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.