bicycle style.” However, the Board reiterated that it is not necessary for the USPTO to show that others have used the mark or term in a similar fashion. The Board stated, “it is well established that even if an applicant is the only user of a merely descriptive term, this does not justify registration of that term.” In sum, the Board concluded that the mark was merely descriptive in accordance with the three reasons above.

When it comes to determining whether or not a mark is merely descriptive, each case is determined based upon its own set of facts. The three cases above were all deemed merely descriptive and therefore the marks were not afforded protection under §2(e)(1) of the Lanham Act. In order for a merely descriptive mark to be afforded protection, it must acquire a secondary meaning. However, even if a mark acquires a secondary meaning, it is not a guarantee that it will be eligible for registration with the USPTO.

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