1209    Refusal on Basis of Descriptiveness

Matter that "merely describes" the goods or services on or in connection with which it is used is not registrable on the Principal Register. As noted in In re Abcor Dev. Corp., 588 F.2d 811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978) :

The major reasons for not protecting such marks are: (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products.

1209.01    Distinctiveness/Descriptiveness Continuum

With regard to trademark significance, matter may be categorized along a continuum, ranging from marks that are highly distinctive to matter that is a generic name for the goods or services. The degree of distinctiveness – or, on the other hand, descriptiveness – of a designation can be determined only by considering it in relation to the specific goods or services. Remington Prods., Inc. v. N. Am. Philips Corp., 892 F.2d 1576, 1580, 13 USPQ2d 1444, 1448 (Fed. Cir. 1990) (the mark must be considered in context, i.e. , in connection with the goods).

At one extreme are marks that, when used in relation to the goods or services, are completely arbitrary or fanciful. Next on the continuum are suggestive marks, followed by merely descriptive matter. Finally, generic terms for the goods or services are at the opposite end of the continuum from arbitrary or fanciful marks. As stated in H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., "[t]he name of a thing is in fact the ultimate in descriptiveness." 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986) (quoting Weiss Noodle Co. v. Golden Cracknel & Specialty Co., 290 F.2d 845, 847, 129 USPQ 411, 413 (C.C.P.A. 1961)).

Fanciful, arbitrary, and suggestive marks, often referred to as "inherently distinctive" marks, are registrable on the Principal Register without proof of acquired distinctiveness. See TMEP §1209.01(a).

Marks that are merely descriptive of the goods or services may not be registered on the Principal Register absent a showing of acquired distinctiveness under §2(f) of the Trademark Act, 15 U.S.C. §1052(f). See TMEP §1209.01(b) regarding merely descriptive marks and §§1212–1212.10 regarding acquired distinctiveness. Merely descriptive marks may be registrable on the Supplemental Register in applications under §1 or §44 of the Trademark Act. See 15 U.S.C.  §1091.

Matter that is generic for the goods or services is not registrable on either the Principal or the Supplemental Register under any circumstances. See TMEP §§1209.01(c)–(c)(iii).

1209.01(a)    Fanciful, Arbitrary, and Suggestive Marks

Fanciful marks comprise terms that have been invented for the sole purpose of functioning as a trademark or service mark. Such marks comprise words that are either unknown in the language (e.g., PEPSI, KODAK, and EXXON) or are completely out of common usage (e.g., FLIVVER).

Arbitrary marks comprise words that are in common linguistic use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality, or characteristic of the goods or services (e.g., APPLE for computers; OLD CROW for whiskey). See , e.g., Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (VEUVE – meaning WIDOW in English – held to be "an arbitrary term as applied to champagne and sparkling wine, and thus conceptually strong as a trademark"); Nautilus Grp., Inc. v. Icon Health & Fitness, Inc., 372 F.3d 1330, 1340, 71 USPQ2d 1173, 1180 (Fed. Cir. 2004) (defining an arbitrary mark as "a known word used in an unexpected or uncommon way").

Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought, or perception to reach a conclusion as to the nature of those goods or services. In re N.C. Lottery, 866 F.3d 1363, 1367, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017) (citing DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251-52, 13 USPQ2d 1753, 1755 (Fed. Cir. 2012)); see In re Fallon, 2020 USPQ2d 11249, at *7 (TTAB 2020) (citing In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1515 (TTAB 2016)). Thus, a suggestive term differs from a descriptive term, which immediately tells something about the goods or services. See In re George Weston Ltd., 228 USPQ 57 (TTAB 1985) (SPEEDI BAKE for frozen dough found to fall within the category of suggestive marks because it only vaguely suggests a desirable characteristic of frozen dough, namely, that it quickly and easily may be baked into bread); In re Noble Co., 225 USPQ 749 (TTAB 1985) (NOBURST for liquid antifreeze and rust inhibitor for hot-water-heating systems found to suggest a desired result of using the product rather than immediately informing the purchasing public of a characteristic, feature, function, or attribute); In re Pennwalt Corp., 173 USPQ 317 (TTAB 1972) (DRI-FOOT held suggestive of anti-perspirant deodorant for feet in part because, in the singular, it is not the usual or normal manner in which the purpose of an anti-perspirant and deodorant for the feet would be described).

Incongruity is a strong indication that a mark is suggestive rather than merely descriptive. In re Tennis in the Round Inc., 199 USPQ 496, 498 (TTAB 1978) (TENNIS IN THE ROUND held not merely descriptive for providing tennis facilities, the Board finding that the association of applicant's marks with the phrase "theater-in-the-round" created an incongruity because applicant's tennis facilities are not at all analogous to those used in a "theater-in-the-round"). The Board has described incongruity in a mark as "one of the accepted guideposts in the evolved set of legal principles for discriminating the suggestive from the descriptive mark," and has noted that the concept of mere descriptiveness "should not penalize coinage of hitherto unused and somewhat incongruous word combinations whose import would not be grasped without some measure of imagination and ‘mental pause.’" In re Shutts, 217 USPQ 363, 364–65 (TTAB 1983) (SNO-RAKE held not merely descriptive of a snow-removal hand tool); see also In re Vienna Sausage Mfg. Co., 156 USPQ 155, 156 (TTAB 1967) (FRANKWURST held not merely descriptive for wieners, the Board finding that although "frank" may be synonymous with "wiener," and "wurst" is synonymous with "sausage," the combination of the terms is incongruous and results in a mark that is no more than suggestive of the nature of the goods); In re John H. Breck, Inc., 150 USPQ 397, 398 (TTAB 1966) (TINT TONE held suggestive for hair coloring, the Board finding that the words overlap in significance and their combination is somewhat incongruous or redundant and does not immediately convey the nature of the product); cf. In re Getz Found., 227 USPQ 571, 572 (TTAB 1985) (MOUSE HOUSE held fanciful for museum services featuring mice figurines made up to appear as human beings, the Board finding that the only conceivable meaning of "mouse house," i.e., a building at a zoo in which live and/or stuffed mice are displayed, is incongruous).

Suggestive marks, like fanciful and arbitrary marks, are registrable on the Principal Register without proof of secondary meaning. See Nautilus Grp., Inc. v. Icon Health & Fitness, Inc., 372 F.3d 1330, 1340, 71 USPQ2d 1173, 1180 (Fed. Cir. 2004). Therefore, a designation does not have to be devoid of all meaning in relation to the goods or services to be registrable. If, after conducting independent research, it is unclear to the examining attorney whether a term in a mark has meaning in the relevant industry, the examining attorney must make an inquiry of the applicant, pursuant to 37 C.F.R. §2.61(b). If the examining attorney determines that the term is arbitrary or fanciful, the examining attorney may enter a Note to the File in the record indicating that research was conducted regarding the meaning of the term in the relevant industry, without stating any legal opinions or conclusions.

1209.01(b)    Merely Descriptive Marks

To be refused registration on the Principal Register under §2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1),  a mark must be merely descriptive or deceptively misdescriptive of the goods or services to which it relates. A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. See In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574 (Fed. Cir. 2015) (NOPALEA held descriptive of dietary and nutritional supplements); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987) (APPLE PIE held merely descriptive of potpourri); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986) (BED & BREAKFAST REGISTRY held merely descriptive of lodging reservations services); In re MetPath Inc., 223 USPQ 88 (TTAB 1984) (MALE-P.A.P. TEST held merely descriptive of clinical pathological immunoassay testing services for detecting and monitoring prostatic cancer). Similarly, a mark is considered merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of an applicant’s goods or services. In re N.C. Lottery, 866 F.3d 1363, 1367, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017) (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); In re Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012).

The examining attorney is not required to prove that others have used the mark at issue or that they need to use it; the correct test is whether the mark conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1514 (TTAB 2016); see also KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 122 (2004) (trademark law does not countenance someone obtaining "a complete monopoly on use of a descriptive term simply by grabbing it first"); In re Walker Mfg. Co., 359 F. 2d 474, 149 USPQ 528 (C.C.P.A. 1966); (quoting Board decision with approval) ("The question . . . is not whether the Board or others may or would utilize ‘CHAMBERED PIPE’ to describe applicant's goods, but whether this designation does, in fact, describe such goods. That there are other words which others may employ to describe or define applicant's goods does not, in any way, lessen the descriptive character of the words ‘CHAMBERED PIPE.’ …"); Clairol, Inc. v. Roux Distrib. Co., 280 F.2d 863, 126 USPQ 397, 398 (C.C.P.A. 1960) ("Even novel ways of referring to a product may nonetheless be merely descriptive."); In re Bailey Meter Co., 102 F.2d 843, 41 USPQ 275, 276 (C.C.P.A. 1939) ("The fact that appellant may have been the first and only one to adopt and use the mark sought to be registered does not prove that the mark is not descriptive . . . .").

The determination of whether a mark is merely descriptive must be made in relation to the goods or services for which registration is sought, not in the abstract. In re Chamber of Commerce, 675 F.3d at 1300, 102 USPQ2d at 1219 (quoting In re Bayer, 488 F.3d at 964, 82 USPQ2d at 1831); In re Omniome, Inc., 2020 USPQ2d 3222, at *3 (TTAB 2019) (citing In re Fat Boys Water Sports LLC, 118 USPQ2d at 1513); see In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (C.C.P.A. 1978). This requires consideration of the context in which the mark is used or intended to be used in connection with those goods or services, and the possible significance that the mark would have to the average purchaser of the goods or services in the marketplace. See In re Chamber of Commerce, 675 F.3d at 1300, 102 USPQ2d at 1219 (quoting In re Bayer, 488 F.3d at 964, 82 USPQ2d at 1831); In re Nett Designs, Inc., 236 F.3d 1339, 1341-42, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Dev. Corp., 588 F.2d at 814, 200 USPQ at 218. Sources for considering the context in which the mark is or may be used include websites, publications, labels, packages, advertising material, and explanatory text on specimens for the goods and services. See In re N.C. Lottery, 866 F.3d at 1368, 123 USPQ2d at 1710; In re Nett Designs, Inc., 236 F.3d at 1342, 57 USPQ2d at 1566; In re Abcor Dev. Corp., 588 F.2d at 814, 200 USPQ at 218.

It is not necessary that a term describe all of the purposes, functions, characteristics, or features of a product to be considered merely descriptive; it is enough if the term describes one significant function, attribute, or property. In re Chamber of Commerce, 675 F.3d at 1300, 102 USPQ2d at 1219 (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); In re Fallon, 2020 USPQ2d 11249, at *7 (quoting In re Fat Boys Water Sports LLC, 118 USPQ2d at 1513); see In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) ("A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services."). Similarly, the mark need not describe all the goods and services identified, as long as it merely describes one of them. In re Chamber of Commerce, 675 F.3d at 1300, 102 USPQ2d at 1219 (quoting In re Stereotaxis Inc., 429 F.3d 1039, 1041, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005) )); In re Oppedahl & Larson LLP, 373 F.3d at 1173, 71 USPQ2d at 1371 (citing In re Dial-A-Mattress Operating Corp., 240 F.3d at 1346, 57 USPQ2d at 1812); In re Gyulay, 820 F.2d at 1218, 3 USPQ2d at 1010; In re Positec Group Ltd., 108 USPQ2d 1161, 1171 (TTAB 2013) ("[I]f the mark is descriptive of some identified items – or even just one – the whole class of goods still may be refused by the examiner."); In re Cox Enters. Inc., 82 USPQ2d 1040 (TTAB 2007); see also In re Omaha Nat’l Corp., 819 F.2d 1117, 1119, 2 USPQ2d 1859, 1861 (Fed. Cir. 1987) (rejecting argument that descriptiveness should be limited to a quality or characteristic of the service itself and holding that it includes a designation descriptive of the service provider).

A term also may be considered merely descriptive if the identified services fall within a subset of services indicated by the term. See In re Am. Soc’y of Clinical Pathologists, Inc., 442 F.2d 1404, 1406-07, 169 USPQ 800, 801 (C.C.P.A. 1971) (holding that REGISTRY OF MEDICAL PATHOLOGISTS was descriptive of certain claimed services that were implicitly subsumed within service of providing a registry of medical pathologists and of additional claimed services that were "supporting, ancillary or auxiliary to the primary function" of applicant’s registry services); see also In re Chamber of Commerce, 675 F.3d at 1301-02, 102 USPQ2d at 1220 (NATIONAL CHAMBER held descriptive because "substantial evidence supports the TTAB's determination that the designated business and regulatory data analysis services are within the scope of traditional chambers of commerce activities" of "promoting the interests of businessmen and businesswomen").

The great variation in facts from case to case prevents the formulation of specific rules for specific fact situations. Each case must be decided on its own merits. See In re Ampco Foods, Inc., 227 USPQ 331 (TTAB 1985) ; In re Venturi, Inc.,197 USPQ 714 (TTAB 1977).

See TMEP §§1209.03–1209.03(y) regarding factors that often arise in determining whether a mark is merely descriptive or generic, §§1213–1213.11 regarding disclaimers of merely descriptive matter within marks, and §1306.04 regarding assessing descriptiveness in certification marks.

1209.01(c)    Generic Terms

Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1811 (Fed. Cir. 2001); In re Am. Fertility Soc'y, 188 F.3d 1341, 1346, 51 USPQ2d 1832, 1836 (Fed. Cir. 1999). A generic term is "the ultimate in descriptiveness" under §2(e)(1) and incapable of acquiring distinctiveness under §2(f). H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986). A generic term also does not meet the statutory definition of a mark because it is incapable of denoting a unique source. In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1569 (Fed. Cir. 1987) ("Generic terms, by definition incapable of indicating source, are the antithesis of trademarks, and can never attain trademark status."). Thus, generic terms are not registrable on the Principal Register under §2(f) or on the Supplemental Register. See also Clairol, Inc. v. Roux Distrib. Co., 280 F.2d 863, 126 USPQ 397, 398 (CCPA 1960) ("The generic name by which a product is known is not a mark which can be registered on the Supplemental Register under section 23 because such a name is incapable of distinguishing applicant's goods from goods of the same name manufactured or sold by others."); In re Empire Tech. Dev. LLC, 123 USPQ2d 1544, 1566 (TTAB 2017) (affirming the refusal to register COFFEE FLOUR on the Supplemental Register).

Generic terms are refused registration on the Principal Register under Trademark Act §§1, 2, and 45, for trademarks, and §§1, 2, 3, and 45, for service marks. See 15 U.S.C. §§1051, 1052, 1053, 1127. The statutory basis for refusal on the Supplemental Register is §§23(c) and 45. See 15 U.S.C. §§1091(c), 1127.

When a mark is comprised entirely of generic wording and some or all of the wording in the mark is the phonetic equivalent of the generic wording, the entire mark may not be disclaimed, even in the proper spelling, and approved for registration on the Supplemental Register. A disclaimer does not render an otherwise unregistrable generic mark registrable. See TMEP §§1213.06 and 1213.08(c).

1209.01(c)(i)    Test

A mark is generic if its primary significance to the relevant public is the class or category of goods or services on or in connection with which it is used. See USPTO v. Booking.com B.V., 140 S. Ct. 2298, 2304, 2020 USPQ2d 10729, at *5 (2020); Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 965, 114 USPQ2d 1827, 1830 (Fed. Cir. 2015) (quoting H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989-90, 228 USPQ 528, 530 (Fed. Cir. 1986)). A two-part inquiry is used to determine whether a designation is generic:

• (1) What is the genus of goods or services at issue?
• (2) Does the relevant public understand the designation primarily to refer to that genus of goods or services?

In re Cordua Rests., Inc., 823 F.3d 594, 599, 118 USPQ2d 1632, 1634 (Fed. Cir. 2016) (citing H. Marvin Ginn Corp., 782 F.2d at 990, 228 USPQ at 530).

It is not necessary to show that the relevant public uses the term to refer to the genus. The correct inquiry is whether the relevant public would understand the term to be generic. In re 1800Mattress.com IP LLC, 586 F.3d 1359, 1364, 92 USPQ2d 1682, 1685 (Fed. Cir. 2009).

The genus of the goods or services may be defined by an applicant’s identification of goods or services. See In re Cordua Rests., Inc., 823 F.3d 594, 602, 118 USPQ2d 1632, 1636 (Fed. Cir. 2016) (quoting Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 640, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991). The relevant public for a genericness determination refers to the purchasing or consuming public for the identified goods or services. Loglan Inst., Inc. v. Logical Language Grp., Inc., 962 F.2d 1038, 1041, 22 USPQ2d 1531, 1533 (Fed. Cir. 1992) (quoting Magic Wand Inc., 940 F.2d at 641, 19 USPQ2d at 1553); Int’l Dairy Foods Ass’n, 2020 USPQ2d 10892, at *12 (TTAB 2020); Milwaukee Elec. Tool Corp., 2019 USPQ2d 460354, at *9 (TTAB 2019).

The examining attorney must establish a prima facie case that a term is generic by providing a reasonable predicate (or basis) that the relevant purchasing public would primarily use or understand the matter sought to be registered to refer to the genus of goods or services in question.

Evidence of the relevant public’s understanding of a term can be obtained from any competent source, including dictionary definitions, research databases, Internet websites, newspapers, and other publications. See USPTO v. Booking.com B.V., 140 S. Ct. at 2307 n.6, 2020 USPQ2d 10729, at *7 n.6 ("Evidence informing [a genericness] inquiry can include not only consumer surveys, but also dictionaries, usage by consumers and competitors, and any other source of evidence bearing on how consumers perceive a term’s meaning."); In re Consumer Prot. Firm PLLC, 2021 USPQ2d 238, at *8-12 (TTAB 2021) (THE CONSUMER PROTECTION FIRM held generic for legal services, where the examining attorney cited examples of webpages of third party consumer protection law firms and three different lawyer search sites where "consumer protection" could be selected as a search term for consumers to find attorneys in that practice area); see also In re Cordua Rests., Inc., 823 F.3d at 594, 118 USPQ2d at 1632 (finding the evidence of record, which included dictionary excerpts, online magazine articles, and newspaper articles, supported the conclusion that CHURRASCOS is generic for restaurant services); In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985) (BUNDT, a term that designates a type of cake, held generic for ring cake mix, where the examining attorney cited cookbooks and food-related news articles); In re Analog Devices Inc., 6 USPQ2d 1808 (TTAB 1988), aff’d, 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989) (ANALOG DEVICES held generic for devices having analog capabilities, where the examining attorney cited dictionaries and Nexis® articles). Applicant’s website and the websites of others are also proper sources of evidence as to the meaning of the proposed mark and the manner in which it is used in relation to the goods or services. In re Reed Elsevier Props. Inc., 482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007) (finding that, in holding LAWYERS.COM generic for "providing an online interactive database featuring information exchange in the fields of law, legal news and legal services," the Board properly considered applicant’s website and eight other websites containing "lawyer.com" or "lawyers.com" to determine the meaning of applicant’s "information exchange about legal services."). In addition, competitor use is recognized as evidence of genericness. In re Hikari Sales USA, Inc., 2019 USPQ2d 111514, at *2 (TTAB 2019) (finding probative the generic uses of the term "algae wafers" by competitors); Cont’l Airlines, Inc. v. United Air Lines, Inc., 53 USPQ2d 1385, 1395 (TTAB 1999) (use of term "e-ticket" by media and competitors indicates term is generic for electronic tickets); Philip Morris Inc. v. Brown & Williamson Tobacco Corp., 230 USPQ 172, 176 (TTAB 1986) (evidence that competitors have used a particular word as the name of their goods is persuasive evidence of genericness)).

There can be more than one generic term for a particular genus of goods or services. "Any term that the relevant public uses or understands to refer to the genus of goods [or services], or a key aspect or subcategory of the genus, is generic." In re Twenty-Two Desserts, LLC, 2019 USPQ2d 292782, at *2 (TTAB 2019) (citing Royal Crown Co. v. Coca Cola Co., 892 F.3d 1358, 1368, 127 USPQ2d 1041, 1046-47 (Fed. Cir. 2018)); see In re Cordua Rests., Inc., 823 F.3d at 604, 118 USPQ2d at 1638; In re 1800Mattress.com IP, LLC, 586 F.3d at 1364, 92 USPQ2d at 1685. See TMEP §1209.03(v) regarding generic terms that are a key aspect of goods or services.

The test for genericness is the same whether the mark is a compound term or a phrase, and the examining attorney should include, if available, evidence showing use of the mark as a whole in the record. See Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d at 968, 114 USPQ2d at 1832 (citing In re Am. Fertility Soc’y, 188 F.3d 1341, 1348-49, 51 USPQ2d 1832, 1837 (Fed. Cir. 1999)). However, the fact that there is no evidence of third-party use of the precise compound term or phrase is not, by itself, necessarily fatal to a finding of genericness. In re Mecca Grade Growers, LLC, 125 USPQ2d 1950, 1957 (TTAB 2018). When a term consists of a compound word or a telescoped word, the examining attorney may establish that the term is generic by producing evidence that each of the constituent words is itself generic, and that the separate words retain their generic significance when joined to form the compound or telescoped word that has "a meaning identical to the meaning common usage would ascribe to those words as a compound." E.g., In re Gould Paper Corp., 834 F.2d 1017, 1018, 5 USPQ2d 1110, 1111–12 (Fed. Cir. 1987) (holding SCREENWIPE generic where "screen" and "wipe" were "as generic in the compound as individually, and the compound thus created [was] itself generic"); In re Virtual Indep. Paralegals, LLC, 2019 USPQ2d 111512, at *8 (TTAB 2019) (holding VIRTUAL INDEPENDENT PARALEGALS generic where "virtual paralegal" referred to a paralegal who worked remotely, "independent paralegal" identified a class of paralegals who performed their work without attorney supervision, and combining these terms provided no additional or changed meaning); In re Mecca Grade Growers, LLC, 125 USPQ2d at 1957 (holding MECHANICALLY FLOOR-MALTED generic where "mechanically" meant "of or relating to machinery" and "floor-malted" was the adjectival form of "floor malting," which was an established practice in the brewing and distilling industry that could be performed manually or with machinery; and combining these terms provided no additional or changed meaning); In re Greenliant Sys. Ltd., 97 USPQ2d 1078, 1081 (TTAB 2010) (finding that consumers were likely to perceive the telescoped term NANDRIVE merely as a stylized version of the generic term "nand drive"); In re Wm. B. Coleman Co., Inc., 93 USPQ2d 2019 (TTAB 2010) (finding that ELECTRIC CANDLE COMPANY is the combination of two generic terms joined to create a compound).

However, the Court of Appeals for the Federal Circuit has expressly limited the holding in Gould to "compound terms formed by the union of words" where the public understands the individual terms to be generic for a genus of goods or services, and the joining of the individual terms into one compound word lends "no additional meaning to the term." In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1345, 57 USPQ2d 1807, 1810 (Fed. Cir. 2001) (citing In re Am. Fertility Soc'y, 188 F.3d at 1348-49, 51 USPQ2d at 1837). Thus, in American Fertility Socciety, the court held that evidence that the components "Society" and "Reproductive Medicine" were generic was not enough to establish that the composite phrase SOCIETY FOR REPRODUCTIVE MEDICINE was generic for association services in the field of reproductive medicine because, unlike in Gould, the evidence did not establish that the public would perceive "the mark as a whole" to be no less generic than its constituents. In re Am. Fertility Soc’y, 188 F.3d at 1348, 51 USPQ2d at 1837; see also Princeton Vanguard, 786 F.3d at 968, 114 USPQ2d at 1832. In In re Wm. B. Coleman Co., however, the Board stated that American Fertility Society cannot be read to suggest that an applicant can create a trademark merely by adding a clearly generic term to a non-source-identifying word, even without proof that others have used the composite. In re Wm. B. Coleman Co., 93 USPQ2d at 2025; accord Princeton Vanguard, 786 F.3d at 968, 114 USPQ2d at 1833 ("[T]he Board must then consider available record evidence of the public’s understanding of whether joining those individual words into one lends additional meaning to the mark as a whole." (emphasis added)).

In Dial-A-Mattress, the court found that 1-888-M-A-T-R-E-S-S was not generic as applied to "telephone shop-at-home retail services in the field of mattresses," because there was no evidence of record that the public understood the term to refer to shop-at-home telephone mattress retailers. Therefore, to establish that a mnemonic telephone number is generic, the examining attorney must show that the relevant public would understand the mark as a whole to have generic significance.

With respect to Internet domain names, as with other marks, even if the evidence shows that the individual components that make up the proposed mark are generic, one must determine whether the evidence shows that the composite is itself generic or is instead merely descriptive and thus capable of indicating source. See USPTO v. Booking.com B.V., 140 S. Ct. at 2298, 2020 USPQ2d 10729, at *1. However, "[a] compound of generic elements is [also] generic if the combination yields no additional meaning to consumers capable of distinguishing the goods or services." Id. at 2306, 2020 USPQ2d 10729, at *7. See also TMEP §1209.03(m) and §1215.05 regarding domain names comprising generic matter.

1209.01(c)(ii)    Terminology

As specifically amended by the Trademark Law Revision Act of 1988, §14 of the Trademark Act provides for the cancellation of a registration of a mark at any time if the mark "becomes the generic name for the goods or services, or a portion thereof, for which it is registered . . . ." 15 U.S.C. §1064(3).  Previously, that provision had pertained to a mark that "becomes the common descriptive name of an article or substance . . . ." Cases previously distinguished between generic names and "apt or common descriptive names," which referred to matter that, while not characterized as "generic," had become so associated with the product that it was recognized in the applicable trade as another name for the product, serving as a term of art for all goods of that description offered by different manufacturers rather than identifying the goods of any one producer. See Questor Corp. v. Dan Robbins & Assocs., Inc., 199 USPQ 358, 364 (TTAB 1978) , aff’d, 599 F.2d 1009, 202 USPQ 100 (C.C.P.A. 1979). In addition, the Trademark Law Revision Act of 1988 amended §15 of the Trademark Act to adopt the term "generic name" to refer to generic designations.15 U.S.C. §1065(4).  In view of the amendment of §§14 and 15, a distinction between "generic" names and "apt or common descriptive" names is inappropriate. Rather, the terminology of the Act must be consistently used, e.g., in refusals to register matter that is a generic name for the goods or services, or a portion thereof. See In re K-T Zoe Furniture Inc., 16 F.3d 390, 29 USPQ2d 1787 (Fed. Cir. 1994).

Similarly, cases have distinguished between "generic" terms and terms that were deemed "so highly descriptive as to be incapable of exclusive appropriation as a trademark." See In re Harcourt Brace Jovanovich, Inc., 222 USPQ 820 (TTAB 1984) (LAW & BUSINESS held so highly descriptive as to be incapable of distinguishing applicant’s services of arranging and conducting seminars in the field of business law); In re Indus. Rels. Couns., Inc., 224 USPQ 309 (TTAB 1984) (INDUSTRIAL RELATIONS COUNSELORS, INC. held an apt name or so highly descriptive of educational services in the industrial relations field that it is incapable of exclusive appropriation and registration, notwithstanding de facto source recognition capacity). Regarding the terminology used in refusing registration of such matter, the Trademark Trial and Appeal Board noted as follows in In re Women’s Publishing Co., 23 USPQ2d 1876, 1877 n.2 (TTAB 1992):

The Examining Attorney’s refusal that applicant’s mark is "so highly descriptive that it is incapable of acting as a trademark" is not technically a statutory ground of refusal. Where an applicant seeks registration on the Principal Register, the Examining Attorney may refuse registration . . . on the basis that the mark sought to be registered is generic.

In essence, the Board was merely emphasizing the need to use precise statutory language in stating grounds for refusal. While the decision does not explicitly bar the use of the terminology "so highly descriptive that it is incapable of acting as a trademark" under all circumstances, the case illustrates that the use of this terminology may lead to confusion and should be avoided. It is particularly important in this context to use the precise statutory language to avoid doctrinal confusion. See generally Linda McLeod, The Status of so Highly Descriptive & Acquired Distinctiveness, 82 Trademark Rep. 607 (1992). Therefore, examining attorneys must not state that a mark is "so highly descriptive that it is incapable of acting as a trademark" in issuing refusals. Rather, in view of the amendments of the Trademark Act noted above, the terminology "generic name for the goods or services" must be used in appropriate refusals, and use of the terminology "so highly descriptive" must be discontinued when referring to incapable matter.

This does not mean that designations that might formerly have been categorized as "so highly descriptive" should not be regarded as incapable. The Court of Appeals for the Federal Circuit has specifically stated that "a phrase or slogan can be so highly laudatory and descriptive as to be incapable of acquiring distinctiveness as a trademark." In re Boston Beer Co. L.P., 198 F.3d 1370, 1373, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999) (THE BEST BEER IN AMERICA for beer and ale held to be "so highly laudatory and descriptive of the qualities of [applicant’s] product that the slogan does not and could not function as a trademark to distinguish Boston Beer’s goods and serve as an indication of origin").

The Court of Appeals for the Federal Circuit has also stated that "[t]he critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be registered to refer to the genus of goods or services in question." H. Marvin Ginn Corp. v. Int'l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989–90, 228 USPQ 528, 530 (Fed. Cir. 1986). Also, note that it is entirely appropriate to consider whether a particular designation is "highly descriptive" in evaluating registrability under §2(f), or in similar circumstances.

The expression "generic name for the goods or services" is not limited to noun forms but also includes "generic adjectives," that is, adjectives that refer to a genus, species, category, or class of goods or services. See, e.g., In re Serial Podcast, LLC, 126 USPQ2d 1061, 1067 (TTAB 2018) (holding SERIAL generic for an ongoing audio program featuring investigative reporting, interviews, and documentary storytelling); In re Mecca Grade Growers, LLC, 125 USPQ2d 1950, 1959-60 (TTAB 2018) (holding MECHANICALLY FLOOR-MALTED generic for malt for brewing and distilling and processing of agricultural grain); Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341 (TTAB 2013) (holding FOOTLONG generic for sandwiches, excluding hot dogs); In re Reckitt & Colman, N. Am. Inc., 18 USPQ2d 1389 (TTAB 1991) (holding PERMA PRESS generic for soil and stain removers for use on permanent press products). Similarly, evidence showing that a term in singular form is generic typically will suffice to show that the plural also is generic. See In re Cordua Rests., Inc., 823 F.3d 594, 603, 118 USPQ2d 1632, 1637 (Fed. Cir. 2016) ("While each trademark must always be evaluated individually, pluralization commonly does not alter the meaning of a mark."); In re Hotels.com, L.P., 573 F.3d 1300, 91 USPQ2d 1532, 1535 (Fed. Cir. 2009) (dictionary and other evidence of meaning of "hotel" sufficed to show that the plural form in HOTELS.COM was generic for the information and reservation services at issue).

1209.01(c)(iii)    Generic Matter: Case References

Marks Held Generic

In the following cases, the matter sought to be registered was found generic: In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016) (CHURRASCOS generic for restaurant services); In re Nordic Naturals, Inc., 755 F.3d 1340, 111 USPQ2d 1495 (Fed. Cir. 2014) (CHILDREN’S DHA generic for "nutritional supplements containing DHA"); In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 92 USPQ2d 1682 (Fed. Cir. 2009) (MATTRESS.COM generic for "online retail store services in the field of mattresses, beds, and bedding"); In re Hotels.com, L.P., 573 F.3d 1300, 91 USPQ2d 1532 (Fed. Cir. 2009) (HOTELS.COM generic for "providing information for others about temporary lodging; [and] travel agency services, namely, making reservations and bookings for temporary lodging for others by means of telephone and the global computer network"); In re Reed Elsevier Properties Inc., 482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007) (LAWYERS.COM generic for "providing an online interactive database featuring information exchange in the fields of law, legal news and legal services"); In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999) (holding THE BEST BEER IN AMERICA for beer and ale to be "so highly laudatory and descriptive of the qualities of [applicant’s] product that the slogan does not and could not function as a trademark to distinguish Boston Beer’s goods and serve as an indication of origin"); In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) (SCREENWIPE generic as applied to premoistened antistatic cloths for cleaning computer and television screens); In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985) (BUNDT, a term that designates a type of cake, generic for ring cake mix); Frito-Lay N. Am., Inc. v. Princeton Vanguard, LLC, 124 USPQ2d 1184 (TTAB 2017) (PRETZEL CRISPS held generic for pretzel crackers), civil action filed, No. 3:17-cv-00652-RJC-DSC (W.D.N.C.); In re Empire Tech, Dev. LLC, 123 USPQ2d 1544 (TTAB 2017) (COFFEE FLOUR held generic for flour made from coffee cherry skins, pulp, and pectin); In re Emergency Alert Sols. Grp., LLC, 122 USPQ2d 1088 (TTAB 2017) (LOCKDOWN ALARM held generic for training services in the field of safety, security, and crisis preparedness); In re Meridian Rack & Pinion, 114 USPQ2d 1462 (TTAB 2015) (BUYAUTOPARTS.COM held generic for "on-line retail store services featuring auto parts"); In re ActiveVideo Network, Inc., 111 USPQ2d 1581 (TTAB 2014) (CLOUDTV held generic for software, non-downloadable software, broadcasting television programs, providing telecommunication connectivity services, and provision of audiovisual and multimedia content); Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341 (TTAB 2013) (FOOTLONG held generic for sandwiches, excluding hot dogs); In re Greenliant Sys., Ltd., 97 USPQ2d 1078 (TTAB 2010) (NANDRIVE generic for electronic integrated circuits that include high-speed solid state flash memory drives); In re Wm. B. Coleman Co., Inc., 93 USPQ2d 2019 (TTAB 2010) (ELECTRIC CANDLE COMPANY generic for "light bulbs; lighting accessories, namely, candle sleeves; lighting fixtures"); In re Tires, Tires, Tires, Inc., 94 USPQ2d 1153 (TTAB 2009) (TIRES TIRES TIRES generic for retail tire store services); Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549 (TTAB 2009) (product design configurations of "the body portion of a guitar" generic for "guitar bodies"); In re Noon Hour Food Prods., Inc., 88 USPQ2d 1172 (TTAB 2008) (BOND-OST held generic for cheese); In re Rosemount, Inc., 86 USPQ2d 1436 (TTAB 2008) (REDUCER generic for "flow meters used for measuring flow through pipes; vortex flow meters"); In re Lens.com, Inc., 83 USPQ2d 1444 (TTAB 2007) (LENS generic for "retail store services featuring contact eyewear products rendered via a global computer network"); In re Active Ankle Sys., Inc., 83 USPQ2d 1532 (TTAB 2007) (DORSAL NIGHT SPLINT generic for "orthopedic splints for the foot and ankle"); In re Int'l Bus. Machs. Corp., 81 USPQ2d 1677 (TTAB 2006) (ESERVER generic for "computer network access products, namely, computer hardware and operating software therefor that allow connectivity to and the administration of public and proprietary computer networks and the processing of information contained thereon"); In re The Outdoor Recreation Grp., 81 USPQ2d 1392 (TTAB 2006) (OUTDOOR PRODUCTS generic for a class of goods worn and used by persons engaged in outdoor activities); In re Rodale Inc., 80 USPQ2d 1696 (TTAB 2006) (NUTRITION BULLETIN generic for "providing information in the field of health and diet via a web site on the Internet"); In re DNI Holdings Ltd., 77 USPQ2d 1435 (TTAB 2005) (SPORTSBETTING.COM generic for "provision of casino games on and through a global computer network wherein there are no actual monetary wagers; provision of contests and sweepstakes on and through a global computer network; [and] providing a web site on and through a global computer network featuring information in the fields of gaming, athletic competition and entertainment"); In re Eddie Z’s Blinds & Drapery, Inc., 74 USPQ2d 1037 (TTAB 2005) (BLINDSANDDRAPERY.COM generic for retail store services featuring blinds, draperies, and other wall coverings, conducted via the Internet); In re Candy Bouquet Int’l, Inc., 73 USPQ2d 1883 (TTAB 2004) (CANDY BOUQUET generic for "retail, mail, and computer order services in the field of gift packages of candy"); In re Cell Therapeutics Inc., 67 USPQ2d 1795 (TTAB 2003) (CELL THERAPEUTICS INC. generic for pharmaceutical preparations and laboratory research and development services); In re Am. Inst. of Certified Pub. Accountants, 65 USPQ2d 1972 (TTAB 2003) (CPA EXAMINATION generic for "printed matter, namely, practice accounting examinations; accounting exams; accounting exam information booklets; and prior accounting examination questions and answers"); In re Am. Acad. of Facial Plastic & Reconstructive Surgery, 64 USPQ2d 1748 (TTAB 2002) (FACIAL PLASTIC SURGERY generic for training, association, and collective membership services, where evidence showed that the phrase "facial plastic surgery" is a recognized field of surgical specialization); In re A La Vieille Russie, Inc., 60 USPQ2d 1895 (TTAB 2001) (RUSSIANART generic for dealership services in the field of fine art, antiques, furniture, and jewelry); Cont'l Airlines Inc. v. United Airlines Inc., 53 USPQ2d 1385 (TTAB 1999) (E-TICKET generic for computerized reservation and ticketing of transportation services); In re Log Cabin Homes Ltd., 52 USPQ2d 1206 (TTAB 1999) (LOG CABIN HOMES generic for architectural design of buildings and retail outlets selling kits for building log homes); In re Web Commc'ns, 49 USPQ2d 1478 (TTAB 1998) (WEB COMMUNICATIONS generic for consulting services to businesses seeking to establish sites on a global computer network); In re Cent. Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998) (ATTIC generic for sprinklers installed primarily in attics); In re Stanbel Inc., 16 USPQ2d 1469 (TTAB 1990) , aff’d, 20 USPQ2d 1319 (Fed. Cir. 1991) (ICE PAK for reusable ice substitute for use in food and beverage coolers held generic); In re Analog Devices Inc., 6 USPQ2d 1808 (TTAB 1988), aff’d, 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989) (ANALOG DEVICES held generic for devices having analog capabilities); In re Mortg. Bankers Ass’n of Am., 226 USPQ 954 (TTAB 1985) (CERTIFIED MORTGAGE BANKER ("MORTGAGE BANKER" disclaimed) for "educational services, namely providing qualifying examinations, testing and grading in the field of real estate finance" held so highly descriptive as to be incapable of functioning as a mark notwithstanding evidence of acquired distinctiveness); In re Half Price Books, Records, Magazines, Inc., 225 USPQ 219, 222 (TTAB 1984) (HALF PRICE BOOKS RECORDS MAGAZINES for retail book and record store services "is incapable of designating origin and any evidence of secondary meaning can only be viewed as ‘de facto’ in import and incapable of altering the inability of the subject matter for registration to function as a service mark"); Shammas v. Rea, 978 F. Supp. 2d 599, 614 (E.D. Va. 2013) (PROBIOTIC found generic for a type of fertilizer).

Marks Held Not Generic

In the following cases, the matter sought to be registered was found not to be generic: In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420 (Fed. Cir. 2005) (STEELBUILDING.COM not generic for "computerized on line retail services in the field of pre-engineered metal buildings and roofing systems," but evidence submitted by applicant insufficient to establish acquired distinctiveness under §2(f)); In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001) (1-888-M‑A-T-R-E-S-S not generic for "telephone shop-at-home retail services in the field of mattresses"); In re Am. Fertility Soc'y, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999) (SOCIETY FOR REPRODUCTIVE MEDICINE not generic for association services in the field of reproductive medicine); In re Merrill Lynch, Pierce, Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987) (CASH MANAGEMENT ACCOUNT for "stock brokerage services, administration of money market fund services, and providing loans against securities services" held merely descriptive, rather than generic, and remanded to Board to consider sufficiency of §2(f) evidence); H. Marvin Ginn Corp. v. Int'l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986) (FIRE CHIEF not generic for publications); Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1482-97 (TTAB 2017) (finding that the evidence of record tended to show that TEQUILA has significance as a designation of geographic origin and thus opposer failed to establish by a preponderance of the evidence that the term is generic); Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750 (TTAB 2013) (ANNAPOLIS TOURS, with TOURS disclaimed, not generic for "conducting guided tours of historic districts and other areas of cities," but cancellation granted on ground that mark was merely descriptive and had not acquired distinctiveness); Baroness Small Estates, Inc. v. Am. Wine Trade, Inc., 104 USPQ2d 1224, 1229 (TTAB 2012) (CMS not generic acronym for "wine" made from the grape varietals cabernet, merlot, and syrah; the Board noted that "the fact that a term is derived from individual generic words or even a listing of generic words does not necessarily make the derived term generic"); In re Tennis Indus. Ass’n, 102 USPQ2d 1671 (TTAB 2012) (TENNIS INDUSTRY ASSOCIATION not generic for "association services, namely, promoting the interests of tennis facilities, tennis manufacturers, tennis retailers and tennis court contractors; providing market research services to track the economic vitality of the tennis industry," but applicant failed to prove that the mark had acquired distinctiveness); In re Country Music Ass’n, 100 USPQ2d 1824 (TTAB 2011) (COUNTRY MUSIC ASSOCIATION, with ASSOCIATION disclaimed, not generic for "association services, namely, promoting country music entertainers and the country music recording industry"; evidence submitted by applicant held sufficient to demonstrate acquired distinctiveness under §2(f)); In re Am. Online, Inc., 77 USPQ2d 1618 (TTAB 2006) (INSTANT MESSENGER not generic for telecommunications services and computer services related to providing real time text messages; evidence submitted by applicant held sufficient to demonstrate acquired distinctiveness under §2(f)); Zimmerman v. Nat'l Ass’n of Realtors, 70 USPQ2d 1425 (TTAB 2004) (collective service marks REALTOR and REALTORS not generic for real estate brokerage, management, appraisal, and planning services); In re Federated Dept. Stores Inc., 3 USPQ2d 1541 (TTAB 1987) (THE CHILDREN’S OUTLET ("OUTLET" disclaimed), while merely descriptive of applicant’s "retail children’s clothing store services," held capable of functioning as a mark, with evidence submitted by applicant sufficient to establish acquired distinctiveness pursuant to §2(f)); Hunter Publ'g Co. v. Caulfield Publ'g Ltd., 1 USPQ2d 1996 (TTAB 1986) (SYSTEMS USER for periodic trade journal held merely descriptive, rather than generic, and applicant’s evidence held sufficient to establish acquired distinctiveness pursuant to §2(f)); In re Failure Analysis Assocs., 1 USPQ2d 1144 (TTAB 1986) (FAILURE ANALYSIS ASSOCIATES, for "consulting services in the field of mechanical, structural, metallurgical, and metal failures, fires and explosions; engineering services in the field of mechanical design and risk analysis" and "consulting engineering services in the metallurgical field," found to be merely descriptive of applicant’s services rather than incapable of distinguishing them from those of others; evidence submitted by applicant held sufficient to demonstrate acquired distinctiveness under §2(f)).

1209.02    Procedure for Descriptiveness and/or Genericness Refusal

The examining attorney must consider the evidence of record to determine whether a mark is merely descriptive or whether it is suggestive or arbitrary. See In re Noble Co., 225 USPQ 749, 750 (TTAB 1985) . The examining attorney may request that the applicant submit additional explanation or materials to clarify the meaning of the mark or the nature of the goods or services. 37 C.F.R. §2.61(b); TMEP §814; see In re AOP LLC, 107 USPQ2d 1644, 1650-51 (TTAB 2013) . This would be especially appropriate for goods or services where the meaning of the mark or the nature of the goods or services would be readily apparent only to someone knowledgeable in that field. The examining attorney should also do any necessary research to determine the nature of the use of the designation in the marketplace. To the fullest extent possible, the examining attorney will examine §1(b) applications for registrability under §2(e)(1) according to the same procedures and standards that apply to any other application. See In re Am. Psychological Ass’n, 39 USPQ2d 1467, 1469 (Comm’r Pats. 1996); TMEP §§1102 and 1102.01. "[T]he fact that applicant has filed an intent-to-use application does not limit the examining attorney’s evidentiary options, nor does it shield an applicant from producing evidence that it may have in its possession." In re Promo Ink, 78 USPQ2d 1301, 1303 (TTAB 2006) . If the examining attorney refuses registration, he or she must support the refusal with appropriate evidence. See generally In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087 (Fed. Cir. 2005) (finding a press release cited by the examining attorney relevant to show the public’s perception of the goods in an intent-to-use application).

In all cases, the examining attorney should try to make the Office action as complete as possible, so that the applicant may respond appropriately.

1209.02(a)    Descriptive Marks – Advisory Statement that Mark Appears to Be Generic

A designation that is merely descriptive must be refused registration under §2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1).  The examining attorney must not initially issue a refusal in an application for registration on the Principal Register on the ground that a mark is a generic name for the goods or services, unless the applicant asserted that the mark has acquired distinctiveness under §2(f) in the application itself. See TMEP §1209.02(b). Even if it appears that the mark is generic, the proper basis for the initial refusal is §2(e)(1) descriptiveness. If there is strong evidence that the proposed mark is generic, the examining attorney should include a statement that the subject matter appears to be a generic name for the goods or services in conjunction with the refusal on the ground that the matter is merely descriptive. It has been said that a generic term is "the ultimate in descriptiveness." H. Marvin Ginn Corp. v. Int'l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986) (quoting Weiss Noodle Co. v. Golden Cracknel & Specialty Co., 290 F.2d 845, 847, 129 USPQ 411, 413 (C.C.P.A. 1961)).

If, on the other hand, the mark appears to be capable, the examining attorney should provide appropriate advice concerning a possible amendment to the Supplemental Register or assertion of a claim of acquired distinctiveness. See TMEP §1102.03 concerning ineligibility of the proposed mark in a §1(b) application for the Supplemental Register prior to filing an acceptable amendment to allege use under 15 U.S.C. §1051(c)   or statement of use under 15 U.S.C. §1051(d).  The examining attorney should also advise the applicant regarding any incapable portion of the mark for which a disclaimer would be required in connection with an amendment to the Supplemental Register or assertion of a claim of acquired distinctiveness. If the applicant responds by amending to the Supplemental Register or asserting acquired distinctiveness, but does not submit the disclaimer, the examining attorney must issue a nonfinal Office action. Prior to the applicant’s amendment, information regarding the disclaimer requirement is merely advisory. Failure to submit the disclaimer thus would constitute a new issue requiring a nonfinal Office action.

If the record is unclear as to whether the designation is capable of functioning as a mark, the examining attorney must refrain from giving any advisory statement. In general, the examining attorney should make every effort to apprise applicants as early as possible of the prospects for registration through appropriate amendments, if feasible. NOTE: A mark in a §66(a) application cannot be registered on the Supplemental Register under any circumstances. 15 U.S.C. §1141h(a)(4); 37 C.F.R. §§2.47(c), 2.75(c).

If, in response to a first-action refusal under §2(e)(1), the applicant merely argues that the mark is registrable on the Principal Register without claiming acquired distinctiveness or amending to the Supplemental Register, the examining attorney must issue a final refusal under §2(e)(1), on the ground that the proposed mark is merely descriptive, if he or she is not persuaded by the applicant’s arguments.

1209.02(a)(i)    Amendment to Supplemental Register in Response to Office Action

If the applicant responds to a §2(e)(1) descriptiveness refusal by amending its application to the Supplemental Register, this amendment presents a new issue requiring consideration by the examining attorney (unless the amendment is irrelevant to the outstanding refusal). See TMEP §714.05(a)(i). If the examining attorney determines that the designation is a generic name for the applicant’s goods or services, the examining attorney must then issue a nonfinal action refusing registration on the Supplemental Register. The statutory basis for such a refusal is §§23(c) and 45 of the Trademark Act. See 15 U.S.C. §§1091(c), 1127.

See TMEP §§815–816.05 concerning applications for registration on the Supplemental Register.

1209.02(a)(ii)    Assertion of §2(f) in Response to Office Action

If the applicant responds to a §2(e)(1) descriptiveness refusal by amending its application to assert acquired distinctiveness under §2(f), this also raises a new issue. See TMEP §§714.05(a)(i) and 1212.02(h). If the examining attorney determines that the designation is a generic name for the applicant’s goods or services, the examining attorney must issue a new nonfinal action refusing registration under §§1, 2, and 45 (§§1, 2, 3, and 45 for service marks) on the basis that the mark is generic and stating that the claim of acquired distinctiveness is insufficient to overcome the refusal. The examining attorney must also maintain and continue, in the alternative, the refusal under §2(e)(1) that the mark is merely descriptive and must separately explain why the showing of acquired distinctiveness is insufficient to overcome the descriptiveness refusal even if the mark is ultimately deemed not to be generic. As the Trademark Trial and Appeal Board noted in In re Women’s Publ'g Co. Inc., 23 USPQ2d 1876, 1877 n.2 (TTAB 1992) :

The Examining Attorney’s refusal that applicant’s mark is "so highly descriptive that it is incapable of acting as a trademark" is not technically a statutory ground of refusal. Where an applicant seeks registration on the Principal Register, the Examining Attorney may refuse registration under Section 2(e)(1) of the Act, 15 USC 1052(e)(1), on the basis that the mark sought to be registered is generic. See , e.g., In re Northland Aluminum Products Inc., 777 F.2d 1556, 227 USPQ 961, 962 (Fed. Cir. 1985), Weiss Noodle Co. v. Golden Cracknel & Specialty Co., 290 F.2d 845, 129 USPQ 411, 413 (C.C.P.A. 1961), In re Deutsche Airbus GmbH, 224 USPQ 611 (TTAB 1984) and Conde Nast Publ'ns Inc. v. Redbook Publ'g Co., 217 USPQ 356, 360 (TTAB 1983). Alternatively, an Examining Attorney may refuse registration under the same section if he or she believes that the mark is merely descriptive and that applicant’s showing of acquired distinctiveness is unpersuasive of registrability.

If the examining attorney fails to separately address the sufficiency of the §2(f) evidence, this may be treated as a concession that the evidence would be sufficient to establish distinctiveness if the mark is ultimately found not to be generic. See In re Country Music Ass’n, 100 USPQ2d 1824, 1834 (TTAB 2011) (interpreting the examining attorney’s silence on the sufficiency of the evidence submitted in support of applicant’s claim of acquired distinctiveness "as a concession that, if the term is not generic, the record evidence is sufficient to show acquired distinctiveness under Section 2(f)"). Compare In re Dietrich,91 USPQ2d 1622, 1625 (TTAB 2009), in which the Board held that an examining attorney had "effectively conceded that, assuming the mark is not functional, applicant’s evidence is sufficient to establish that the mark had acquired distinctiveness," where the examining attorney rejected the applicant’s §2(f) claim on the ground that applicant’s bicycle wheel configuration was functional and thus unregistrable even under §2(f), but did not specifically address the sufficiency of the §2(f) evidence or the question of whether the mark would be registrable under §2(f) if it were ultimately found to be nonfunctional.

Therefore, the descriptiveness refusal must be maintained, in the alternative, in the event that the mark is ultimately determined not to be generic. See TMEP §§1212–1212.10 regarding distinctiveness under §2(f), and TMEP §1212.02(i) regarding assertion of §2(f) claims with respect to generic matter. See , e.g., In re Candy Bouquet Int’l Inc., 73 USPQ2d 1883 (TTAB 2004); In re Am. Acad. of Facial Plastic & Reconstructive Surgery, 64 USPQ2d 1748 (TTAB 2002); In re A La Vieille Russie Inc., 60 USPQ2d 1895 (TTAB 2001) .

1209.02(b)    Descriptive and Possibly Generic Marks – Assertion of §2(f) in Application

If the applicant asserts acquired distinctiveness under §2(f) in the original application and the examining attorney determines that the applied-for mark is a generic name for the applicant’s goods or services, the examining attorney must issue a nonfinal action refusing registration under Trademark Act §§1, 2, and 45, for trademarks, and §§1, 2, 3, and 45, for service marks, on the basis that the mark is generic and stating that the claim of acquired distinctiveness is insufficient to overcome the refusal. See 15 U.S.C. §§1051, 1052, 1053, 1127. The examining attorney must also refuse registration under §2(e)(1), in the alternative, as merely descriptive and must separately explain why the showing of acquired distinctiveness is insufficient to overcome the descriptiveness refusal even if the mark is ultimately deemed not to be generic.

If the examining attorney ultimately issues a final refusal under §§1, 2, and 45, or §§1, 2, 3, and 45, on the ground that the mark is generic, the descriptiveness refusal under §2(e)(1), including an explanation of the insufficiency of any §2(f) evidence, must also be made final, in the alternative, in case the mark is ultimately determined not to be generic. See, e.g., In re Candy Bouquet Int’l, 73 USPQ2d 1883 (TTAB 2004); In re Am. Acad. of Facial Plastic & Reconstructive Surgery, 64 USPQ2d 1748 (TTAB 2002); In re A La Vieille Russie Inc., 60 USPQ2d 1895 (TTAB 2001).

If the examining attorney fails to separately address the sufficiency of the §2(f) evidence, this may be treated as a concession that the evidence would be sufficient to establish distinctiveness if the mark is ultimately found not to be generic. See In re Country Music Ass’n, 100 USPQ2d 1824, 1834 (TTAB 2011) (interpreting the examining attorney’s silence on the sufficiency of the evidence submitted in support of applicant’s claim of acquired distinctiveness "as a concession that, if the term is not generic, the record evidence is sufficient to show acquired distinctiveness under Section 2(f)"). Compare In re Dietrich, 91 USPQ2d 1622, 1625 (TTAB 2009) , in which the Board held that an examining attorney had "effectively conceded that, assuming the mark is not functional, applicant’s evidence is sufficient to establish that the mark had acquired distinctiveness," where the examining attorney rejected the applicant’s §2(f) claim on the ground that applicant’s bicycle wheel configuration was functional and thus unregistrable even under §2(f), but did not specifically address the sufficiency of the §2(f) evidence or the question of whether the mark would be registrable under §2(f) if it were ultimately found to be nonfunctional.

See TMEP §§1212–1212.10 regarding distinctiveness under §2(f), and TMEP §1212.02(i) regarding assertion of §2(f) claims with respect to generic matter.

1209.03    Considerations Relevant to Determination of Descriptiveness or Genericness

The following sections discuss factors and situations that often arise during a determination of whether a mark is descriptive or generic.

1209.03(a)    Third-Party Registrations

Third-party registrations are not conclusive on the question of descriptiveness or genericness. Each case must stand on its own merits, and a mark that is merely descriptive or generic does not become registrable simply because other seemingly similar marks appear on the register. In re Consumer Prot. Firm PLLC, 2021 USPQ2d 238, at *22 (TTAB 2021) (citing In re Scholastic Testing Serv., Inc., 196 USPQ 517, 519 (TTAB 1977)). The question of whether a mark is merely descriptive or generic must be determined based on the evidence of record at the time registration is sought. In re Consumer Prot. Firm PLLC, 2021 USPQ2d 238, at *22 (citing In re theDot Commc’ns Network LLC, 101 USPQ2d 1062, 1064 (TTAB 2011)) (holding THE CONSUMER PROTECTION FIRM generic for legal services where the Board found third-party registrations presented dissimilar circumstances); see In re Nett Designs Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (holding ULTIMATE BIKE RACK merely descriptive of "bicycle racks" despite the presence of "ultimate" without a disclaimer in other marks on the Principal Register); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (holding AGENTBEANS merely descriptive of computer software for use in software development and deployment where the Board found that changes in the vocabulary of the field reduced the relevance of third-party registrations).

1209.03(b)    Dictionary Listing

The fact that a term is not found in a dictionary is not controlling on the question of registrability if the examining attorney can show that the term has a well understood and recognized meaning. See In re Hikari Sales USA, Inc., 2019 USPQ2d 111514, at *1, *8 (TTAB 2019) (citing In re ActiveVideo Networks, Inc., 111 USPQ2d 1581, 1603 (TTAB 2014); In re Dairimetics, Ltd., 169 USPQ 572, 573 (TTAB 1971)) (holding ALGAE WAFERS merely descriptive of fish food although the term was not found in the dictionary); In re Orleans Wines, Ltd., 196 USPQ 516, 516-17 (TTAB 1977) (holding BREADSPRED merely descriptive of jellies and jams although the term was not found in the dictionary).

Moreover, in terms of establishing a term’s likely meaning to consumers, evidence of current usage may carry more weight than dictionary evidence. See In re Well Living Lab Inc., 122 USPQ2d 1777, 1781 (TTAB 2017) (finding modern-day usage of "well-living" more significant than dictionary definition).

1209.03(c)    First or Only User

The fact that an applicant may be the first and only user of a merely descriptive designation does not justify registration if the only significance conveyed by the term is merely descriptive. See In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1514 (TTAB 2016) ; In re Nat'l Shooting Sports Found., Inc., 219 USPQ 1018, 1020 (TTAB 1983); see also KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 122, 72 USPQ2d 1833, 1838 (2004) (trademark law does not countenance someone obtaining "a complete monopoly on use of a descriptive term simply by grabbing it first"); Clairol, Inc. v. Roux Distrib. Co., 280 F.2d 863, 865, 126 USPQ2d 397, 398 (C.C.P.A. 1960) (even novel ways of referring to the goods may nonetheless be descriptive). Likewise, the fact that an applicant may be the first or only user of a generic designation does not justify registration if the only significance conveyed by the term is that of a category of goods. In re Empire Tech, Dev. LLC, 123 USPQ2d 1544, 1549 (TTAB 2017) (citing In re Greenliant Systems Ltd., 97 USPQ2d 1078, 1083 (TTAB 2010)); see also In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1569, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987) ("To allow trademark protection for generic terms, i.e., names which describe the genus of goods being sold, even when these have become identified with a first user, would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are."); In re Preformed Prods. Co., 323 F.2d 1007, 1008, 139 USPQ 271, 273 (C.C.P.A. 1963) (quoting J. Kohnstam, Ltd. v. Louis Marx & Co., 280 F.2d 437, 440 (C.C.P.A. 1960))(exclusive use, even when coupled with "large sales volume of such goods and its substantial advertising expenditure . . . cannot take the common descriptive name of an article out of the public domain and give the temporarily exclusive user of it exclusive rights to it, no matter how much money or effort it pours into promoting the sale of the merchandise"); TMEP §1212.06(e)(i).

1209.03(d)    Combined Terms

When two or more descriptive terms are combined, the determination of whether the composite mark also has a descriptive significance turns on whether the combination of terms evokes a new and unique commercial impression. See In re Oppedahl & Larson LLP, 373 F.3d 1171, 1174-75, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004) (citing In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 750-51 (Fed. Cir. 1985)) ("[T]he PTO must . . . determine whether the mark as a whole, i.e., the combination of the individual parts, conveys any distinctive source-identifying impression contrary to the descriptiveness of the individual parts."); In re Omniome, Inc., 2020 USPQ2d 3222, at *4 (TTAB 2019) (citing In re Colonial Stores Inc., 394 F.2d 549, 551-52, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Shutts, 217 USPQ 363, 364-65 (TTAB 1983)) ("A mark comprising a combination of merely descriptive components is registrable only if the combination of terms creates a unitary mark with a non-descriptive meaning, or if the composite has a bizarre or incongruous meaning as applied to the goods or services.").

If each component retains its descriptive significance in relation to the goods or services, the combination results in a composite that is itself descriptive. DuoProSS Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753 (Fed. Cir. 2012) (SNAP SIMPLY SAFER merely descriptive for "medical devices, namely, cannulae; medical, hypodermic, aspiration and injection needles; medical, hypodermic, aspiration and injection syringes"); In re Oppedahl & Larson LLP, 373 F.3d at 1171, 71 USPQ2d at 1370 (PATENTS.COM merely descriptive of computer software for managing a database of records that could include patents and for tracking the status of the records by means of the Internet); In re Gould Paper Corp., 834 F.2d 1017, 1018, 5 USPQ2d 1110, 1111–12 (Fed. Cir. 1987) (SCREENWIPE held generic as applied to premoistened antistatic cloths for cleaning computer and television screens); In re Fallon, 2020 USPQ2d 11249, at *12 (TTAB 2020) (THERMAL MATRIX merely descriptive of a heat-responsive, malleable liner that is an integral component of an oral dental appliance); In re Omniome, Inc., 2020 USPQ2d 3222, at *10-11 (SEQUENCING BY BINDING merely descriptive of various goods and services used to sequence DNA by the process of binding); In re Nat’l Ass’n of Veterinary Technicians in Am., Inc., 2019 USPQ2d 269108, at *1, *5 (TTAB 2019) (VETERINARY TECHNICIAN SPECIALIST merely descriptive of "veterinary medicine services" provided by persons certified as having "completed the required curriculum of a defined body of veterinary technology knowledge pertinent to that particular specialty"); In re Mecca Grade Growers, LLC, 125 USPQ2d 1950, 1955 (TTAB 2018) (MECHANICALLY FLOOR-MALTED merely descriptive of malt for brewing and distilling and processing of agricultural grain); In re Positec Gr. Ltd., 108 USPQ2d 1161 (TTAB 2013) (SUPERJAWS merely descriptive for a variety of machine and hand tools including jaws); In re Petroglyph Games, Inc., 91 USPQ2d 1332 (TTAB 2009) (BATTLECAM merely descriptive for computer game software); In re Carlson, 91 USPQ2d 1198 (TTAB 2009) (URBANHOUZING merely descriptive of real estate brokerage, real estate consultation, and real estate listing services); In re Leonhardt, 109 USPQ2d 2091 (TTAB 2008) (BOBBLE POPS held merely descriptive for "candy," which the record showed was a lollipop candy featuring a bobble head device); In re Cox Enters. Inc., 82 USPQ2d 1040 (TTAB 2007) (THEATL – a compressed version of the term "THE ATL," a recognized nickname for the city of Atlanta – held merely descriptive of printed matter of interest to residents of and tourists and visitors to Atlanta, Georgia); In re King Koil Licensing Co., 79 USPQ2d 1048 (TTAB 2006) (THE BREATHABLE MATTRESS held merely descriptive of "beds, mattresses, box springs and pillows," based on dictionary definitions of "breathable" and "mattress," and excerpts of web pages that refer to "breathable mattresses" and "breathable bedding"); In re Finisar Corp., 78 USPQ2d 1618 (TTAB 2006) (SMARTSFP held merely descriptive of optical transceivers), aff’d per curiam, 223 Fed. App'x 984 (Fed. Cir. 2007); In re Tower Tech, Inc., 64 USPQ2d 1314 (TTAB 2002) (SMARTTOWER merely descriptive of "commercial and industrial cooling towers and accessories therefor, sold as a unit"); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS merely descriptive of computer software for use in development and deployment of application programs on global computer network); In re Putman Publ'g Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE merely descriptive of news and information service for the food processing industry); In re Copytele Inc., 31 USPQ2d 1540 (TTAB 1994) (SCREEN FAX PHONE merely descriptive of "facsimile terminals employing electrophoretic displays"); In re Entenmann’s Inc., 15 USPQ2d 1750 (TTAB 1990) (holding OATNUT merely descriptive of bread containing oats and hazelnuts), aff’d per curiam, 928 F.2d 411 (Fed. Cir. 1991); In re Serv-A-Portion Inc., 1 USPQ2d 1915 (TTAB 1986) (SQUEEZE N SERV merely descriptive of ketchup and thus subject to disclaimer); In re Wells Fargo & Co., 231 USPQ 95 (TTAB 1986) (EXPRESSERVICE merely descriptive of banking and trust services); In re Uniroyal, Inc., 215 USPQ 716 (TTAB 1982) (STEELGLAS BELTED RADIAL merely descriptive of vehicle tires containing steel and glass belts); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979) (COASTER-CARDS merely descriptive of coasters suitable for direct mailing).

However, a mark comprising a combination of merely descriptive components is registrable if the combination of terms creates a unitary mark with a unique, nondescriptive meaning, or if the composite has a bizarre or incongruous meaning as applied to the goods. See In re Colonial Stores Inc., 394 F.2d at 549, 157 USPQ at 382 (SUGAR & SPICE held not merely descriptive of bakery products); In re Shutts,217 USPQ at 363 (SNO-RAKE held not merely descriptive of a snow removal hand tool).

When there is evidence that the composite mark itself has been used together to form a phrase that is descriptive of the goods or services, it is unnecessary to engage in an analysis of each individual component. In re Shiva Corp., 48 USPQ2d 1957, 1958 (TTAB 1998) (TARIFF MANAGEMENT merely descriptive of computer hardware and computer programs to control, reduce, and render more efficient wide area network usage).

The Trademark Trial and Appeal Board has held that the addition of the prefix "e" does not change the merely descriptive significance of a term in relation to goods or services sold or rendered electronically, where the record showed that the "e" prefix has become commonly recognized as a designation for goods or services sold or delivered electronically. In re Int’l Bus. Machs. Corp., 81 USPQ2d 1677, 1679 (TTAB 2006) ("We see no difference in the meaning or connotation of ‘e-server’ and ‘eserver,’ and consider them both to be an abbreviated form of ‘electronic server.’"); In re SPX Corp., 63 USPQ2d 1592 (TTAB 2002) (E-AUTODIAGNOSTICS merely descriptive of an "electronic engine analysis system comprised of a hand-held computer and related computer software"); In re Styleclick.com Inc., 57 USPQ2d 1445 (TTAB 2000) (E FASHION merely descriptive of software used to obtain beauty and fashion information, and for electronic retailing services); Cont'l Airlines Inc. v. United Airlines Inc., 53 USPQ2d 1385 (TTAB 1999) (E-TICKET generic for computerized reservation and ticketing of transportation services). Similarly, with appropriate evidence, the prefix "i" or "I" was held to be understood by purchasers to signify Internet, when used in relation to Internet-related products or services. See In re Zanova, Inc., 59 USPQ2d 1300 (TTAB 2000) (ITOOL merely descriptive of computer software for use in creating web pages, and custom design of websites for others). In these situations, the examining attorney should provide evidence of use of the prefix "e" or "i" in relation to the goods or services.

The addition of an entity designator (e.g., Corporation, Corp., Co., Inc., Ltd., etc.) to a descriptive term does not alter the term’s descriptive significance, because an entity designation has no source-indicating capacity. See Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 602 (1888) ("The addition of the word ‘Company’ [to an otherwise generic mark] only indicates that parties have formed an association or partnership to deal in such goods . . . ." and does not render the generic mark registrable); In re Integrated Embedded, 120 USPQ2d 1504,1507 (TTAB 2016) ("The addition of the disclaimed term GROUP to Applicant’s mark . . . is incapable of lending source-identifying significance to the mark."); In re Cell Therapeutics Inc., 67 USPQ2d 1795 (TTAB 2003) (CELL THERAPEUTICS INC. generic for pharmaceutical preparations and laboratory research and development services); In re Taylor & Francis [Publishers] Inc., 55 USPQ2d 1213, 1215 (TTAB 2000) ("PRESS," as applied to a printing or publishing establishment, "is in the nature of a generic entity designation which is incapable of serving a source-indicating function"); In re Pat. & Trademark Servs. Inc., 49 USPQ2d 1537 (TTAB 1998) (PATENT & TRADEMARK SERVICES INC. is merely descriptive of legal services in the field of intellectual property; the term "INC." merely indicates the type of entity that performs the services, and has no significance as a mark); In re Paint Prods. Co., 8 USPQ2d 1863, 1866 (TTAB 1988) ("‘PAINT PRODUCTS CO.’ is no more registrable for goods emanating from a company that sells paint products than it would be as a service mark for the retail paint store services offered by such a company."); In re E. I. Kane, Inc., 221 USPQ 1203, 1205 (TTAB 1984) ("The addition of the term ‘INC.’ does not add any trademark significance to the matter sought to be registered. The complete term ‘OFFICE MOVERS, INC.’ is so highly descriptive that it is incapable of distinguishing applicant's services [which included "moving services, namely the moving of office facilities"]."). See TMEP §1213.03(d) regarding disclaimer of entity designators.

1209.03(e)    More than One Meaning

Descriptiveness must be determined in relation to the goods or services for which registration is sought. In re Omniome, Inc., 2020 USPQ2d 3222, at *10 (TTAB 2019) (citing In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979)). Therefore, the fact that a term may have a different meaning(s) in a different context is not controlling. Id.; see In re RiseSmart Inc., 104 USPQ2d 1931, 1933 (TTAB 2012) (citing In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984) ); In re Bright-Crest, Ltd., 204 USPQ at 593 . If a term has a primary significance that is descriptive in relation to at least one of the recited goods or services, and does not create any double entendre or incongruity, then the term is merely descriptive. See, e.g., In re Calphalon Corp., 122 USPQ2d 1153, 1164 (TTAB 2017) (finding nothing incongruous about the use of the word sharpen (or its phonetic equivalent SHARPIN) to describe the function of knife blocks with built-in sharpeners that automatically sharpen knives).

See TMEP §1213.05(c) regarding wording that constitutes a "double entendre."

1209.03(f)    Picture or Illustration

A visual representation that consists merely of an illustration of the goods, or of an article that is an important feature or characteristic of the goods or services, is merely descriptive under §2(e)(1) of the Trademark Act, just as a merely descriptive word would be. See In re Underwater Connections, Inc., 221 USPQ 95, 95 (TTAB 1983) (holding pictorial representation of a compressed air gas tank merely descriptive of travel-tour services involving underwater diving); In re Eight Ball, Inc., 217 USPQ 1183, 1184 (TTAB 1983) (holding the mark comprising a pictorial representation of a cue stick and eight ball to be merely descriptive of applicant’s billiard parlor services); Thistle Class Ass’n v. Douglass & McLeod, Inc., 198 USPQ 504, 511-12 (TTAB 1978) (holding the pictorial representation of a thistle in the mark to be merely descriptive of the class of sailboats sold by applicant); See also In re Soc’y for Priv. & Com. Earth Stations, 226 USPQ 436, 438 (TTAB 1985) (holding representation of earth station merely descriptive of services of an association promoting the interests of members of the earth-station industry). But see In re LRC Prods., Ltd., 223 USPQ 1250 (TTAB 1984) (stylized hand design found not merely an illustration of the goods, i.e., gloves; thus not held merely descriptive).

Similarly, when a mark is comprised of wording that is descriptive under §2(e)(1) and a design element that is a pictorial representation of the goods, or that reinforces the descriptive meaning of the wording, the entire mark is merely descriptive. See, e.g., DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd., 695 F3d 1247,1255, 103 USPQ2d 1753, 1758 (Fed. Cir. 2012) (finding that the combination of the term SNAP and the design of a broken exclamation point, viewed as a whole, would be perceived as depicting the snapping of a syringe plunger, which is used in connection with various medical syringes); Robinson v. Hot Grabba Leaf, LLC, 2019 USPQ2d 149089, at *8 (TTAB 2019) (finding that the design of a tobacco leaf combined with the wording GRABBA LEAF, viewed as a whole, would be perceived as conveying applicant’s cigar wrap could be used as a tobacco leaf to wrap grabba tobacco or that grabba leaf tobacco was an ingredient in the wraps); In re Swatch Grp. Mgmt. Servs. AG, 110 USPQ2d 1751, 1762 (TTAB 2014) (finding that the design element depicting a tourbillon - a watch component - combined with the word TOURBILLON reinforced the singular impression conveyed by the mark as a whole as merely descriptive for "jewellery, horological and chronometric instruments"), aff’d per curiam, 599 Fed. Appx. 959 (Fed. Cir. 2015).

1209.03(g)    Foreign Equivalents

The foreign equivalent of a merely descriptive English word is no more registrable than the English word itself. "[A] word taken from a well-known foreign modern language, which is, itself, descriptive of a product, will be so considered when it is attempted to be registered as a trade-mark in the United States for the same product." In re N. Paper Mills, 64 F.2d 998, 998, 17 USPQ 492, 493 (C.C.P.A. 1933) ; see In re Tokutake Indus. Co., 87 USPQ2d 1697 (TTAB 2008) (AYUMI and its Japanese-character equivalent held merely descriptive for footwear where the evidence, including applicant's own admissions, indicated that the primary meaning of applicant's mark is "walking"); In re Oriental Daily News, Inc., 230 USPQ 637 (TTAB 1986) (Chinese characters that mean ORIENTAL DAILY NEWS held merely descriptive of newspapers); In re Geo. A. Hormel & Co., 227 USPQ 813 (TTAB 1985) (SAPORITO, an Italian word meaning "tasty," held merely descriptive because it describes a desirable characteristic of applicant’s dry sausage).

Under the doctrine of foreign equivalents, foreign words from common, modern languages are translated into English; however, the doctrine is not an absolute rule, but merely a guideline. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005) (citing In re Sarkli, Ltd., 721 F.2d 353, 354, 220 USPQ 111, 113 (Fed. Cir. 1983); In re Am. Safety Razor Co., 2 USPQ2d 1459, 1460 (TTAB 1987)). The doctrine should be applied only when it is likely that the ordinary American purchaser would stop and translate the foreign wording into its English equivalent. See id. (citing In re Tia Maria, Inc., 188 USPQ 524, 525-26 (TTAB 1975)); see also In re Highlights for Child., Inc., 118 USPQ2d 1268, 1271 (TTAB 2016) (citing In re Aquamar, Inc., 115 USPQ2d 1122, 1127 (TTAB 2015)) (noting that the doctrine of foreign equivalents applies even when the foreign wording in the mark will appear with its English equivalent, because ordinary purchasers will still recognize the terms as equivalents due to the provided translation ). Thus, an examining attorney will generally apply the doctrine when the relevant English translation is literal and direct, the term comes from a common, modern language, and there is no contradictory evidence of another relevant meaning. See In re Sadoruo Grp. Ltd., 105 USPQ2d 1484, 1485 (TTAB 2012) . "The 'ordinary American purchaser' in this context refers to the ordinary American purchaser who is knowledgeable in the foreign language. . . . [Defining "ordinary American purchaser" as the "average American buyer"] would write the doctrine out of existence." In re Thomas, 79 USPQ2d 1021, 1024 (TTAB 2006) . The "ordinary American purchaser" includes "all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English." In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009); In re S. Malhotra & Co. AG, 128 USPQ2d 1100, 1103 (TTAB 2018) (quoting In re Highlights for Child., Inc., 118 USPQ2d at 1271).

While foreign words are generally translated into English for purposes of determining descriptiveness, foreign words from dead or obscure languages may be so unfamiliar to the American buying public that they should not be translated into English for descriptiveness purposes. See Enrique Bernat F. S.A. v. Guadalajara Inc., 210 F.3d 439, 443, 54 USPQ2d 1497, 1499 (5th Cir. 2000); cf. Gen. Cigar Co. v. G.D.M. Inc., 988 F. Supp. 647, 45 USPQ2d 1481 (S.D.N.Y. 1997). The determination of whether a language is "dead" must be made on a case-by-case basis, based upon the meaning that the term would have to the relevant purchasing public.

Note that marks comprised of a term from a foreign language used with an English term may be found registrable if the commercial impression created by the combination differs from that which would be created by two English words. See In re Johanna Farms Inc., 8 USPQ2d 1408 (TTAB 1988) (holding LA YOGURT for yogurt registrable on the Principal Register with a disclaimer of YOGURT); In re Sweet Victory, Inc., 228 USPQ 959 (TTAB 1986) (holding GLACÉ LITE not merely descriptive for ice creams, sherbets, frozen yogurts, and nondairy frozen desserts because the combination of the French word GLACÉ with the English word LITE makes the expression somewhat incongruous); In re Universal Package Corp., 222 USPQ 344 (TTAB 1984) (holding LE CASE not merely descriptive of jewelry boxes and gift boxes and registrable on the Principal Register with a disclaimer of CASE).

See TMEP §§809–809.03 for information regarding how to determine the meaning of non-English wording in a mark. See also TMEP §§1207.01(b)(vi)–(b)(vi)(C), §1210.10, and §1211.01(a)(vii) regarding the doctrine of foreign equivalents.

1209.03(h)    Acronyms

As a general rule, an acronym or initialism cannot be considered descriptive unless the wording it stands for is merely descriptive of the goods or services, and the acronym or initialism is readily understood by relevant purchasers to be "substantially synonymous" with the merely descriptive wording it represents. See Modern Optics Inc. v. The Univis Lens Co., 234 F. 2d 504, 506, 110 USPQ 293, 295 (C.C.P.A. 1956); Baroness Small Estates, Inc. v. Am. Wine Trade, Inc., 104 USPQ2d 1224, 1230-31 (TTAB 2012) (holding CMS not substantially synonymous with the grape varietals cabernet, merlot, and syrah and therefore not merely descriptive for wine); In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1715 (TTAB 2011) (holding NKJV substantially synonymous with merely descriptive term "New King James Version" and thus merely descriptive of bibles). A mark consisting of an abbreviation, initialism, or acronym will be considered substantially synonymous with descriptive wording if: (1) the applied-for mark is an abbreviation, initialism, or acronym for specific wording; (2) the specific wording is merely descriptive of applicant’s goods and/or services; and (3) a relevant consumer viewing the abbreviation, initialism, or acronym in connection with applicant’s goods and/or services will recognize it as an abbreviation, initialism, or acronym of the merely descriptive wording that it represents. See In re Thomas Nelson, Inc., 97 USPQ2d at 1715-16 (citing In re Harco Corp., 220 USPQ 1075, 1076 (TTAB 1984) ). Thus, without additional evidence, an applicant’s proprietary use of an acronym is not sufficient to establish that the acronym is readily understood to be substantially synonymous with the descriptive wording it represents. Modern Optics, 234 F.2d 504, 506, 110 USPQ 293, 295 (finding the record unconvincing that CV is a generally recognized term for multifocal lenses and lens blanks). See also In re BetaBatt Inc., 89 USPQ2d 1152 (TTAB 2008) (DEC found to be routinely used as an abbreviation for "direct energy conversion"); Capital Project Mgmt. Inc. v. IMDISI Inc., 70 USPQ2d 1172 (TTAB 2003) (TIA found to be substantially synonymous with "time impact analysis"); In re The Yacht Exch., Inc., 214 USPQ 406 (TTAB 1982) (MLS held descriptive for multiple listing services for yachts and boats); cf. In re Harco Corp.,220 USPQ 1075 (TTAB 1984) (record insufficient to establish that CPL would be commonly understood as no more than an abbreviation of "computerized potential log").

1209.03(i)    Intended Users

A term that identifies a group to whom the applicant directs its goods or services is merely descriptive. See In re Planalytics, Inc., 70 USPQ2d 1453 (TTAB 2004) (GASBUYER merely descriptive of risk management services in the field of pricing and purchasing natural gas); Hunter Publ'g Co. v. Caulfield Publ'g Ltd., 1 USPQ2d 1996 (TTAB 1986) (SYSTEMS USER found merely descriptive of a trade journal directed toward users of large data processing systems; evidence sufficient to establish distinctiveness under §2(f)); In re Camel Mfg. Co., Inc.,222 USPQ 1031 (TTAB 1984) (MOUNTAIN CAMPER held merely descriptive of retail mail-order services in the field of outdoor equipment and apparel).

1209.03(j)    Phonetic Equivalent

A slight misspelling of a word will not turn a descriptive or generic word into a non-descriptive mark. See In re Calphalon Corp., 122 USPQ2d 1153, 1164 (TTAB 2017) (holding SHARPIN, the phonetic equivalent of "sharpen," merely descriptive of knife blocks with built-in sharpeners); In re ING Direct Bancorp, 100 USPQ2d 1681, 1690 (TTAB 2011) (holding PERSON2PERSON PAYMENT generic for direct electronic funds transfers including electronic payment services between individuals); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009) (holding URBANHOUZING, in standard character form, would be perceived by consumers as the equivalent of the descriptive term URBAN HOUSING, rather than as including the separate word ZING); In re Ginc UK Ltd., 90 USPQ2d 1472, 1475 (TTAB 2007) ("The generic meaning of 'togs' is not overcome by the misspelling of the term as TOGGS. . ."); In re Hubbard Milling Co., 6 USPQ2d 1239 (TTAB 1987) (holding MINERAL-LYX generic for mineral licks for feeding livestock); C-Thru Ruler Co. v. Needleman, 190 USPQ 93 (E.D. Pa. 1976) (holding C-THRU to be the equivalent of "see-through" and, therefore, merely descriptive of transparent rulers and drafting aids).

1209.03(k)    Laudatory Terms

Laudatory terms, those that attribute quality or excellence to goods or services, are merely descriptive under §2(e)(1). See Duopross Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1759 (Fed. Cir. 2012) (finding SNAP SIMPLY SAFER merely descriptive for "medical devices, namely, cannulae; medical, hypodermic, aspiration and injection needles; medical, hypodermic, aspiration and injection syringes"); In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001) (finding THE ULTIMATE BIKE RACK to be merely descriptive and, therefore, subject to disclaimer); In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (finding THE BEST BEER IN AMERICA so highly laudatory and descriptive as applied to beer and ale that it is incapable of acquiring distinctiveness); In re Positec Group Ltd., 108 USPQ2d 1161, 1172 (TTAB 2013) (applying the guidance set forth in In re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1052 (TTAB 2002) , the Board found SUPERJAWS to be merely descriptive for a variety of machine and hand tools including jaws); In re Phillips-Van Heusen Corp., 63 USPQ2d at 1052 (concluding that "if the word ‘super’ is combined with a word which names the goods or services, or a principal component, grade or size thereof, then the composite term is considered merely descriptive of the goods or services, but if such is not strictly true, then the composite mark is regarded as suggestive of the products or services."); In re Best Software Inc., 58 USPQ2d 1314 (TTAB 2001) (BEST and PREMIER in mark BEST! SUPPORTPLUS PREMIER merely descriptive of computer consultation and support services and thus subject to disclaimer); In re Dos Padres Inc., 49 USPQ2d 1860 (TTAB 1998) (QUESO QUESADILLA SUPREME merely descriptive of cheese); Gen. Foods Corp. v. Ralston Purina Co., 220 USPQ 990 (TTAB 1984) (ORIGINAL BLEND merely descriptive of cat food).

1209.03(l)    Telephone Numbers

If an applicant applies to register a designation that consists of a merely descriptive term with numerals in the form of an alphanumeric telephone number (e.g., 800, 888, or 900 followed by a word), the examining attorney must refuse registration under §2(e)(1). See In re Page, 51 USPQ2d 1660 (TTAB 1999) (888 PATENTS merely descriptive of patent-related legal services). The fact that a designation is in the form of a telephone number is insufficient, by itself, to render it distinctive.

If the relevant term is merely descriptive, but not generic, the mark may be registered on the Principal Register with a proper showing of acquired distinctiveness under §2(f), or on the Supplemental Register, if appropriate. See Express Mortg. Brokers Inc. v. Simpson Mortg. Inc., 31 USPQ2d 1371, 1374 (E.D. Mich. 1994) (369-CASH held merely descriptive but shown to have acquired distinctiveness as applied to mortgage brokering and mortgage-related services). Of course, the designation must also be used in the manner of a mark. See TMEP §§1202–1202.16 regarding use as a mark.

If the proposed mark is generic, the designation is unregistrable on either the Principal or the Supplemental Register. However, to support a refusal of registration on the ground that a telephone number is generic, the Court of Appeals for the Federal Circuit has held that it is not enough to show that the telephone number consists of a non-source-indicating area code and a generic term. The examining attorney must show evidence of the meaning the relevant purchasing public accords the proposed alphanumeric mark as a whole. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1811 (Fed. Cir. 2001). See also Dial-A-Mattress Franchise Corp. v. Page, 880 F.2d 675, 11 USPQ2d 1644 (2d Cir. 1989) (use of confusingly similar telephone number enjoined). But see Dranoff-Perlstein Assocs. v. Sklar, 967 F.2d 852, 857, 23 USPQ2d 1174, 1178 (3d Cir. 1992) ("[W]e decline to adopt the position espoused by the Second Circuit that telephone numbers which correlate to generic terms may be protectible as trademarks . . . . If telephone numbers that correlate to generic terms were granted protection, the first firm in a given market to obtain such a telephone number would, merely by winning the race to the telephone company, gain an unfair advantage over its competitors.") (footnotes omitted); 800 Spirits Inc. v. Liquor By Wire, Inc., 14 F. Supp. 2d 675 (D.N.J. 1998) (800 SPIRITS generic for "gift delivery service of alcohol beverages").

1209.03(m)    Domain Names

A mark comprised of an Internet domain name is registrable as a trademark or service mark only if it functions as an identifier of the source of goods or services. Portions of the uniform resource locator (URL), including the beginning, (http://www.) and the top-level Internet domain name (TLD) (e.g., .com, .org, .edu) indicate an address on the world wide web, and, therefore, generally serve no source-indicating function. See TMEP §1215 regarding marks composed of domain names.

If a TLD has three or more characters, it is known as a "generic top-level domain" or "gTLD." However "generic" in this term does not refer to genericness in the trademark sense. The gTLD typically signifies the type of entity using the domain name. For example, the gTLD ".com" signifies to the public that the user of the domain name constitutes a commercial entity, ".edu" signifies an educational institution, ".biz" signifies a business, and ".org" signifies a non-commercial organization. These types of gTLDs, which merely indicate the type of entity using the gTLD, must be treated as non-source-indicating. Further, as the number of available gTLDs is increased by the Internet Corporation for Assigned Names and Numbers ("ICANN"), or if the nature of new gTLDs changes, the examining attorney must consider any potential source-indicating function of the gTLD and introduce evidence as to the significance of the gTLD. See TMEP §§1215.02(d)(d)(iv) regarding marks comprised solely of gTLDs for domain registry operator and domain name registrar services and www.icann.org  for information about gTLDs. Cf. In re theDot Commc’ns Network LLC, 101 USPQ2d 1062, 1067 (TTAB 2011) (finding ".music conveys the commercial impression of a top-level domain name similar to .com, .net, etc.," and that consumers would understand it to be a TLD in the field of music based on the current marketing environment which included evidence of a concerted effort to obtain TLD status for .music).

Because gTLDs generally indicate the type of entity using a given domain name, and therefore serve no source-indicating function, their addition to an otherwise unregistrable mark typically cannot render it registrable. Booking.com B.V. v. USPTO, 915 F.3d 171, 185 (4th Cir. 2019), aff’d, USPTO v. Booking.com B.V., 140 S. Ct. 2298, 2304, 2020 USPQ2d 10729, at *2 (2020) ("Where the proposed mark is a composite that includes .com, we clarify that. . . .com does not itself have source-identifying significance when added to an [a second-level domain] like booking."); see also In re 1800Mattress.com IP LLC, 586 F.3d 1359, 92 USPQ2d 1682 (Fed. Cir. 2009) (MATTRESS.COM generic for "online retail store services in the field of mattresses, beds, and bedding," and applicant "presented no evidence that '.com' evoked anything but a commercial internet domain"); In re Microsoft Corp., 68 USPQ2d 1195, 1203 (TTAB 2003) ("The combination of the specific term and TLD at issue, i.e., OFFICE and .NET, does not create any double entendre, incongruity, or any other basis upon which we can find the composite any more registrable than its separate elements. The combination immediately informs prospective purchasers that the software includes ‘office suite’ type software and is from an Internet business, i.e., a ‘.net’ type business."); In re CyberFinancial.Net, Inc., 65 USPQ2d 1789, 1792 (TTAB 2002) ("Applicant seeks to register the generic term ‘bonds,’ which has no source-identifying significance in connection with applicant’s services, in combination with the top level domain indicator ".com," which also has no source-identifying significance. And combining the two terms does not create a term capable of identifying and distinguishing applicant’s services.").

However, there is no bright-line, per se rule that the addition of a gTLD to an otherwise descriptive mark will never, under any circumstances, operate to create a registrable mark. See In re Oppedahl & Larson LLP, 373 F.3d 1171, 1175, 71 USPQ2d 1370, 1374 (Fed. Cir. 2004). In rare instances, the addition of a gTLD to an otherwise unregistrable mark may render it registrable.

Cf. TMEP §1215.02(d). Additionally, the Federal Circuit has cautioned that in rare, exceptional circumstances, a term that is generic by itself may acquire some additional meaning from the addition of a non-source-indicating gTLD such as ".com" or ".net." In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005) (citing Oppedahl & Larson, 373 F.3d at 1175–76, 71 USPQ2d at 1373) (STEELBUILDING.COM for "computerized on line retail services in the field of pre-engineered metal buildings and roofing systems" held highly descriptive, but not generic).

Thus, when examining domain-name marks, it is important to evaluate the commercial impression of the mark as a whole to determine whether the gTLD may be capable of source-indicating significance, and whether the composite mark conveys to consumers a source-identifying impression apart from its individual components. Booking.com, 140 S. Ct. at 2307, 2020 USPQ2d 10729, at *7. The examining attorney must introduce evidence as to the significance of the individual components, including the gTLD, but must also consider the significance of the composite to determine whether the addition of a gTLD has resulted in a composite that is capable of distinguishing the applicant’s goods or services and indicating their source. See In re 1800Mattress.com, 586 F.3d at 1359, 92 USPQ2d at 1682 (affirming Board’s conclusion that MATTRESS.COM was generic, where the Board considered each of the constituent words "mattress" and ".com" and determined that they were both generic, then considered the mark as a whole and determined that the combination added no new meaning, relying on the prevalence of the term "mattress.com" in the website addresses of several online mattress retailers who provide the same services as the applicant); In re Hotels.com, L.P., 573 F.3d 1300, 91 USPQ2d 1532 (Fed. Cir. 2009) (HOTELS.COM found generic, where the record contained various definitions of "hotel," printouts from hotel reservation search websites showing "hotels" as the equivalent of or included within "temporary lodging," as well as evidence from applicant’s website); In re DNI Holdings Ltd., 77 USPQ2d 1435 (TTAB 2005) (SPORTSBETTING.COM held generic for providing online gaming services and information about sports and gaming, with the Board finding that "applicant's own website uses the expression ‘sports betting,’ e.g., touting itself as ‘the leader in online sports betting’ and providing tips on ‘sports betting’ as a game of skill. Furthermore, as the Trademark Examining Attorney has demonstrated in this record, other entities competing with applicant also use the term ‘sports betting’ (and ‘sportsbetting’) in generic fashion in describing their wagering and information services").

See TMEP §1215.04 and §1215.05 regarding of gTLDs combined with descriptive or generic terminology.

1209.03(n)    "America" or "American"

If "AMERICA" or "AMERICAN" appears in a phrase or slogan, the examining attorney must evaluate the entire mark to determine whether it is merely descriptive as laudatory or even incapable. In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (THE BEST BEER IN AMERICA so highly laudatory and descriptive as applied to beer and ale that it is incapable of acquiring distinctiveness); In re Carvel Corp., 223 USPQ 65 (TTAB 1984) (AMERICA’S FRESHEST ICE CREAM held incapable for ice cream); In re Wileswood, Inc., 201 USPQ 400 (TTAB 1978) (AMERICA’S BEST POPCORN! and AMERICA’S FAVORITE POPCORN! merely descriptive of unpopped popcorn). Typically, these marks primarily extol the quality or popularity of the goods or services and secondarily denote geographic origin. The examining attorney must look at each mark to determine whether it is capable, considering all relevant circumstances and case law.

See TMEP §1210.02(b)(iv) and cases cited therein regarding use of terms such as "AMERICA," "AMERICAN," and "USA" in a way that is primarily geographically descriptive under 15 U.S.C. §1052(e)(2),  primarily geographically deceptively misdescriptive under 15 U.S.C. §1052(e)(3),  or deceptive under 15 U.S.C.  §1052(a).

1209.03(o)    "National," "International," "Global," and "Worldwide"

The terms "NATIONAL" and "INTERNATIONAL" have been held to be merely descriptive of services that are nationwide or international in scope. See In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217 (Fed. Cir. 2012) (NATIONAL CHAMBER merely descriptive of nationwide online directory services featuring information regarding local and state chambers of commerce and business and regulatory data analysis services for nationally promoting the interests of businesspersons or industry); In re Institutional Investor, Inc., 229 USPQ 614 (TTAB 1986) (INTERNATIONAL BANKING INSTITUTE for organizing seminars for bank leaders of major countries held incapable); In re Billfish Int’l Corp., 229 USPQ 152 (TTAB 1986) (BILLFISH INTERNATIONAL CORPORATION merely descriptive of corporation involved with billfish on an international scale); In re Nat’l Rent A Fence, Inc., 220 USPQ 479 (TTAB 1983) (NATIONAL RENT A FENCE merely descriptive of nationwide fence rental services); BankAmerica Corp. v. Int’l Travelers Cheque Co., 205 USPQ 1233 (TTAB 1979) (INTERNATIONAL TRAVELERS CHEQUE merely descriptive of financial consulting services that are international in scope); Nat’l Fid. Life Ins. v. Nat’l Ins. Trust, 199 USPQ 691 (TTAB 1978) (NATIONAL INSURANCE TRUST merely descriptive of services of handling administrative matters in locating suitable insurance coverage for attorneys); Jefferson Bankshares Inc. v. Jefferson Sav. Bank, 14 USPQ2d 1443, 1447 (W.D. Va. 1989) (NATIONAL BANK merely descriptive of banking services); Nat’l Auto. Club v. Nat’l Auto Club, Inc., 365 F. Supp. 879, 180 USPQ 777 (S.D.N.Y. 1973) , aff’d, 502 F.2d 1162 (2d Cir. 1974) (NATIONAL merely descriptive of auto club services).

The terms "GLOBAL" and "WORLDWIDE" are also considered to be merely descriptive of services that are global or worldwide in scope.

Note: A map of the world or a depiction of a globe generally is not considered the pictorial equivalent of the terms "INTERNATIONAL," "GLOBAL," or "WORLDWIDE."

1209.03(p)    Function or Purpose

Terms that identify the function or purpose of a product or service may be merely descriptive under 15 U.S.C. §1052(e)(1)  or generic. See, e.g., In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) (SCREENWIPE held generic for an anti-static cloth used for cleaning computer and television screens); In re Box Solutions Corp., 79 USPQ2d 1953 (TTAB 2006) (SOLUTIONS merely descriptive of the purpose of applicant’s computer hardware – to resolve a problem – and must be disclaimed); In re Hunter Fan Co., 78 USPQ2d 1474 (TTAB 2006) (ERGONOMIC held merely descriptive of ceiling fans); In re Cent. Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998) (ATTIC generic for sprinklers installed primarily in attics); In re Reckitt & Colman, N. Am. Inc., 18 USPQ2d 1389 (TTAB 1991) (PERMA PRESS generic for soil and stain removers for use on permanent press products); In re Wallyball, Inc., 222 USPQ 87 (TTAB 1984) (WALLYBALL held descriptive of sports clothing and game equipment); In re Nat’l Presto Indus., Inc.,197 USPQ 188 (TTAB 1977) (BURGER held merely descriptive of cooking utensils); In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB 1977) (BREADSPRED held merely descriptive of jams and jellies).

1209.03(q)    Source or Provider of Goods or Services

Terms that identify the source or provider of a product or service may also be merely descriptive under §2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1)  or generic of the goods or services. See, e.g., In re Wm. B. Coleman Co., 93 USPQ2d 2019, 2027 (TTAB 2010) (ELECTRIC CANDLE COMPANY for lighting fixtures "incapable of identifying source for electric candles because it is a term a purchaser would understand and could use to refer to the type of company that sells electric candles, and must be left available for use by other such companies selling electric candles"); In re Major League Umpires, 60 USPQ2d 1059 (TTAB 2001) (MAJOR LEAGUE UMPIRE merely descriptive of clothing, face masks, chest protectors, and shin guards provided, designed, and used by major league umpires); In re Taylor & Francis [Publishers] Inc., 55 USPQ2d 1213 (TTAB 2000) (PSYCHOLOGY PRESS merely descriptive of books in the field of psychology); In re Paint Prods. Co., 8 USPQ2d 1863 (TTAB 1988) (PAINT PRODUCTS COMPANY incapable for paint); In re Phone Co., 218 USPQ 1027 (TTAB 1983) (THE PHONE COMPANY merely descriptive of telephones). See also In re Omaha Nat’l Bank, 819 F.2d 1117, 1119, 2 USPQ2d 1859, 1861 (Fed. Cir. 1987) (rejecting argument that descriptiveness should be limited to a quality or characteristic of the good or service itself and holding that it includes a designation descriptive of the service provider); cf. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 1301-02, 102 USPQ2d 1217, 1220 (Fed. Cir. 2012) (NATIONAL CHAMBER held descriptive of "traditional chambers of commerce activities" of "promoting the interests of businessmen and businesswomen").

1209.03(r)    Retail Store and Distributorship Services

A term that is generic for goods is descriptive of retail store services featuring those goods, when the goods are not a significant item typically sold in the type of store in question. In re Pencils Inc., 9 USPQ2d 1410 (TTAB 1988) (PENCILS held merely descriptive of office supply store services). However, where the matter sought to be registered identifies the primary articles of a store or distributorship service, the term is considered generic. See, e.g., In re Tires, Tires, Tires, Inc., 94 USPQ2d 1153, (TTAB 2009) (TIRES TIRES TIRES generic for retail tire store services); In re Lens.com, Inc., 83 USPQ2d 1444 (TTAB 2007) (LENS generic for "retail store services featuring contact eyewear products rendered via a global computer network"); In re Eddie Z’s Blinds & Drapery, Inc., 74 USPQ2d 1037 (TTAB 2005) (BLINDSANDDRAPERY.COM generic for retail store services featuring blinds, draperies, and other wall coverings, conducted via the Internet); In re Candy Bouquet Int’l, Inc., 73 USPQ2d 1883 (TTAB 2004) (CANDY BOUQUET generic for "retail, mail, and computer order services in the field of gift packages of candy"); In re A La Vieille Russie, Inc., 60 USPQ2d 1895 (TTAB 2001) (RUSSIANART generic for dealership services in the field of fine art, antiques, furniture, and jewelry); In re Log Cabin Homes Ltd., 52 USPQ2d 1206 (TTAB 1999) (LOG CABIN HOMES generic for retail outlets selling kits for building log homes); In re Bonni Keller Collections Ltd., 6 USPQ2d 1224 (TTAB 1987) (LA LINGERIE generic for retail stores specializing in the sale of lingerie); In re Wickerware, Inc., 227 USPQ 970 (TTAB 1985) (WICKERWARE generic for mail order and distributorship services in the field of products made of wicker); In re Half Price Books, Records, Magazines, Inc., 225 USPQ 219 (TTAB 1984) (HALF PRICE BOOKS RECORDS MAGAZINES generic for retail book and record store services).

The examining attorney, therefore, must "analyze the term in relation to the services recited in the application, the context in which it is used and the possible significance it would have to the recipient of the services." Pencils, 9 USPQ2d at 1411.

1209.03(s)    Slogans

Slogans that are considered to be merely informational in nature, or to be common laudatory phrases or statements that would ordinarily be used in business or in the particular trade or industry, are not registrable. See In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (THE BEST BEER IN AMERICA so highly laudatory and descriptive as applied to beer and ale that it is incapable of acquiring distinctiveness). See also TMEP §1202.04 and cases cited therein.

1209.03(t)    Repetition of Descriptive or Generic Term

The mere repetition of a merely descriptive term does not negate the mere descriptiveness of the mark as a whole, unless the combination is such as to create a new and different commercial impression from that which is engendered by the separate components. See In re Litehouse, Inc., 82 USPQ2d 1471 (TTAB 2007) (CAESAR! CAESAR! merely descriptive of salad dressing); In re Disc Jockeys, Inc., 23 USPQ2d 1715 (TTAB 1992) (DJDJ merely descriptive of disc jockey services).

Likewise, a generic term may not be rendered non-generic simply by repeating the term. In finding TIRES TIRES TIRES generic for retail tire store services, the Board held that "[t] here is no valid reason to require an examining attorney to demonstrate that a designation composed solely of a repeating word has been used by others, when the examining attorney has demonstrated that the repeated term is generic and that the repetition does not result in a designation with a different meaning." In re Tires, Tires, Tires, Inc., 94 USPQ2d 1153 (TTAB 2009) .

1209.03(u)    Punctuation

The use of a common punctuation mark is not sufficient to negate the mere descriptiveness of a term. See Duopross Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757-58 (Fed. Cir. 2012) (finding SNAP!, with a broken exclamation point, merely descriptive of medical syringes using snap-off plungers); In re Litehouse, Inc., 82 USPQ2d 1471 (TTAB 2007) (CAESAR! CAESAR! merely descriptive of salad dressing); In re Vanilla Gorilla, L.P., 80 USPQ2d 1637 (TTAB 2006) (finding that the presence of a hyphen in the mark "3-0’s" does not negate mere descriptiveness of mark for automobile wheel rims); In re Promo Ink, 78 USPQ2d 1301, 1305 (TTAB 2006) (finding that the exclamation mark in the mark PARTY AT A DISCOUNT! "simply emphasize[d] the descriptive nature of the mark" for advertising services in the field of private party venues); In re S.D. Fabrics, Inc., 223 USPQ 54 (TTAB 1984) , reopening denied 223 USPQ 56 (1984) (finding that the presence of a slash in the mark DESIGNERS/FABRIC does not negate mere descriptiveness of mark for retail store services in field of fabrics); In re Brock Residence Inns, Inc., 222 USPQ 920 (TTAB 1984) (FOR A DAY, A WEEK, A MONTH OR MORE! merely descriptive of hotel services); In re Wileswood, Inc., 201 USPQ 400 (TTAB 1978) (AMERICA’S BEST POPCORN! and AMERICA’S FAVORITE POPCORN! merely descriptive of unpopped popcorn); In re Samuel Moore & Co., 195 USPQ 237 (TTAB 1977) (SUPERHOSE! merely descriptive of hydraulic hose made of synthetic resinous material).

1209.03(v)    Key Aspect or Subcategory of Goods or Services

A term may be generic for a genus of goods or services if the relevant public understands the term to refer to a key aspect of that genus, such as a key product that characterizes a particular genus of retail services or identifies a category of goods or services within the genus. See Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 1368, 127 USPQ2d 1041, 1047 (Fed. Cir. 2018) (directing the Board to consider whether the relevant public understands the term ZERO to refer to a key aspect of at least a sub-group or type of the claimed genus of beverages, which encompassed zero-calorie beverages as a sub-group); In re Cordua Rests., Inc., 823 F.3d 594, 603-04, 118 USPQ2d 1632, 1637-38 (Fed. Cir. 2016) (finding substantial evidence supported the Board’s conclusion that CHURRASCOS was generic because it referred to a key aspect of restaurant services featuring grilled meat); In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 1361–63, 92 USPQ2d 1682, 1683-84 (Fed. Cir. 2009_ (agreeing with the Board’s determination that "mattress" was generic as applied to online retail mattress store services because the term identified a key aspect of the services); In re Hotels.com, L.P., 573 F.3d 1300, 1304, 91 USPQ2d 1532, 1535 (Fed. Cir. 2009) (agreeing with the Board’s determination that, when applied to information services and reservation services dealing with hotels, the term "hotels" was generic because it named a key aspect of the services); In re Twenty-Two Desserts, LLC, 2019 USPQ2d 292782, at *5 (TTAB 2019) (holding MALAI, which refers to an Indian dairy ingredient, generic for applicant’s frozen desserts because relevant consumers would understand it to refer to a key aspect or subcategory of the genus of the goods); In re Emergency Alert Sols. Grp., LLC, 122 USPQ2d 1088, 1091-93 (TTAB 2017) (holding LOCKDOWN ALARM generic because relevant customers would readily understand it to refer to a type of safety, security, and crisis preparedness training, noting that "[t]he subject matter of any training [was] not an insignificant ‘facet’ of the training," but "[was] quite literally the focus of the training"); In re Cent. Sprinkler Co., 49 USPQ2d 1194, 1199 (TTAB 1998) (finding ATTIC generic for automatic sprinklers for fire protection because the term "directly names the most important or central aspect or purpose of applicant's goods" and would be understood by the relevant public as referring to a category of sprinklers); In re Reckitt & Colman, N. Am. Inc., 18 USPQ2d 1389, 1391 (TTAB 1991) (finding PERMA PRESS generic for soil and stain removers for permanent press fabrics because "the term ‘perma press’ may be considered a term identifying a category of goods at issue—perma press products (including perma press soil and stain removers)"); see also In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 1559-60, 227 USPQ 961, 963-64 (Fed. Cir. 1985) (affirming the Board’s holding that BUNDT is generic for ring cake mix); Shammas v. Rea, 978 F. Supp. 2d 599, 609 (E.D. Va. 2013) (noting that a term "may be generic in connection with [goods] if the relevant public uses the term to refer to [the goods] generally, or if the term does nothing more than identify a distinctive characteristic of [the goods]").

1209.03(w)    Stylization

Adding stylization to descriptive or generic wording does not render the resulting mark registrable on the Principal Register unless the stylization creates a commercial impression separate and apart from the impression made by the wording itself, or the applicant can otherwise show by evidence that the particular stylized display has acquired distinctiveness. See In re Cordua Rests., Inc., 823 F.3d 594, 606, 118 USPQ2d 1632, 1639-1640 (Fed. Cir. 2016); In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 1561, 227 USPQ 961, 964 (Fed. Cir. 1985) .

If descriptive or generic wording is in fact presented in a distinctive display or design, the mark as a whole may be registered with a disclaimer of the unregistrable component. See In re Sadoru Grp., Ltd., 105 USPQ2d 1484, 1486-88 (TTAB 2012) .

If generic wording is stylized to create a display or design that is not inherently distinctive, but is nonetheless capable of functioning as a mark, the mark may be registered on the Supplemental Register with a disclaimer of the generic wording. See In re Wella Corp., 565 F.2d 143, 144, 196 USPQ 7, 8 (C.C.P.A. 1977); In re Sadoru Grp., Ltd., 105 USPQ2d at 1486-88 ; In re Carolyn's Candies, Inc., 206 USPQ 356, 360-61 (TTAB 1980) ; TMEP §1213.03(b).

1209.03(x)    Historical Figure Names and Fictional Character Names

The determination of whether a mark comprising the name of an historical figure or a fictional character serves as a source identifier or is merely descriptive turns on whether consumers link the mark to a particular commercial entity or whether others have a competitive need to use the name to describe their products. See In re United Trademark Holdings, Inc., 122 USPQ2d 1796, 1799-1800 (TTAB 2017); In re Carlson Dolls Co., 31 USPQ2d 1319, 1320 (TTAB 1994). Thus, the case law has drawn a distinction between situations where the applicant owns intellectual property rights in the work(s) from which the character arose and those where the character is a historical figure or is in the public domain. In re United Trademark Holdings, 122 USPQ2d at 1799.

The Board has held that consumers reasonably expect goods and services bearing the name or image of a fictional character that is a proprietary creation of a business entity to emanate from, or be produced or marketed under license from, the entity that created the character and owns the right to profit from commercialization of it. In re Carlson Dolls, 31 USPQ2d at 1320.

However, a mark that identifies an historical figure was found to be merely descriptive because consumers do not necessarily link such a name or image to particular commercial entities as they do a fictional character. Id. (finding "[t]he likely reaction of ordinary consumers presented with ‘MARTHA WASHINGTON’ on tags attached to ‘historical dolls’ made to look like women in colonial clothing would be that the name indicates not the commercial source of the dolls, but rather is used as a description of the historical figure the dolls are supposed to represent").

Likewise, prospective purchasers expect goods, such as dolls, labeled with the name of a fictional public-domain character to represent the character. In re United Trademark Holdings, 122 USPQ2d at 1799. Thus, a mark that identifies a fictional public-domain character used on goods such as dolls is merely descriptive because it describes the purpose or function of the goods. Id. (concluding that "dolls described as or named LITTLE MERMAID refer to the fictional public domain character, and other doll makers interested in marketing a doll that would depict the character have a competitive need to use that name to describe their products").

1209.03(y)    Marks Including Geographic Wording that Does Not Indicate Geographic Origin of Cheeses and Processed Meats

Some applications for marks used in connection with cheeses and processed meats may include geographic wording ("geo-significant wording") that does not indicate geographic origin, but otherwise may be a generic designation for such goods. See TMEP §1210.02(b)(iii). Two federal agencies maintain lists of particular cheeses or processed meats for which the producers of such goods must satisfy certain requirements or standards in order to label or market them with the listed common name of the product. Thus, these names cannot be single-source indicators, and inclusion on such lists is strong evidence that the otherwise geo-significant wording is generic for the goods.

The U.S. Food and Drug Administration (FDA), responsible for protecting the public health by ensuring the safety of the nation’s food supply, establishes mandatory requirements, known as "standards of identity," for marketing cheese products under specific common names. These standards of identity relate solely to the production methods and ingredients necessary to label a product with the common name given to that standard. For example, part 133 of title 21, chapter 1, subchapter B (Food for Human Consumption) includes standards of identity for the following types of cheeses: cheddar, edam, romano, and provolone.

The U.S. Department of Agriculture (USDA), also responsible for ensuring food safety, establishes standards of identity for labeling of processed meat products under specific common names. For example, USDA regulations part 319 include standards of identity for the following types of processed meat: frankfurter, wiener, bologna, and braunschweiger.

In addition to these two federal agencies, an international body, Codex Alimentarius (Codex), operates within the U.N. Food and Agriculture Organization and the World Health Organization to establish international food standards for, among other things, cheese. Codex standards of identity for cheese include: brie, camembert, edam, gouda, and havarti.

Because standards of identity relate solely to production methods and ingredients, there is no requirement that the product come from a specific place, even though many of these terms identify a cheese or processed meat that once came only from the place referred to in the name (e.g., CHEDDAR originated in Cheddar, England; brie originated in Brie, France; and bologna originated in Bologna, Italy). Therefore, such geo-significant terms differ from certification and collective marks of regional origin, which are registrable under §4 of the Trademark Act, 15 U.S.C. §1054. Certification and collective marks of regional origin refer to the place the products come from and the quality standards they meet. Standards of identity are food-labeling requirements intended to prevent consumers from being misled as to what product they are buying.

In addition to searching for evidence using traditional sources, when a mark includes geo-significant wording relating to a particular cheese or processed meat, the examining attorney must also conduct research to determine if the wording is a standard of identity for the goods specified in the application, using sources of evidence that are appropriate for the particular goods specified in the application (e.g., the FDA, USDA, and Codex databases). The examining attorney may submit a request to the Trademark Law Library to undertake such research or may personally conduct the research. Evidence that the particular term is a standard of identity must be included with the Office action. If available, the examining attorney should include additional evidence that shows how the proposed mark would be perceived in the marketplace. Note that if the name of a product appears only on the Codex list, further evidence, such as a dictionary definition or internet evidence of the product’s availability to U.S. consumers, must be included.

When warranted by the evidence, the examining attorney must refuse registration or require a disclaimer under §2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), in accordance with current practice. TMEP §§1209.02, 1209.02(a), 1213.03(a). Because inclusion on the FDA or USDA list is strong evidence that the term is generic for the particular cheese or processed meat, when the marks include or consist of such terms, the examining attorney should also advise the applicant that the relevant wording appears to be the generic term for the goods. See TMEP §1209.02(a).

When there is evidence that the accuracy of a product’s compliance with standards of identity is material to purchasing decisions, a mark including or consisting of such terms used on non-compliant cheeses or processed meats would be deceptive under § 2(a) of the Trademark Act, 15 U.S.C. §1052(a). Therefore, the examining attorney must require that the applicant amend the identification of goods to include the term. See TMEP §§1203.02(a), (d), (e)(i)-(ii), (f)(i).

If the name of a standard of identity comprises, in whole or in part, a mark for services that relate to cheese or processed meat, the examining attorney must consult the Office of the Deputy Commissioner for Trademark Examination Policy before taking any action on the application.

1209.04    Deceptively Misdescriptive Marks

Two-part test. Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), also prohibits registration of designations that are deceptively misdescriptive of the goods or services to which they are applied. A mark is considered deceptively misdescriptive if (1) the mark misdescribes the goods or services and (2) consumers would be likely to believe the misrepresentation. In re Dolce Vita Footwear, Inc., 2021 USPQ2d 478, at *11 (TTAB 2021) (citing In re Budge Mfg. Co., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988); In re White Jasmine LLC, 106 USPQ2d 1385, 1394 (TTAB 2013)).

The examining attorney must first determine whether a term is misdescriptive as applied to the goods or services. A term that conveys an immediate idea of an ingredient, quality, characteristic, function, feature, purpose, or use of the goods or services with which it is used is merely descriptive. TMEP §1209.01(b). If a term immediately conveys such an idea but the idea is false, although plausible, then the term is deceptively misdescriptive and is unregistrable under §2(e)(1). See In re Dolce Vita Footwear, Inc., 2021 USPQ2d 478, at *11 (quoting In re Hinton, 116 USPQ2d 1051, 1052 (TTAB 2015); In re Phillips-Van Heusen, 63 USPQ2d 1047, 1048 (TTAB 2005)); In re AOP LLC, 107 USPQ2d 1644 (TTAB 2013) (AOP deceptive, deceptively misdescriptive, or, alternatively, merely descriptive for wine, after the applicant failed to fully respond to the examining attorney’s inquiries regarding the origin and certification of applicant’s goods); In re Woodward & Lothrop Inc., 4 USPQ2d 1412 (TTAB 1987) (CAMEO deceptively misdescriptive of jewelry); In re Ox-Yoke Originals, Inc., 222 USPQ 352 (TTAB 1983) (G.I. deceptively misdescriptive of gun cleaning patches, rods, brushes, solvents, and oils); see also In re Hinton, 116 USPQ2d 1051, 1055 (TTAB 2015) (finding that the misdescription presented by the mark THCTEA is plausible and would be highly relevant to a consumer’s purchasing decision); In re Shniberg, 79 USPQ2d 1309, 1311 (TTAB 2006) ("[T]he misdescription must concern a feature that would be relevant to a purchasing decision.").

The examining attorney must make of record evidence demonstrating why the mark is misdescriptive, regardless of whether the wording in the mark appears in the identification of goods or services. Specifically, the record must show the meaning of the wording at issue and that applicant’s goods or services lack the feature or characteristic. Examples of such evidence include dictionary definitions, LexisNexis® articles, Internet websites (see TMEP §710.01(b) regarding Internet evidence requirements), advertising material, product information sheets, hang tags, point-of-purchase displays, and trade journals. An applicant’s admission in the application record regarding its goods or services may also satisfy the first prong of the test.

Thus, restricting the identification of goods or services to exclude the feature or characteristic referenced in the mark will generally not avoid or overcome the refusal. See In re Dolce Vita Footwear, Inc., 2021 USPQ2d 478, at *13. It cannot be assumed that consumers of the applicant’s goods or services will be aware that the identification is so restricted, and the restriction is not controlling on public perception. Id. (citing In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1187-88 (TTAB 2018)).

With respect to the second part of the test, the Trademark Act does not prohibit the registration of misdescriptive terms unless they are deceptively misdescriptive, that is, unless reasonably prudent consumers of the goods or services are likely to believe the misrepresentation. See In re Dolce Vita Footwear, Inc., 2021 USPQ2d 478, at *11 (citing In re Hinton, 116 USPQ2d at 1052); In re Quady Winery Inc., 221 USPQ 1213, 1213-14 (TTAB 1984) (finding ESSENSIA deceptively misdescriptive for wines not containing essensia, a rare, commercially unavailable type of Hungarian Tokay wine); Binney & Smith Inc. v. Magic Marker Indus., Inc., 222 USPQ 1003, 1011 (TTAB 1984) (holding LIQUID CRAYON neither the common descriptive name, nor merely descriptive, nor deceptively misdescriptive of coloring kits or markers).

To prove that the description conveyed by the mark is believable, the examining attorney must provide evidence demonstrating that consumers regularly encounter the same or similar goods or services with the features or characteristics in the mark. For example, to support the believability element as to the mark LOVEE LAMB for seat covers that were not made of lambskin, the examining attorney provided evidence that seat covers can be and are made from lambskin. See In re Budge Mfg. Co., 857 F.2d at 775, 8 USPQ2d at 1260. In another case, excerpts from a LexisNexis® search for the phrases "organic clothing," "organic fabric," "organically grown cotton," and "organic cotton" were used to prove that consumers were familiar with clothing and textiles from organically grown plants or plants free of chemical processing or treatment. See In re Organik Techs., Inc., 41 USPQ2d 1690, 1693–94 (TTAB 1997) . Applicant’s own hang tags, labels, advertising, and product information may also provide evidence of the believability of the misdescription. See In re Shapely, Inc., 231 USPQ 72, 75 (TTAB 1986) (concluding that statements on hangtags can be used to show the materiality of the mispresentation in the purchasing decision); Evans Prods. Co. v. Boise Cascade Corp., 218 USPQ 160, 164–65 (TTAB 1983) (finding that applicant’s advertising materials and affidavit indicated that it did attempt to "adopt a mark [CEDAR RIDGE] which conveyed the impression of authentic cedar"). Webpage evidence showing third-party usage of the proposed mark used in a descriptive manner with the same or similar goods or services has also been accepted as evidence of the believability of the misrepresentation. See In re Dolce Vita Footwear, Inc., 2021 USPQ2d 478, at *13.

The examining attorney should consider and make of record, or require the applicant to make of record under 37 C.F.R §2.61(b)  (see TMEP §814 regarding requests for information), all available information that shows the presence or absence, and the believability, of a misrepresentation. See Glendale Int’l Corp. v. USPTO, 374 F. Supp. 2d 479, 486, 75 USPQ2d 1139, 1144 (E.D. Va. 2005) (holding TITANIUM deceptively misdescriptive of recreational vehicles that did not contain titanium, where the examining attorney made of record articles which showed that titanium is a lightweight metal, and discussed the use or potential use of titanium in the automotive industry).

The mere fact that the true nature of the goods or services is revealed by other matter on the labels, advertisements, or other materials to which the mark is applied does not preclude a determination that a mark is deceptively misdescriptive. See R. Neumann & Co. v. Overseas Shipments, Inc., 326 F.2d 786, 790, 140 USPQ 276, 279 (C.C.P.A. 1964) (holding DURA-HYDE deceptive and deceptively misdescriptive of plastic material of leather-like appearance made into shoes regardless of the presence of tags stating that the material "outwears leather"); In re Shniberg, 79 USPQ2d 1309, 1313 (TTAB 2006) (holding SEPTEMBER 11, 2001 deceptively misdescriptive of books and entertainment services that did not in any way cover the terrorist attacks of September 11, 2001; the fact that the nature of the misdescription would become known after consumers studied applicant’s books and entertainment services did not prevent the mark from being deceptively misdescriptive); see also In re Dolce Vita Footwear, Inc., 2021 USPQ2d 478, at *15-16 (finding "[p]re-sale discussion and promotion leading to deception is likely in this case" even though visual inspection of the goods by consumers would show they did not include the particular feature; however, applicants goods could be promoted "by word-of-mouth or on social media or in print . . . without an image of the goods"); In re ALP of S. Beach Inc., 79 USPQ2d 1009, 1014-15 (TTAB 2006) (holding that pre-sale deception may occur without a sale taking place based on the deception); Nw. Golf Co. v. Acushnet Co., 226 USPQ 240 (TTAB 1985) (finding deception unlikely given alternative meanings of the mark and that even cursory curiosity on the part of consumers would avoid any potential deception).

Response options. Marks that have been refused registration pursuant to §2(e)(1) on the ground of deceptive misdescriptiveness may be registrable under §2(f) upon a showing of acquired distinctiveness, or on the Supplemental Register if appropriate. 15 U.S.C. §§1052(f), 1091. Similarly, marks that contain registrable matter in addition to deceptively misdescriptive components can be registered with a disclaimer of the deceptively misdescriptive matter, when appropriate. See TMEP §1213.03(a).

Section 2(a) consideration. If the misdescription represented by the mark is material to the decision to purchase the goods or use the services, then the mark must be refused registration under §2(a) of the Trademark Act, 15 U.S.C §1052(a). See TMEP §1203.02 regarding deceptive marks, §1203.02(c) regarding the distinction between deceptive marks and deceptively misdescriptive marks, and §1203.02(d)-(d)(ii) regarding determining materiality. Marks that are deceptive under §2(a) are not registrable on either the Principal Register or the Supplemental Register under any circumstances. TMEP §1203.02.

Case references. Some designations have been held deceptively misdescriptive under §2(e)(1). See, e.g., In re Dolce Vita Footwear, Inc., 2021 USPQ2d 478, at *1, *16-17 (holding CLEAR deceptively misdescriptive of footwear and clothing items, excluding transparent goods; third-party evidence showed "clear" used to describe footwear and clothing that was transparent or clear or contained transparent or clear elements); In re Hinton, 116 USPQ2d at 1055 (holding THCTEA deceptively misdecriptive for tea that does not contain THC; evidence showed that such teas could be offered through medical marijuana dispensiaries or locations where marijuana products are legally sold under state law); In re Woodward & Lothrop Inc., 4 USPQ2d 1412 (TTAB 1987) (holding CAMEO deceptively misdescriptive of jewelry "which has no cameos or cameo-like elements"; evidence showed that "cameo" names a type of jewelry); In re Ox-Yoke Originals, Inc., 222 USPQ 352 (TTAB 1983) (holding G.I., a well-known abbreviation for "government issue," deceptively misdescriptive of gun cleaning patches, rods, brushes, solvents, and oils that are not government issued, although "[t]he [U.S.] government does in fact issue gun cleaning products to its armed forces).