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 Products, 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. 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), "[t]he name of a thing is in fact the ultimate in descriptiveness."

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 15 U.S.C. §1052(f).  See TMEP §1209.01(b) regarding merely descriptive marks, and TMEP §§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. 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. 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 The 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, 364–5 (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/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); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979) (COASTER-CARDS held merely descriptive of a coaster suitable for direct mailing). 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 Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Bayer Aktiengesellschaft, 488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007).

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 In re Walker Mfg. Co., 359 F. 2d 474, 149 USPQ 528 (CCPA 1966); ("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.’ …") (quoting Board decision with approval); 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") (citation omitted); Clairol, Inc. v. Roux Distrib. Co., 280 F.2d 863, 126 USPQ 397, 398 (CCPA 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 (CCPA 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; In re Bayer, 488 F.3d at 964, 82 USPQ2d at 1831. This requires consideration of the context in which the mark is used or intended to be used in connection with those goods/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; In re Bayer, 488 F.3d at 964, 82 USPQ2d at 1831; In re Nett Designs, Inc., 236 F.3d 1339, 1342 (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 811, 200 USPQ 215 (C.C.P.A. 1978); In re Datapipe, Inc., 111 USPQ2d 1330 (TTAB 2014) . 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 1363, 123 USPQ2d 1707, 1710 (Fed. Cir. 2017); In re Nett Designs, Inc., 236 F.3d at 1342; In re Abcor Dev. Corp., 588 F.2d 811 at 814.

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. Similarly, the mark need not describe all the goods and services identified, as long as it merely describes one of them. See In re Stereotaxis Inc., 429 F.3d 1039, 1041, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005) ("[T]he Trademark Office may require a disclaimer as a condition of registration if the mark is merely descriptive for at least one of the products or services involved."); 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," citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); 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 Amer. 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 of the U.S., 675 F.3d 1297, 1301-02, 102 USPQ2d 1217, 1220 (Fed. Cir. 2012) (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(u) regarding factors that often arise in determining whether a mark is merely descriptive or generic.

See also TMEP §§1213–1213.11 concerning disclaimer of merely descriptive matter within a mark.

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 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) (citing Dep’t of Justice, FBI v. Calspan Corp., 578 F.2d 295, 299, 198 USPQ 147, 149 (C.C.P.A .1978); Maremont Corp. v. Air Lift Co., 463 F.2d 1114, 1118, 174 USPQ 395, 398 (C.C.P.A. 1972); In re Automatic Radio Mfg. Co., 404 F.2d 1391, 1394-95, 160 USPQ 233, 235-36 (C.C.P.A. 1969)); In re ActiveVideo Networks, Inc., 111 USPQ2d 1581, 1600 (TTAB 2014)) (citing 15 U.S.C §1064(3); Bellsouth Corp. v. DataNational Corp., 60 F.3d 1565, 1570, 35 USPQ2d 1554, 1557-58 (Fed. Cir. 1995)) (construing the language in 15 U.S.C §1064(3)  regarding when a term is generic in cancellation proceedings to apply prior to registration). 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?

H. Marvin Ginn Corp. v. Int'l Ass’n of Fire Chiefs, Inc., 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, 92 USPQ2d 1682, 1685 (Fed. Cir. 2009).

The genus of the goods and/or services may be defined by an applicant’s identification of goods and/or services. See In re Cordua Rests., Inc., 823 F.3d 594, 602, 118 USPQ2d 1632, 1636 (Fed. Cir. 2016) (characterizing as the "correct approach" the Board’s conclusion that the genus of the services at issue was adequately defined by the wording "restaurant services" in applicant’s identification of services). The relevant public for a genericness determination refers to the purchasing or consuming public for the identified goods and/or services. Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341, 1351 (TTAB 2013) (citing Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 641, 19 USPQ2d 1551, 1553 Fed. Cir. 1991)).

The examining attorney has the burden of proving that a term is generic by clear evidence. In re Nordic Naturals, Inc., 755 F.3d 1340, 1344, 111 USPQ2d 1495, 1498 (Fed. Cir. 2014) (finding the evidence reflected use of CHILDREN’S DHA in a generic manner rather than as third-party references recognizing applicant as the source of the goods); In re Merrill Lynch, Pierce, Fenner & Smith Inc., 828 F.2d 1567, 1571, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987) (finding that the NEXIS evidence relied upon to show CASH MANAGEMENT ACCOUNT was generic for brokerage services did not satisy the USPTO’s burden to prove genericness by clear evidence because the evidence reflected a "mixture of usages," with some publications showing third-party recognition of the applicant as the source of the services and some showing generic use). Evidence of the public’s understanding of a term can be obtained from any competent source, including dictionary definitions, research databases, newspapers, and other publications. See In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016) (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/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.").

There can be more than one generic term for a particular genus of goods or services. Any term that the relevant public understands to refer to the genus is generic. In re 1800Mattress.com IP LLC, 586 F.3d 1359, 92 USPQ2d 1682, 1685 (Fed. Cir. 2009); see also In re Meridian Rack & Pinion, 114 USPQ2d 1462 (TTAB 2015) (holding BUYAUTOPARTS.COM generic for on-line retail store services featuring auto parts after finding that the relevant members of the public use and understand the words "buy auto parts" as referring to the purchase and sale transactions that are the central focus of retail sales of auto parts and that third-party retailers advertise to their customers to "Buy Auto Parts Online").

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 960, 968, 114 USPQ2d 1827, 1832 (Fed. Cir. 2015) (citing In re Am. Fertility Soc’y, 188 F.3d 1341, 1348-49, 51 USPQ2d 1832, 1837 (Fed. Cir. 1999)). 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." 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 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); see also In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1340, 116 USPQ2d 1262, 1268 (Fed. Cir. 2015) (Newman, J., concurring) ("It was not reasonably argued that ‘fish fry products’ as a phrase would be understood by the consuming public to have a meaning different from the meaning imparted by the separate words").

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 Am. Fertility Soc’y, 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 Coleman, however, the Board stated that Am. Fertility Soc'y 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 joining the individual terms creates a composite that is itself generic. In very rare instances, the addition of a top-level domain indicator ("TLD") to an otherwise generic term may operate to create a distinctive mark. In In re Steelbuilding.com, 415 F.3d 1293, 1299, 75 USPQ2d 1420, 1423 (Fed. Cir. 2005), the Federal Circuit reversed the Board’s determination that STEELBUILDING.COM is generic for "computerized on-line retail services in the field of pre-engineered metal buildings and roofing systems." The Court criticized the Board for only considering STEELBUILDING and .COM separately, stating that "[i]n this unusual case, the addition of the TLD indicator expanded the meaning of the mark to include goods and services beyond the mere sale of steel buildings. 415 F.3d at 1299, 75 USPQ2d at 1423. Specifically, the TLD expanded the mark to include internet services that include ‘building’ or designing steel structures on the website and then calculating an appropriate price before ordering the unique structure." 415 F.3d at 1299, 75 USPQ2d at 1423.

The Court also criticized the Board for relying only on evidence that the separate terms "steel building" or "steel buildings" are generic, where the terms were joined together in the subject mark:

The record does not contain any examination of dictionary definitions or other sources that might have indicated that joining the separate words "steel" and "building" would create a word that, in context, would be generic. The Board merely cited evidence that showed that when customers or competitors talked about a steel building, they used the phrase "steel building." That evidence shows that "steel building" is generic, but does not address directly the composite term STEELBUILDING.

415 F.3d at 1298–99, 75 USPQ2d at 1423.

Thus, to establish that a proposed mark is generic, the examining attorney must show that the relevant public would understand the mark as a whole to have generic significance. See 1800Mattress.com, 586 F.3d at 1363, 92 USPQ2d at 1684 (affirming Board’s conclusion that MATTRESS.COM was generic for "online retail store services in the field of mattresses, beds, and bedding," 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 is 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," based on 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 "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; providing a website on and through a global computer network featuring information in the fields of gaming, athletic competition and entertainment . . .," where the record included multiple examples of use of the terms "sports betting" as well as the joined terms "sportsbetting" by both applicant and its competitors to refer to both sports wagering and providing information about sports wagering, and there was no indication of a realistic alternative connotation of the compound term. 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 Industrial Relations Counselors, 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 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 . . . 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 and 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 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); 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 The Paint Prods. Co., 8 USPQ2d 1863 (TTAB 1988) (PAINT PRODUCTS CO. for "interior and exterior paints and coatings, namely, alkyd, oil, latex, urethane and epoxy based paints and coatings" held so highly descriptive as to be incapable of becoming distinctive); 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)).