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 Zuma Array Ltd., 2022 USPQ2d 736, at *16-17 (TTAB 2022); In re Fallon, 2020 USPQ2d 11249, at *11 (TTAB 2020); 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 of "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 generic as applied to premoistened antistatic cloths for cleaning computer and television screens); In re Zuma Array Ltd., 2022 USPQ2d 736, at *7, *16 (TTAB 2022) (SMART BEZEL merely descriptive of electronic sensor modules for controlling and integrating home automation systems); 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 of a variety of machine and hand tools including jaws); In re Petroglyph Games, Inc., 91 USPQ2d 1332 (TTAB 2009) (BATTLECAM merely descriptive of 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 of "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 – 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 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 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) (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 as applied to 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.

Example: Latin is generally considered a dead language. However, if evidence exists that the relevant purchasing public still uses a Latin term (e.g., if the term appears in current dictionaries or news articles), then that Latin term is not considered dead. The same analysis should be applied to other uncommon languages.

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.

Example: The addition of the TLD ".PETER" to CLOTHES to form the mark CLOTHES.PETER would create a registrable mark.

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 generic for an anti-static cloth used for cleaning computer and television screens); In re Zuma Array Ltd., 2022 USPQ2d 736, at *1-2, *15-17 (TTAB 2022) (SMART BEZEL merely descriptive of electronic sensor modules for controlling and integrating home automation systems in which the sensor modules were to be used on bezels); 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 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 descriptive of sports clothing and game equipment); In re Nat’l Presto Indus., Inc.,197 USPQ 188 (TTAB 1977) (BURGER merely descriptive of cooking utensils); In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB 1977) (BREADSPRED merely descriptive of jams and jellies).

1209.03(q)    Provider of Goods or Services

Terms that describe the provider of a product or service may also be merely descriptive under Trademark Act §2(e)(1), 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.