As stated in section 1209.01(b) Merely Descriptive Marks in the Trademark Manual of Examination Procedure:

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 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).

The determination of whether or not a mark is merely descriptive must be made in relation to the goods or services for which registration is sought, not in the abstract. 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 Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985). 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.")

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 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)); In re Gyulay, 820 F.2d at 1218, 3 USPQ2d at 1010; In re Cox Enterprises Inc., 82 USPQ2d 1040 (TTAB 2007).

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).

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  • A term is deemed to be merely descriptive of goods or services, within the meaning of Trademark Act Section 2(e)(1), if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services.
    • In re Fitch IBCA, Inc., Serial No. 75/628,232, (TTAB 2002).
      • The test for determining whether a mark is merely descriptive is whether it immediately conveys information concerning a quality, characteristic, function, ingredient, attribute or feature of the product or service in connection with which it is used, or intended to be used. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978). See also, In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re Bright- Crest, Ltd., 204 USPQ 591 (TTAB 1979).
    • Callaway Vineyard & Winery v. Endsley Capital Group, Inc., Opposition No. 121,583, (TTAB 2002).
      • A mark is merely descriptive under Trademark Act § 2(e)(1), 15 U.S.C. § 1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods and/or services. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); and In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).
    • In re Alpha Analytics Investment Group, LLC, Serial No. 75/829,220, (TTAB 2002).
      • A term is deemed to be merely descriptive of goods or services, within the meaning of Trademark Act Section 2(e)(1), if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services. See, e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978).
    • In re IP Carrier Consulting Group, Serial No. 78542726, 78542734, (TTAB 2007)
      • A term is merely descriptive if it immediately conveys knowledge of a significant quality, characteristic, function, feature or purpose of the services with which it is used. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
    • In re Finisar Corporation, Serial No. 76300876, (TTAB 2006).
      • "A mark is merely descriptive if it ‘consist[s] merely of words descriptive of the qualities, ingredients or characteristics of' the goods or services related to the mark." In re Oppendahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004), quoting, Estate of P.D. Beckwith, Inc. v. Commissioner, 252 U.S. 538, 543 (1920). See also In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003).
    • In re Tower Tech, Inc., Serial No. 75/709,532, (TTAB 2002).
      • The test for determining whether a term or phrase is merely descriptive under Section 2(e)(1) of the Trademark Act is whether it immediately conveys information concerning a quality, characteristic, function, ingredient, attribute or feature of the product or service in connection with which it is used or is intended to be used. See In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978); In re Venture Associates, 226 USPQ 285 (TTAB 1985); and In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).
    • In re Jose Remacle, Serial No. 75/932,290, (TTAB 2002).
      • The test for determining whether a mark is merely descriptive is whether it immediately conveys information concerning a quality, characteristic, function, ingredient, attribute or feature of the product or service in connection with which it is used, or intended to be used. In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).
    • In re Hunter Fan Company, Serial No. 78195616, (TTAB 2006).
      • The test for determining whether a mark is merely descriptive is whether it immediately conveys information concerning a significant quality, characteristic, function, ingredient, attribute or feature of the product or service in connection with which it is used, or intended to be used. In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re Bright Crest, Ltd., 204 USPQ 591 (TTAB 1979).
    • In re Finisar Corporation, Serial No. 76300876, (TTAB 2006).
      • The test for determining whether a mark is merely descriptive is whether it immediately conveys information concerning a quality, characteristic, function, ingredient, attribute or feature of the product or service in connection with which it is used, or intended to be used. In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).
    • In re Westlake Plastics Company, Serial No. 76310516, (TTAB 2006).
      • A term is merely descriptive within the meaning of Section 2(e)(1) if it immediately conveys knowledge of a significant quality, characteristic, function, feature or purpose of the goods with which it is used, or intended to be used. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
    • In re Viventia Biotech Inc., Serial No. 76424575, (TTAB 2006).
      • A mark is merely descriptive, and therefore prohibited from registration by Section 2(e)(1) of the Trademark Act, if, as applied to the goods or services in question, it describes a significant ingredient, quality, characteristic, function, feature, composition, purpose, attribute, use or subject matter of such goods or services. In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986).
    • In re Cox Enterprises, Inc., Serial No. 76591278, (TTAB 2007).
      • A term is merely descriptive within the meaning of Section 2(e)(1) if it immediately conveys knowledge of a significant quality, characteristic, function, feature or purpose of the goods with which it is used, or intended to be used. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
    • In re Jose Ignacio Guisado Urbano, Serial No. 74/441,447, (TTAB 1999)
      • Considering, first, the Section 2(e)(1) refusal on the ground of mere descriptiveness, the test for determining whether a mark is merely descriptive is whether the involved term immediately conveys information concerning a quality, characteristic, function, ingredient, attribute or feature of the product or service in connection with which it is used, or intended to be used. In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979); In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986).
    • In re Litehouse, Incorporated, Serial No. 78494701, (TTAB 2007)
      • A term is deemed to be merely descriptive of goods or services, within the meaning of Trademark Act Section 2(e)(1), if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services. See, e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978).
    • In Re Joseph Edward Page, Serial No. 75/066,101. (TTAB 1999)
      • It is well settled that a term is considered to be merely descriptive of goods or services, within the meaning of Section 2(e)(1) of the Act, if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services. See, for example, In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987) and In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978).
    • In re Box Solutions Corp., Serial No. 76267086, (TTAB 2006).
      • A term is deemed to be merely descriptive of goods or services, within the meaning of Section 2(e)(1), if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services. See, e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
    • In re Ruffin Gaming, LLC, Serial No. 75/899,614, (TTAB 2002).
      • It is well settled that a term is considered to be merely descriptive of goods or services, within the meaning of Section 2(e)(1) of the Trademark Act, if it forthwith conveys information concerning any significant ingredient, quality, characteristic, feature, function, purpose or use of the goods or services. See, e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987) and In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978).
    • In re The Place, Inc., Serial No. 76436826, (TTAB 2005).
      • A term is deemed to be merely descriptive of goods or services, within the meaning of Trademark Act Section 2(e)(1), if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services. See, e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
    • In re Classic Media, Inc., Serial No. 78278235, (TTAB 2006).
      • We now turn to the merits of the refusal. A term is merely descriptive of goods or services, within the meaning of Trademark Act Section 2(e)(1), if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services. See, e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978).
    • In re ICE Futures U.S., Inc., Serial No. 78199832, 78199843, 78199848 (TTAB 2008)
      • A term is merely descriptive of services within the meaning of Section 2(e)(1) if it forthwith conveys an immediate idea of a quality, characteristic, feature, function, or purpose of the services. See, e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987); and In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978).
    • In re Styleclick.com Inc., Serial No. 75/459,910, (TTAB 2000).
      • It is well settled that a term is considered to be merely descriptive of goods and/or services, within the meaning of Section 2(e)(1) of the Trademark Act, if it immediately describes an ingredient, quality, characteristic or feature thereof or if it directly conveys information regarding the nature, function, purpose or use of the goods and/or services. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978).
    • In re Styleclick.com Inc., Serial No. 75/459,912, (TTAB 2001).
      • It is well settled that a term is considered to be merely descriptive of goods and/or services, within the meaning of Section 2(e)(1) of the Trademark Act, if it immediately describes an ingredient, quality, characteristic or feature thereof or if it directly conveys information regarding the nature, function, purpose or use of the goods and/or services. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978).
    • In re Patent & Trademark Services, Inc., Serial No. 75/009,424, (TTAB 1998)
      • A mark is merely descriptive if, as used in connection with the goods or services in question, it immediately conveys information about an ingredient, quality, characteristic, feature, etc. thereof, or if it directly conveys information regarding the nature, function, purpose, or use of the goods or services. See In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978); In re Eden Foods Inc., 24 USPQ2d 1757 (TTAB 1992); and In re American Screen Process Equipment Co., 175 USPQ 561 (TTAB 1972).
    • In re Microsoft Corporation, Serial No. 78/013678, (TTAB 2003).
      • A proposed mark is considered merely descriptive of goods or services, within the meaning of Section 2(e)(1) of the Lanham Act, if it immediately describes an ingredient, quality, characteristic or feature thereof, or if it directly conveys information regarding the nature, function, purpose or use of the goods or services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-218 (CCPA 1978).
    • In re Sun Microsystems, Inc., Serial No. 75/430,946, (TTAB 2001).
      • A proposed mark is considered merely descriptive of goods, within the meaning of Section 2(e)(1) of the Trademark Act, if it immediately describes an ingredient, quality, characteristic or feature thereof, or if it directly conveys information regarding the nature, function, purpose or use of the goods. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-218 (CCPA 1978); see also In re Gyulay, supra.
    • In re Zanova, Inc., Serial No. 75/519,495, (TTAB 2001).
      • A proposed mark is considered merely descriptive of goods or services, within the meaning of Section 2(e)(1) of the Trademark Act, if it immediately describes an ingredient, quality, characteristic or feature thereof, or if it directly conveys information regarding the nature, function, purpose or use of the goods or services. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-218 (CCPA 1978); see also In re Gyulay, supra.
    • Capital Project Management, Inc. v. IMDISI, Inc., Opposition No. 121,819, (TTAB 2003).
      • A mark is merely descriptive if, as used in connection with the goods and/or services, it describes, i.e., immediately conveys information about, an ingredient, quality, characteristic, feature, etc. thereof, or if it directly conveys information regarding the nature, function, purpose, or use of the goods and/or services. See: In re Abcor Development Corp., supra; In re Eden Foods Inc., 24 USPQ2d 1757 (TTAB 1992); and In re American Screen Process Equipment Co., 175 USPQ 561 (TTAB 1972).
    • In re SPX Corporation, Serial No. 75/877,999, (TTAB 2002).
      • A mark is merely descriptive if it immediately conveys knowledge of the ingredients, qualities, or characteristics of the goods or services with which it is used. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
    • In re America Online, Inc., Serial No. 75460305, (TTAB 2006).
      • "A mark is merely descriptive if it immediately conveys information concerning a quality or characteristic of the product or service. [In re Nett Designs, 236 F.3d 1297, 1341, 57 USPQ2d 1564 (Fed. Cir. 1999)]. The perception of the relevant purchasing public sets the standard for determining descriptiveness. Id. Thus, a mark is merely descriptive if the ultimate consumers immediately associate it with a quality or characteristic of the product or service. On the other hand, "if a mark requires imagination, thought, and perception to arrive at the qualities or characteristics of the goods [or services], then the mark is suggestive." Id." In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003).
    • In re Promo Ink, Serial No. 76541018, (TTAB 2006).
      • A mark is merely descriptive if it immediately describes the ingredients, qualities, or characteristics of the goods or services or if it conveys information regarding a function, purpose, or use of the goods or services. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978). See also In re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
    • In re Hunter Fan Company, Serial No. 78195616, (TTAB 2006).
      • "A mark is merely descriptive if it ‘consist[s] merely of words descriptive of the qualities, ingredients or characteristics of' the goods or services related to the mark." In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004), quoting, Estate of P.D. Beckwith, Inc. v. Commissioner, 252 U.S. 538, 543 (1920). See also In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003).
    • In re Grand Forest Holdings Incorporated, Serial No. 78220033, (TTAB 2006).
      • A mark is merely descriptive if it immediately describes the ingredients, qualities, or characteristics of the goods or services or if it conveys information regarding a significant function, purpose, or use of the goods or services. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978). See also In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003) (A "mark is merely descriptive if the ultimate consumers immediately associate it with a quality or characteristic of the product or service"); In re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
    • Interpayment Services Limited, and Travelex Global and Financial Services Ltd. v. Docters & Thiede, Opposition No. 119,852, (TTAB 2003).
      • It is well settled that a term or symbol is considered to be merely descriptive of goods or services, within the meaning of Section 2(e)(1) of the Trademark Act, if it forthwith conveys information concerning any significant ingredient, quality, characteristic, feature, function, purpose, subject matter or use of the goods or services. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978).
    • The Goodyear Tire & Rubber Company v. Continental General Tire, Inc., Opposition No. 91/118,372, (TTAB 2003).
      • As has been stated repeatedly, "a term is merely descriptive if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods." In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); and Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 189 USPQ 759, 765 (2nd Cir. 1976).
    • In re King Koil Licensing Company, Inc., Serial No. 76565486, (TTAB 2006).
      • The analysis to be applied for distinguishing between what is descriptive and what is suggestive is articulated in In re Abcor Development Corporation, 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978) ("A term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of the goods. A term is descriptive if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods," citing Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 189 USPQ 759, 765 (2nd Cir. 1976).)
    • In re Planalytics, Inc., Serial No. 76322156, (TTAB 2004).
      • For a mark to be merely descriptive, it must immediately convey knowledge of the ingredients, qualities, or characteristics of the goods or services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987); In re Quik-Print Copy Shops, Inc., 616 F.2d 523, 205 USPQ 505, 507 (CCPA 1980).
  • A term need not immediately convey an idea of each and every specific feature of the applicant's goods or services in order to be considered merely descriptive; it is enough that the term describes one significant attribute, function or property of the goods or services.
    • In re Litehouse, Incorporated, Serial No. 78494701, (TTAB 2007)
      • A term need not immediately convey an idea of each and every specific feature of the applicant's goods or services in order to be considered merely descriptive; it is enough that the term describes one significant attribute, function or property of the goods or services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).
    • In re Patent & Trademark Services, Inc., Serial No. 75/009,424, (TTAB 1998)
      • A mark does not have to describe every quality, feature, purpose, function, etc. of the goods or services in order to be found merely descriptive; it is sufficient for the purpose if the mark describes a single significant quality, feature, function, etc. See In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
    • In re ICE Futures U.S., Inc., Serial No. 78199832, 78199843, 78199848 (TTAB 2008)
      • A term need not immediately convey an idea of each and every specific feature of the applicant's services in order to be considered merely descriptive; it is enough that the term describes one significant attribute or function of the services. See In re H.U.D.D.L.E., 216 USPQ 358, 359 (TTAB 1982); and In re MBAssociates, 180 USPQ 338, 339 (TTAB 1973).
    • In re Box Solutions Corp., Serial No. 76267086, (TTAB 2006).
      • A term need not immediately convey an idea of each and every specific feature of the applicant's goods or services in order to be considered merely descriptive; it is enough that the term describes one significant attribute, function or property of the goods or services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).
    • In re Classic Media, Inc., Serial No. 78278235, (TTAB 2006).
      • A term need not immediately convey an idea of each and every specific feature of the applicant's goods or services in order to be considered merely descriptive; it is enough that the term describes one significant attribute, function or property of the goods or services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); and In re MBAssociates, 180 USPQ 338 (TTAB 1973).
    • In re Alpha Analytics Investment Group, LLC, Serial No. 75/829,220, (TTAB 2002).
      • A term need not immediately convey an idea of each and every specific feature of the applicant's goods or services in order to be considered merely descriptive; it is enough that the term describes one significant attribute, function or property of the goods or services. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); Meehanite Metal Corp. v. International Nickel Co., 262 F.2d 806, 120 USPQ 293 (CCPA 1959); In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).
    • In re Styleclick.com Inc., Serial No. 75/459,912, (TTAB 2001).
      • It is not necessary that a term describe all of the properties or functions of the goods and/or services in order for it to be considered merely descriptive thereof; rather, it is sufficient if the term describes a significant attribute or feature about them.
    • In re Ruffin Gaming, LLC, Serial No. 75/899,614, (TTAB 2002).
      • It is not necessary that a term describe all of the properties or functions of the goods or services in order for it to be considered to be merely descriptive thereof; rather, it is sufficient if the term describes a significant attribute or idea about them.
    • In re Styleclick.com Inc., Serial No. 75/459,910, (TTAB 2000).
      • It is not necessary that a term describe all of the properties or functions of the goods and/or services in order for it to be considered merely descriptive thereof; rather, it is sufficient if the term describes a significant attribute or feature about them.
    • In re Fitch IBCA, Inc., Serial No. 75/628,232, (TTAB 2002).
      • It is not necessary, in order to find a mark merely descriptive, that the mark describe each feature of the goods or services, only that it describe a single, significant quality, feature, etc. In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
    • In re Planalytics, Inc., Serial No. 76322156, (TTAB 2004).
      • Courts have long held that to be "merely descriptive," a term need only describe a single significant quality or property of the goods. Gyulay, 3 USPQ2d at 1009; Meehanite Metal Corp. v. International Nickel Co., 262 F.2d 806, 120 USPQ 293, 294 (CCPA 1959).
    • Callaway Vineyard & Winery v. Endsley Capital Group, Inc., Opposition No. 121,583, (TTAB 2002).
      • It is not necessary that a term describe all of the purposes, functions, characteristics or features of the goods and/or services. It is enough if the term describes one significant attribute of the goods and/or services. In re H.U.D.D.L.E, 216 USPQ 358 (TTAB 1982); and In re MBAssociates, 180 USPQ 338 (TTAB 1973).
    • In re Tower Tech, Inc., Serial No. 75/709,532, (TTAB 2002).
      • A term or phrase does not have to describe every quality, feature, function, etc. of the goods or services in order to be found merely descriptive; it is sufficient for the purpose if it describes a single significant quality, feature, function, etc. thereof.
    • In re Jose Remacle, Serial No. 75/932,290, (TTAB 2002).
      • It is not necessary, in order to find that a mark is merely descriptive, that the mark describe each feature of the goods or services, only that it describe a single, significant quality, feature, etc. In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
    • In re Hunter Fan Company, Serial No. 78195616, (TTAB 2006).
      • It is not necessary, in order to find a mark merely descriptive, that the mark describe each feature of the goods or services, only that it describe a single significant ingredient, quality, characteristic, function, feature, purpose or use of the goods. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
    • In re Finisar Corporation, Serial No. 76300876, (TTAB 2006).
      • It is not necessary, in order to find a mark merely descriptive, that the mark describe each feature of the goods or services, only that it describe a single ingredient, quality, characteristic, function, feature, purpose or use of the goods. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
    • In re Microsoft Corporation, Serial No. 78/013678, (TTAB 2003).
      • It is not necessary that a term describe all of the properties or functions of the goods or services in order for it to be merely descriptive thereof; rather, it is sufficient if the term describes a significant attribute or idea about them. In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
    • In re Microsoft Corporation, Serial No. 78/013678, (TTAB 2003).
      • Also, a mark need not describe all of the goods or services for which registration is sought; registration must be refused if the mark is merely descriptive of any of the goods or services for which registration is sought. See In re Quik-Print Copy Shop, Inc., 616 F.2d 523, 205 USPQ 505, 507 (CCPA 1980); and In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998).
    • In re Sun Microsystems, Inc., Serial No. 75/430,946, (TTAB 2001).
      • It is not necessary that a term describe all of the properties or functions of the goods in order for it to be merely descriptive thereof; rather, it is sufficient if the term describes a significant attribute or idea about them. In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
    • In re Zanova, Inc., Serial No. 75/519,495, (TTAB 2001).
      • It is not necessary that a term describe all of the properties or functions of the goods or services in order for it to be merely descriptive thereof; rather, it is sufficient if the term describes a significant attribute or idea about them. In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
    • In re Dos Padres, Inc., Serial No. 75/075,701, (TTAB 1998)
      • It is well settled that a term or phrase is considered merely descriptive of goods or services, within the meaning of Section 2(e)(1), if it immediately conveys information concerning an ingredient, quality, characteristic or feature thereof, or if it directly conveys information regarding the nature, function, purpose or use of the goods or services. See In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
    • In re Mine Safety Appliances Company, Serial No. 75/501,608, (TTAB 2002).
      • FOOTNOTE 4 "It is well settled, in this regard, that a term is considered to be merely descriptive of goods or services, within the meaning of Section 2(e)(1) of the Trademark Act, if it immediately describes an ingredient, quality, characteristic or feature thereof or if it directly conveys information regarding the nature, function, purpose or use of the goods or services. See In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). It is not necessary that a term describe all of the properties or functions of the goods or services in order for it to be considered to be merely descriptive thereof; rather, it is sufficient if the term describes a significant attribute or idea about them. Moreover, whether a term is merely descriptive is determined not in the abstract but in relation to the goods or services for which registration is sought, the context in which it is being used on or in connection with those goods or services and the possible significance that the term would have to the average purchaser of the goods or services because of the manner of its use. See In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Consequently, "[w]hether consumers could guess what the product [or service] is from consideration of the mark alone is not the test." In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985)."
  • Whether a term is merely descriptive is determined not in the abstract, but in relation to the goods or services for which registration is sought, the context in which it is being used on or in connection with those goods or services, and the possible significance that the term would have to the average purchaser of the goods or services because of the manner of its use. That a term may have other meanings in different contexts is not controlling.
    • In re Litehouse, Incorporated, Serial No. 78494701, (TTAB 2007)
      • Whether a term is merely descriptive is determined not in the abstract, but in relation to the goods or services for which registration is sought, the context in which it is being used on or in connection with those goods or services, and the possible significance that the term would have to the average purchaser of the goods or services because of the manner of its use. That a term may have other meanings in different contexts is not controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
    • In re Microsoft Corporation, Serial No. 78/013678, (TTAB 2003).
      • The question whether a term is merely descriptive is determined not in the abstract, but in relation to the goods or services for which registration is sought, the context in which it is being used, or will be used, on or in connection with those goods or services and the possible significance that the term would have to the average purchaser or user of the goods or services. See In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979); and In re Recovery, 196 USPQ 830, 831 (TTAB 1977).
    • In re Box Solutions Corp., Serial No. 76267086, (TTAB 2006).
      • Whether a term is merely descriptive is determined not in the abstract, but in relation to the goods or services for which registration is sought, the context in which it is being used on or in connection with those goods or services, and the possible significance that the term would have to the average purchaser of the goods or services because of the manner of its use. That a term may have other meanings in different contexts is not controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
    • In re Styleclick.com Inc., Serial No. 75/459,910, (TTAB 2000).
      • Moreover, whether a term is merely descriptive is determined not in the abstract, but in relation to the goods and/or services for which registration is sought, the context in which it is being used on or in connection with those goods and/or services, and the possible significance that the term would have to the average purchaser of the goods and/or services because of the manner of its use. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
    • In re Styleclick.com Inc., Serial No. 75/459,912, (TTAB 2001).
      • Moreover, whether a term is merely descriptive is determined not in the abstract, but in relation to the goods and/or services for which registration is sought, the context in which it is being used on or in connection with those goods and/or services, and the possible significance that the term would have to the average purchaser of the goods and/or services because of the manner of its use. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
    • In re Sun Microsystems, Inc., Serial No. 75/430,946, (TTAB 2001).
      • It is, of course, well settled that the question whether a term is merely descriptive is determined not in the abstract, but in relation to the goods for which registration is sought, the context in which it is being used on or in connection with those goods and the possible significance that the term would have to the average purchaser or user of the goods. See In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979) and In re Recovery, 196 USPQ 830 (TTAB 1977).
    • In re Zanova, Inc., Serial No. 75/519,495, (TTAB 2001).
      • It is, of course, well settled that the question whether a term is merely descriptive is determined not in the abstract, but in relation to the goods or services for which registration is sought, the context in which it is being used on or in connection with those goods or services and the possible significance that the term would have to the average purchaser or user of the goods or services. See In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979) and In re Recovery, 196 USPQ 830 (TTAB 1977).
    • In re Ruffin Gaming, LLC, Serial No. 75/899,614, (TTAB 2002).
      • Moreover, whether a term is merely descriptive is determined not in the abstract but in relation to the goods or services for which registration is sought, the context in which it is being used on or in connection with those goods or services and the possible significance that the term would have to the average purchaser of the goods or services because of the manner of its use. See In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
    • In re Classic Media, Inc., Serial No. 78278235, (TTAB 2006).
      • Whether a term is merely descriptive is determined not in the abstract, but in relation to the goods or services for which registration is sought, the context in which it is being used or is intended to be used on or in connection with those goods or services, and the possible significance that the term would have to the average purchaser of the goods or services because of the manner of its use or intended use. That a term may have other meanings in different contexts is not controlling. In re Polo International Inc., 51 USPQ2d 1061 (TTAB 1999); and In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
    • In re Alpha Analytics Investment Group, LLC, Serial No. 75/829,220, (TTAB 2002).
      • Whether a term is merely descriptive is determined not in the abstract, but in relation to the goods or services for which registration is sought, the context in which it is being used on or in connection with those goods or services, and the possible significance that the term would have to the average purchaser of the goods or services because of the manner of its use. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
    • In re Westlake Plastics Company, Serial No. 76310516, (TTAB 2006).
      • The question of whether a particular term is merely descriptive must be determined not in the abstract or on the basis of guesswork, but in relation to the goods for which registration is sought, the context in which the term is used, or is intended to be used, and the impact that it is likely to make on the average purchaser of such goods. In re Abcor Development Corp., supra; and In re Remacle, 66 USPQ2d 1222 (TTAB 2002).
    • In re Cox Enterprises, Inc., Serial No. 76591278, (TTAB 2007).
      • The question of whether a particular term is merely descriptive must be determined not in the abstract or on the basis of guesswork, but in relation to the goods for which registration is sought, and the context in which the term is used, or is intended to be used. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978); and In re Remacle, 66 USPQ2d 1222 (TTAB 2002).
    • In re IP Carrier Consulting Group, Serial No. 78542726, 78542734, (TTAB 2007)
      • Whether a particular term is merely descriptive is determined in relation to the services for which registration is sought and the context in which the term is used, not in the abstract or on the basis of guesswork. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002).
    • In re Fitch IBCA, Inc., Serial No. 75/628,232, (TTAB 2002).
      • Further, it is well established that the determination of mere descriptiveness must be made not in the abstract or on the basis of guesswork, but in relation to the goods or services for which registration is sought, the context in which the mark is used or intended to be used, and the impact that it is likely to make on the average purchaser of such goods or services. In re Recovery, 196 USPQ 830 (TTAB 1977).
    • In re Tower Tech, Inc., Serial No. 75/709,532, (TTAB 2002).
      • Further, it is well-established that the determination of mere descriptiveness of a particular term or phrase must be made not in the abstract or on the basis of guesswork, but in relation to the goods or services for which registration is sought, the context in which the term or phrase is being used or is intended to be used on or in connection with those goods or services, and the impact that it is likely to make on the average purchaser of such goods or services. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995); and In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991).
    • In re Jose Remacle, Serial No. 75/932,290, (TTAB 2002).
      • Further, it is well established that the determination of mere descriptiveness must be made not in the abstract or on the basis of guesswork, but in relation to the goods or services for which registration is sought, the context in which the mark is used or is intended to be used, and the impact that it is likely to make on the average purchaser of such goods or services. In re Recovery, 196 USPQ 830 (TTAB 1977).
    • In re Hunter Fan Company, Serial No. 78195616, (TTAB 2006).
      • Further, it is well-established that the determination of mere descriptiveness must be made not in the abstract or on the basis of guesswork, but in relation to the goods or services for which registration is sought, the context in which the mark is used, and the impact that it is likely to make on the average purchaser of such goods or services. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978).
    • In re Finisar Corporation, Serial No. 76300876, (TTAB 2006).
      • Further, it is well-established that the determination of mere descriptiveness must be made not in the abstract or on the basis of guesswork, but in relation to the goods or services for which registration is sought, the context in which the mark is used, and the impact that it is likely to make on the average purchaser of such goods or services. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978).
    • In re SPX Corporation, Serial No. 75/877,999, (TTAB 2002).
      • The determination is made not in a vacuum, but in relation to the goods on which, or the services in connection with which, the mark is used or proposed to be used. See In re Abcor Development Corporation, 588 F.2d 811, 200 USPQ 215 (CCPA 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
    • In re Patent & Trademark Services, Inc., Serial No. 75/009,424, (TTAB 1998)
      • Further, the question of whether a mark is merely descriptive must be determined not in the abstract, that is, not by asking whether one can guess, from the mark itself, considered in a vacuum, what the goods or services are, but rather or services for which registration is sought, that is, by asking whether, when the mark is seen on the goods or services, it immediately conveys information about their nature. See In re Abcor Development Corp., supra, and In re American Greetings Corp., 226 USPQ 365 (TTAB 1985).
    • Interpayment Services Limited, and Travelex Global and Financial Services Ltd. v. Docters & Thiede, Opposition No. 119,852, (TTAB 2003).
      • It is not necessary that the term or symbol describe all of the properties or functions of the goods or services in order for it to be considered to be merely descriptive thereof; rather, it is sufficient if the term or symbol describes a significant attribute or idea about them. Moreover, whether a term or symbol is merely descriptive is determined not in the abstract but in relation to the goods or services for which registration is sought, the context in which it is being used or is intended to be used on or in connection with those goods or services and the possible significance that the term or symbol would have to the average purchaser of the goods or services because of the manner of such use. See In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
    • In re Dos Padres, Inc., Serial No. 75/075,701, (TTAB 1998)
      • Moreover, whether a term or phrase is merely descriptive is determined in relation to the goods or services for which registration is sought, the context in which it is being used on or in connection with those goods or services, and the possible significance that the term or phrase would have to the average purchaser of the goods or services because of the manner of its use. See In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). See also, In re Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995); and In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991).
    • In Re Joseph Edward Page, Serial No. 75/066,101. (TTAB 1999)
      • Whether a term is merely descriptive is determined, not in the abstract, but in relation to the goods or services for which registration is sought, the context in which it is being used on or in connection with those goods or services and the possible significance that the term would have to the average purchaser of the goods or services because of the manner of its use. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
    • Callaway Vineyard & Winery v. Endsley Capital Group, Inc., Opposition No. 121,583, (TTAB 2002).
      • The determination of whether a mark is merely descriptive must be made in relation to the identified goods and/or services, and not in the abstract. In re Omaha National Corp. 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); and In re Abcor Development Corp. 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
    • In re Grand Forest Holdings Incorporated, Serial No. 78220033, (TTAB 2006).
      • We look at the mark in relation to the goods or services, and not in the abstract, when we consider whether the mark is descriptive. Abcor, 200 USPQ at 218.
    • In re Promo Ink, Serial No. 76541018, (TTAB 2006).
      • We look at the mark in relation to the goods or services, and not in the abstract, when we consider whether the mark is merely descriptive. Abcor, 200 USPQ at 218.
    • In re King Koil Licensing Company, Inc., Serial No. 76565486, (TTAB 2006).
      • Moreover, whether a designation is merely descriptive is determined not in the abstract, but in relation to the goods or services for which registration of the designation is sought, and the context in which it is being used on or in connection with those goods or services. See In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
    • In re Vanilla Gorilla, L.P., Serial No. 76561135, (TTAB 2006).
      • It is clear that when we are analyzing a mark to determine if it is merely descriptive, we must consider the mark in the context of the identified goods or services and not in the abstract. Abcor, 200 USPQ at 218.
    • In re Planalytics, Inc., Serial No. 76322156, (TTAB 2004).
      • Descriptiveness of a mark is not considered in the abstract, but in relation to the particular goods or services for which registration is sought. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978).
    • In re America Online, Inc., Serial No. 75460305, (TTAB 2006).
      • Another important factor is that, when we consider the mark, we must consider it in relationship to applicant's services. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978) ("Appellant's abstract test is deficient – not only in denying consideration of evidence of the advertising materials directed to its goods, but in failing to require consideration of its mark ‘when applied to the goods' as required by statute").
  • The question of descriptiveness is not whether the subject matter in association with other trademarks is capable of distinguishing applicant's goods but whether it is capable of distinguishing applicant's goods without reference to other indicia.
    • In re The Place, Inc., Serial No. 76436826, (TTAB 2005).
      • The Board rejected this argument: "The well established rule that descriptiveness issues must be analyzed in relation to the context of use does not and cannot, obviously, mean that descriptiveness of the term sought to be registered must be evaluated as if that term were used in association with other nondescriptive indicia. In re Nash-Finch Co., 160 USPQ 210 (TTAB 1968)["The question is not whether the subject matter in association with other trademarks is capable of distinguishing applicant's goods but whether it is capable of distinguishing applicant's goods without reference to other indicia.]
  • The question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods or services are will understand the mark to convey information about them.
    • In re Litehouse, Incorporated, Serial No. 78494701, (TTAB 2007)
      • Moreover, it is settled that "[t]he question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods or services are will understand the mark to convey information about them." In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002). See also In re Patent & Trademark Services Inc., 49 USPQ2d 1537 (TTAB 1998); In re Home Builders Association of Greenville, 18 USPQ2d 1313 (TTAB 1990); and In re American Greetings Corporation, 226 USPQ 365 (TTAB 1985).
    • In re Tower Tech, Inc., Serial No. 75/709,532, (TTAB 2002).
      • The question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods or services are will understand the mark to convey information about them. See In re Home Builders Association of Greenville, 18 USPQ2d 1313 (TTAB 1990); and In re American Greetings Corp., 226 USPQ 365 (TTAB 1985).
    • In re Classic Media, Inc., Serial No. 78278235, (TTAB 2006).
      • It is settled that: "....the question of whether a mark is merely descriptive must be determined not in the abstract, that is, not by asking whether one can guess, from the mark itself, considered in a vacuum, what the goods or services are, but rather in relation to the goods or services for which registration is sought, that is, by asking whether, when the mark is seen on the goods or services, it immediately conveys information about their nature." In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998).
  • Whether consumers could guess what the product and/or service is from consideration of the mark alone is not the test.
    • In re Styleclick.com Inc., Serial No. 75/459,910, (TTAB 2000).
      • Accordingly, whether consumers could guess what the product and/or service is from consideration of the mark alone is not the test. In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
    • In re Styleclick.com Inc., Serial No. 75/459,912, (TTAB 2001).
      • Accordingly, whether consumers could guess what the product and/or service is from consideration of the mark alone is not the test. In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
    • In re Ruffin Gaming, LLC, Serial No. 75/899,614, (TTAB 2002).
      • Thus, "[w]hether consumers could guess what the product [or service] is from consideration of the mark alone is not the test." In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
  • Burden of Proof: The USPTO bears the burden of establishing a prima facie case in support of a descriptiveness refusal.
    • In re Microsoft Corporation, Serial No. 78/013678, (TTAB 2003).
      • The USPTO bears the burden of establishing a prima facie case in support of a descriptiveness refusal. See In re Gyulay, supra.
    • In re Sun Microsystems, Inc., Serial No. 75/430,946, (TTAB 2001).
      • The Office bears the burden of setting forth a prima facie case in support of a descriptiveness refusal. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987) (When the Examining Attorney sets forth a prima facie case, the applicant cannot simply criticize the absence of additional evidence supporting the refusal and must come forward with evidence supporting its argument for registration.).
    • In re Zanova, Inc., Serial No. 75/519,495, (TTAB 2001).
      • The Office bears the burden of setting forth a prima facie case in support of a descriptiveness refusal. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987) (When the Examining Attorney sets forth a prima facie case, the applicant cannot simply criticize the absence of additional evidence supporting the refusal, but must come forward with evidence supporting its argument for registration.).
    • In re Box Solutions Corp., Serial No. 76267086, (TTAB 2006).
      • The burden is initially on the United States Patent and Trademark Office to make a prima facie showing that the mark or word in question is descriptive from the vantage point of purchasers of applicant's goods and, where doubt exists as to whether a term is descriptive, such doubt should be resolved in favor of the applicant. In re Merrill Lynch, Pierce, Fenner, and Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1144 (Fed. Cir. 1987).
  • As a general rule, initials cannot be considered descriptive unless they have become so generally understood as representing descriptive words as to be accepted as substantially synonymous therewith.
    • In re The Council on Certification of Nurse Anesthetists, Serial No. 75722091, (TTAB 2007).
      • Nonetheless, as the Court of Customs and Patent Appeals, the predecessor of our principal reviewing court, cautioned when discussing the question of whether letters that correspond to the initial letters of a descriptive combination of words are similarly descriptive in Modern Optics, Inc. v. Univis Lens Co., 234 F.2d 504, 110 USPQ 293, 295 (CCPA 1956):
        "The letters "CV" are, of course, the initial letters of the words "continuous vision," and it is possible for initial letters to become so associated with descriptive words as to become descriptive themselves. (citations omitted) It does not follow, however, that all initials or combinations of descriptive words are ipso facto unregistrable. While each case must be determined on the basis of the particular facts involved, it would seem that, as a general rule, initials cannot be considered descriptive unless they have become so generally understood as representing descriptive words as to be accepted as substantially synonymous therewith."
  • Case Finding: Cases which found descriptive terms.
    • In re Litehouse, Incorporated, Serial No. 78494701, (TTAB 2007)
      • This evidence establishes the mere descriptiveness of CAESAR as applied to salad dressings. See, e.g., In re Central Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998)(ATTIC generic for sprinklers installed primarily in attics); In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB 1977)(BREDSPRED merely descriptive of jams and jellies).
  • A mark's mere repetition of a merely descriptive word does not negate the mere descriptiveness of the mark as a whole.
    • In re Litehouse, Incorporated, Serial No. 78494701, (TTAB 2007)
      • It is settled that a mark's mere repetition of a merely descriptive word does not negate the mere descriptiveness of the mark as a whole. See In re Disc Jockeys, Inc., 23 USPQ2d 1715 (TTAB 1992), wherein the Board found the mark DJDJ to be merely descriptive of disc jockey services. The Board explained: "There is nothing in the composite which changes the meaning of the letters in any manner which would give them a different meaning. If one were to express the view that milk was "creamy creamy" or that a red bicycle was "red red" or that a razor was "sharp sharp," the repetition of the words "creamy," "red" and "sharp" would be understood as emphasis and the combinations of these words would not, simply because of their repetition, be rendered something more than descriptive." Id. at 1716.
  • A common punctuation mark, such as an exclamation point or hyphen, is not sufficient to elevate an otherwise merely descriptive term to the status of a registrable mark.
    • In re Litehouse, Incorporated, Serial No. 78494701, (TTAB 2007)
      • Likewise, the presence of the exclamation points in applicant's mark does not suffice to negate the mere descriptiveness of the mark. "Applicant has not cited nor have we found any case where it was held that a common punctuation mark, such as an exclamation point, was sufficient to elevate an otherwise merely descriptive term to the status of a registrable mark. We do not do so in this case." In re Samuel Moore & Co., 195 USPQ 237, 240 (TTAB 1977)(SUPERHOSE! merely descriptive of "hydraulic hose made of synthetic resinous material"). The Board's reasoning in that 1977 case has been consistently repeated in numerous cases over the years involving marks with exclamation points.
    • In re Litehouse, Incorporated, Serial No. 78494701, (TTAB 2007)
      • For example, in the case of In re Promo Ink, 78 USPQ2d 1301 (TTAB 2006), the Board found the mark PARTY AT A DISCOUNT! to be merely descriptive, specifically noting that "[t]his punctuation mark does not significantly change the commercial impression of the mark. It would simply emphasize the descriptive nature of the mark to prospective customers..."). Id. at 1305. Likewise, in In re Brock Residence Inns, Inc., 222 USPQ 920 (TTAB 1984), the Board found the mark FOR A DAY, A WEEK, A MONTH OR MORE! to be merely descriptive of hotel services, noting that "[t]he presence of the exclamation point at the end of the designation does not alter our opinion because it serves as well to emphasize the descriptive and informational significance of the designation as to indicate any other meaning." Id. at 922. See also In re Wileswood, Inc., 201 USPQ 400 (TTAB 1978)(AMERICA'S BEST POPCORN! and AMERICA'S FAVORITE POPCORN! found merely descriptive of unpopped popcorn). Cf. In re Vanilla Gorilla, L.P., 80 USPQ2d 1637 (TTAB 2006)(presence of punctuation mark (a hyphen) in the mark "3-0'S" does not negate mere descriptiveness of mark); In re S.D. Fabrics, Inc., 223 USPQ 54 (TTAB 1984)(presence of slash in the mark "designers/fabric" does not negate mere descriptiveness of mark).
    • In re Litehouse, Incorporated, Serial No. 78494701, (TTAB 2007)
      • In accordance with these authorities, we find in the present case that neither the mere repetition of the word CAESAR in applicant's mark, nor the presence of the exclamation points in the mark, nor both of these features combined, suffices to negate the mere descriptiveness of the mark as a whole as applied to salad dressings.
    • In re Promo Ink, Serial No. 76541018, (TTAB 2006).
      • We also have considered that applicant's mark contains an exclamation point, but this punctuation mark does not significantly change the commercial impression of the mark. It would simply emphasize the descriptive nature of the mark to prospective purchasers, i.e., that customers can receive discounts for their parties. In re Samuel Moore & Co., 195 USPQ 237, 240 (TTAB 1977) ("Applicant has not cited nor have we found any case where it was held that a common punctuation mark, such as an exclamation point, was sufficient to elevate an otherwise merely descriptive term to the status of a registrable trademark. We do not do so in this case"); In re S.D. Fabrics, Inc., 223 USPQ 54, 55 (TTAB 1984) ("Aside therefrom, we are not persuaded that the design features of applicant's mark, namely, the filling in of portions of some of the letters in the mark and the separation of the two words of the mark with a conventional punctuation mark, are so distinctive as to create a commercial impression separate and apart from the unregistrable components"). There is no reason in this case to conclude that the punctuation mark here changes a descriptive mark into a non-descriptive mark.
    • In re Vanilla Gorilla, L.P., Serial No. 76561135, (TTAB 2006).
      • Second, the addition of punctuation marks to a descriptive term would not ordinarily change the term into a non-descriptive one. In re Samuel Moore & Co., 195 USPQ 237, 240 (TTAB 1977) ("Applicant has not cited nor have we found any case where it was held that a common punctuation mark, such as an exclamation point, was sufficient to elevate an otherwise merely descriptive term to the status of a registrable trademark. We do not do so in this case"). See also In re S.D. Fabrics, Inc., 223 USPQ 54, 55 (TTAB 1984) ("Aside therefrom, we are not persuaded that the design features of applicant's mark, namely, the filling in of portions of some of the letters in the mark and the separation of the two words of the mark with a conventional punctuation mark, are so distinctive as to create a commercial impression separate and apart from the unregistrable components").
    • In re Vanilla Gorilla, L.P., Serial No. 76561135, (TTAB 2006).
      • Third, the addition of hyphens to marks, as in this case, has not been successful in changing the descriptive nature of the term. In re Wyandotte Chemicals Corp., 156 USPQ 100, 100 (TTAB 1967) ("It is equally true that a descriptive term is not made arbitrary by hyphenating or misspelling it"). See also Weiss Noodle Co., 129 USPQ at 413 (Term "HA-LUSH-KA" held to be the generic equivalent of the Hungarian word "haluska"); American Druggist Syndicate v. United States Industrial Alcohol Co., 2 F.2d 942, 943 (D.C. Cir. 1924) ("‘Al-Kol' is merely a phonetic or misspelling of the word ‘alcohol,' and is descriptive of the goods").
  • The test for mere descriptiveness does not depend on whether one can determine what the goods are from merely viewing the mark.
    • In re Litehouse, Incorporated, Serial No. 78494701, (TTAB 2007)
      • Applicant argues that its mark is not merely descriptive because one cannot determine what the goods are merely from viewing the mark. As noted above, however, that is not the test for mere descriptiveness. See In re Tower Tech Inc., supra; In re Patent & Trademark Services Inc., supra; In re Home Builders Association of Greenville, supra; and In re American Greetings Corporation, supra.
  • The mere descriptiveness of the mark must be viewed in the context of the identified goods, not in the abstract or in relation to any other meaning the words in the mark might have.
    • In re Litehouse, Incorporated, Serial No. 78494701, (TTAB 2007)
      • Likewise, applicant's contention (at page 3 of its brief) that purchasers will view the mark not as merely describing the goods, but rather as "a summons or exaltation to a Caesar (which is well known to be a surname of a Roman emperor, a dictator, or a Roman statesman)," is not persuasive. The mere descriptiveness of the mark must be viewed in the context of the identified goods, not in the abstract or in relation to any other meaning the words in the mark might have. See In re Bright-Crest, Ltd., supra.
  • Although consistency in examination is a goal of the Office, the decisions of previous Trademark Examining Attorneys are not binding on us, and we must decide each case based on the evidence presented in the record before us.
    • In re Litehouse, Incorporated, Serial No. 78494701, (TTAB 2007)
      • Applicant argues that the registered PIZZA!PIZZA! mark, which the Office apparently deemed to be suggestive rather than merely descriptive, is essentially identical in structure to applicant's CAESAR!CAESAR! mark, and that in the interest of consistency, applicant's mark should likewise be considered to be suggestive and thus registrable on the Principal Register. Our primary reviewing court, however, has rejected this argument:
        "Needless to say, this court encourages the PTO to achieve a uniform standard for assessing registrability of marks. Nonetheless, the Board (and this court in its limited review) must assess each mark on the record of public perception submitted with the application. Accordingly, this court finds little persuasive value in the registrations that Nett Designs submitted to the examiner or in the list of registered marks Nett Designs attempted to submit to the Board." In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). See also In re Rodale Inc., 80 USPQ2d 1696, 1700 (TTAB 2006)("Although consistency in examination is a goal of the Office, the decisions of previous Trademark Examining Attorneys are not binding on us, and we must decide each case based on the evidence presented in the record before us"); and In re Finisair Corp., 78 USPQ2d 1618, 1621 (TTAB 2006)("While uniform treatment is a goal, our task is to determine based on the record before us, whether applicant's mark is merely descriptive"). See also In re Wilson, 57 USPQ2d 1863 (TTAB 2001)(administrative law doctrine of "reasoned decisionmaking" does not require consistent treatment of applications to register marks; each application for registration must be considered on its own record and merits).3

        FOOTNOTE 3 "We note that the PIZZA!PIZZA! registrations applicant relies on were issued in 1986 and 1987, prior to the Board's 1992 precedential decision in In re Disc Jockeys, Inc. (the DJDJ case), in which the Board held that a mark's mere repetition of a merely descriptive term does not necessarily result in a mark which is not itself merely descriptive."

  • The issue is whether someone who knows what the services are will understand the mark to convey information about the services.
    • In re IP Carrier Consulting Group, Serial No. 78542726, 78542734, (TTAB 2007)
      • In other words, the issue is whether someone who knows what the services are will understand the mark to convey information about the services. In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002); In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders Association of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re American Greetings Corp., 226 UPSQ 365, 366 (TTAB 1985).
  • If one must exercise mature thought or follow a multi-stage reasoning process in order to determine what product or service characteristics the term indicates, the term is suggestive rather than merely descriptive.
    • In re IP Carrier Consulting Group, Serial No. 78542726, 78542734, (TTAB 2007)
      • "On the other hand, if one must exercise mature thought or follow a multi-stage reasoning process in order to determine what product or service characteristics the term indicates, the term is suggestive rather than merely descriptive." In re Tennis in the Round, Inc., 199 USPQ 496, 497 (TTAB 1978). See also, In re Shutts, 217 USPQ 363, 364-365 (TTAB 1983); In re Universal Water Systems, Inc., 209 USPQ 165, 166 (TTAB 1980).
  • In determining whether a mark is merely descriptive, the mark must be considered in its entirety.
    • In re IP Carrier Consulting Group, Serial No. 78542726, 78542734, (TTAB 2007)
      • Finally, in determining whether a mark is merely descriptive, we must consider the mark in its entirety. As argued by applicant, common words may be descriptive when standing alone, but when used together in a composite mark, they may become a valid trademark. See Concurrent Technologies Inc. v. Concurrent Technologies Corp., 12 USPQ2d 1054, 1057 (TTAB 1989).
  • Case Finding: ipPICS is a merely descriptive term.
    • In re IP Carrier Consulting Group, Serial No. 78542726, 78542734, (TTAB 2007)
      • The problem with applicant's analysis is that it starts with the term "Internet Provider," a term that is not a component of the mark, and asks what is the most common acronym for "Internet Provider." An analysis of the mark should start with the mark at issue (ipPICS) and inquire whether that term describes the high-speed transmission of images and video, not the inquiry whether "ip" is the most common acronym for "Internet Provider." The evidence shows that "IP" means "Internet Provider" or "Internet Protocol." In either case, ipPICS directly engenders the commercial impression or meaning of pictures transmitted through the Internet.
    • In re IP Carrier Consulting Group, Serial No. 78542726, 78542734, (TTAB 2007)
      • In view of the foregoing, we find that ipPICS is merely descriptive of the purpose or function of applicant's services for transmitting images and video through the Internet.
  • Case Finding: piPIPE is a merely descriptive term.
    • In re IP Carrier Consulting Group, Serial No. 78542726, 78542734, (TTAB 2007)
      • As we did with ipPICS supra, we start our analysis of ipPIPE by inquiring whether ipPIPE describes a function, purpose, feature or characteristic of "telecommunications access services, namely subscription-based access services featuring a device that allows the user to access high speed transmission of voice, data, images, video, and audio via a global computer network, computers and wireless devices," not whether we can guess what the services are by looking at the mark.
    • In re IP Carrier Consulting Group, Serial No. 78542726, 78542734, (TTAB 2007)
      • Both components of the mark, "IP" and "Pipe," retain their descriptive meaning when combined and used in connection with the high-speed transmission of data, images, video, and audio. The combination of "IP" and "Pipe" does not create a new term with an incongruous meaning. Thus, the mark ipPIPE directly conveys to consumers that applicant's services involve the transmission of data through the Internet.
  • So long as any one of the meanings of a word is descriptive, the word may be merely descriptive.
    • In re IP Carrier Consulting Group, Serial No. 78542726, 78542734, (TTAB 2007)
      • So long as any one of the meanings of a word is descriptive, the word may be merely descriptive. In re Chopper Industries, 222 USPQ 258, 259 (TTAB 1984); In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979); In re Champion International Corp., 183 USPQ 318, 320 (TTAB 1974).
  • The determination of whether a term is merely descriptive is made not in the abstract, but in relation to the services identified in the application and the possible significance that the term would have to the average purchaser of the services.
    • In re ICE Futures U.S., Inc., Serial No. 78199832, 78199843, 78199848 (TTAB 2008)
      • We must determine whether a term is merely descriptive not in the abstract, but in relation to the services identified in the application and the possible significance that the term would have to the average purchaser of the services. In re Polo International Inc., 51 USPQ2d 1061, 1062 (TTAB 1999); and In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
    • In re SPX Corporation, Serial No. 75/877,999, (TTAB 2002).
      • Further, the determination is made from the standpoint of the average prospective purchaser. In re Abcor Development Corporation, supra.
  • Case Finding: Terms for commodities were considered arbitrary and not merely descriptive.
    • In re ICE Futures U.S., Inc., Serial No. 78199832, 78199843, 78199848 (TTAB 2008)
      • Accordingly, based on the evidence of record we conclude that SUGAR NO. 11, SUGAR NO. 14 and COTTON NO. 2, when viewed in their entireties and in the full context of their use, are not merely descriptive of applicant's services. The marks, when viewed in their entireties, are arbitrary. They do not identify a commodity applicant sells, as the Examining Attorney argues. Furthermore, there is no evidence that others have a need to use these terms in rendering the identified services, as the Examining Attorney argues. We find applicant's long, and apparently exclusive, use of the marks persuasive evidence of the absence of such a need -- for over sixty-five years in the case of the SUGAR NO. 11 and SUGAR NO. 14 marks and one hundred and thirty-five years in the case of the COTTON NO. 2 mark. The record does show that others can and do use the terms/marks to refer to applicant's specific services. This use in no way indicates that the marks are merely descriptive of the identified services.
  • A mark need not describe all of the goods or services for which registration is sought; registration must be refused if the mark is merely descriptive of any of the goods or services for which registration is sought.
    • In re Patent & Trademark Services, Inc., Serial No. 75/009,424, (TTAB 1998)
      • Applicant contends that its mark does not immediately tell potential customers what applicant's services are; that copyrights, for example, are not mentioned in the mark, but one of applicant's services is procuring copyrights. However, a mark need not describe all of the goods or services for which registration is sought; registration must be refused if (as is the case here) the mark is merely descriptive of any of the goods or services for which registration is sought. See In re Quik-Print Copy Shop, Inc., 616 F.2d 523, 205 USPQ 505 (CCPA 1980).
  • In order to be held merely descriptive, a term must describe with some particularity a quality or ingredient of the product in question, it need not describe it exactly.
    • In re Patent & Trademark Services, Inc., Serial No. 75/009,424, (TTAB 1998)
      • However, as stated in In re Entenmann's Inc., 15 USPQ2d 1750, 1751 (TTAB 1990), aff'd in opinion not for publication, Appeal No. 90-1495 (Fed. Cir. February 13, 1991), "[w]hile it is true that in order to be held merely descriptive, a term must describe with some particularity a quality or ingredient of the product in question, it need not describe it exactly." Cf. In re Analog Devices Inc., 6 USPQ2d 1808, 1810 (TTAB 1988), aff'd in opinion not for publication, 10 USPQ2d 1879 (Fed. Cir. 1989) (unpublished) ("However, while we readily concede that the category of products which the term `analog devices' names encompasses a wide range of products in a variety of fields, we do not believe this fact enables such a term to be exclusively appropriated by an entity for products, some of which fall within that category of goods.").

        Here, PATENT & TRADEMARK SERVICES, INC. describes significant aspects of applicant's services, and the fact that the phrase does not specify exactly which patent and trademark services applicant offers does not mean that applicant is entitled to exclusively appropriate the phrase. Apropos thereto, applicant's contention that the term "services" in the phrase PATENT & TRADEMARK SERVICES, INC. is so broad that the phrase cannot be held merely descriptive is unpersuasive because the term "services" in the phrase does not stand alone but rather is modified and defined by the words "patent & trademark."

  • The term "Inc." does not serve to identify the source of services but rather indicates the type of entity performing the services, and thus "Inc." has no service mark significance.
    • In re Patent & Trademark Services, Inc., Serial No. 75/009,424, (TTAB 1998)
      • Applicant also argues that PATENT & TRADEMARK SERVICES, INC. is not merely descriptive because the inclusion of the term "Inc." indicates that the mark is referring to a corporation that is the source of the services, and not merely to a service provided by that corporation. We agree with the Examining Attorney, however, that the term "Inc." in applicant's mark does not serve to identify the source of applicant's services but rather merely indicates the type of entity which performs the services, and thus has no service mark significance. See In re Industrial Relations Counselors, Inc., 224 USPQ 309 (TTAB 1984) [INDUSTRIAL RELATIONS COUNSELORS, INC. incapable of functioning as a mark for conducting seminars and research in the field of industrial relations; Board attaches no trademark significance to the corporate identifier "Inc."]; In re E. I. Kane, Inc., 221 USPQ 1203 (TTAB 1984) [OFFICE MOVERS, INC. incapable of functioning as a mark for moving services; addition of the term "Inc." does not add any trademark significance to matter sought to be registered]; and In re Packaging Specialists, Inc., 221 USPQ 917 (TTAB 1984) [PACKAGING SPECIALISTS, INC. merely descriptive of contract packaging services, etc.; the term "Inc." is recognized, in trademark evaluation, as having no source indicating or distinguishing capacity].
  • Laudatory terms are considered being merely descriptive.
    • In re Dos Padres, Inc., Serial No. 75/075,701, (TTAB 1998)
      • Terms which are laudatory are also regarded as being merely descriptive because these laudatory terms are seen as a form of describing the quality of the goods. See J. Thomas McCarthy, Vol. 2, Trademarks and Unfair Competition, §11:17 (4th Ed. 1998), and cases cited therein.
  • The mere fact that there have been inconsistencies in how Examining Attorneys treated the word "Supreme" in other applications does not raise a doubt as to the merely descriptive nature of a currently disputed mark.
    • In re Dos Padres, Inc., Serial No. 75/075,701, (TTAB 1998)
      • We acknowledge that the records of the Patent and Trademark Office are inconsistent with regard to the Office treatment of the word SUPREME. It is clear that there are registered marks which include the word SUPREME with a disclaimer or a claim of distinctiveness under Section 2(f); and there are registrations which do not include such treatment of the term SUPREME. While the Office strives for consistency, we must decide each case on its own facts and record. See In re Consolidated Foods Corp., 200 USPQ 477 (TTAB 1978). The mere fact that there have been inconsistencies in how Examining Attorneys treated the word SUPREME in other applications does not, as applicant suggests, raise a doubt as to the merely descriptive nature of the mark now before us.
  • Case Finding: The term "Classic"
    • In re Dos Padres, Inc., Serial No. 75/075,701, (TTAB 1998)
      • The case of In re Classic Beverage Inc., 6 USPQ2d 1383 (TTAB 1988), cited by applicant, does not require a different result herein. The three categories of evidence submitted in that case were specifically discussed in the opinion, and the evidence showed that ‘classic' had a meaning that could describe a characteristic of some products (such as cars or books), but the evidence did not link the recognized dictionary meaning of ‘classic' to apply to applicant's soft drinks. (Emphasis added.)
  • Test for a Section 2(a) deceptiveness refusal.
    • In re South Park Cigar, Inc., Serial No. 78486382, (TTAB 2007)
      • Initially, we must clarify what we deem to be the proper statutory basis for refusal in this case. To maintain a Section 2(a) deceptiveness refusal, the Office must establish that (1) the mark misrepresents or misdescribes the goods, (2) the public would likely believe the misrepresentation, and (3) the misrepresentation would materially affect the public's decision to purchase the goods. In re California Innovations Inc., 329 F.3d 1334, 1336-37, 66 USPQ2d 1853, 1854 (Fed. Cir. 2003), citing In re Budge Mfg. Co., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988).
  • Case Finding: Applicant's statement that his disclaimer of this word was not a concession of the mere descriptiveness of this word for the recited services is simply not understood or otherwise credible.
    • In Re Joseph Edward Page, Serial No. 75/066,101. (TTAB 1999)
      • There is no question that the word "PATENTS" in applicant's mark is, by itself, merely descriptive of applicant's patent-related services, because it describes a central feature of such services. Applicant's statement that his disclaimer of this word was not a concession of the mere descriptiveness of this word for his patent-related services is simply not understood or otherwise credible.
  • The analysis of mere descriptiveness of a mark requires considering whether the mark as a whole is merely descriptive.
    • In Re Joseph Edward Page, Serial No. 75/066,101. (TTAB 1999)
      • Our analysis of the mere descriptiveness of the asserted mark does not end, of course, with a finding that a portion thereof is merely descriptive. We must consider the asserted mark as a whole, that is, whether the addition of the prefix 888 to the word PATENTS changes the merely descriptive nature of the term PATENTS such that the mark as a whole is inherently distinctive and, thus, registrable.
  • Case Finding: The 888 prefix in the mark does not have any source-identifying significance.
    • In Re Joseph Edward Page, Serial No. 75/066,101. (TTAB 1999)
      • We believe, therefore, that applicant's asserted mark will be perceived as what has been referred to as an alphanumeric telephone number—-a number formed by both numbers and letters. The commercial use of such alphanumeric characters, sometimes referred to as "vanity" telephone numbers, at least in the context of intellectual property law, is relatively recent. In a state court decision, Cytanovich Reading Center v. The Reading Game, 225 USPQ 588 (Cal. Ct. App. 1984), the court stated that it had found no prior cases holding that a particular telephone number either could or could not constitute a trademark or service mark. In the intervening years there have been a relatively small number of cases dealing with the protectibility of telephone numbers. The cases that have been cited by applicant and the Examining Attorney, and the additional cases which the Board has found, are of relatively little help in our determination of whether the asserted mark is merely descriptive of applicant's legal services. This is because the various court cases involved, for the most part, issues of unfair competition and likelihood of confusion. See Dial-a-Mattress Franchise Corp. v. Page, 880 F.2d 675, 11 USPQ2d 1644 (2d Cir. 1989)(defendant's use of confusingly similar phone number enjoined); Dranoff, supra (remanded the case, and, disagreeing with the Second Circuit's position that telephone numbers which correlate to generic terms may be protectible as marks, stated that, if such were the case, then "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"); Bell v. Kidan, 836 F.Supp. 125, 28 USPQ2d 1077 (S.D.N.Y. 1993)(motion for preliminary injunction denied in case involving registered mark CALL-LAW and 1-800-LAW-CALL); Kelley Blue Book v. Car-Smarts Inc., 802 F.Supp. 278, 24 USPQ2d 1481 (C.D. Cal. 1992)("1-800-BLU-BOOK" likely to cause confusion with "Kelley Blue Book", where "Blue Book" had acquired a secondary meaning); and Murrin v. Midco Communications Inc., 726 F. Supp. 1195, 13 USPQ2d 1815 (D. Minn. 1989)(defendant enjoined from using a phone number outside the New York City metropolitan area confusingly similar to plaintiff's unchallenged registered mark "DIAL L-A-W-Y-E-R-S").
    • In Re Joseph Edward Page, Serial No. 75/066,101. (TTAB 1999)
      • However, some cases have explicitly dealt with the issue of descriptiveness of alphanumeric telephone numbers. For example, in Express Mortgage Brokers Inc. v Simpson Mortgage Inc., 31 USPQ2d 1371 (E.D. Mich. 1994), the Court found that the telephone number "369-CASH" for mortgage related services was descriptive but had acquired a secondary meaning. And more recently, in 800 Spirits Inc. v. Liquor By Wire, Inc., 14 F.Supp.2d 675 (D.N.J. 1998), involving defendant's use of the phone number "1-800-SPIRITED", the Court commented, at 680, 681: "…[I]f a business were permitted to preclude the use of a toll-free telephone number that corresponds to a generic term simply by developing a service mark of "800," "888," or "877" followed by the term, competitors would be denied the opportunity to take advantage of this often effective marketing technique. It has become increasingly popular to advertise one's services through toll-free mnemonic telephone numbers… The competitive advantages derived from such "vanity" numbers are apparent. Because they are easily recognizable and memorable, they readily communicate the nature of the services offered. Companies that generate a significant portion of their business through telephone orders frequently advertise these numbers as their primary identification mark. There are often few available toll-free numbers that correlate to the specific generic term most descriptive of a firm's services. Competition for these limited toll-free numbers is extremely intense; companies often pay large sums for the right to use them… To permit a company to foreclose usage of a toll-free mnemonic number that spells a generic term would give that company an unfair competitive advantage in the market and deprive consumers of the intrinsic utilitarian value that such numbers offer……Simply put, within the circumstance of telephone number designations, the number 800 is a functional term that represents a toll-free area code. A service mark that uses "800" with a generic term cannot as a matter of law preclude use of substantially similar telephone numbers…[Footnotes and authority deleted.]"
    • In Re Joseph Edward Page, Serial No. 75/066,101. (TTAB 1999)
      • The Trademark Manual of Examining Procedure sets forth the following general guidelines with respect to the registrability of telephone numbers (TMEP 1209.01(b)(12)):
        "If an applicant applies to register a designation that consists of a merely descriptive or generic term with numerals in the form of a telephone number, for example, 800, 888 or 900 followed by a word, registration should be refused under § 2(e)(1). The fact that a designation is in the form of a telephone number is insufficient, by itself, to render it distinctive. See Dranoff-Perlstein Associates v. Sklar, 23 USPQ2d 1174 (3d Cir. 1992). But see Dial-AMattress Franchise Corp. v. Page, 880 F.2d 675, 11 USPQ2d 1644 (2d Cir. 1989); Murrin v. Midco Communications Inc., 726 F. Supp. 1195, 13 USPQ2d 1815 (D. Minn. 1989). 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. Of course, the designation must also be used in the manner of a mark. If the relevant term is generic, the designation is unregisterable on either the Principal or the Supplemental Register."
    • In Re Joseph Edward Page, Serial No. 75/066,101. (TTAB 1999)
      • In our opinion, the numerals in applicant's asserted mark are not sufficient to change the perception of the term PATENTS as being merely descriptive, and, therefore, we find that the mark as a whole is merely descriptive of applicant's services. That is to say, the 888 prefix in the mark does not have any source-identifying significance. Rather, in our view, the numbers will be readily perceived as nothing more than the prefix used in a toll-free telephone number, without trademark (or service mark) significance. Therefore, the mark as a whole merely describes the patent services available from applicant.
  • A component of a mark is unregistrable if, when used in connection with applicant's goods, it is merely descriptive of the goods under Section 2(e)(1) of the Trademark Act.
    • In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007)
      • As provided in Section 6(a) of the Trademark Act, the Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable. A component of a mark is unregistrable if, when used in connection with applicant's goods, it is merely descriptive of the goods under Section 2(e)(1) of the Trademark Act.
  • Third party registrations show the sense in which the word is used in ordinary parlance and may show that a particular term has descriptive significance as applied to certain goods or services.
    • In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007)
      • Applicant's goods are clothes. It is clear from the dictionary references that "togs" is a generic, interchangeable word for "clothes" or "clothing." The third-party registrations also demonstrate the descriptive/generic significance of "togs" and provide further evidence that purchasers would attribute the ordinary dictionary meaning of "togs" to applicant's clothing.5 See Institut National Des Appellations D'Origine v. Vintners International Co., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992) ("Such third party registrations show the sense in which the word is used in ordinary parlance and may show that a particular term has descriptive significance as applied to certain goods or services.").
  • A slight misspelling is not sufficient to change a descriptive or generic word into a suggestive word.
    • In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007)
      • The generic meaning of "togs" is not overcome by the misspelling of the term as TOGGS in applicant's mark. A slight misspelling is not sufficient to change a descriptive or generic word into a suggestive word. See, e.g., Nupla Corp. v. IXL Manufacturing Co., 114 F.3d 191, 42 USPQ2d 1711, 1716 (Fed. Cir. 1997) (CUSH-N-GRIP "which is merely a misspelling of CUSHIONGRIP, is also generic as a matter of law"); In re Quik Print Copy Shop, Inc., 616 F.2d 523, 205 USPQ 505, 507 n.9 (CCPA 1980) ("There is no legal difference here between 'quik' and 'quick.'"); King-Kup Candies, Inc. v. King Candy Co., 288 F.2d 944, 129 USPQ 272, 273 (CCPA 1961) ("the syllable 'Kup,' which is the full equivalent of the word 'cup,' is descriptive"); and Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d 1628, 1630 (TTAB 1998) ("'mass flow' [is] generic" as applied to mass flowmeters and "the term MASSFLO likewise is generic" as applied to those goods).
  • Definition: Unitary Mark.
    • In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007)
      • As explained by the Federal Circuit in Dena Corp., supra at 1052, a mark that is unitary "has certain observable characteristics. Specifically, its elements are inseparable. In a unitary mark, these observable characteristics must combine to show that the mark has a distinct meaning of its own independent of the meaning of its constituent elements. In other words, a unitary mark must create a single and distinct commercial impression.
  • Test for a unitary mark.
    • In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007)
      • This test for unitariness requires the Board to determine "how the average purchaser would encounter the mark under normal marketing of such goods and also...what the reaction of the average purchaser would be to this display of the mark." Magic Muffler, 184 USPQ at 126."
  • Case Finding: "Zoggs Toggs" is not a unitary mark.
    • In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007)
      • We disagree with applicant that ZOGGS TOGGS is a unitary mark. The two terms are visually similar, but they are not physically joined or otherwise so visually integrated that TOGGS would not be viewed as a separable element. The two words rhyme, but the rhyming quality imparts no new or different meaning to TOGGS apart from its meaning as a generic term for clothing. In other words, there is nothing in the composite mark ZOGGS TOGGS either visually or conceptually which causes the word TOGGS to lose its ordinary meaning as a generic word.
  • Alliterative or repeated wording is not sufficient to negate the descriptive meaning of a term in the mark as a whole.
    • In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007)
      • Applicant has pointed to no cases, nor have we found any, where the mere fact that the terms look similar and/or sound similar is sufficient to overcome the descriptive meaning of a mark or portion of a mark. In fact, the Board has found in a number of cases that alliterative or repeated wording is not sufficient to negate the descriptive meaning of a term in the mark as a whole. See, for example, In re Litehouse Inc., 82 USPQ2d 1471, 1474 (TTAB 2007) (CAESAR!CAESAR! for salad dressing not unitary; "neither the mere repetition of the word CAESAR in applicant's mark, nor the presence of the exclamation points in the mark, nor both of these features combined, suffices to negate the mere descriptiveness of the mark as a whole as applied to salad dressings."); In re Disc Jockeys, Inc., 23 USPQ2d 1715, 1716 (TTAB 1992) (finding DJDJ to be merely descriptive of disc jockey services, the Board explained, "the combinations of these words would not, simply because of their repetition, be rendered something more than descriptive," and specifically noted that "there is nothing in the composite which changes the meaning of the letters in any manner which would give them a different meaning."); and In re Lean Line, Inc., 229 USPQ 781, 782 (TTAB 1986) (LEAN LINE for low calorie foods not unitary; "there is nothing in the record to suggest that the mere fact that both words which form the mark begin with the letter 'L' would cause purchasers to miss the merely descriptive significance of the term 'LEAN' or consider the entire mark to be a unitary expression."). See also J & J Snack Foods, Corp. v. Earthgrains Co. 220 F.Supp.2d 358, 65 USPQ2d 1897, 1912 (D.N.J. 2002) (rejecting the argument that BREAK & BAKE for a type of cookie dough is suggestive because it is novel, creative, playful and unconventional because "it does not change the fact that 'BREAK & BAKE' is a succinct and exact definition of the use of this particular type of cookie dough.").
  • Case Finding: "Light ‘N Lively" is a unitary mark.
    • In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007)
      • We also note that in In re Kraft, 218 USPQ 571, 573 (TTAB 1983), the Board's finding that LIGHT 'N LIVELY for reduced calorie mayonaise was unitary was based not only on the "alliterative lilting cadence" of the wording but also on the fact that the mark as a whole "has a suggestive significance which is distinctly different from the merely descriptive significance of the term 'LIGHT' per se" and that "the merely descriptive significance of the term 'LIGHT' is lost in the mark as a whole."
  • Case Finding: Cases which found that a mark was unitary where the combination of terms results in a separate and distinct meaning or commercial impression apart from or in addition to its descriptive meaning.
    • In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007)
      • Indeed, as in Kraft, other cases have found that a mark is unitary where the combination of terms results in a separate and distinct meaning or commercial impression apart from or in addition to its descriptive meaning. See, for example, In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (finding SUGAR & SPICE not merely descriptive of bakery products, the Court noted that the mark was not only descriptive but also evoked an association with the nursery rhyme, "sugar and spice and everything nice"); No Nonsense Fashions, Inc. v. Consolidated Foods Corporation, 226 USPQ 502, 507 (TTAB 1985) (SHEER ELEGANCE not descriptive of pantyhose; while the individual components are descriptive "the composite term has an unmistakable 'double entendre'"); In re Priefert Mfg. Co., Inc., 222 USPQ 731, 733 (TTAB 1984) (HAY DOLLY not merely descriptive of self-loading trailers for hauling bales; "phonetically the term is equivalent to the expression 'Hey Dolly,' giving the mark a commercial impression which transcends that which emerges as a result of legal analysis."); and In re Delaware Punch Company, 186 USPQ 63, 64 (TTAB 1975) (THE SOFT PUNCH for noncarbonated, non-alcoholic beverage not merely descriptive; the mark "possesses a degree of ingenuity in its phraseology which is evident in the double entendre that it projects.").
  • Case Finding: "Toggs" must be disclaimed as it is a generic term.
    • In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007)
      • Despite the rhyming quality of the words ZOGGS TOGGS and their visual similarity, the combination does not infuse TOGGS with any separate and distinct meaning apart from its generic meaning. We find that even when the two terms are combined, TOGGS retains its plain meaning as a generic term. Accordingly, the term TOGGS must be disclaimed.
  • In an ex parte proceeding, an applicant is not permitted to overcome a refusal by arguing that a cited registration is merely descriptive.
    • In re Fiesta Palms, LLC, Serial No. 76595049, (TTAB 2007).
      • Before we begin our discussion of the marks, we point out that this is an ex parte proceeding, and applicant is not permitted to overcome a refusal by arguing that a cited registration is merely descriptive. The Court stated in In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997): "Dixie's argument that DELTA is not actually used in connection with restaurant services amounts to a thinly-veiled collateral attack on the validity of the registration. It is true that a prima facie presumption of validity may be rebutted. See Dan Robbins & Assocs., Inc. v. Questor Corp., 599 F.2d 1009, 1014, 202 USPQ 100, 105 (CCPA 1979). However, the present ex parte proceeding is not the proper forum for such a challenge. Id. ("One seeking cancellation must rebut [the prima facie] presumption by a preponderance of the evidence."); Cosmetically Yours, Inc. v. Clairol Inc., 424 F.2d 1385, 1387, 165 USPQ 515, 517 (CCPA 1970); TMEP Section 1207.01(c)(v) (1993); 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition Section 23.24[1] [c] (3d ed. 1996). In fact, Cosmetically Yours held that "it is not open to an applicant to prove abandonment of [a] registered mark" in an ex parte registration proceeding; thus, the "appellant's argument … that [a registrant] no longer uses the registered mark … must be disregarded." 424 F.2d at 1387, 165 USPQ at 517; cf. In re Calgon Corp., 435 F.2d 596, 598, 168 USPQ 278, 280 (CCPA 1971) (applicant's argument that its use antedated a registered mark was effectively an improper collateral attack on the validity of the registration, which should have been made in formal cancellation proceedings)." See also Hecon Corporation v. Magnetic Video Corporation, 199 USPQ 502, 507 (TTAB 1978) ("Applicant has also contended that the term ‘COPYCORDER' is ‘particularly descriptive' of opposer's goods and thus is entitled to but a limited scope of protection. Aside from the fact that the term ‘COPYCORDER' is, in our opinion, only suggestive as applied to either opposer's or applicant's goods, the assertion of descriptiveness constitutes a collateral attack upon the validity of opposer's pleaded registration and as such cannot be entertained herein in the absence of a counterclaim to cancel the same"). Therefore, inasmuch as the cited mark is registered on the Principal Register, we must assume that it is at least suggestive and we cannot entertain applicant's argument that the registered mark is descriptive of registrant's services.
  • The examining attorney is not required to prove that the public would actually view a proposed mark as descriptive, but must establish a reasonable predicate for the refusal, based on substantial evidence, i.e., more than a scintilla of evidence.
    • In re Microsoft Corporation, Serial No. 78/013678, (TTAB 2003).
      • The examining attorney is not required to prove that the public would actually view a proposed mark as descriptive, but must establish a reasonable predicate for the refusal, based on substantial evidence, i.e., more than a scintilla of evidence. In re Pacer Technology, __ F.3d __, 67 USPQ2d 1629 (Fed. Cir. 2003).
  • Top Level Domains (i.e., .net, .com, etc.) do not add source identifying significance when combined with another term.
    • In re Microsoft Corporation, Serial No. 78/013678, (TTAB 2003).
      • The examining attorney also points out that .NET is a TLD and has cite an Office "Examination Guide" and the TMEP to show that a TLD "does not add source identifying significance" when combined with another term. We find that .net or .NET designate a TLD. See footnote 9, supra, and Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 50 USPQ2d 1545, 1558 (9th Cir. 1999) ("Web addresses are not caps-sensitive"); see also, Entrepreneur Media Inc. v. Smith d/b/a EntrepreneurPR, 279 F3d 1135, 61 USPQ2d 1705, 1712 (9th Cir. 2002); and Ford Motor Co. v. Lapertosa, 126 F.Supp2d 463, 62 USPQ2d 1789, 1792 n.2 (E.D. Mich. 2001)..
  • A Top Level Domain Name, whether capitalized or lower-case, does not add source identifying significance.
    • In re Microsoft Corporation, Serial No. 78/013678, (TTAB 2003).
      • Moreover, applicant has not offered any explanation why the average prospective purchaser of computer hardware or software would perceive .NET, i.e., the capitalized presentation of the TLD .net, as a brand name rather than simply a capitalized TLD.12 See In re Taylor & Francis [Publishers] Inc., 55 USPQ2d 1213, 1215 (TTAB 2000) ("applicant is a ‘publishing establishment' of the type covered by the above-quoted dictionary definition of ‘press.' Applicant has not shown that the word PRESS, as it is used by applicant [in PSYCHOLOGY PRESS], would have any other meaning or significance to the relevant purchasing public").

        FOOTNOTE 12 "Applicant has not claimed that TLDs are case sensitive and that web sites can only be accessed by typing a TLD in lower case lettering, i.e., it has not argued that .NET, if typed as part of web address would not work the same as .net. Nor does it appear that applicant could make this argument. See Brookfield Communications, Entrepreneur Media, and Ford Motor, supra."

  • Case Finding: Cases which found marks with TLDs generic for the specified goods and services.
    • In re Microsoft Corporation, Serial No. 78/013678, (TTAB 2003).
      • Rather, on this record, we find the average prospective purchaser of applicant's software, which includes a "full line of application and business software," would perceive the designation as describing "office" type software. See In re CyberFinancial.Net Inc., 65 USPQ2d 1789 (TTAB 2002) (BONDS.COM found generic for "providing information regarding financial products and services via a global computer network and providing electronic commerce services via a global computer network, namely, investment research, subscription services, market commentary, portfolio analysis, debt instrument conversion, yield performance, and pricing analysis, with respect to taxable and tax exempt debt instruments, and other related investment products and services, namely, investment securities"); In re Martin Container Inc., 65 USPQ2d 1058 (TTAB 2002) (CONTAINER.COM found generic for "buying, selling, and renting metal shipping containers").
  • There is nothing in the combination of a descriptive term and a TLD, as contrasted with the combination of a generic term and a TLD, that renders the composite registrable on the Principal Register without a showing of acquired distinctiveness
    • In re Microsoft Corporation, Serial No. 78/013678, (TTAB 2003).
      • We find there is nothing in the combination of a descriptive term and a TLD, as contrasted with the combination of a generic term and a TLD, that renders the composite registrable on the Principal Register without a showing of acquired distinctiveness.
    • In re Microsoft Corporation, Serial No. 78/013678, (TTAB 2003).
      • In any event, our determination of whether the composite should be refused registration under Section 2(e)(1) is based on our consideration of the whole, not its parts. 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 a Internet business, i.e., a ".net" type business. See In re Taylor & Francis [Publishers] Inc., supra at 1216 (TTAB 2000) (PSYCHOLOGY and PRESS, "each merely descriptive of applicant's identified goods… in combination are likewise merely descriptive. PSYCHOLOGY PRESS directly and immediately informs purchasers that the books bearing those words pertain to psychology, and that they emanate from a publishing establishment (a ‘press')."); and In re Patent & Trademark Services Inc., supra at 1539 (TTAB 1998) ("it is clear that the phrase PATENT & TRADEMARK SERVICES, INC. immediately conveys information concerning characteristics or features of applicant's legal representation services, namely, that the services are rendered with respect to patents and trademarks, and that they are rendered by a corporation").
  • A registration affords prima facie rights in the mark as a whole, not in any component. Thus, a showing of descriptiveness or genericness of part of a mark does not constitute an attack on the registration.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • FOOTENOTE 5 "Applicant has not counterclaimed to cancel opposer's other pleaded registration for DARJEELING and design even though it too contains the word DARJEELING. Nevertheless, we do not consider the counterclaim against DARJEELING to constitute a collateral attack on the registration which consists only in part of DARJEELING. See Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1796 (Fed. Cir. 1987) ("The registration affords prima facie rights in the marks as a whole, not in any component. Thus, a showing of descriptiveness or genericness of part of a mark does not constitute an attack on the registration.") (Emphasis in original.)"
  • If imagination, thought or perception is required to reach a conclusion on the nature of the goods or services, the mark is suggestive and registrable.
    • In re Box Solutions Corp., Serial No. 76267086, (TTAB 2006).
      • On the other hand, if imagination, thought or perception is required to reach a conclusion on the nature of the goods or services, the mark is suggestive and registrable. See In re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001); and In re Gyulay, supra.
  • There is a thin line between terms that are merely descriptive and those that are suggestive.
    • In re Box Solutions Corp., Serial No. 76267086, (TTAB 2006).
      • It has long been acknowledged that there is a thin line between terms that are merely descriptive and those that are suggestive. See In re Atavio Inc., 25 USPQ2d 1361 (TTAB 1992).
  • Third-party registrations can be used in the manner of a dictionary definition to illustrate how a term is perceived in the trade or industry.
    • In re Box Solutions Corp., Serial No. 76267086, (TTAB 2006).
      • Third-party registrations can be used in the manner of a dictionary definition to illustrate how a term is perceived in the trade or industry. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987) ("Said third party registrations are of use only if they tend to demonstrate that a mark or a portion thereof is suggestive or descriptive of certain goods and hence is entitled to a narrow scope of protection. Used in this limited manner, ‘third party registrations are similar to dictionaries showing how language is generally used.'") (Internal citation omitted.)
    • In re Box Solutions Corp., Serial No. 76267086, (TTAB 2006).
      • "Such third party registrations show the sense in which the word is used in ordinary parlance and may show that a particular term has descriptive significance as applied to certain goods or services." Institut National Des Appellations D'Origine v. Vintners International Co., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992) (third-party registrations found to be "persuasive evidence").
    • In re Box Solutions Corp., Serial No. 76267086, (TTAB 2006).
      • As shown by the examining attorney's evidence, the term "SOLUTIONS" has been regarded as merely descriptive in a number of third-party marks, the registrations of which include disclaimers of the term "SOLUTIONS." See General Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270, 1277 (TTAB 1972) ("Although the registrations are not evidence of use, the registrations show the sense in which the term ‘fiber' is employed in the marketplace, similar to a dictionary definition.").
  • Each case must be decided on its own merits. The TTAB is not privy to the records in the files of cited third-party regisrations and, moreover, the determination of registrability of particular marks by the Trademark Examining Groups cannot control the result in another case involving a different mark for different goods and/or services.
    • In re Styleclick.com Inc., Serial No. 75/459,910, (TTAB 2000).
      • As often noted by the Board, each case must be decided on its own merits. We are not privy to the records in the files of the cited registrations and, moreover, the determination of registrability of particular marks by the Trademark Examining Groups cannot control the result in another case involving a different mark for different goods and/or services.
    • In re Styleclick.com Inc., Serial No. 75/459,912, (TTAB 2001).
      • While uniform treatment under the Trademark Act is an administrative goal, our task in this appeal is to determine, based on the record before us, whether applicant's mark is merely descriptive. As often noted by the Board, each case must be decided on its own merits. We are not privy to the records in the files of the cited registrations and, moreover, the determination of registrability of particular marks by the Trademark Examining Groups cannot control the result in another case involving a different mark for different goods and/or services. See: In re Nett Designs, Inc., ___USPQ2d___, Appeal No. 00-1075, (Fed. Cir. January 9, 2001)["Even if some prior registrations had some characteristics similar to [appliant's] application, the PTO's allowance of such prior registrations does not bind the Board or this court."].
    • In re The Place, Inc., Serial No. 76436826, (TTAB 2005).
      • However, as expressly stated by the court in In re Nett Designs, supra, 57 USPQ2d at 1566, "The Board must decide each case on its own merits. … Even if some prior registrations had some characteristics similar to Nett Designs' application, the PTO's allowance of such prior registrations does not bind the Board or this court." (Internal citation omitted.)
    • In re Finisar Corporation, Serial No. 76300876, (TTAB 2006).
      • However, as expressly stated by the court in In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001), "The Board must decide each case on its own merits, … Even if some prior registrations had some characteristics similar to Nett Designs' application, the PTO's allowance of such prior registrations does not bind the Board or this court. (Internal citation omitted.) Cf. In re First Draft, Inc., 76 USPQ2d 1183 (TTAB 2005) (even proof that various examining attorneys have registered a particular type of mark in the past does not establish that there is an Office practice holding such marks are generally registrable.)
    • In re America Online, Inc., Serial No. 75460305, (TTAB 2006).
      • Applicant points to numerous registrations that the Office has issued for various marks that contain either the term "instant" or "messenger" as evidence that its term INSTANT MESSENGER is not merely descriptive. In these registrations, the marks are registered on the Principal Register without a disclaimer of the term or an indication that the registration is under the provision of Section 2(f). In response to applicant's argument, we note that even "if some prior registrations had some characteristics similar to [applicant's] application, the PTO's allowance of such prior registrations does not bind the Board or this court." In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
    • In re Finisar Corporation, Serial No. 76300876, (TTAB 2006).
      • While uniform treatment is a goal, our task is to determine based on the record before us, whether applicant's mark is merely descriptive. In re Cryomedical, supra.
  • "e-" is a prefix which is recognized as meaning "electronic" in terms of computers and the Internet and must be kept available for competitive use by others.
    • In re Styleclick.com Inc., Serial No. 75/459,910, (TTAB 2000).
      • In sum, "e-," when used as a prefix in the manner of applicant's mark, has the generally recognized meaning of "electronic" in terms of computers and the Internet. When this non-source-identifying prefix is coupled with the descriptive word "fashion," the mark E FASHION, as a whole, is merely descriptive for applicant's goods and/or services. That applicant may be the first or only entity using E FASHION is not dispositive. See: In re Central Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998).
    • In re Styleclick.com Inc., Serial No. 75/459,910, (TTAB 2000).
      • As the Internet continues to grow, merely descriptive "e-" prefix terms for Internet-related goods and/or services must be kept available for competitive use by others.
  • The intent of Section 2(e)(1) is to protect the competitive needs of others, that is, descriptive words must be left free for public use.
    • In re Styleclick.com Inc., Serial No. 75/459,910, (TTAB 2000).
      • The intent of Section 2(e)(1) is to protect the competitive needs of others, that is, "descriptive words must be left free for public use." In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382, 383 (CCPA 1968).
    • In re Styleclick.com Inc., Serial No. 75/459,912, (TTAB 2001).
      • The intent of Section 2(e)(1) is to protect the competitive needs of others, that is, "descriptive words must be left free for public use." In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382, 383 (CCPA 1968).
    • The Goodyear Tire & Rubber Company v. Continental General Tire, Inc., Opposition No. 91/118,372, (TTAB 2003).
      • What we draw from these decisions is yet another reminder that each case must be decided on the factual evidence placed into the record in that particular case, and that the intent of Section 2(e)(1) is to protect the competitive needs of others, namely, that "descriptive words must be left free for public use." In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382, 383 (CCPA 1968).
  • That applicant may be the first, only, or one of the few using a term or mark is not dispositive in a finding of descriptiveness where the term unequivocally projects a merely descriptive connotation.
    • In re Styleclick.com Inc., Serial No. 75/459,912, (TTAB 2001).
      • In sum, "virtual," when used as it is in applicant's mark, has a generally recognized meaning in terms of computers and the Internet. When this non-source identifying prefix is coupled with the descriptive word "fashion," the mark VIRTUAL FASHION, as a whole, is merely descriptive for applicant's goods and/or services. That applicant may be the first or only entity using VIRTUAL FASHION is not dispositive. See: In re Central Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998).
    • In re Sun Microsystems, Inc., Serial No. 75/430,946, (TTAB 2001).
      • Likewise, the fact that applicant may be the first and/or only entity using the phrase AGENTBEANS is not dispositive where, as here, the term unequivocally projects a merely descriptive connotation. See In re MBAssociates, 180 USPQ 338, 339 (TTAB 1973).
    • In re Zanova, Inc., Serial No. 75/519,495, (TTAB 2001).
      • Likewise, the fact that applicant may be the first and/or one of the few entities using the term is not dispositive where, as here, the term unequivocally projects a merely descriptive connotation. See In re MBAssociates, 180 USPQ 338, 339 (TTAB 1973).
    • In re Hunter Fan Company, Serial No. 78195616, (TTAB 2006).
      • However, a word need not be in common use in an industry to be descriptive, and the mere fact that an applicant is the first to use a descriptive term in connection with its goods, does not imbue the term with source-identifying significance. In re National Shooting Sports Foundation, Inc., 219 USPQ 1018, 1020 (TTAB 1983) (the fact that the applicant may be the first to use a merely descriptive designation does not "justify registration if the term projects only merely descriptive significance.").
    • In re Alpha Analytics Investment Group, LLC, Serial No. 75/829,220, (TTAB 2002).
      • As for the asserted "uniqueness" of the designation ALPHA ANALYTICS, it is well settled that the fact that an applicant may be the first or only user of a term does not justify registration of the term where the only significance projected by the term is merely descriptive, as we find to be the case here. See In re National Shooting Sports Foundation, Inc., 219 USPQ 1018 (TTAB 1983).
  • Case Finding: As the Internet continues to grow, merely descriptive "virtual" terms for Internet-related goods and/or services must be kept available for competitive use by others.
    • In re Styleclick.com Inc., Serial No. 75/459,912, (TTAB 2001).
      • As the Internet continues to grow, merely descriptive "virtual" terms for Internet-related goods and/or services must be kept available for competitive use by others.
  • Terms which, when considered individually are descriptive of a product or service may, nonetheless, be combined to create a trademark.
    • In re Sun Microsystems, Inc., Serial No. 75/430,946, (TTAB 2001).
      • Applicant is correct in its observation that terms which, when considered individually are descriptive of a product or service may, nonetheless, be combined to create a trademark.
  • The presence of a term in the dictionary is not a condition precedent for a finding that a term is merely descriptive.
    • In re Sun Microsystems, Inc., Serial No. 75/430,946, (TTAB 2001).
      • The fact that AGENTBEANS does not appear in a dictionary is not determinative. See In re Orleans Wines Ltd., 196 USPQ 516 (TTAB 1977).
    • In re Zanova, Inc., Serial No. 75/519,495, (TTAB 2001).
      • The fact that ITOOL does not appear in a dictionary is not determinative. See In re Orleans Wines Ltd., 196 USPQ 516 (TTAB 1977).
    • In re Planalytics, Inc., Serial No. 76322156, (TTAB 2004).
      • While applicant notes that "[n]o such word as GASBUYER really exists in the dictionary" (Applicant's Brief at 11), the presence of a term in the dictionary is not a condition precedent for a finding that a term is merely descriptive. In re Gould Paper, supra (SCREENWIPE); In re Abcor Dev., supra (GASBADGE); In re Tower Tech, Inc., 64 USPQ2d 1314 (TTAB 2002) (SMARTTOWER merely descriptive, no dictionary definition of term).
  • The fact that an applicant may be the first and only user of a ... designation does not justify registration if the term is merely descriptive.
    • In re Mine Safety Appliances Company, Serial No. 75/501,608, (TTAB 2002).
      • The Examining Attorney correctly points out, in addition, that: "The fact that a term is not found in the dictionary is not controlling on the question of registrability. In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987); In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB 1977). For that matter, the fact that an applicant may be the first and only user of a ... designation does not justify registration if the term is merely descriptive. In re National Shooting Sports Foundation, Inc., 219 USPQ 1018 (TTAB 1983)."
  • Generic terms are just as generic and not incongruous when used in combination.
    • In re Sun Microsystems, Inc., Serial No. 75/430,946, (TTAB 2001).
      • We disagree, however, with applicant's conclusion that AGENTBEANS is suggestive or fanciful and find that the terms "agent" and "beans" when combined are no less descriptive than the terms are individually, considered in conjunction with applicant's goods. See, e.g., In re Copytele Inc., 31 USPQ2d 1540 (TTAB 1994) (combination of SCREEN FAX PHONE held merely descriptive and without incongruity resulting from combination), and In re Lowrance Electronics, 14 USPQ2d 1251 (TTAB 1989) (generic terms COMPUTER and SONAR held just as generic and not incongruous when used in combination).
  • It is not necessary that the term be in common usage in the particular industry before it can be found merely descriptive.
    • In re Sun Microsystems, Inc., Serial No. 75/430,946, (TTAB 2001).
      • Moreover, it is not necessary that the term be in common usage in the particular industry before it can be found merely descriptive. See In re National Shooting Sports Foundation, Inc., 219 USPQ 1018, 1020 (TTAB 1983).
  • Third party registrations are not determinative of the question of registrability of applicant's proposed mark.
    • In re Sun Microsystems, Inc., Serial No. 75/430,946, (TTAB 2001).
      • Finally, we agree with the Examining Attorney that third party registrations also are not determinative of the question of registrability of applicant's proposed mark. It is well settled that each case must be taken on its own facts. In re Pennzoil Products Co., 20 USPQ2d 1753, 1758 (TTAB 1991); and In re Inter-State Oil Co., Inc., 219 USPQ 1229, 1231 (TTAB 1983).
  • Given the rapid changes in the computer industry, registration of some of the marks may have resulted from the lack of evidence that would have supported a refusal at the time the underlying applications were reviewed.
    • In re Sun Microsystems, Inc., Serial No. 75/430,946, (TTAB 2001).
      • Moreover, we agree with the Examining Attorney that the "vocabulary used in the computer field changes rapidly" and registration of some of the marks may have resulted from the lack of evidence that would have supported a refusal at the time the underlying applications were reviewed.
  • Case Finding: It is not necessary that a prospective purchaser of applicant's goods or services be immediately apprised of the full panoply of features of applicant's goods or services for the term to be found merely descriptive.
    • In re Zanova, Inc., Serial No. 75/519,495, (TTAB 2001).
      • Thus, it is not necessary, in this instance, that a prospective purchaser of applicant's goods or services be immediately apprised of the full panoply of features of applicant's goods or services for the term ITOOL to be found merely descriptive.
  • Terms which, when considered individually, are descriptive of a product or service may, nonetheless, be combined to create a trademark.
    • In re Zanova, Inc., Serial No. 75/519,495, (TTAB 2001).
      • Applicant is correct in its observation that terms which, when considered individually, are descriptive of a product or service may, nonetheless, be combined to create a trademark.
  • Case Finding: The term "ITOOL" was found merely descriptive.
    • In re Zanova, Inc., Serial No. 75/519,495, (TTAB 2001).
      • In short, it is abundantly clear that the term "Internet tools" not only describes a wide array of software and related services, but also aptly describes applicant's goods and services. Likewise, the evidence demonstrates that the term "tool" itself is, contrary to applicant's argument, also descriptive of applicant's goods and services. Thus, the question we are left with is whether, as applicant contends, the combination of "I" and "TOOL" creates a registrable composite. We find that it does not.
    • In re Zanova, Inc., Serial No. 75/519,495, (TTAB 2001).
      • We disagree, however, with applicant's conclusion that ITOOL is suggestive and find that the designation "I" and the term "tool," when combined, are no less descriptive than they are individually. See, e.g., In re Copytele Inc., 31 USPQ2d 1540 (TTAB 1994) (combination of SCREEN FAX PHONE held merely descriptive and without incongruity resulting from combination), and In re Lowrance Electronics, 14 USPQ2d 1251 (TTAB 1989) (generic terms COMPUTER and SONAR held just as generic and not incongruous when used in combination).
    • In re Zanova, Inc., Serial No. 75/519,495, (TTAB 2001).
      • In sum, we find that prospective purchasers of applicant's goods or services, if confronted with ITOOL used in conjunction therewith, would, without need of thought, imagination or perception, be immediately apprised of the nature of applicant's goods and services, i.e., that its software is an "Internet tool" that allows users to create a web page and its services involve using such tool to design web pages for others.
  • A term which describes the provider of goods or services is also merely descriptive of those goods and services.
    • In re Major League Umpires, Serial No. 75/154,506, (TTAB 2001).
      • It is well-established that a term which describes the provider of goods or services is also merely descriptive of those goods and services. In re E. I. Kane Inc., 221 USPQ 1203 (TTAB 1984), and cases cited therein.
  • If a mark is merely descriptive of a characteristic of the goods or services, there would be no need to reach the question of whether the mark also describes the provider of the service.
    • In re Major League Umpires, Serial No. 75/154,506, (TTAB 2001).
      • Generally, if a mark is merely descriptive of a characteristic of the goods or services, there would be no need to reach the question of whether the mark also describes the provider of the service.
  • If it is not clear whether the mark describes a significant characteristic of the goods in terms of the purchasers, the TTAB may not be able to say that the mark is merely descriptive on this basis.
    • In re Major League Umpires, Serial No. 75/154,506, (TTAB 2001).
      • We would point out that although applicant characterizes its customers as the general public, in fact, its goods are directed at only those members of the general public who are umpires, a much smaller group. Looking at this group, we cannot determine, on this record, whether a significant number of the purchasers of applicant's identified goods would be major league umpires, as opposed to minor league or Little League or other umpires. Accordingly, we cannot determine that the mark is descriptive of a significant number of the purchasers of the goods. Therefore, because it is not clear whether the mark describes a significant characteristic of the goods in terms of the purchasers, we cannot say that the mark is merely descriptive on this basis.
  • Case Finding: "Portfolio Update" immediately describes, without conjecture or speculation, a significant feature or function of applicant's services, namely, that applicant provides information updates relevant to a customer's securities portfolio.
    • In re Fitch IBCA, Inc., Serial No. 75/628,232, (TTAB 2002).
      • In conclusion, considered in connection with applicant's services, the term PORTFOLIO UPDATE immediately describes, without conjecture or speculation, a significant feature or function of applicant's services, namely, that applicant provides information updates relevant to a customer's securities portfolio. Nothing requires the exercise of imagination, cogitation, mental processing or gathering of further information in order for purchasers of and prospective customers for applicant's services to readily perceive the merely descriptive significance of the term PORTFOLIO UPDATE as it pertains to applicant's services.
  • A suggestive term differs from a descriptive term, which immediately tells something about the goods and/or services.
    • Callaway Vineyard & Winery v. Endsley Capital Group, Inc., Opposition No. 121,583, (TTAB 2002).
      • A suggestive term differs from a descriptive term, which immediately tells something about the goods and/or services. See Gyulay, supra.
  • Case Finding: In light of the widespread use of the terms "coastal" and "coastal winery," the absence of the term "coastal" in the reference publications reviewed by applicant's counsel is not sufficient to raise a genuine issue of material fact.
    • Callaway Vineyard & Winery v. Endsley Capital Group, Inc., Opposition No. 121,583, (TTAB 2002).
      • As the evidence shows, the word "coastal" or the phrase "coastal winery" is frequently used to denote the place or establishment where wine is manufactured. In light of the widespread use of the terms "coastal" and "coastal winery," the absence of the term "coastal" in the reference publications reviewed by applicant's counsel is not sufficient to raise a genuine issue of material fact.
    • Callaway Vineyard & Winery v. Endsley Capital Group, Inc., Opposition No. 121,583, (TTAB 2002).
      • The fact that the term "coastal" is not an appellation or a viticultural area might suffice to raise an issue of material fact if the issue before us was whether applicant's proposed mark is generic. However, it does not raise a genuine issue of material fact with respect to the issue of mere descriptiveness inasmuch as opposer need only prove that applicant's proposed mark describes a feature, quality, purpose, characteristic, etc. of the goods.
  • The equitable defenses of laches, estoppel, and acquiescence cannot be asserted against a claim of descriptiveness.
    • Callaway Vineyard & Winery v. Endsley Capital Group, Inc., Opposition No. 121,583, (TTAB 2002).
      • The equitable defenses of laches, estoppel, and acquiescence cannot be asserted against a claim of descriptiveness. See TBC Corporation v. Grand Prix Ltd., 12 USPQ2d 1311 (TTAB 1989); Bausch & Lomb, Inc. v. Leupold & Stevens Inc., 1 USPQ2d 1497 (TTAB 1986); Care Corp. v. Nursecare International, Inc., 216 USPQ 993 (TTAB 1982); Yankee, Inc. v. Geiger, 216 USPQ 996 (TTAB 1982); Southwire Co. v. Kaiser Aluminum & Chemical Corp., 196 USPQ 566 (TTAB 1977); Kaiser Aluminum & Chemical Corp. v. American Meter Co., 153 USPQ 419 (TTAB 1967).
  • The factual situations in which mere descriptiveness must be resolved are too varied to lend themselves to resolution under any rigid formula.
    • In re Tower Tech, Inc., Serial No. 75/709,532, (TTAB 2002).
      • "The factual situations in which mere descriptiveness must be resolved are too varied to lend themselves to resolution under any rigid formula." In re Omaha National Corporation, 819 F.2d 1117, 2 USPQ2d 1859, at 1861 (Fed. Cir. 1987).
    • The Goodyear Tire & Rubber Company v. Continental General Tire, Inc., Opposition No. 91/118,372, (TTAB 2003).
      • In this regard, we note that "[t]he factual situations in which mere descriptiveness must be resolved are too varied to lend themselves to resolution under any rigid formula." In re Omaha National Corporation, 819 F.2d 1117, 2 USPQ2d 1859, 1861 (Fed. Cir. 1987).
    • The Goodyear Tire & Rubber Company v. Continental General Tire, Inc., Opposition No. 91/118,372, (TTAB 2003).
      • And again, we find that the correct resolution of the issue before us is not subject to such a rigid formulation. In re Omaha National Corporation, supra.
  • A term which otherwise would be considered an arbitrary, fanciful or suggestive mark, when used in connection with goods or services to identify and distinguish the source thereof, does not lose such characterization or status, and become merely descriptive of the goods or services, simply because the term could literally designate a theme of the goods or services, e.g., the trade dress of a product or the décor of an entertainment facility, when so used.
    • In re Ruffin Gaming, LLC, Serial No. 75/899,614, (TTAB 2002).
      • As a general proposition, we note that a term which otherwise would be considered an arbitrary, fanciful or suggestive mark, when used in connection with goods or services to identify and distinguish the source thereof, does not lose such characterization or status, and become merely descriptive of the goods or services, simply because the term could literally designate a theme of the goods or services, e.g., the trade dress of a product or the décor of an entertainment facility, when so used.5 That is, just because such a term could thematically describe a trade dress or décor, that does not make the term merely descriptive if the trade dress or décor is arbitrary, fanciful or suggestive, but if the trade dress or décor is descriptive, then a term which describes such thematic manner of use is merely descriptive. See, e.g., Stork Restaurant, Inc. v. Sahati, 166 F.2d 348, 76 USPQ 374, 379 (9th Cir. 1948) ["THE STORK CLUB" for café and nightclub services "might well be described as 'odd', 'fanciful', 'strange', and 'truly arbitrary'" but "[i]t is in no way descriptive of the appellant's night club, for in its primary significance it would denote a club for storks," "[n]or is it likely that the sophisticates who are its most publicized customers are particularly interested in the stork"]; Taj Mahal Enterprises Ltd. v. Trump, 745 F. Supp. 240, 16 USPQ2d 1577, 1582 (D.N.J. 1990) ["TAJ MAHAL is clearly suggestive in the food service, casino and guest accommodations markets because it takes some imagination to link those services with the name of a palatial crypt located in India"]; Trump v. Caesars World, Inc., 645 F. Supp. 1015, 230 USPQ 594, 599 and 595 (D.N.J. 1986), aff'd in op. not for pub., 2 USPQ2d 1806 (3d Cir. 1987) ["CAESARS PALACE" and "PALACE" are "fanciful, nongeneric names when used in conjunction with casino hotels" which are "informed by a socalled 'Greco-Roman' theme"]; Caesars World, Inc. v. Caesar's Palace, Inc., 179 USPQ 14, 16 (D. Neb. 1973) ["CAESARS PALACE" is "arbitrary, unique and nondescriptive" when used in connection with hotel and convention center services]; and Real Property Management, Inc. v. Marina Bay Hotel, 221 USPQ 1187, 1190 (TTAB 1984) ["It seems obvious that 'MARINA,' whatever descriptive significance it may have in relation to other services or goods, would not per se operate to describe hotel and restaurant facilities, even those located on bodies of water"].

        FOOTNOTE 5 "We judicially notice, for instance, that in this regard The Random House Dictionary of the English Language (2d ed. 1987) at 1966 defines "theme" in pertinent part as "2. A unifying or dominant idea, motif, etc., as in a work of art." It is settled that the Board may properly take judicial notice of dictionary definitions. See, e.g., Hancock v. American Steel & Wire Co. of New Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA 1953); University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); and Marcal Paper Mills, Inc. v. American Can Co., 212 USPQ 852, 860 n. 7 (TTAB 1981)."

  • With respect to issues of descriptiveness, the placement or categorization of a term along the continuum of distinctiveness that ranges from arbitrary or fanciful to suggestive to merely descriptive to generic is a question of fact.
    • In re Ruffin Gaming, LLC, Serial No. 75/899,614, (TTAB 2002).
      • It is well established that, with respect to issues of descriptiveness, the placement or categorization of a term along the continuum of distinctiveness that ranges from arbitrary or fanciful to suggestive to merely descriptive to generic is a question of fact. See, e.g., In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987).
  • The TTAB has found it difficult to categorize trade dress using traditional categories such as arbitrary, suggestive, etc.
    • In re Ruffin Gaming, LLC, Serial No. 75/899,614, (TTAB 2002).
      • FOOTNOTE 7 "A few courts have tried to apply to trade dress the traditional spectrum of marks categories which were created for word marks .... That is, these courts have tried to apply such categories as "arbitrary," "suggestive," and "descriptive" to shapes and images. Only in some cases does such a classification make sense. For example, a tomato juice container in the shape of a tomato might be classified as "descriptive" of the goods. While a commonly used, standard sized can used as a tomato juice container is not "descriptive" of the goods, it is hardly inherently distinctive. The word spectrum of marks simply does not translate into the world of shapes and images." 1 J. McCarthy, McCarthy on Trademarks & Unfair Competition §8:13 (4th ed. 2002).
  • The TTAB resolves doubt in favor of applicant.
    • In re Jose Remacle, Serial No. 75/932,290, (TTAB 2002).
      • While our determination is not free from doubt, we resolve that doubt in favor of applicant and reverse the refusal to register. See In re Rank Organization Ltd., 222 USPQ 324, 326 (TTAB 1984) and cases cited therein.
  • It does not matter what applicant's intentions were in creating its mark or what its characterization of its mark is.
    • Interpayment Services Limited, and Travelex Global and Financial Services Ltd. v. Docters & Thiede, Opposition No. 119,852, (TTAB 2003).
      • In short, it does not matter what applicant's intentions were in creating its mark or what its characterization of its mark is. The fact remains that the two symbols end up being substantially identical, and that there is no genuine issue of material fact that the public will perceive applicant's mark as the euro symbol.
  • The immediate idea must be conveyed forthwith with a degree of particularity to the relevant consumers.
    • The Goodyear Tire & Rubber Company v. Continental General Tire, Inc., Opposition No. 91/118,372, (TTAB 2003).
      • Moreover, the immediate idea must be conveyed forthwith with a "degree of particularity." In re TMS Corp. of the Americas, 200 USPQ 57, 59 (TTAB 1978); and In re Entenmann's Inc., 15 USPQ2d 1750, 1751 (TTAB 1990), aff'd 90-1495 (Fed. Cir. 1991).
  • A mark is merely descriptive if the record shows, by a preponderance of the evidence, that the mark conveys to relevant consumers with the requisite particularity an immediate idea of a characteristic of the goods and services.
    • The Goodyear Tire & Rubber Company v. Continental General Tire, Inc., Opposition No. 91/118,372, (TTAB 2003).
      • In our earlier discussion of the standard to be employed herein, we concluded that the term "Intelligent" is merely descriptive if the record shows, by a preponderance of the evidence, that it conveys to relevant consumers with the requisite particularity an immediate idea of a characteristic of tires. In re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001); In re Abcor Development Corp., supra; In re Entenmann's Inc., supra; and In re TMS Corp., supra.
  • Evidence: As per a question of descriptiveness in the ex parte context, the TTAB must resolve any doubt in favor of publication; wheras in the inter partes context, the TTAB must determine whether opposer's position is supported by a preponderance of the evidence.
    • The Goodyear Tire & Rubber Company v. Continental General Tire, Inc., Opposition No. 91/118,372, (TTAB 2003).
      • However, we note that when facing a question of descriptiveness in the ex parte context such as Intelligent Medical, the Board must resolve any doubt in favor of publication. However, in the present inter partes context, where two party litigants have placed evidence in the record, we apply a different standard to the evidence of record. Specifically, we must determine whether opposer's position is supported by a preponderance of the evidence.
  • The mere fact that applicant often capitalizes the term cannot salvage a term that the record shows otherwise to be a descriptive term.
    • The Goodyear Tire & Rubber Company v. Continental General Tire, Inc., Opposition No. 91/118,372, (TTAB 2003).
      • All relevant uses in this record by applicant place the word "Intelligent" immediately before the generic designation "tire" (e.g., "Intelligent Tire"). The adjective in this context could be proper trademark usage or could be merely descriptive usage. Applicant's use of the term in lower case letters on its website (see footnote 26, infra) suggests the latter. See In re Gould Paper Corp., 834 F2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987). Conversely, the mere fact that applicant often capitalizes the term cannot salvage a term that the record shows otherwise to be a descriptive term.
  • The requisite degree of particularity standard does not require that the term convey precise information about how the involved technology works. Rather, it means that it forthwith conveys the fact that the tire so described comes with the enhanced capabilities prospective consumers are already coming to expect.
    • The Goodyear Tire & Rubber Company v. Continental General Tire, Inc., Opposition No. 91/118,372, (TTAB 2003).
      • Applicant argues that the word "Intelligent" does not convey immediately a characteristic of tires with the requisite "degree of particularity." In re TMS Corp. of the Americas, supra. However, we find that "the requisite degree of particularity" standard does not require that the term convey precise information about how the involved technology works. Rather, it means that it forthwith conveys the fact that the tire so described comes with the enhanced capabilities prospective consumers are already coming to expect.
  • It is also critical to a correct determination that one identify the relevant consumers and/or prospective purchasers, and assess from the record their respective understandings of the term in the context of the goods and services.
    • The Goodyear Tire & Rubber Company v. Continental General Tire, Inc., Opposition No. 91/118,372, (TTAB 2003).
      • It is also critical to a correct determination in this case that one identify the relevant consumers and/or prospective purchasers, and assess from the record their respective understandings of the term "intelligent" in the context of tires.
  • Evidence of the relevant public's understanding can be obtained from newspapers, magazines, trade journals and other publications without demonstrating the effect of this evidence on the consuming public. (A survey is not required)
    • The Goodyear Tire & Rubber Company v. Continental General Tire, Inc., Opposition No. 91/118,372, (TTAB 2003).
      • FOOTNOTE 29 "As applicant argues, it is true that opposer has not provided survey evidence about the perceptions of ordinary consumers when faced with the term "intelligent" when used in connection with tires. However, evidence of the relevant public's understanding can be obtained from newspapers, magazines, trade journals and other publications without demonstrating the effect of this evidence on the consuming public. See In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985). There is nothing in trademark law or practice that requires a plaintiff to offer up a survey to support an allegation of descriptiveness."
  • Initials do not usually differ significantly in their trademark role from the descriptive words that they represent.
    • Capital Project Management, Inc. v. IMDISI, Inc., Opposition No. 121,819, (TTAB 2003).
      • The Seventh Circuit, in finding that "L.A." was a descriptive abbreviation for the descriptive words "low alcohol," made the following observation: "It is possible, although not likely, that the public might become acquainted with initials used in connection with a product without ever being aware that the initials were derived from, and stood for, a descriptive phrase or generic name. This is conceivable, though rather improbable, because the connection between the initials and the descriptive words is in normal course very likely to become known. The process of identifying initials with the set of descriptive words from which they are derived is, after all, usually fairly simple. Ordinarily, no flight of imagination or keen logical insight is required. There is a natural assumption that initials do generally stand for something. All that needs to be done is to convert the next-to-obvious to the obvious by answering the inevitable question: What do the initials stand for" [citations omitted] As a rule, no very extensive or complicated process of education or indoctrination is required to convey that initials stand for descriptive words...[T]here is a heavy burden of a trademark claimant seeking to show an independent meaning of initials apart from the descriptive words which are their source...[A]s a practical matter, initials do not usually differ significantly in their trademark role from the descriptive words that they represent." G. Heileman Brewing Co. v. Anheuser-Busch, Inc., 873 F.2d 985, 10 USPQ2d 1801, 1808-09 (7th Cir. 1989).
  • An abbreviation of a descriptive term which still conveys to the buyer the descriptive connotation of the original term will still be held to be descriptive.
    • Capital Project Management, Inc. v. IMDISI, Inc., Opposition No. 121,819, (TTAB 2003).
      • The issue is not determined in a vacuum, but rather the mere descriptiveness of the mark is analyzed as the mark is used in connection with the goods and/or services. An abbreviation of a descriptive term which still conveys to the buyer the descriptive connotation of the original term will still be held to be descriptive. Spin Physics, Inc. v. Matsushita Electric Industrial Co., 168 USPQ 605 (TTAB 1970).
  • Laudatory terms, those that attribute quality or excellence to goods or services, generally are deemed to be merely descriptive under Trademark Act Section 2(e)(1).
    • In re The Place, Inc., Serial No. 76436826, (TTAB 2005).
      • Laudatory terms, those that attribute quality or excellence to goods or services, generally are deemed to be merely descriptive under Trademark Act Section 2(e)(1). See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001)(THE ULTIMATE BIKE RACK is "a laudatory descriptive phrase that touts the superiority of Nett Designs' bike racks"); In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999)(THE BEST BEER IN AMERICA for "beer and ale" found to be laudatory and incapable of distinguishing source).
  • Case Finding: The terms "plus" and "super" have been held in many cases to be laudatory and merely descriptive.
    • In re The Place, Inc., Serial No. 76436826, (TTAB 2005).
      • Moreover, the terms PLUS and SUPER, cited by applicant as examples of terms which have been held to be non-laudatory, have been held in other cases to be laudatory and merely descriptive. See Plus Products v. Plus Discount Foods, Inc., 722 F.2d 999, 222 USPQ 373 (2d Cir. 1983)(PLUS held to be laudatory); and In re Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995)(SUPER BUY held to be laudatory).
  • Case Finding: Marks which arguably denote "high quality," "excellence" and "superior quality" are laudatory and thus merely descriptive.
    • In re The Place, Inc., Serial No. 76436826, (TTAB 2005).
      • Likewise, the courts of appeal and this Board have held that other marks which arguably denote "high quality," "excellence" and "superior quality" are laudatory and thus merely descriptive. These include the term ULTIMATE in In re Nett Designs Inc., supra, and the term BEST in In Re Boston Beer Co. LP, supra. See also In re Duvernoy & Sons, Inc., 212 F.2d 202, 101 USPQ 288 (CCPA 1954)(CONSISTENTLY SUPERIOR held laudatory); Supreme Wine Co. v. American Distilling Co., 310 F.2d 888, 135 USPQ 481 (2d Cir. 1962)(SUPREME held laudatory); In re Dos Padres Inc., 49 USPQ2d 1860 (TTAB 1998)(QUESO QUESADILLA SUPREME held laudatory); In re San Miguel Corp., 229 USPQ 617 (TTAB 1986)(SELECT and its equivalent SELECTA held laudatory); In re Inter-State Oil Co., 219 USPQ 1229 (TTAB 1983)(PREFERRED held laudatory); and In re Wileswood, Inc., 201 USPQ 400 (TTAB 1978)(AMERICA'S BEST POPCORN held laudatory). The term GREATEST in applicant's mark THE GREATEST BAR is as laudatory, if not more so, than the marks involved in the cases cited above.
  • Case Finding: A three word mark consisting of an article, a lauditory term, and generic term were merely descriptive.
    • In re The Place, Inc., Serial No. 76436826, (TTAB 2005).
      • In summary, we find that the term GREATEST in applicant's mark is laudatory and that the mark as a whole, i.e., THE GREATEST BAR, likewise is laudatory and thus merely descriptive. As noted above, the article THE and the generic term BAR do not negate the laudatory nature of GREATEST, and the mark as a whole is merely descriptive because it directly conveys to customers and prospective customers that applicant's bar is the best.
  • The examining attorney's refusal is based on the mark as a composite, not only on a theory that each of the terms would be subject to refusal if used separately.6
    • In re King Koil Licensing Company, Inc., Serial No. 76565486, (TTAB 2006).
      • FOOTNOTE 6 "Neither applicant nor the examining attorney has discussed the significance of the word THE in the proposed mark. Had applicant made an issue of the use of THE, we would not find it a persuasive argument in support of registration. See In re The Computer Store, Inc., 211 USPQ 72, 74-75 (TTAB 1981)."
  • Case Finding: Looking at the evidence of record, the TTAB could not conclude that the term "Freedom Fries" is merely descriptive when applied to frozen French fried potatoes.
    • In re Grand Forest Holdings Incorporated, Serial No. 78220033, (TTAB 2006).
      • When we look at the evidence of record, we cannot conclude that the term FREEDOM FRIES is merely descriptive when applied to frozen French fried potatoes. First, there is no indication that the term "Freedom" has any meaning in relation to French fries. The examining attorney relies on the case of In re Lamb-Weston Inc., 54 USPQ2d 1190 (TTAB 2000). However, in that case, there was evidence that the term "Natural Cut Fries" was used to describe a type of "fries with skins on." Id. at 1191. Here, there is no evidence that there is a subcategory of fries known as "Freedom Fries."
  • Case Finding: Although it has not become the primary or generic name of the goods, "freedom fries" identifies French fries and as such is merely descriptive of the goods because it names the goods in a secondary manner."
    • In re Grand Forest Holdings Incorporated, Serial No. 78220033, (TTAB 2006).
      • Second, the examining attorney argues that "‘Freedom Fries' is a known secondary name for French fried potatoes. It was coined as a new name for French fried potatoes (the goods themselves). Although it has not become the primary or generic name of the goods, ‘freedom fries' identifies French fries and as such is merely descriptive of the goods because it names the goods in a secondary manner." Brief at 5. At this point, we part company from the examining attorney's analysis.
    • In re Grand Forest Holdings Incorporated, Serial No. 78220033, (TTAB 2006).
      • What we lack in this case is significant evidence that, when prospective purchasers encounter the term FREEDOM FRIES used on frozen French fried potatoes, they will immediately understand that it identifies a feature, quality, or characteristic of applicant's goods or that it is a secondary name of applicant's goods. Therefore, we resolve our doubts in applicant's favor.
  • When a product changes, new generic names often result.
    • In re Grand Forest Holdings Incorporated, Serial No. 78220033, (TTAB 2006).
      • Certainly, when a product changes, new generic names often result: "Moreover, these are ordinary words [SPACE SHUTTLE] which would be and are perceived by the public in their primary significance as a space vehicle which transports crew and equipment from the ground to Earth orbit and returns, and not as an indication of origin. That is, it is a shuttle which goes into space. The term is an apt and common description of NASA's space vehicle or system. Although opposer was and remains the only space agency to make a reusable space shuttle, the record fully supports the conclusion that this term is used and understood by the public as referring to the genus or classification of reusable spacecraft." National Aeronautics and Space Administration v. Bully Hill Vineyards Inc., 3 USPQ2d 1671, 1676 (TTAB 1987). See also Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137, 43 USPQ2d 1734, 1743 (2d Cir. 1997) ("Because the addition of the word ‘honey' is necessary to indicate a brown ale that is brewed with honey, Stroh has the right to call its beer a ‘Honey Brown Ale'").
  • Manufacturers, standard-setting organizations, protesters, and others have an interest in establishing generic names for goods and services.
    • In re Grand Forest Holdings Incorporated, Serial No. 78220033, (TTAB 2006).
      • We are mindful that manufacturers, standard-setting organizations, protesters, and others have an interest in establishing generic names for goods and services. See, e.g., McCarthy's on Trademarks and Unfair Competition, § 12.26 (4th ed. 2005): "When a new and unfamiliar product hits the market, precautions must be immediately taken to protect the trademark significance of a mark to prevent its becoming generic. The seller has some options. It may devise a generic name for the product and use as a trademark a mark which has been previously used on other goods. For example, if Jackson Industries, Inc. proposes to market a new and revolutionary type of miniaturized two-way radio telephone of wrist-watch size, it could market it as the JACKSON brand "Radon.""
  • We cannot refuse registration on the ground that a term might become generic or merely descriptive in the future.
    • In re Grand Forest Holdings Incorporated, Serial No. 78220033, (TTAB 2006).
      • Obviously, this need would be frustrated if the announcement of this new generic or descriptive term was accompanied by a rush to the U.S. Patent and Trademark Office by others to register the name. At the same time, we cannot refuse registration on the ground that a term might become generic or merely descriptive in the future. See, e.g., 15 U.S.C. § 1052(e) ("Consists of a mark which, (1) when used on or in connection with the goods of the applicant is merely descriptive") (emphasis added). Furthermore, in these cases, "any doubt with respect to the issue of descriptiveness should be resolved in applicant's behalf." In re Grand Metropolitan Foodservice Inc., 30 USPQ2d 1974, 1976 (TTAB 1994).
  • A mark that is merely descriptive should not be registered on the Principal Register simply because other such marks appear on the register.
    • In re Hunter Fan Company, Serial No. 78195616, (TTAB 2006).
      • A mark that is merely descriptive should not be registered on the Principal Register simply because other such marks appear on the register. In re Scholastic Testing Service, Inc., 196 USPQ 517 (TTAB 1977).
  • An examining attorney has discretion to not require a disclaimer of a descriptive term when it appears in a unitary slogan.
    • In re Hunter Fan Company, Serial No. 78195616, (TTAB 2006).
      • In any event, the mark in the prior registration appears to be a unitary slogan, and an examining attorney has discretion to not require a disclaimer of a descriptive term when it appears in such a slogan. See TMEP §1213.05(b) (4th ed. 2005).
  • The absence of a disclaimer in the registration is not necessarily evidence that the word is not descriptive; it is just as plausible that the examining attorney did not require a disclaimer because the mark was viewed as a unitary slogan.
    • In re Hunter Fan Company, Serial No. 78195616, (TTAB 2006).
      • While applicant contends the absence of a disclaimer in the registration is evidence the word ergonomic is not descriptive, it is just as plausible that the examining attorney did not require a disclaimer because the mark was viewed as a unitary slogan.
  • Case Finding: the term "Ergonomic" immediately describes, without need for conjecture or speculation, a significant feature or function of applicant's goods.
    • In re Hunter Fan Company, Serial No. 78195616, (TTAB 2006).
      • In summary, when applied to applicant's goods, the term ERGONOMIC immediately describes, without need for conjecture or speculation, a significant feature or function of applicant's goods, namely, ceiling fans that are designed to operate and "interact efficiently and safely" with the user and in a fashion that addresses the physical and psychological relationship between the goods and the user.
  • To be "merely descriptive," a term need only describe a single significant quality or property of the goods or services.
    • In re Promo Ink, Serial No. 76541018, (TTAB 2006).
      • To be "merely descriptive," a term need only describe a single significant quality or property of the goods or services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987); In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003) (A "mark is merely descriptive if the ultimate consumers immediately associate it with a quality or characteristic of the product or service").
  • That applicant can take the dictionary definitions of the individual words in the term and come up with a meaning that makes no sense in connection with the services recited in the application does not mandate a different conclusion on the issue of mere descriptiveness.
    • In re Promo Ink, Serial No. 76541018, (TTAB 2006).
      • Applicant points out that there are numerous meanings of the words in the mark. However, we must look at the use of the mark in the context of the services. "Similarly, that applicant can take the dictionary definitions of the individual words in the term and come up with a meaning that makes no sense in connection with the services recited in the application does not mandate a different conclusion on the issue of mere descriptiveness. As stated above, the determination of descriptiveness is made in the context of the identified services, and the meaning of "ETHNIC ACCENTS" in connection with applicant's services is clearly that of home furnishings or decorations relating to various ethnicities." In re Ethnic Home Lifestyles Corp., 70 USPQ2d 1156, 1159 (TTAB 2003).
  • In assessing the evidence of record and the likely perception of the designation used by applicant, the TTAB adopts the point of view of the average or ordinary consumer in the class of prospective purchasers for applicant's services.
    • In re King Koil Licensing Company, Inc., Serial No. 76565486, (TTAB 2006).
      • In Abcor, the court also explained that the determination is to be made from the perspective of the average prospective purchaser. Abcor, 200 USPQ at 218. See also In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859, 1861 (Fed. Cir. 1987)(In assessing the evidence of record and the likely perception of the designation used by applicant, we adopt the point of view of the average or ordinary consumer in the class of prospective purchasers for applicant's services.)
  • We do not mean to suggest, by virtue of our detailed consideration above of the question whether these particular items of internet evidence are "from" the United States, that this is an exercise that must always be undertaken by examining attorneys or applicants.
    • In re King Koil Licensing Company, Inc., Serial No. 76565486, (TTAB 2006).
      • We do not mean to suggest, by virtue of our detailed consideration above of the question whether these particular items of internet evidence are "from" the United States, that this is an exercise that must always be undertaken by examining attorneys or applicants. In view, however, of applicant's argument that most of the internet evidence should be discounted, we have given these items detailed consideration to demonstrate that, even under applicant's view of this case, there is evidence supporting the refusal of registration.
  • Case Finding: Evidence that demonstrates use of the term "breathable" in conjunction with other items, such as clothing, is somewhat less probative on the question whether consumers would find the term incongruous or unusual when used in conjunction with mattresses.
    • In re King Koil Licensing Company, Inc., Serial No. 76565486, (TTAB 2006).
      • The examining attorney has also made of record evidence that demonstrates use of the term "breathable" in conjunction with other items, such as clothing. While this evidence is probative of the likelihood that consumers would understand the term to have its normal meaning when used in conjunction with fabric or clothing, it is somewhat less probative on the question whether consumers would find the term incongruous or unusual when used in conjunction with mattresses.
  • Case Finding: The separate terms SMART and SFP are merely descriptive of applicant's identified goods and that when combined do not present a unique or incongruous meaning.
    • In re Finisar Corporation, Serial No. 76300876, (TTAB 2006).
      • We are persuaded by the evidence of record that the separate terms SMART and SFP are merely descriptive of applicant's identified goods and that when combined do not present a unique or incongruous meaning. In re Tower Tech, Inc., 64 USPQ2d 1314 (TTAB 2002).
  • The TTAB looks at the average or ordinary prospective customers of applicant's identified goods as to whether they would recognize the subject abbreviation.
    • In re Finisar Corporation, Serial No. 76300876, (TTAB 2006).
      • With regard to applicant's argument that the average consumer would not recognize the abbreviation, we must look at the average or ordinary prospective customers of applicant's identified goods. In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987).
  • We must look at these definitions within the context of the goods for which registration is sought.
    • In re Finisar Corporation, Serial No. 76300876, (TTAB 2006).
      • We must look at these definitions within the context of the goods for which registration is sought. In re Chopper Industries, 222 USPQ 258 (TTAB 1984); In re Bright- Crest, Ltd., 204 USPQ 591 (TTAB 1979).
  • The "computer" meaning of the term "smart" as is the case with many computer words, is making its way into the general language."
    • In re Finisar Corporation, Serial No. 76300876, (TTAB 2006).
      • As has been noted by the Board over a decade ago, "It is undeniable that computers have become pervasive in American daily life. The ‘computer' meaning of the term ‘smart' as is the case with many ‘computer' words, is making its way into the general language." In re Cryomedical Sciences Inc., 32 USPQ2d 1377, 1378 (TTAB 1994).
  • If an applicant uses its proposed mark to describe its goods, an examining attorney is not precluded from using such evidence to support a refusal.
    • In re Finisar Corporation, Serial No. 76300876, (TTAB 2006).
      • Applicant argues that its use in connection with its goods cannot be used as evidence of mere descriptiveness. This is simply not the case. If an applicant uses its proposed mark to describe its goods, an examining attorney is not precluded from using such evidence to support a refusal. See In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987).
  • Search results alone are of limited probative value, in that use in a search summary may indicate only that the two words in an overall phrase appear separately in the website literature.
    • In re Finisar Corporation, Serial No. 76300876, (TTAB 2006).
      • While we have discussed the Internet evidence, we must note that search results alone are of limited probative value, in that use in a search summary may indicate only that the two words in an overall phrase appear separately in the website literature. In re Fitch IBCA Inc., 64 USPQ2d 1058 (TTAB 2002); TBMP § 1208.03.
  • Case Finding: The combination of two merely descriptive words as a mark, in the context of goods purchased by knowledgeable consumers, the meaning of each term will be readily apparent and this straightforward combination does not present any incongruity.
    • In re Finisar Corporation, Serial No. 76300876, (TTAB 2006).
      • The record before us contains dictionary definitions and applicant's product literature that conclusively establish the mere descriptiveness of SMART and SFP.8 Moreover, despite the fact that the terms are presented as one word in the mark SMARTSFP, in the context of these goods purchased by knowledgeable consumers, the meaning of each term will be readily apparent and this straightforward combination does not present any incongruity. See In re Gould Paper Corp., supra.
    • In re Finisar Corporation, Serial No. 76300876, (TTAB 2006).
      • Nothing requires the exercise of imagination, cogitation, mental processing or gathering of further information in order for prospective consumers of applicant's goods to perceive readily the merely descriptive significance of the term SMARTSFP as it pertains to applicant's goods.
    • In re Finisar Corporation, Serial No. 76300876, (TTAB 2006).
      • Finally we do not have any doubt that this mark is merely descriptive in connection with the identified goods. In re Atavio, 25 USPQ2d 1361, 1362 (TTAB 1992).
    • In re Westlake Plastics Company, Serial No. 76310516, (TTAB 2006).
      • Contrary to applicant's contention, knowledge that a third party developed the FM4910 protocol is not a factor in assessing the meaning or significance of the term in relation to applicant's goods. The point is that prospective purchasers of applicant's plastic materials for use in manufacturing clean room equipment would, without any guesswork or the exercise of any imagination, immediately recognize FM4910 as signifying an approved class of plastic materials, and they will rely on that representation in making their purchasing decisions.
  • Descriptiveness must be determined from the perspective of the relevant class or classes of potential purchasers for applicant's goods.
    • In re Cox Enterprises, Inc., Serial No. 76591278, (TTAB 2007).
      • Furthermore, descriptiveness must be determined from the perspective of the relevant class or classes of potential purchasers for applicant's goods. See In re Omaha National Corporation, 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987). See also In re Nett Designs Inc., 236 F.3d 133, 957 USPQ2d 1564, 1566 (Fed. Cir. 2001) ("The perception of the relevant purchasing public sets the standard for determining descriptiveness.")
  • It is not necessary that the evidence show use by others in the exact manner in which it is displayed as a mark.
    • In re Cox Enterprises, Inc., Serial No. 76591278, (TTAB 2007).
      • Contrary to applicant's apparent contention, the fact that there is no evidence of use by others of THEATL as a single term does not compel a finding that the mark is not descriptive. It is not necessary that the evidence show use by others in the exact manner in which it is displayed as a mark. See In re SPX Corp., 63 USPQ2d 1592 (TTAB 2002).
  • Case Finding: Numerous cases have held that telescoping two words which as a whole are merely descriptive of the goods into a single term does not avoid a finding of mere descriptiveness for the combined term.
    • In re Cox Enterprises, Inc., Serial No. 76591278, (TTAB 2007).
      • Further, the cases applicant relies on to support its contention, including Firestone Tire & Rubber Co. v. Goodyear Tire & Rubber Co., ___ F.2d___, 189 USPQ 348 (CCPA 1976) and Nife Incorporated v. Gould-National Batteries, Inc., 128 USPQ 453 (TTAB 1961), have been misinterpreted by applicant. In Firestone, the term BIASTEEL was held not merely descriptive of tires, and in Nife, the term NICAD was held not merely descriptive of "nickel cadmium" batteries. The finding in each case was based on the lack of evidence of descriptive use of the two words together to describe the particular goods, not whether there was use of the combined terms in the exact form in which they were presented. The marks in those cases happened to be presented as a single term but the presence or absence of a space between the two words was not a factor in either decision.
    • In re Cox Enterprises, Inc., Serial No. 76591278, (TTAB 2007).
      • In fact, numerous cases have held that telescoping two words which as a whole are merely descriptive of the goods into a single term does not avoid a finding of mere descriptiveness for the combined term. See, for example, In re Omaha National, supra (FIRSTIER, the equivalent of "first tier," is merely descriptive of banking services); In re A La Vieille Russie Inc., 60 USPQ2d 1895, 1897, n. 2 (TTAB 2001) ("the compound term RUSSIANART is as merely descriptive as its constituent words, 'Russian art.'"); In re U.S. Steel Corp., 225 USPQ 750 (TTAB 1985) (SUPEROPE merely descriptive of wire rope); In re Gagliardi Bros., Ind., 218 USPQ 181 (TTAB 1983) (BEEFLAKES is merely descriptive of thinly sliced beef); and In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB 1977) (BREADSPRED is merely descriptive of jellies and jams).
    • In re Planalytics, Inc., Serial No. 76322156, (TTAB 2004).
      • Inasmuch as it clear that the terms "gas buyer" and "gas buyers" are commonly used to refer to the institutional purchasers of natural gas, we assume that when applicant argues that its mark is "a complete fabrication of the English language" (Applicant's Brief at 10), it is referring to the fact that applicant spells its term without a space between "gas" and "buyer." The absence of the space is not significant here. First, we cannot see how the absence of the space creates a different meaning or perception of the term. Whether the term appears as GAS BUYER or GASBUYER, it would be understood by the relevant consumers to have the same meaning, a buyer of natural gas. The Supreme Court has long ago recognized that slight variations in spelling do not change a descriptive term into a non-descriptive term.
    • In re Planalytics, Inc., Serial No. 76322156, (TTAB 2004).
      • In the following cases specifically involving a misspelling consisting of the deletion of a space between words, the combined term remained descriptive. See In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1017 (Fed. Cir. 1987) (SCREENWIPE generic for a wipe for cleaning television and computer screens); In re Abcor Dev., supra, (GASBADGE at least descriptive for gas monitoring badges; three judges concurred in finding that term was the name of the goods); In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB 1977) (BREADSPRED descriptive for jams and jellies that would be a spread for bread); In re Perkin-Elmer Corp., 174 USPQ 57 (TTAB 1972) (LASERGAGE merely descriptive for interferometers utilizing lasers). There is nothing in the facts of this case that would lead us to conclude that the term "gasbuyer" would not, in the same manner, be seen as the equivalent of "gas buyer." Therefore, the term GASBUYER would likewise be merely descriptive of applicant's services.
    • In re SPX Corporation, Serial No. 75/877,999, (TTAB 2002).
      • It is true that, although there are numerous articles in which the terms "auto diagnostics" or "automobile diagnostics" are used, there is no evidence of the use of "autodiagnostics" (or "e-autodiagnostics") as a single word. However, it is not necessary that a term appear in a dictionary or a newspaper article in the exact manner in which it is depicted as a trademark for that mark to be found merely descriptive. It has been held in numerous cases that telescoping two words which are merely descriptive of the goods into a single term by the deletion of a space does not avoid a finding of mere descriptiveness for the combined term. See, for example, In re BankAmerica Corp., 229 USPQ 852 (TTAB 1986) (PERSONALINE is merely descriptive of consumer loan services in which a personal line of credit is provided); In re U.S. Steel Corp., 225 USPQ 750 (TTAB 1985) (SUPEROPE merely descriptive of wire rope); In re Gagliardi Bros., Ind., 218 USPQ 181 (TTAB 1983) (BEEFLAKES is merely descriptive of thinly sliced beef).
  • Applicant's mark, presented in typed or standard character form, is not limited to any special form or style as displayed on its goods.
    • In re Cox Enterprises, Inc., Serial No. 76591278, (TTAB 2007).
      • We must also consider that applicant's mark, presented in typed or standard character form, is not limited to any special form or style as displayed on its goods. Phillips Petroleum Co. v. C.J. Webb, Inc., 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971) ("The drawing in the instant application shows the mark typed in capital letters, and ... this means that [the] application is not limited to the mark depicted in any special form."). See also Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847-48 (Fed. Cir. 2000) (typed drawings are not limited to any particular rendition of the mark); and INB National Bank v. Metrohost, 22 USPQ2d 1585, 1588 (TTAB 1992).
    • In re Cox Enterprises, Inc., Serial No. 76591278, (TTAB 2007).
      • It is clear from these cases that when a mark is presented in typed or standard character form, the Board must consider all reasonable manners in which applicant could depict its mark. For example, applicant's mark could reasonably be depicted as "theATL" with the term THE in smaller print or type and the letters ATL in much larger print, thereby creating a visual separation between the two terms. See, for example, Phillips Petroleum, supra at 36 ("we must not be misled by considering [applicant's] mark only in its printed or typewritten form, with all the characters being of equal height.")
  • Case Finding: Its immaterial if applicant's publications contained many diverse topics, the relevant point is that the mark is descriptive of that portion of the subject matter which admittedly does relate specifically to the mark.
    • In re Cox Enterprises, Inc., Serial No. 76591278, (TTAB 2007).
      • Applicant's arguments that the subject matter of its publications is too diverse or broad in scope to be descriptive, and that the publications may also contain other subject matter that does not relate specifically to Atlanta, such as national or international news, are not relevant. The relevant point is that THEATL is descriptive of that portion of the subject matter which admittedly does relate specifically to Atlanta. See, e.g., Roselux Chemical Co., Inc. v. Parsons Ammonia Company, Inc., 299 F.2d 855, 132 USPQ 627, 634 (CCPA 1962) (finding SUDSY generic for ammonia products notwithstanding that "some of the so-called 'sudsy' [ammonia] products marketed by opposers were not in fact sudsy because they contained no detergent.").
  • It is well established that each case stands on its own facts, and prior decisions are of little value.
    • In re Cox Enterprises, Inc., Serial No. 76591278, (TTAB 2007).
      • Suffice it to say that the cited cases involve facts that differ markedly from the facts in the present case and thus, do not compel a finding that the mark herein is not descriptive. See Firestone Tire & Rubber Co., supra at 350 ("prior decisions in this area are not very helpful in deciding the issue of descriptiveness"). See also In re Quik- Print Copy Shop, Inc., 616 F.2d 523, 205 USPQ 505, 507 (CCPA 1980) ("it is well established that each case...stands on its own facts, and prior decisions are of little value.").
  • In deciding whether the mark registered is in fact the name of the product, look to the description of the products in the registration, not to the registrant's market practices.
    • In re Vanilla Gorilla, L.P., Serial No. 76561135, (TTAB 2006).
      • We begin by looking at the context in which the mark "3-O'S" is intended to be used. Weiss Noodle Co. v. Golden Cracknel and Specialty Co., 290 F.2d 845, 129 USPQ 411, 414 (CCPA 1961) ("In deciding whether the mark registered is in fact the name of the product, we look to the description of the products in the registration, not to the registrant's market practices").
  • A slight variation in spelling of marks from their traditional spelling does not change the meaning of the term if the underlying term is itself descriptive.
    • In re Vanilla Gorilla, L.P., Serial No. 76561135, (TTAB 2006).
      • We begin by noting that slight variations in spelling of marks from their traditional spelling does not change the meaning of the term if the underlying term is itself descriptive.
    • In re Vanilla Gorilla, L.P., Serial No. 76561135, (TTAB 2006).
      • The Supreme Court has held that: "The word, therefore is descriptive, not indicative of the origin or ownership of the goods; and being of that quality, we cannot admit that it loses such quality and becomes arbitrary by being misspelled. Bad orthography has not yet become so rare or so easily detected as to make a word the arbitrary sign of something else than its conventional meaning…." Standard Paint Co. v. Trinidad Asphalt Mfg. Co., 220 U.S. 446, 455 (1911). See also Armstrong Paint & Varnish Works v. Nu-Enamel Corp., 305 U.S. 315 (1938) (NU-ENAMEL; NU held equivalent of "new"); In re Quik-Print Copy Shops, 616 F.2d 523, 205 USPQ 505, 507 n.9 (CCPA 1980) (QUIK-PRINT held descriptive; "There is no legally significant difference here between ‘quik' and ‘quick'"); Fleetwood Co. v. Mende, 298 F.2d 797, 132 USPQ 458, 460 (CCPA 1962) ("TINTZ [is] a phonetic spelling of ‘tints'"); King-Kup Candies, Inc. v. King Candy Co., 288 F.2d 944, 129 USPQ 272, 273 (CCPA 1961) ("It is clear, therefore, that the syllable ‘Kup,' which is the full equivalent of the word ‘cup,' is descriptive); Andrew J. McFarland, Inc. v. Montgomery Ward & Co., 164 F.2d 603, 76 USPQ 97, 99 (CCPA 1947)(KWIXTART merely descriptive for electric storage batteries); In re Organik Technologies Inc., 41 USPQ2d 1690, 1694 (TTAB 1997) (ORGANIK "is the phonetic equivalent of the term ‘organic'"); and Hi-Shear Corp. v. National Automotive Parts Association, 152 USPQ 341, 343 (TTAB 1966) (HI-TORQUE "is the phonetic equivalent of the words ‘HIGH TORQUE'"). Even if there was no evidence that such terms as NU, QUIK, KWIK, KUP, or ORGANIK were used, it would not mean that they were not descriptive.
    • In re Planalytics, Inc., Serial No. 76322156, (TTAB 2004).
      • "The word, therefore is descriptive, not indicative of the origin or ownership of the goods; and being of that quality, we cannot admit that it loses such quality and becomes arbitrary by being misspelled. Bad orthography has not yet become so rare or so easily detected as to make a word the arbitrary sign of something else than its conventional meaning…." Standard Paint Co. v. Trinidad Asphalt Mfg. Co., 220 U.S. 446, 455 (1911) (emphasis added).
    • In re Planalytics, Inc., Serial No. 76322156, (TTAB 2004).
      • Other cases have recognized that a slight misspelling does not change a merely descriptive term into a suggestive term. See Armstrong Paint & Varnish Works v. Nu-Enamel Corp., 305 U.S. 315 (1938) (NU-ENAMEL; NU found equivalent of "new"); In re Quik-Print Copy Shops, 616 F.2d 523, 205 USPQ 505, 507 n.9 (CCPA 1980) (QUIK-PRINT held descriptive; "There is no legally significant difference here between ‘quik' and ‘quick'"); Hi-Shear Corp. v. National Automotive Parts Association, 152 USPQ 341, 343 (TTAB 1966) (HI-TORQUE "is the phonetic equivalent of the words ‘HIGH TORQUE'"); and In re Organik Technologies Inc., 41 USPQ2d 1690, 1694 (TTAB 1997) ("ORGANIK, which is the phonetic equivalent of the term ‘organic,' is deceptive").
  • If a misspelling involves more than simply a misspelling of a descriptive or generic word, it may not be merely descriptive.
    • In re Vanilla Gorilla, L.P., Serial No. 76561135, (TTAB 2006).
      • Applicant argues that its term is "an abbreviation, contraction, foreshortening or whimsical alternative spelling for tire rims equal to or greater than thirty inches in diameter." Brief at 3. If a misspelling "involves more than simply a misspelling of a descriptive or generic word," it may not be merely descriptive. In re Grand Metropolitan Foodservices Inc., 30 USPQ2d 1974, 1975 (TTAB 1994) (Applicant's "MufFuns" (stylized) mark has a different commercial impression than the generic term "muffin"). However, we see nothing whimsical about the term "3-O'S." The term is simply another way of saying "thirty inch rims."
  • Case Finding: The users of language have a universal habit of shortening full names -- from haste or laziness or just economy of words.
    • In re Vanilla Gorilla, L.P., Serial No. 76561135, (TTAB 2006).
      • It is not so much an abbreviation as it is what Judge Rich referred to as follows: "[T]he users of language have a universal habit of shortening full names -- from haste or laziness or just economy of words. Examples are: automobile to auto, telephone to phone, necktie to tie, gasoline service station to gas station. I regard it as inevitable that a gas monitoring badge will be called a gas badge…" Abcor, 200 USPQ at 219 (Rich, J. concurring).
  • Case Finding: The mark "888 PATENTS" is merely descriptive of services recited as legal services, namely, patent research, prosecution and enforcement; patent searching.
    • In re Dial A Mattress Operating Corporation, Serial No. 75/131,355, (TTAB 1999).
      • In a recently-published decision, the Board found the mark 888 PATENTS to be merely descriptive of services recited as "legal services, namely, patent research, prosecution and enforcement; patent searching." In re Page, 51 USPQ2d 1660 (TTAB 1999).
    • In re Dial A Mattress Operating Corporation, Serial No. 75/131,355, (TTAB 1999).
      • The Board held that the mark was merely descriptive because it consisted solely of the merely descriptive term PATENTS preceded by the numerals 888, which were found to be devoid of source indicating significance inasmuch as they would readily be perceived as nothing more than the prefix used in a tollfree telephone number. Id. at 1664-65.
  • Case Finding: 1-888-MATTRESS is not an inherently distinctive compound mark.
    • In re Dial A Mattress Operating Corporation, Serial No. 75/131,355, (TTAB 1999).
      • Likewise in the present case, we find that the designation "M-A-T-R-E-S-S" is the legal equivalent of the word "mattress"; that applicant's recited services involve the retail sale of mattresses by telephone; that the word "mattress" or its legal equivalent M-A-T-R-E-S-S merely describes this aspect or feature of applicant's services; that the toll-free telephone area code "1-888" is devoid of any source-indicating significance; and that applicant's joining of the non-distinctive toll-free telephone area code "1-888" and the merely descriptive term "mattress" or M-A-T-R-E-S-S does not transform these non-distinctive components into an inherently distinctive compound mark.
  • It is not determinative that purchasers might not be able to immediately discern from applicant's mark all of the specific features of the services applicant offers in connection with its sale of goods.
    • In re Dial A Mattress Operating Corporation, Serial No. 75/131,355, (TTAB 1999).
      • Contrary to applicant's contention, it is not determinative that purchasers might not be able to immediately discern from applicant's mark all of the specific features of the services applicant offers in connection with its sale of mattresses, i.e., that applicant offers same-day service, two-hour delivery, and warranties on its mattresses. See In re Patent & Trademark Services Inc., 49 USPQ2d 1537 (TTAB 1998); In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).
  • The purported availability of other terms which applicant's competitors might use in connection with their sale of mattresses does not negate the mere descriptiveness of the matter applicant seeks to register.
    • In re Dial A Mattress Operating Corporation, Serial No. 75/131,355, (TTAB 1999).
      • Likewise, the purported availability of other terms which applicant's competitors might use in connection with their sale of mattresses does not negate the mere descriptiveness of the matter applicant seeks to register. See In re The Officers' Organization For Economic Benefits, Limited, 221 USPQ 184 (TTAB 1984).
  • A mark can be descriptive if it describes the intended users of the goods or services.
    • In re Planalytics, Inc., Serial No. 76322156, (TTAB 2004).
      • A mark can be descriptive if it describes the intended users of the goods or services. Shaw-Barton, Inc. v. John Baumgarth Co., 313 F.2d 167, 136 USPQ 116, 117 (7th Cir. 1963), cert. denied, 374 U.S. 831 (1963) ("We hold that the word "Homemakers," when applied to calendars of the type involved in this suit, is a noun descriptive of that class of individuals toward which the design and proposed use of the product is oriented") (footnote omitted); In re Hunter Publishing Co., 204 USPQ 957 (TTAB 1979) ("[I]t has been consistently held that a mark which describes the intended users of a particular product is merely descriptive of such goods." JOBBER AND WAREHOUSE EXECUTIVE for a trade magazine held descriptive of the class of purchasers); In re Camel Mfg. Co., 222 USPQ 1031, 1032 (TTAB 1984) ("[T]here is no doubt that the group described by the term ‘MOUNTAIN CAMPER' is a category of purchaser to whom applicant specifically directs its camping equipment ;" MOUNTAIN CAMPER held descriptive of retail services in the field of selling camping equipment); Hunter Publishing Co. v. Caulfield Publishing, Ltd., 1 USPQ2d 1996, 1998 (TTAB 1986) (SYSTEMS USER is descriptive of the readers of a magazine directed at computer users).
  • There is no requirement that a mark must describe every feature or characteristic of its services before it can be found to be merely descriptive of the services.
    • In re Planalytics, Inc., Serial No. 76322156, (TTAB 2004).
      • Applicant's identification of services makes it clear that its services are directed to those who are in the field of making purchasing decisions for natural gas. The evidence supports the conclusion that these people would be referred to as gas buyers. While applicant's mark does not describe every feature or characteristic of its services, there is no requirement that a mark must do this before it can be found to be merely descriptive of the services. Gyulay, 3 USPQ2d at 1009; Meehanite Metal, 120 USPQ at 294. Clearly, applicant's mark describes a feature or characteristic of the services to the extent that it immediately conveys that its services are intended for individuals who purchase natural gas.
  • Case Finding: As identified, the "computer software" would be understood to be used in connection with a handheld computer used in an electronic engine analysis system, and this identification is adequate to indicate the scope of any registration which applicant might obtain.
    • In re SPX Corporation, Serial No. 75/877,999, (TTAB 2002).
      • We turn first to the requirement for an acceptable identification of goods. Applicant has identified its goods as "electronic engine analysis system comprised of a hand-held computer and related computer software." The Examining Attorney states that this identification is indefinite because applicant has not indicated the function of the related computer software, as a result of which it is not clear whether the software is system operating software, operating software for the hand-held computer, some type of communication software for communications between the handheld computer and an electronic engine, or some other function. Although certainly an additional phrase in the identification stating the function of the software would provide more information as to exactly what the software does, we do not believe it to be necessary in order to provide the public with notice as to the nature of applicant's goods. As identified, the "computer software" would be understood to be used in connection with a handheld computer used in an electronic engine analysis system, and this identification is adequate to indicate the scope of any registration which applicant might obtain. Accordingly, we reverse the requirement for a more definite identification of goods.
  • Due to a lack of acquired distinctiveness, the term would still be considered merely descriptive of applicant's goods and, in view thereof, would remain unregistrable under Section 2(e)(1).
    • In re Mine Safety Appliances Company, Serial No. 75/501,608, (TTAB 2002).
      • FOOTNOTE 2 "Due to a lack of acquired distinctiveness, the term "WORKMASK" would still be considered merely descriptive of applicant's goods and, in view thereof, would remain unregistrable under Section 2(e)(1). See, e.g., Yamaha Int'l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1007 (Fed. Cir. 1988), citing In re Capital Formation Counselors, Inc., 219 USPQ 916, 917 n. 2 (TTAB 1983)."
  • It is permissible to argue that the matter sought to be registered is not merely descriptive, yet advance the alternative claim that such matter has acquired distinctiveness, inasmuch as the latter does not constitute a concession that the matter sought to be registered is not inherently distinctive.
    • In re Mine Safety Appliances Company, Serial No. 75/501,608, (TTAB 2002).
      • Specifically, as correctly noted by the Examining Attorney in her brief, such a claim is tantamount to an admission that the term "WORKMASK" is not inherently distinctive when used in connection with self-contained breathing apparatus and thus, in light of the prohibition in Section 2(e)(1) against registration of merely descriptive marks, is unregistrable on the Principal Register absent a showing of acquired distinctiveness pursuant to Section 2(f).3 See, e.g., Yamaha International Corp. v. Hoshino Gakki Co. Ltd., supra at 1005; In re Cabot Corp., 15 USPQ2d 1224, 1229 (TTAB 1990); In re Professional Learning Centers, Inc., supra at 71; and TMEP Section 1212.02(b).

        FOOTNOTE 3 "This situation is to be distinguished from that where an applicant, in response to a refusal on the ground of mere descriptiveness, argues against the merits of the Examining Attorney's position and, in the alternative, adds a claim that the matter sought to be registered has acquired distinctiveness pursuant to Section 2(f). In such instance, it is permissible to argue that the matter sought to be registered is not merely descriptive, yet advance the alternative claim that such matter has acquired distinctiveness, inasmuch as the latter does not constitute a concession that the matter sought to be registered is not inherently distinctive. See, e.g., In re E S Robbins Corp., 30 USPQ2d 1540, 1542 (TTAB 1992); In re Professional Learning Centers, Inc., 230 USPQ 70, 71 n. 2 (TTAB 1986); and TMEP Section 1212.02(c)."

  • To the contrary, we find that applicant's amendment to the Supplemental Register was not made in the alternative; that applicant has, by its amendment, conceded that its proposed mark is merely descriptive; and that the issue of registrability on the Principal Register is not before us in this appeal.8
    • In re Eddie Z's Blinds and Drapery, Inc., Serial No. 76112441, (TTAB 2005).
      • FOOTNOTE 8 "We note, in any event, that applicant conceded in its response to the first office action, "The '.com' portion of the mark conveys the sense that Applicant's business is commercial. The 'blinds and drapery' portion indicates that the services relate to blinds and drapery. …although each of the elements of applicant's mark may be considered somewhat descriptive, the mark when taken as a whole does not immediately [convey] a sense of Applicant's goods or services." The contention that the combination of a descriptive term with a TLD results in an inherently distinctive mark is not persuasive. See In re Oppedahl & Larson, 373 F.3d 1171, 71 USPQ2d 1370, 1374 (Fed. Cir. 2004) (Court affirmed Board decision holding PATENTS.COM to be descriptive, stating "'Patents alone describes one feature of the goods—that of tracking patent applications and issued patents. Adding '.com' to the mark adds a further description of the Internet feature of the identified goods. Thus, appellant's argument to consider the mark as a whole only strengthens the descriptiveness finding.")."
  • Evidence: Magazine articles can provide evidence of consumers' understanding of a term.
    • In re America Online, Inc., Serial No. 75460305, (TTAB 2006).
      • In this case, there is evidence that consumers would understand the term "instant messaging" as the generic term to refer to services that are of the type identified by applicant. See, e.g., Computing, 22 June 2002 ("The instant messaging world is dominated by four platforms") and New York Times, 17 June 2002 ("providers of instant messaging").
    • In re America Online, Inc., Serial No. 75460305, (TTAB 2006).
      • Therefore, we conclude that the term "Instant Messenger" would immediately describe the function of the identified services, and the examining attorney's refusal to register the mark on the ground of mere descriptiveness is affirmed.
  • Case Finding: The word "Best" is merely descriptive in a laudatory sense.
    • In re Best Software, Inc., Serial No. 75/496,422, (TTAB 2002).
      • Upon careful consideration of this record and the arguments of the attorneys, we conclude that the word "BEST" in applicant's mark is merely descriptive, in a laudatory sense, of applicant's computer software and must be disclaimed, in the absence of a showing of acquired distinctiveness.
    • In re Best Software, Inc., Serial No. 75/496,422, (TTAB 2002).
      • In In re Boston Beer Co. L.P, 198 F.3d 1370, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999), in determining the registrability of the slogan "THE BEST BEER IN AMERICA," the Court of Appeals for the Federal Circuit held that this phrase was "so highly laudatory and descriptive as to be incapable of acquiring distinctiveness as a trademark…. [I]t is so highly laudatory and descriptive of the qualities of its 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 Best Software, Inc., Serial No. 75/496,422, (TTAB 2002).
      • We also note what we said earlier in In re Best Software, supra, at 1317: "Concerning the issue of mere descriptiveness, for the reasons expressed by the Examining Attorney, we believe that the word[] "BEST"… [is a] merely descriptive laudatory word[] which should be disclaimed. As presented in applicant's marks sought to be registered, [this word has] merely descriptive significance, indicating high quality or importance. [It is] unregistrable without a showing of acquired distinctiveness…" See also In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001)("THE ULTIMATE BIKE RACK" held a "laudatory descriptive phrase"); The Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357, 57 USPQ2d 1720 (Fed. Cir. 2001)("Number One in Floorcare" held a "generally laudatory phrase, and thus… not inherently distinctive"); Exquisite Form Industries, Inc. v. Exquisite Fabrics of London, 378 F.Supp. 403, 183 USPQ 666 (SDNY 1974)(EXQUISITE); In re Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995)(SUPER BUY); In re Inter-State Oil Co., 219 USPQ 1229 (TTAB 1983)(PREFERRED); and In re Wileswood, Inc., 201 USPQ 400 (TTAB 1978)(AMERICA'S BEST POPCORN! and AMERICA'S FAVORITE POPCORN!).
  • Third-party registrations seeking to register marks with the disputed term, under Section 2(f) or on the Supplemental Register, although not conclusive evidence, are probative evidence of mere descriptiveness at least to the extent that they may suggest that a term has been deemed and/or acknowledged to be not inherently distinctive by the Office and/or by the prior registrants.
    • In re Alpha Analytics Investment Group, LLC, Serial No. 75/829,220, (TTAB 2002).
      • Additionally, the above-referenced third-party registrations for similar goods and services in which the registrants have either disclaimed ANALYTICS or sought to register it under Section 2(f) or on the Supplemental Register, although not conclusive evidence, are probative evidence of mere descriptiveness at least to the extent that they may suggest that ANALYTICS has been deemed and/or acknowledged to be not inherently distinctive by the Office and/or by the prior registrants.
  • Case Finding: Given a specific meaning of a term which is directly relevant to applicant's services, the TTAB is not persuaded by the contention that purchasers would more likely understand the term in its more general sense.
    • In re Alpha Analytics Investment Group, LLC, Serial No. 75/829,220, (TTAB 2002).
      • Likewise, we find that ALPHA is merely descriptive of applicant's services. It is clear from the evidence of record that "alpha" is a term of art in the investment field. It is the name of a statistical measure which would be used by the investor, and by applicant as the investor's professional advisor, in determining the desirability of a particular investment vehicle. Given this specific meaning of "alpha" which is directly relevant to applicant's services, we are not persuaded by applicant's contention that purchasers encountering applicant's mark are more likely to understand "alpha" in its more general sense of "first" (or in its astronomical sense of "brightest"). We must determine whether the term is merely descriptive as it is used in connection with the recited services, not in the abstract. In re Bright-Crest Ltd., supra.
    • In re Alpha Analytics Investment Group, LLC, Serial No. 75/829,220, (TTAB 2002).
      • Moreover, the mark's use of the word ANALYTICS immediately after ALPHA increases the probability that purchasers will understand ALPHA in its specialized financial sense, rather than in any more generalized sense. As the mark is constructed, ANALYTICS clearly refers to and is modified by ALPHA. Because "analytics" could readily be performed as to the statistical measure "alpha," but not as to the generalized concept of "first," it is the former meaning that purchasers are more likely to ascribe to ALPHA in applicant's mark.
  • Evidence: Definition of a term in multiple sources can rebut the contention that only professionals in a specific field would be aware of the significance of a term.
    • In re Alpha Analytics Investment Group, LLC, Serial No. 75/829,220, (TTAB 2002).
      • Nor are we persuaded by applicant's contention that this relevant specialized meaning of "alpha" in the investment field is so obscure or arcane that potential purchasers, i.e., general, non-professional investors, would be unaware of it or unlikely to understand its significance as applied to applicant's services. Cf. In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987).
    • In re Alpha Analytics Investment Group, LLC, Serial No. 75/829,220, (TTAB 2002).
      • Not only is this definition of the term included in a standard dictionary, but the financial glossaries and publications in the record which use and discuss the term "alpha" in its specialized sense are directed to and read by such investor/purchasers. The evidence does not support applicant's (implicit) contention that only professionals in the investment field would be aware of this significance of "alpha."
  • A composite of merely descriptive words can be found merely descriptive as applied to applicant's goods and services.
    • In re Alpha Analytics Investment Group, LLC, Serial No. 75/829,220, (TTAB 2002).
      • We have carefully considered the evidence of record and the arguments made by applicant and by the Trademark Examining Attorney, and we conclude that ALPHA ANALYTICS is merely descriptive as applied to applicant's services, and that it therefore must be disclaimed. We find that each of the words ALPHA and ANALYTICS is merely descriptive of the services, and that the composite term ALPHA ANALYTICS likewise is merely descriptive, not inherently distinctive.
    • In re Alpha Analytics Investment Group, LLC, Serial No. 75/829,220, (TTAB 2002).
      • Finally, we are not persuaded by applicant's contention that the Trademark Examining Attorney's mere descriptiveness finding is based on an impermissible dissection of ALPHA ANALYTICS. We find, instead, that the composite of these merely descriptive words is likewise merely descriptive as applied to applicant's services.
    • In re Alpha Analytics Investment Group, LLC, Serial No. 75/829,220, (TTAB 2002).
      • We have carefully considered the evidence of record and the arguments made by applicant and by the Trademark Examining Attorney, and we conclude that ALPHA ANALYTICS is merely descriptive as applied to applicant's services, and that it therefore must be disclaimed. We find that each of the words ALPHA and ANALYTICS is merely descriptive of the services, and that the composite term ALPHA ANALYTICS likewise is merely descriptive, not inherently distinctive.
  • Case Finding: "Premier" and "Best" are merely descriptive laudatory terms.
    • In re Best Software, Inc., Serial No. 75/457,125, (TTAB 2001).
      • Concerning the issue of mere descriptiveness, for the reasons expressed by the Examining Attorney, we believe that the words "BEST" and "PREMIER" are merely descriptive laudatory words which should be disclaimed. As presented in applicant's marks sought to be registered, these words have merely descriptive significance, indicating high quality or importance. They are unregistrable without a showing of acquired distinctiveness.
  • Case Finding: In view of the nature of applicant's inventive and somewhat stylized mark, being an obvious play on the word "muffin" and the word "fun," we believe that the meaning or commercial impression of applicant's mark will be more than that simply of the word "muffins."
    • In re Tea and Sympathy, Inc., Serial No. 77054914 (TTAB 2008)
      • "The present case is reminiscent of the Board's holding in In re Grand Metropolitan Foodservice Inc., 30 USPQ2d 1974 (TTAB 1994). The Board found that the mark shown below [MUFFUNS] for "baked mini muffins sold frozen or fresh" was just suggestive. The Board stated: ""[W]e believe that this case involves more than simply a misspelling of a descriptive or generic word. That is to say, the mark presented for registration will be perceived, we believe, as not just a misspelled word. As applicant has pointed out, its mark does project a dual meaning or suggestiveness – that of muffins and of the "fun" aspect of applicant's food product...We have a situation, therefore, where applicant's mark has a different connotation from that conveyed by a misspelled generic or descriptive term. ***** In view of the nature of applicant's inventive and somewhat stylized mark, being an obvious play on the word "muffin" and the word "fun," we believe that the meaning or commercial impression of applicant's mark will be more than that simply of the word "muffins."4 FOOTNOTE 4 ""We recognize that applicant in that case voluntarily submitted a disclaimer of the word "muffins." The Board stated that the disclaimer should be entered inasmuch as the examining attorney did not object to entry of the disclaimer. In the present case, applicant did not voluntarily submit a disclaimer, nor apparently did the examining attorney believe one was necessary in the event the refusal was reversed. See TMEP §1213.08(c) (5th ed. 2007). Moreover, we do not believe that a disclaimer is required. As indicated above, we view applicant's mark as not merely a misspelled term, but rather as a term conveying a dual meaning. To state the obvious, applicant's registration will not preclude third parties in the trade from using the generic designation "the pharmacy" in connection with their goods and/or services."""
  • Case Finding: We find that Applicant's mark is inventive and just clever enough, being an obvious play on "the pharmacy" and "farm," so that the meaning or commercial impression of applicant's mark will be more than simply "the pharmacy" and is not merely descriptive.
    • In re Tea and Sympathy, Inc., Serial No. 77054914 (TTAB 2008)
      • We find that the mark THE FARMACY, as used in connection with applicant's services, is more than simply a misspelling of "the pharmacy." Consumers are not likely to perceive that mark as just a misspelling, but rather as a play on the natural or farm-fresh characteristics of applicant's herbs and organic products used for medicinal purposes featured in applicant's services. Thus, the mark conveys a dual meaning, that of the natural aspect of the goods sold by applicant and of a pharmacy. Applicant's mark is inventive and just clever enough, being an obvious play on "the pharmacy" and "farm," so that the meaning or commercial impression of applicant's mark will be more than simply "the pharmacy." Accordingly, applicant's mark is not merely descriptive.
  • Search engine results – which may provide little context to discern how a term is actually used on the webpage that can be accessed through the search result link – are of little probative weight and may be insufficient to determine the nature of the use of a term or the relevance of the search result to registration considerations.
    • In re Tea and Sympathy, Inc., Serial No. 77054914 (TTAB 2008)
      • FOOTNOTE 3 "The examining attorney's evidence in this connection includes truncated Google search results for the search "pharmacy herbs." This evidence is entitled to little probative weight. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007) ["Bayer asserts that the list of GOOGLE search summaries is of lesser probative value than evidence that provides the context within which a term is used. We agree. Search engine results – which may provide little context to discern how a term is actually used on the webpage that can be accessed through the search result link – may be insufficient to determine the nature of the use of a term or the relevance of the search result to registration considerations."]."
  • Trademark Rule 2.142(b) provides that the record in an application should be complete prior to the filing of the appeal; thus, new exhibits attached to a brief are untimely submissions and will not be considered.
    • In re Tea and Sympathy, Inc., Serial No. 77054914 (TTAB 2008)
      • FOOTNOTE 2 "Applicant attached exhibits to its brief, to which the examining attorney objected. Trademark Rule 2.142(b) provides that the record in an application should be complete prior to the filing of the appeal. These exhibits were not submitted during prosecution of the application. In view of their untimely submission, the exhibits have not been considered. See TBMP §1207.01 (2d ed. rev. 2004). Likewise, we have not considered the declaration of John Carr attached to applicant's reply brief."
  • Under the doctrine of foreign equivalents, foreign words from common languages are translated into English for the purpose of comparing them to other marks in the context of a likelihood of confusion determination or in deciding whether the mark is descriptive or generic in its foreign language.
    • Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Limited, Opposition No. 91165010, (TTAB 2008)
      • Under the doctrine of foreign equivalents, foreign words from common languages are translated into English for the purpose of comparing them to other marks in the context of a likelihood of confusion determination or in deciding whether the mark is descriptive or generic in its foreign language.7 FOOTNOTE 7 "See e.g., In re Oriental Daily News, Inc., 230 USPQ 637 (TTAB 1986)(Chinese characters translated as "Oriental Daily News" are descriptive of a newspaper under the doctrine of foreign equivalents); 2 McCarthy, J. Thomas, McCarthy on Trademarks and Unfair Competition § 11:34 (4th ed.)."
  • We begin by noting that because applicant seeks registration on the Supplemental Register, applicant has conceded that the marks are merely descriptive.
    • In re Rosemount Inc., Serial Nos. 78180535 and 78180540 (TTAB 2008)
      • We begin by noting that because applicant seeks registration on the Supplemental Register, applicant has conceded that the marks are merely descriptive. See In re Eddie Z's Blinds and Drapery, Inc., 74 USPQ2d 1037, 1039 (TTAB 2005); Perma Ceram Enterprises Inc. v. Preco Industries Ltd., 23 UPSQ2d 1134, 1137 n.11 (TTAB 1992). Thus, the arguments regarding other meanings for "REDUCER" and double entendre are inapplicable.
  • Discussion of term BOBBLE POP.
    • In re Paul Leonhardt, Serial No. 78666879 (TTAB 2008)
      • However, as indicated earlier, we do not consider the mark alone. Instead, we must consider the mark in the context in which it is used. Here, we must consider what a purchaser of lollipops would understand the term "pops" to mean upon seeing the term "Bobble Pops." We conclude that these consumers would immediately understand that this term describes lollipops. Such a conclusion is buttressed by applicant's use on its packaging of the informational phrasing "Collectible Bobble and Lollipop!" or "Lollipop and Collectible Bobble!" immediately adjacent to its asserted mark. These circumstances make it exceedingly unlikely that prospective consumers will consider applicant's use of "pops" (plural) to mean that the individuals and characters whose likenesses are featured on applicant's reusable bobble head covers are popular (or "pop," singular) characters, athletes, celebrities or the like.
  • Discussion of In re Hershey case.
    • In re Dean S. Carlson, Serial No. 78752616 (TTAB 2009)
      • Applicant has argued that we must look to his specimens to determine whether the ZING portion of his mark will make a separate commercial impression. Applicant cites In re Hershey, 6 USPQ2d 1470 (TTAB 1988), for that proposition. However, Hershey involved a refusal under Section 2(a) on the ground that the mark was scandalous. Moreover, the Board did not rely on the specimens in finding that the mark was not scandalous. The Board stated only that the specimens provided further support for its view that the mark did not have an offensive meaning, the Board having found that the evidence submitted by the examining attorney to be "at best marginal to demonstrate that the mark is a vulgar, slang reference to male genitalia and would be recognized as such a reference by a substantial composite of the general public." Id. at 1471.
  • Discussion of evaluation of BATTLECAM term.
    • In re Petroglyph Games, Inc., Serial No. 78806413 (TTAB 2009)
      • We also disagree with applicant's contention that the combination of BATTLE and CAM results in a combination that is more than merely descriptive. Applicant essentially argues that the combination of BATTLE and CAM results in an incongruous composite, or one without an obvious meaning, because of the wide array of definitions for each.. As previously noted, however, the meaning of BATTLE, CAM and the composite BATTLECAM must be determined by considering the proposed mark in conjunction with the identified goods. From the perspective of a prospective purchaser or user of computer game software, the immediately apparent meaning of BATTLECAM will be that of a feature of a computer game, as such purchasers are not at all likely to think of battling car mechanics.
  • Discussion of BATTLECAM as being merely descriptive.
    • In re Petroglyph Games, Inc., Serial No. 78806413 (TTAB 2009)
      • Words are adopted and used for various purposes, as the use of SPAM illustrates. It therefore does not help applicant overcome the instant refusal to argue that its computer game software does not include a feature that actually records images or transmits images, as a camera does. The fact remains that on the record created in this case, the function or feature within a game that allows a player to resort to alternative views of the playing field, elements thereof, or participants thereon, is referred to by players as a "camera," "battle camera" or "battlecam"; and the fact that such feature may not fit the dictionary definition of a camera is unimportant. See In re Polo International, supra, 51 USPQ2d at 1063 (Board unpersuaded by applicant's arguments that public would perceive different nuances between the words "control" and "manage" in case where applicant's DOC-CONTROL software was used for "document management" not document control).
  • Case Finding: GRAND CANYON WEST is highly descriptive.
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008 (TTAB 2008)
      • We conclude that GRAND CANYON WEST is highly descriptive. GRAND CANYON identifies a well-known place and WEST is a common term to indicate location. Even though there is no evidence of use by anyone other than applicant (and opposer) of GRAND CANYON WEST, and even though applicant has complete ownership and control over the property GRAND CANYON WEST identifies, we nonetheless conclude that GRAND CANYON WEST is highly descriptive. Cf. In re Pebble Beach Co., 19 USPQ2d at 1688-1690.
  • Discussion of In re Grand Metropolitan Foodservice case.
    • In re Dean S. Carlson, Serial No. 78752616 (TTAB 2009)
      • Applicant argues that because "zing" means "a quality or characteristic that excites the interest, enthusiasm, etc." and "to move or proceed with speed or vitality; zip," "the mark suggests that Applicant's real estate brokerage, consulting and listing services are provided with speed and enthusiasm." Brief, p. 15. Applicant has cited In re Grand Metropolitan Foodservice, Inc., 30 USPQ2d 1974 (TTAB 1994) and Surfvivor Media, Inc. v. Survivor Productions, 406 F.3d 625, 74 USPQ2d 1621 (9th Cir. 2005), in support of his position. The latter decision, however, is distinguishable from the present situation for many reasons. Most importantly, there was never an issue as to whether the plaintiff's mark, SURFVIVOR, was descriptive of such beach-themed products as sunscreen and t-shirts. The comments the Court made with respect to the mark were limited to the issue of the strength of the mark in terms of an infringement action, specifically whether the mark as a coined word was fanciful and entitled to the highest degree of trademark protection, or suggestive and worthy of a lesser scope of protection.
  • However, not all abbreviations are necessarily merely descriptive.
    • In re Thomas Nelson, Inc., Serial No. 76681269 (TTAB 2011)
      • However, not all abbreviations are necessarily merely descriptive.
        "While each case must be decided on the basis of the particular facts involved, it would seem that, as a general rule, initials cannot be considered descriptive unless they have become so generally understood as representing descriptive words as to be accepted as substantially synonymous therewith."
        Modern Optics, Inc. v. Univis Lens Co., 234 F.2d 504, 110 USPQ 293, 295 (CCPA 1956); see also Southwire Co. v. Kaiser Aluminum & Chemical Corp., 196 USPQ 566, 573 (TTAB 1977).
  • The generic name of a thing is in fact the ultimate in descriptiveness.
    • In re Greenliant Systems, Ltd., Serial No. 78724139 (TTAB 2010)
      • "The generic name of a thing is in fact the ultimate in descriptiveness." H. Marvin Ginn Corp., 228 USPQ at 530.
  • For footwear, the 'ordinary American purchaser is the 'relevant public.
    • In re Tokutake Industry Co., Ltd., Serial No. 79018656 (TTAB 2008)
      • For footwear, the "'ordinary American purchaser' is the 'relevant public.'" In re Spirits International N.V., 86 USPQ2d 1078, 1081 n.4 (TTAB 2008).
  • Discussion of whether URBANHOUZING makes the mark inherently distinctive.
    • In re Dean S. Carlson, Serial No. 78752616 (TTAB 2009)
      • In determining whether the misspelling of HOUSING in applicant's mark URBANHOUZING makes the mark inherently distinctive, we must consider whether URBANHOUZING will be perceived as the equivalent of URBANHOUSING and, as a secondary point, whether, as applicant argues, the element ZING makes a separate commercial impression. First, we find that HOUZING will be recognized as a misspelling of the descriptive word HOUSING. It is, as we have stated, a phonetic equivalent. Further, the examining attorney has submitted excerpts from blogs/message boards and from a slang dictionary in which what is obviously meant to be the word "housing" is spelled "houzing."
  • Third-party registrations are not conclusive on the question of descriptiveness.
    • In re Thomas Nelson, Inc., Serial No. 76681269 (TTAB 2011)
      • Third-party registrations are not conclusive on the question of descriptiveness. Each case must stand on its own merits, and a mark that is merely descriptive should not be registered on the Principal Register simply because other marks that share those characteristics appear on the register. In re Scholastic Testing Service, Inc., 196 USPQ 517, 519 (TTAB 1977) ("we are not so much concerned with what has been registered, but rather what should or should not be registered"). The question of whether a mark is merely descriptive must be determined based on the evidence of record at the time registration is sought. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re Sun Microsystems Inc., 59 USPQ2d 1084, 1087 (TTAB 2001).
  • CAM will be considered by players of computer games as a reference to a "camera."
    • In re Petroglyph Games, Inc., Serial No. 78806413 (TTAB 2009)
      • We conclude that CAM will be considered by players of computer games as a reference to a "camera," and more specifically, as a reference to the optional camera-like view or views of the terrain or scenes in a computer game that a player may access during play.
  • Capitalization of a word in a compound work mark may emphasize the separate words.
    • In re Dean S. Carlson, Serial No. 78752616 (TTAB 2009)
      • We consider this case to be distinguishable from the present situation as well, since the way the mark is depicted the word "fun" is emphasized as a separate word by the use of the capital "F." The "Z" in applicant's mark, because it is not emphasized and would be perceived as only a misspelling of the descriptive word "housing", does not project the impression of the separate word "zing."
  • Case Finding: The term NKJV is merely descriptive when used in connection with bibles.
    • In re Thomas Nelson, Inc., Serial No. 76681269 (TTAB 2011)
      • In view of the foregoing, we find that the term NKJV is merely descriptive when used in connection with bibles.
  • We must consider the term at issue in the context in which it is used, not in the abstract.
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008 (TTAB 2008)
      • We must consider the term at issue in the context in which it is used, not in the abstract. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002).
  • One must consider the mark in it entirety when determining whether a mark is merely descriptive.
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008 (TTAB 2008)
      • Finally, in determining whether a mark is merely descriptive, we must consider the mark in its entirety. See Concurrent Technologies Inc. v. Concurrent Technologies Corp., 12 USPQ2d 1054, 1057 (TTAB 1989).
  • The TTAB may take judicial notice of the Census data attached to the examining attorney's brief.
    • In re Tokutake Industry Co., Ltd., Serial No. 79018656 (TTAB 2008)
      • In this case, the foreign language is Japanese, which the evidence shows is a modern language spoken by more than 100 million people worldwide and by hundreds of thousands of people in the United States. See Final Office Action, attachment and Examining Attorney's Brief, Attachment.1 FOOTNOTE 1 "We take judicial notice of the Census data attached to the examining attorney's brief. Spirits International, 86 USPQ2d at 1085 n.11."
  • Clearly, "battle" is descriptive of computer games that feature battles as part of the game play.
    • In re Petroglyph Games, Inc., Serial No. 78806413 (TTAB 2009)
      • Clearly, "battle" is descriptive of computer games that feature battles as part of the game play, and it could not reasonably be argued that a game titled STAR WARS EMPIRE AT WAR would not feature battles or combat of some type.
  • The TTAB's well-established practice is not to take judicial notice of third-party registrations.
    • In re Thomas Nelson, Inc., Serial No. 76681269 (TTAB 2011)
      • FOOTNOTE 18 "We recognize the Federal Circuit exercised its discretion to take judicial notice of third-party registrations in an ex parte appeal. In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1688 (Fed. Cir. 2010). However, the Board's well-established practice is not to take judicial notice of thirdparty registrations, and we do not take judicial notice of third-party registrations here. Thus, to make a third-party registration of record, a copy of the registration, either a copy of the paper USPTO record, or a copy taken from the electronic records of the Office, should be submitted during prosecution/examination of the application. In re Jump Designs LLC, 80 USPQ2d 1370, 1372-73 (TTAB 2006); In re Volvo Cars of North America Inc., 46 USPQ2d at 1456 n.2; In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974)."
  • The absence of a term from the dictionary does not dictate that the term is not merely descriptive.
    • In re Petroglyph Games, Inc., Serial No. 78806413 (TTAB 2009)
      • Under these circumstances the absence of BATTLECAM from the dictionary applicant references does not dictate, as applicant contends, Brief, p. 6, that we find the term to be a fanciful mark, rather than a descriptive term. See In re Gould, supra; In re Mine Safety Appliances Co., 66 USPQ2d 1694 (TTAB 2002) (WORKMASK found descriptive despite absence of any evidence composite appeared in dictionaries); and In re Energy Products of Idaho, 13 USPQ2d 2049, 2052 (TTAB 1989) ("The absence of [WASTE-TOENERGY] from the dictionary is not, contrary to applicant's argument, 'persuasive evidence' that the term is not merely descriptive of applicant's services."). See also, Sweats Fashions Inc. v. Pannill Knitting Co., Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1797 (Fed. Cir. 1987), where absence of term "sweats" from dictionary and fashion references was found insufficient to create genuine issue of fact precluding entry of summary judgment, "in the face of the strong evidence showing that 'sweats' is commonly used as a descriptive name for fleece garments, particularly sweatshirts and sweatpants."
  • The TTAB will look at applicant's goods because the TTAB does not look at the mark in the abstract.
    • In re Tokutake Industry Co., Ltd., Serial No. 79018656 (TTAB 2008)
      • We begin by looking at applicant's goods because, as we indicated above, we do not look at the mark in the abstract.
  • Listing of cases where a space was deleted between the words and the combined term remained descriptive.
    • In re Dean S. Carlson, Serial No. 78752616 (TTAB 2009)
      • The Planalytics decision, 70 USPQ2d at 1455- 56, also cited the following cases in which, although a space was deleted between the words, the combined term remained descriptive:
        "In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) (SCREENWIPE generic for a wipe for cleaning television and computer screens); In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978) (GASBADGE at least descriptive for gas monitoring badges; three judges concurred in finding that term was the name of the goods); In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB 1977) (BREADSPRED descriptive for jams and jellies that would be a spread for bread); In re Perkin-Elmer Corp., 174 USPQ 57 (TTAB 1972) (LASERGAGE merely descriptive for interferometers utilizing lasers)."
  • A mark is deemed to be a double entendre only if both meanings are readily apparent from the mark itself.
    • In re Dean S. Carlson, Serial No. 78752616 (TTAB 2009)
      • For example, in In re The Place Inc., 76 USPQ2d 1467 (TTAB 2005), applicant sought to register THE GREATEST BAR for restaurant and bar services, arguing that the mark was not merely descriptive because it had a double entendre in that the theme and decor of the restaurant would focus on the greatest people, places and events in Boston history. The Board rejected this argument, stating:
        "A mark thus is deemed to be a double entendre only if both meanings are readily apparent from the mark itself. If the alleged second meaning of the mark is apparent to purchasers only after they view the mark in the context of the applicant's trade dress, advertising materials or other matter separate from the mark itself, then the mark is not a double entendre." Id. at 1470 (emphasis in original).
  • Case Finding: The terms are, if anything, even more similar, because they are also phonetically identical.
    • In re Dean S. Carlson, Serial No. 78752616 (TTAB 2009)
      • In the present case, the terms are, if anything, even more similar, because they are also phonetically identical. The dictionary definition for the word "housing" shows it is pronounced "hou'zing."
  • To be merely descriptive, a term need only describe a single significant quality or property of the goods.
    • In re Paul Leonhardt, Serial No. 78666879 (TTAB 2008)
      • To be "merely descriptive," a term need only describe a single significant quality or property of the goods. Gyulay, 3 USPQ2d at 1009.
  • To be merely descriptive, a term need only describe a single significant quality or property of the goods.
    • In re Petroglyph Games, Inc., Serial No. 78806413 (TTAB 2009)
      • To be merely descriptive, a term need only describe a single significant quality or property of the goods. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987); Meehanite Metal Corp. v. International Nickel Co., 262 F.2d 806, 120 USPQ 293, 294 (CCPA 1959).
  • During ex parte examination, the prosecution of each application is governed by its own specific set of facts.
    • In re Paul Leonhardt, Serial No. 78666879 (TTAB 2008)
      • Of course, during ex parte examination, the prosecution of each application is governed by its own specific set of facts. See In re Nett Designs, 57 USPQ2d at 1566 [" . the Board . must assess each mark on the record of public perception submitted with the application."].
  • Discussion of finding in In re Wells Fargo & Company, 231 USPQ 95 (TTAB 1986), regarding the mark EXPRESSERVICE.
    • In re Dean S. Carlson, Serial No. 78752616 (TTAB 2009)
      • Similarly, in In re Wells Fargo & Company, 231 USPQ 95 (TTAB 1986), applicant argued that its mark EXPRESSERVICE was not merely descriptive of banking services because of a double entendre, "the historical connotation with applicant's predecessor which was extensively involved in the Old West." Id. at 99. However, the Board found that "consumers associate 'Express Service' with this Old West imagery only when the term is used in association with the Wells Fargo name or with one of its allied marks (e.g., the stagecoach design)." Id.
  • A word, term, or letters that are a recognized abbreviation for the goods in the application is merely descriptive.
    • In re Thomas Nelson, Inc., Serial No. 76681269 (TTAB 2011)
      • A word, term, or letters that are a recognized abbreviation for the goods in the application is merely descriptive. Foremost Dairies, Inc. v. The Borden Company, 156 USPQ 153, 154 (TTAB 1967); Calgon Corporation v. Hooker Chemical Corporation, 151 USPQ 359, 360 (TTAB 1966).
  • The fact a foreign term has multiple meanings hardly prevents common terms from being generic for more than one item.
    • In re Tokutake Industry Co., Ltd., Serial No. 79018656 (TTAB 2008)
      • Regarding applicant's argument that the term has multiple meanings in Japanese, the examining attorney has pointed out that terms in English similarly have multiple meanings. This fact hardly prevents common terms like "shoe," "muffler," and "check" from being generic for more than one item.
  • Descriptiveness, is not analyzed by considering the mark in the abstract but in conjunction with the identified goods.
    • In re Petroglyph Games, Inc., Serial No. 78806413 (TTAB 2009)
      • Applicant contends, "The coined word BATTLECAM contains no references to computers, or games, or software." Response, p. 2. See also, Reply brief, p. 8. Descriptiveness, however, is not analyzed by considering the mark in the abstract but in conjunction with the identified goods, for it is settled that "[t]he question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods and services are will understand the mark to convey information about them." In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002). See also In re Home Builders Association of Greenville, 18 USPQ2d 1313 (TTAB 1990); and In re American Greetings Corporation, 226 USPQ 365 (TTAB 1985).
  • The question is whether someone who knows what the goods are will understand the mark to convey information about them.
    • In re Paul Leonhardt, Serial No. 78666879 (TTAB 2008)
      • Rather, the question is whether someone who knows what the goods are will understand the mark to convey information about them. In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002); In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998).
  • Arguments concerning the analysis used by a foreign trademark office to determine the similarity of marks are not relevant.
    • In re Tokutake Industry Co., Ltd., Serial No. 79018656 (TTAB 2008)
      • We briefly add that while applicant alludes to the action of other trademark offices, it has not submitted any evidence to support its position. Moreover, the board has recently commented that "Applicant's arguments concerning the analysis used by the Japanese Trademark Office to determine the similarity of marks are not relevant." Thomas, 79 USPQ2d at 1025 n.7.
  • Evidence that shows use of terms without need to explain such terms suggests that the terms are familiar, descriptive terms.
    • In re Petroglyph Games, Inc., Serial No. 78806413 (TTAB 2009)
      • Nonetheless, the evidence is significant not because it proves what attributes the particular games possess, but because it shows that numerous players or reviewers chose to use the terms "camera," "battle camera" or "battle cam" in their descriptions of the games without need to explain such terms. Thus, the evidence indicates the terms are familiar, descriptive terms in the computer game field.
  • A mark may be merely descriptive even if it does not describe the full scope and extent of the applicant's goods or services.
    • In re Petroglyph Games, Inc., Serial No. 78806413 (TTAB 2009)
      • "[A] mark may be merely descriptive even if it does not describe the 'full scope and extent' of the applicant's goods or services." See In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (quoting In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)).
  • The mere addition of a letter to a generic term may be insufficient to transform the mark into an inherently distinctive mark.
    • In re Dean S. Carlson, Serial No. 78752616 (TTAB 2009)
      • In In re Bayer Aktiengesellschaft, 488 F.2d 960, 82 USPQ2d 1828 (Fed. Cir. 2007), the Court found that ASPIRINA was merely descriptive for analgesic goods, and affirmed the Board's finding that ASPIRINA and aspirin are sufficiently close in appearance, sound, and meaning that "[t]he mere addition of the letter 'A' at the end of the generic term 'aspirin' is simply insufficient to transform ASPIRINA into an inherently distinctive mark for analgesics." 82 USPQ2d at 1831. In that case, the Court held that "[a]dding an 'a' to aspirin results in virtually no distinction with respect to the visual impressions of the terms," and that the meaning of the terms was similar. 82 USPQ2d at 1832.
  • It is entirely acceptable to consider the component parts of a composite mark when divining the likely perception of the composite.
    • In re Petroglyph Games, Inc., Serial No. 78806413 (TTAB 2009)
      • Although applicant argues that the examining attorney's consideration of the two distinct elements of the proposed mark constitutes an impermissible dissection of the mark, Brief, pp. 3 and 5, it is entirely acceptable to consider the component parts of a composite mark when divining the likely perception of the composite. See, e.g., In re Zanova Inc., supra (ITOOL would be perceived as short for "internet tools" and was refused as descriptive for goods and services including software for creating Web pages), In re Polo International Inc., 51 USPQ2d 1061 (TTAB 1999) (DOC-CONTROL refused as merely descriptive of document management software), and In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991) (MULTI-VIS refused as merely descriptive of multiple viscosity motor oil). See also, In re King Koil Licensing Co., 79 USPQ2d 1048 (TTAB 2006) ("Nor has the examining attorney engaged in impermissible dissection of a mark by determining that one term in the mark is descriptive and another generic. This is all part and parcel of routine examination of a multiword mark.").
  • A mark is merely descriptive if it immediately conveys information concerning a quality or characteristic of the product or service.
    • In re Tokutake Industry Co., Ltd., Serial No. 79018656 (TTAB 2008)
      • "A mark is merely descriptive if it immediately conveys information concerning a quality or characteristic of the product or service. The perception of the relevant purchasing public sets the standard for determining descriptiveness. Thus, a mark is merely descriptive if the ultimate consumers immediately associate it with a quality or characteristic of the product or service. On the other hand, if a mark requires imagination, thought, and perception to arrive at the qualities or characteristics of the goods or services, then the mark is suggestive." In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003) (citations and internal quotation marks omitted). See also In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978) and In re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
  • The multiple interpretations that make an expression a double entendre must be associations that the public would make fairly readily.
    • In re Petroglyph Games, Inc., Serial No. 78806413 (TTAB 2009)
      • Applicant, although arguing that the composite is inventive and fanciful, does not specifically argue that its proposed mark creates any sort of double entendre. Nonetheless, to be complete in our analysis, we note that we see no double entendre resulting from the combination of the two merely descriptive terms. See In re The Place Inc., 76 USPQ2d 1467, 1470 (TTAB 2005) ("The multiple interpretations that make an expression a 'double entendre' must be associations that the public would make fairly readily," quoting TMEP § 1213.05(c)).
  • In general, a mere misspelling of a word is not sufficient to change a merely descriptive term into an inherently distinctive trademark.
    • In re Dean S. Carlson, Serial No. 78752616 (TTAB 2009)
      • The next question is whether the misspelling of the descriptive word HOUSING as HOUZING changes the meaning or commercial impression of the mark. In general, a mere misspelling of a word is not sufficient to change a merely descriptive term into an inherently distinctive trademark. See Armstrong Paint & Varnish Works v. Nu-Enamel Corp., 305 U.S. 315 (1938) (NU-ENAMEL; NU found equivalent of "new"); In re Quik-Print Copy Shops, 616 F.2d 523, 205 USPQ 505, 507 n.9 (CCPA 1980) (QUIK-PRINT held descriptive; "There is no legally significant difference here between 'quik' and 'quick'"); In re Organik Technologies Inc., 41 USPQ2d 1690, 1694 (TTAB 1997) ("ORGANIK, which is the phonetic equivalent of the term 'organic,' is deceptive"); and Hi-Shear Corp. v. National Automotive Parts Association, 152 USPQ 341, 343 (TTAB 1966) (HI-TORQUE "is the phonetic equivalent of the words 'HIGH TORQUE'").
  • SPAM has also been adopted by computer users to refer to unsolicited commercial bulk e-mail akin to 'junk mail' sent through the postal mail.
    • In re Petroglyph Games, Inc., Serial No. 78806413 (TTAB 2009)
      • SPAM is a term long listed in dictionaries as "a trademark for spiced pork products." See The American Heritage Dictionary of the English Language p. 1237 (1976). Yet the term has also been adopted by computer users to refer to "unsolicited commercial bulk e-mail akin to 'junk mail' sent through the postal mail." See Hotmail Corp. v. Van$ Money Pie Inc., 47 USPQ2d 1020 (N.D. Cal. 1998) (finding of fact no. 5).
  • Case Finding: Applicant's argument that it is appropriate to look to his specimens to find that his mark has a double entendre must be rejected.
    • In re Dean S. Carlson, Serial No. 78752616 (TTAB 2009)
      • Thus, applicant's argument that it is appropriate to look to his specimens to find that his mark has a double entendre must be rejected.
  • Case Finding: The compression of the words URBAN HOUSING into a single term, URBANHOUZING, still conveys the commercial impression of two words.
    • In re Dean S. Carlson, Serial No. 78752616 (TTAB 2009)
      • We find, first, that the compression of the words URBAN HOUSING into a single term, URBANHOUZING, still conveys the commercial impression of two words. In other words, consumers would recognize the mark as consisting of the separate elements URBAN and HOUZING. See In re Cox Enterprises Inc., 82 USPQ2d 1040, 1043 (TTAB 2007) ("THEATL is simply a compressed version of the descriptive term THE ATL without a space between the two words. Without the space, THEATL is equivalent in sound, meaning and impression to THE ATL and is equally descriptive of applicant's goods"); In re Planalytics Inc., 70 USPQ2d 1453 (TTAB 2004) (GASBUYER merely descriptive of providing on-line risk management services in the field of pricing and purchasing decisions for natural gas; the absence of the space does not create a different meaning or perception of the term).
  • Case Finding: The mark URBANHOUZING does not convey a double entendre that would prevent it from being merely descriptive of applicant's services.
    • In re Dean S. Carlson, Serial No. 78752616 (TTAB 2009)
      • We conclude that applicant's applied-for mark, URBANHOUZING in standard character form, will be immediately and directly perceived by consumers as the equivalent of the admittedly descriptive term URBAN HOUSING, rather than as including the separate word ZING. The mark, thus, does not convey a double entendre that would prevent it from being merely descriptive of applicant's services.
  • Descriptiveness of a mark is not considered in the abstract, but in relation to the particular goods or services for which registration is sought.
    • In re Paul Leonhardt, Serial No. 78666879 (TTAB 2008)
      • Descriptiveness of a mark is not considered in the abstract, but in relation to the particular goods or services for which registration is sought. That is, when we analyze the evidence of record, we must keep in mind that the test is not whether prospective purchasers can guess what applicant's goods are after seeing only applicant's mark. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978) [GASBADGE merely descriptive of a "gas monitoring badge"; "Appellant's abstract test is deficient - not only in denying consideration of evidence of the advertising materials directed to its goods, but in failing to require consideration of its mark 'when applied to the goods' as required by statute."].
  • Case Finding: The term "walking" is at least merely descriptive of shoes that are specifically designed for walking as opposed to other activities.
    • In re Tokutake Industry Co., Ltd., Serial No. 79018656 (TTAB 2008)
      • Thus, the term "walking" is at least merely descriptive of shoes that are specifically designed for walking as opposed to other activities. Inasmuch as applicant's goods are identified simply as "footwear," its goods would include all types of footwear, including shoes designed for walking.
  • Case Finding: GRAND CANYON WEST is merely descriptive and placement of WEST after GRAND CANYON does not alter the descriptive character of the mark.
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008 (TTAB 2008)
      • Accordingly, we conclude that GRAND CANYON WEST is merely descriptive of applicant's services within the meaning of Section 2(e)(1). We find unpersuasive applicant's argument that the placement of WEST after GRAND CANYON in the mark alters the descriptive character of the mark.
  • Where both the examining attorney and applicant have submitted dictionary definitions for a term, the TTAB may defer to the definitions submitted by applicant.
    • In re Petroglyph Games, Inc., Serial No. 78806413 (TTAB 2009)
      • Both the examining attorney and applicant have made of record dictionary definitions for the term "battle," which are essentially the same. We therefore defer to the definitions submitted by applicant.
  • Case Finding: The TTAB relied on the fact that applicant translated its mark as "walking" and submitted evidence that the term is, in fact, defined as "walking."
    • In re Tokutake Industry Co., Ltd., Serial No. 79018656 (TTAB 2008)
      • Thus, we rely on the fact that applicant translated its mark as "walking" and submitted evidence that the term is, in fact, defined as "walking." We also point out that applicant provided no admissible evidence to explain why Japanese speakers would not translate its mark as it originally specified.
  • Reference to third-party registrations in a response and a brief, without copies of the registrations, is not the proper way to make such registrations of record.
    • In re Thomas Nelson, Inc., Serial No. 76681269 (TTAB 2011)
      • Applicant also referenced three previously registered third-party marks comprising initials for bibles, Registration No. 2915872 for the mark NCV and Registration Nos. 2788296 and 1642753 for the mark NIV, as the basis for arguing that the descriptiveness refusal is not consistent with existing USPTO practice to register initials as trademarks for bibles.17 Applicant only made reference to these registrations in its December 11, 2008 response and later in its brief; applicant did not submit copies of the registrations. This is not the proper way to make such registrations of record. See In re Volvo Cars of North America Inc., 46 USPQ2d 1455, 1456 n.2 (TTAB 1998).
  • A term is merely descriptive if it immediately describes a significant quality, characteristic, function, feature or purpose of the services with which it is used.
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008 (TTAB 2008)
      • A term is merely descriptive if it immediately describes a significant quality, characteristic, function, feature or purpose of the services with which it is used. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
  • Document excerpts which use the term in the body, and thus provide context for its use, are entitled to greater weight than those with the term only in the headline.
    • In re Petroglyph Games, Inc., Serial No. 78806413 (TTAB 2009)
      • In its reply brief, at pages 5-6, applicant argues both that the examining attorney put in no evidence to allow the Board to determine what motivated game reviewers, or game players, to use the terms "battle camera" or "battle cam," and thus the excerpts should not be given a great deal of weight. In addition, applicant contends the excerpts made of record provide no proof the games actually included a "battle camera" feature. In support of the former point, applicant cites to In re Federated Department Stores, 3 USPQ2d 1541 (TTAB 1987). The case is not, however, analogous to the case at hand. In Federated, the Board appears to have discounted a single NEXIS excerpt because of the panel's inability to determine why a term was used in a headline for a story. This is entirely distinguishable from the case at hand, wherein the excerpts in question refer to "camera," "battle camera" or "battle cam" not in headlines but in narrative text, thus providing context for the uses.
  • Case Finding: Even if applicant uses BATTLECAM in conjunction with computer games that do not include battles, "battle" remains a descriptive term for those that do.
    • In re Petroglyph Games, Inc., Serial No. 78806413 (TTAB 2009)
      • Thus, even if applicant uses BATTLECAM in conjunction with computer games that do not include battles, "battle" remains a descriptive term for those that do; and applicant's identification does not exclude games featuring battles, so we must assume that the identification includes such games.
  • A term is merely descriptive if it immediately conveys knowledge of a significant quality, characteristic, function, feature or purpose of the products it identifies.
    • In re Thomas Nelson, Inc., Serial No. 76681269 (TTAB 2011)
      • A term is merely descriptive if it immediately conveys knowledge of a significant quality, characteristic, function, feature or purpose of the products it identifies. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987).
  • When analyzing a mark to determine if it is merely descriptive, one must consider the mark in the context of the identified goods or services and not in the abstract.
    • In re Tokutake Industry Co., Ltd., Serial No. 79018656 (TTAB 2008)
      • It is clear that when we are analyzing a mark to determine if it is merely descriptive, we must consider the mark in the context of the identified goods or services and not in the abstract. Abcor, 200 USPQ at 218 ("Appellant's abstract test is deficient - not only in denying consideration of evidence of the advertising materials directed to its goods, but in failing to require consideration of its mark 'when applied to the goods' as required by statute").
  • Listings in blogs or even a slang dictionary may show that there exists an accepted alternate spelling of a term or that this spelling is in common and widespread use.
    • In re Dean S. Carlson, Serial No. 78752616 (TTAB 2009)
      • We do not mean to suggest that listings in blogs or even a slang dictionary4 show that "houzing" is an accepted alternate spelling of "housing" or that this spelling is in common and widespread use. But these uses indicate either that "housing" may be misspelled as "houzing" or that the writers who deliberately use this spelling view "houzing" as a misspelling or alternate spelling that readers will immediately understand as "housing."
  • A mark is merely descriptive, and therefore unregistrable, if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services.
    • In re Paul Leonhardt, Serial No. 78666879 (TTAB 2008)
      • A mark is merely descriptive, and therefore unregistrable pursuant to the provisions of Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), if it immediately conveys "knowledge of a quality, feature, function, or characteristic of the goods or services." In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) [ASPIRINA is merely descriptive of analgesic product]. See also In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003) [MONTANA SERIES and PHILADELPHIA CARD are merely descriptive of applicant's "affinity" credit card services; a "mark is merely descriptive if the ultimate consumers immediately associate it with a quality or characteristic of the product or service"]; In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) [THE ULTIMATE BIKE RACK is merely descriptive for bicycle racks]; In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987) [APPLE PIE is merely descriptive for a potpourri mixture]; and In re Quik-Print Copy Shops, Inc., 616 F.2d 523, 205 USPQ 505, 507 (CCPA 1980).
  • First, we examine the evidence concerning the meanings that would be ascribed to the term BATTLECAM and the separate terms BATTLE and CAM, when used with applicant's goods.
    • In re Petroglyph Games, Inc., Serial No. 78806413 (TTAB 2009)
      • First, we examine the evidence concerning the meanings that would be ascribed to the term BATTLECAM and the separate terms BATTLE and CAM,5 when used with applicant's goods.
  • The fact that no other competitor is using a mark does not make it an inherently distinctive trademark when the only significance projected by the term is merely descriptive.
    • In re Thomas Nelson, Inc., Serial No. 76681269 (TTAB 2011)
      • The fact that no other competitor is using NKJV does not make it an inherently distinctive trademark when the only significance projected by the term is merely descriptive. See In re Hunter Fan Co., 78 USPQ2d 1474, 1476 (TTAB 2006) ("a word need not be in common use in an industry to be descriptive, and the mere fact that an applicant is the first to use a descriptive term in connection with its goods, does not imbue the term with source-identifying significance"); In re Alpha Analytics Investment Group LLC, 62 USPQ2d 1852, 1856 (TTAB 2002).
  • The TTAB has previously relied on applicant's own evidence to conclude that the foreign language characters were merely descriptive under the doctrine of foreign equivalents.
    • In re Tokutake Industry Co., Ltd., Serial No. 79018656 (TTAB 2008)
      • Similarly, when an applicant argued that the Chinese characters in its mark translated "in only a very loose sense" into ORIENTAL DAILY NEWS, the board relied on applicant's own evidence to conclude that the characters were merely descriptive under the doctrine of foreign equivalents. Oriental Daily News, 230 USPQ at 637.
  • The test for descriptiveness is whether a term immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used.
    • In re Dean S. Carlson, Serial No. 78752616 (TTAB 2009)
      • Since this decision issued in 1985, there have been numerous decisions from the Court of Appeals for the Federal Circuit and the Board making clear that the test for descriptiveness is whether a term "immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used." In re Bayer Aktiengesellschaft, 82 USPQ2d at 1831, citing In re Gyulay, 820 F.2d 1216, 1217, 3 USPQ2d 1009 (Fed. Cir. 1987).
  • Case Finding: The evidence before us establishes that NANDRIVE is generic for applicant's goods is a holding that NANDRIVE is at least merely descriptive of applicant's goods.
    • In re Greenliant Systems, Ltd., Serial No. 78724139 (TTAB 2010)
      • Implicit in our holding that the evidence before us establishes that NANDRIVE is generic for applicant's goods is a holding that NANDRIVE is at least merely descriptive of applicant's goods under Section 2(e)(1).
  • A mark is not a double entendre if the second meaning is grasped by purchasers only when the mark is used with other indicia, even if that other indicia is itself not merely descriptive.
    • In re Dean S. Carlson, Serial No. 78752616 (TTAB 2009)
      • The Board then reiterated: "A mark is not a double entendre if the second meaning is grasped by purchasers only when the mark is used with 'other indicia,' even if that other indicia is itself not merely descriptive." Id. at 1471.
  • If one must exercise mature thought or follow a multi-stage reasoning process in order to determine what characteristics the term identifies, the term is suggestive rather than merely descriptive.
    • In re Thomas Nelson, Inc., Serial No. 76681269 (TTAB 2011)
      • "If one must exercise mature thought or follow a multi-stage reasoning process in order to determine what characteristics the term indentifies, the term is suggestive rather than merely descriptive." In re Tennis in the Round, Inc., 199 USPQ 496, 497 (TTAB 1978); see also, In re Shutts, 217 USPQ 363, 364-365 (TTAB 1983); In re Universal Water Systems, Inc., 209 USPQ 165, 166 (TTAB 1980).
  • A term is deemed to be merely descriptive of goods or services if it conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services.
    • In re Dean S. Carlson, Serial No. 78752616 (TTAB 2009)
      • A term is deemed to be merely descriptive of goods or services, within the meaning of Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978).
  • Where the examining attorney has refused registration on the ground that the mark is merely descriptive, not generic, the examining attorney was not required to show the translation of the foreign term.
    • In re Tokutake Industry Co., Ltd., Serial No. 79018656 (TTAB 2008)
      • In this case, the examining attorney has refused registration on the ground that the term AYUMI and design is merely descriptive, not generic. Therefore, the examining attorney was not required to show that the term AYUMI necessarily translates as "walking" shoes.
  • Specimens and promotional material may be used to prove that a mark is merely descriptive, and statements made in them can show that a term describes a feature or characteristic of the goods or services.
    • In re Dean S. Carlson, Serial No. 78752616 (TTAB 2009)
      • Applicant has pointed to no cases in which the courts or this Board have looked to an applicant's specimens to find that a mark was not merely descriptive5. FOOTNOTE 5 "Of course, specimens and promotional material may be used to prove that a mark is merely descriptive, and statements made in them can show that a term describes a feature or characteristic of the goods or services. See, for example, In re Abcor Development Co., supra; In re Hunter Fan Co., 78 USPQ2d 1474 (TTAB 2006)."
  • The term "New King James Version" is merely descriptive because it immediately conveys to consumers that the product identified by the mark is a "new" or modified version of the well-known King James Bible.
    • In re Thomas Nelson, Inc., Serial No. 76681269 (TTAB 2011)
      • The term "New King James Version" is merely descriptive because it immediately conveys to consumers that the product identified by the mark is a "new" or modified version of the well-known King James Bible. In this regard, we note that the evidence of record shows that "New King James Version" is a recognized term for a version of the bible.
  • In Grand Metropolitan Foodservice, the Board found the mark per se projected a double meaning; the promotional materials emphasizing this meaning merely supported the Board's finding based on the mark alone.
    • In re Dean S. Carlson, Serial No. 78752616 (TTAB 2009)
      • Applicant has pointed to no cases in which the courts or this Board have looked to an applicant's specimens to find that a mark was not merely descriptive5. On the contrary, the cases we have reviewed are directly contrary to applicant's position.6 FOOTNOTE 6 "Even in Grand Metropolitan Foodservice, the Board found the mark per se projected a double meaning; the promotional materials emphasizing this meaning merely supported the Board's finding based on the mark alone."
  • Case Finding: As concerning a foreign word and its English translation, applicant has not provided evidence that explains why consumers would conclude that the term means one definition as opposed to another.
    • In re Tokutake Industry Co., Ltd., Serial No. 79018656 (TTAB 2008)
      • In this case, applicant's definition also indicates that the term "ayumi" can also be translated as "progress; (an) advance [or] the course of history." Applicant has not provided evidence that explains why consumers familiar with the Japanese language who see the term AYUMI on a pair of shoes for walking would conclude that the term means "progress" as opposed to "walking." Applicant did not even provide this translation in its application. Moreover, applicant itself has highlighted the definition of "Walking" as the translation of the mark.
  • One must assume that prospective consumers will encounter the term in relation to the identified services and determine whether those consumers will understand the term to convey information about the services.
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008 (TTAB 2008)
      • That is, we must assume that prospective consumers will encounter the term in relation to the identified services and determine whether those consumers will understand the term to convey information about the services. In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002); In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders Association of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re American Greetings Corp., 226 UPSQ 365, 366 (TTAB 1985).
  • The ultimate question before the TTAB is whether the term conveys information about a significant feature or characteristic of applicant's goods with the immediacy and particularity required by the Trademark Act.
    • In re Paul Leonhardt, Serial No. 78666879 (TTAB 2008)
      • Hence, the ultimate question before us is whether the term BOBBLE POPS conveys information about a significant feature or characteristic of applicant's goods with the immediacy and particularity required by the Trademark Act.
  • Whether a particular term is merely descriptive is determined in relation to the goods for which registration is sought and the context in which the term is used, not in the abstract or on the basis of guesswork.
    • In re Thomas Nelson, Inc., Serial No. 76681269 (TTAB 2011)
      • Whether a particular term is merely descriptive is determined in relation to the goods for which registration is sought and the context in which the term is used, not in the abstract or on the basis of guesswork. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002).
  • Case Finding: The individual terms in applicant's proposed mark are each descriptive and that applicant's combination of the terms into the composite term BOBBLE POPS is also merely descriptive for the identified candy.
    • In re Paul Leonhardt, Serial No. 78666879 (TTAB 2008)
      • As for the word "Bobble," we have not spent a great deal of time discussing this term inasmuch as applicant has acknowledged that this word immediately alerts consumers to the fact that the lollipop cover is a bobble head. Accordingly, applicant has disclaimed this term. Therefore, based on the evidence of record, we have no doubt that the individual terms in applicant's proposed mark are each descriptive and that applicant's combination of the terms into the composite term "Bobble Pops" is also merely descriptive for the identified candy.
  • The case No Nonsense Fashions Inc. v. Consolidated Foods Corp., 226 USPQ 502 (TTAB 1985) contains a discussion of whether use of a term by third parties on their packaging detracted from the plaintiff's trademark rights.
    • In re Dean S. Carlson, Serial No. 78752616 (TTAB 2009)
      • In reaching our conclusion that applicant's mark is merely descriptive, we have considered applicant's argument that "the Board employs three tests to determine whether a mark is suggestive rather than descriptive: (1) the "competitors' need test," (2) the "competitors' use test," and (3) the degree of imagination test." Brief, p. 17. Applicant bases this argument on No Nonsense Fashions Inc. v. Consolidated Foods Corp., 226 USPQ 502 (TTAB 1985). However, these "tests" were set out in an inter partes case in a discussion of whether use of a term by third parties on their packaging detracted from the plaintiff's trademark rights. Thus, to the extent that applicant is suggesting that the Office must prove all three points, applicant is incorrect.
  • There is no requirement that the Office prove actual competitor use or need; it is well established that even if an applicant is the only user of a merely descriptive term, this does not justify registration of that term.
    • In re Dean S. Carlson, Serial No. 78752616 (TTAB 2009)
      • Further, with respect to applicant's statement that "the Examiner has also failed to show that any competitor has used, or will ever have need to use, the terms URBANHOUZING or HOUZING in connection with real estate services," brief, pp. 5-6, the test for descriptiveness is set out in the preceding sentence. There is no requirement that the Office prove actual competitor use or need; it is well established that even if an applicant is the only user of a merely descriptive term, this does not justify registration of that term. See In re BetaBattInc., 89 USPQ2d 1152, 1156 (TTAB 2008); In re Sun Microsystems, Inc., 59 USPQ2d 1084, 1087 (TTAB 2001); In re Acuson, 225 USPQ 790, 792 (TTAB 1985).
  • A mark is merely descriptive if it immediately describes the ingredients, qualities, or characteristics of the goods or services or if it conveys information regarding a function, purpose, or use of the goods or services.
    • In re Petroglyph Games, Inc., Serial No. 78806413 (TTAB 2009)
      • A mark is merely descriptive if it immediately describes the ingredients, qualities, or characteristics of the goods or services or if it conveys information regarding a function, purpose, or use of the goods or services. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978). See also In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003) (A "mark is merely descriptive if the ultimate consumers immediately associate it with a quality or characteristic of the product or service"), and In re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
  • The Board has determined that the ordinary American purchaser in a case involving a foreign language mark refers to the ordinary American purchaser who is knowledgeable in English as well as the pertinent foreign language.
    • In re Tokutake Industry Co., Ltd., Serial No. 79018656 (TTAB 2008)
      • "The Board has determined that the 'ordinary American purchaser' in a case involving a foreign language mark refers to the ordinary American purchaser who is knowledgeable in English as well as the pertinent foreign language." In re Peregrina Limited, ___ USPQ2d ___, Serial No. 78676199, slip op. at 3 (TTAB March 14, 2008). See also In re Thomas, 79 USPQ2d 1021, 1025 (TTAB 2006).
  • Case Finding: Online candy catalogs and recipes support the conclusion that the term "Pops" is a shortened form for the word "lollipops," and hence is highly descriptive, if not generic, when used in connection with lollipop candies.
    • In re Paul Leonhardt, Serial No. 78666879 (TTAB 2008)
      • We agree with the Trademark Examining Attorney that these online candy catalogs and recipes support the conclusion that the term "Pops" is a shortened form for the word "lollipops," and hence is highly descriptive, if not generic, when used in connection with lollipop candies.
  • Case Finding: "Station wagon," "sedan," "coupe," and "convertible," would each be a descriptive term if listed as the subject of an application whose identification read "automobiles," even though none would itself describe all types of automobiles.
    • In re Petroglyph Games, Inc., Serial No. 78806413 (TTAB 2009)
      • "Station wagon," "sedan," "coupe," and "convertible," for example, each would be a descriptive term if listed as the subject of an application whose identification read "automobiles," even though none would itself describe all types of automobiles.
  • When two or more merely descriptive terms are combined, the determination of whether the composite mark also has a merely descriptive significance turns on the question of whether the combination of terms evokes a new and unique commercial impression.
    • In re Paul Leonhardt, Serial No. 78666879 (TTAB 2008)
      • When two or more merely descriptive terms are combined, the determination of whether the composite mark also has a merely descriptive significance turns on the question of whether the combination of terms evokes a new and unique commercial impression. If each component retains its merely descriptive significance in relation to the goods or services, the combination generally results in a composite that is itself merely descriptive. See In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1112 (Fed. Cir. 1988) [SCREENWIPE is generic for wipes that clean computer and television screens]; In re Tower Tech, Inc., 64 USPQ2d 1314, 1318 (TTAB 2002) [SMARTTOWER is merely descriptive of commercial and industrial cooling towers]; In re Sun Microsystems Inc., 59 USPQ2d 1084, 1087 (TTAB 2001) [AGENTBEANS is merely descriptive of computer programs for use in development and deployment of application programs].
  • Case Finding: The disclaimer of the words "urban housing," spelled correctly, is the appropriate form of the disclaimer, since applicant is not claiming exclusive rights to use those words; he is claiming exclusive rights to use URBANHOUZING with the letter "Z."
    • In re Dean S. Carlson, Serial No. 78752616 (TTAB 2009)
      • Further, the disclaimer of the words "urban housing," spelled correctly, is the appropriate form of the disclaimer, since applicant is not claiming exclusive rights to use those words; he is claiming exclusive rights to use URBANHOUZING with the letter "Z." Accordingly, if applicant's mark were to be found inherently distinctive, the disclaimer submitted by applicant of the words "urban housing" is acceptable, and the examining attorney's refusal to accept this disclaimer is reversed.
  • Where the examining attorney did not advise applicant after receipt of the response that the mere listing of registrations was insufficient, when applicant still had an opportunity to cure the defect, the TTAB may consider the specific data provided by applicant.
    • In re Thomas Nelson, Inc., Serial No. 76681269 (TTAB 2011)
      • However, because the examining attorney did not advise applicant after receipt of the December 11, 2008 response that the mere listing of registrations was insufficient, when applicant still had an opportunity to cure the defect, we will consider the specific data provided by applicant. In re 1st USA Realty Professionals, Inc., 84 USPQ2d 1581, 1583 (TTAB 2007).18
  • Case Finding: The examining attorney has refused registration on the ground that the term AYUMI and design is merely descriptive, not generic. Therefore, the examining attorney was not required to show that the term AYUMI necessarily translates as "walking" shoes.
    • In re Tokutake Industry Co., Ltd., Serial No. 79018656 (TTAB 2008)
      • In this case, the examining attorney has refused registration on the ground that the term AYUMI and design is merely descriptive, not generic. Therefore, the examining attorney was not required to show that the term AYUMI necessarily translates as "walking" shoes. See Applicant's Brief at 9 ("[T]his definition refers to 'walking' as a noun, rather than as an adjective as the Examining Attorney had held in finding that 'ayumi' means 'walking shoes'"). Nothing prevents the term "ayumi" from being viewed as a noun that merely describes the activity for which the shoes are particularly designed, such as walking, running, soccer, basketball, etc.
  • The question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods or services are will immediately understand the mark as directly conveying information about them.
    • In re Dean S. Carlson, Serial No. 78752616 (TTAB 2009)
      • In other words, the question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods or services are will immediately understand the mark as directly conveying information about them. In re Tower Tech Inc., 64 USPQ2d 1314, 1317 (TTAB 2002).
  • In other words, the question is not whether someone presented only with the mark could guess the products listed in the description of goods. Rather, the question is whether someone who knows what the products are will understand the mark to convey information about them.
    • In re Thomas Nelson, Inc., Serial No. 76681269 (TTAB 2011)
      • In other words, the question is not whether someone presented only with the mark could guess the products listed in the description of goods. Rather, the question is whether someone who knows what the products are will understand the mark to convey information about them. In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002); In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders Association of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). In this case, the issue is whether the term NKJV directly conveys information about bibles to consumers.
  • In Grand Metropolitan Foodservice, the TTAB found that applicant's mark [MufFuns] was not merely descriptive of muffins because it would not be perceived as just a misspelling of a descriptive or generic word, but as having a dual meaning of "fun" as well as of "muffins."
    • In re Dean S. Carlson, Serial No. 78752616 (TTAB 2009)
      • In Grand Metropolitan Foodservice, the Board found that applicant's mark [MufFuns] was not merely descriptive of muffins because it would not be perceived as just a misspelling of a descriptive or generic word, but as having a dual meaning of "fun" as well as of "muffins."
  • A term need not immediately convey an idea of each and every specific feature of the applicant's goods or services in order to be considered to be merely descriptive; rather, it is sufficient that the term describes one significant attribute, function or property of the goods or services.
    • In re Dean S. Carlson, Serial No. 78752616 (TTAB 2009)
      • A term need not immediately convey an idea of each and every specific feature of the applicant's goods or services in order to be considered to be merely descriptive; rather, it is sufficient that the term describes one significant attribute, function or property of the goods or services. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).
  • Computer game players in particular, because of their involvement with computers, may be even more likely than members of the general public to be familiar with the term "webcam" and these individuals will therefore be even more predisposed to see "cam" as a short form for the word camera.
    • In re Petroglyph Games, Inc., Serial No. 78806413 (TTAB 2009)
      • Computer game players in particular, because of their involvement with computers, may be even more likely than members of the general public to be familiar with the term "webcam" and these individuals will therefore be even more predisposed to see "cam" as a short form for the word camera.
  • Discussion of previous cases concerning the well established rule that descriptiveness issues must be analyzed in relation to the context of use does not and cannot, obviously, mean that descriptiveness of the term sought to be registered must be evaluated as if that term were used in association with other nondescriptive indicia.
    • In re Dean S. Carlson, Serial No. 78752616 (TTAB 2009)
      • The applicant in that case had an argument very similar to applicant's position herein:
        "In its reply brief, applicant contends by way of rebuttal that we are obliged to consider the issue before us in relation to the context of its use of EXPRESSERVICE, citing In re Tennis in the Round, Inc., 199 USPQ 196 (TTAB 1978), and that that context includes the name Wells Fargo and the depiction of a stagecoach in an Old West setting. Thus, appellant argues that, in the context of its use (i.e., in close association with the name Wells Fargo and the depiction of a stagecoach), as well as the continuing references to the word "express" in connection with Wells Fargo's historical foundation, EXPRESSERVICE is bound to convey the Old West imagery, thereby supporting the proposition that appellant's mark is suggestive rather then merely descriptive."
        Id. at 100.
        The Board rejected this argument:
        "Appellant misconstrues Tennis in the Round. The only purpose of the reference to the specimen brochures in that case was to show that applicant's tennis courts were normal rectangular tennis courts rather than round ones (albeit, the entire facility had a circular configuration), thereby confirming that the services did not literally involve playing a game of tennis in a round tennis court. The well established rule that descriptiveness issues must be analyzed in relation to the context of use does not and cannot, obviously, mean that descriptiveness of the term sought to be registered must be evaluated as if that term were used in association with other nondescriptive indicia. In re Nash-Finch Co., 160 USPQ 210 (TTAB 1968) ["The question is not whether the subject matter in association with other trademarks is capable of distinguishing applicant's goods but whether it is capable of distinguishing applicant's goods without reference to other indicia."].."
  • Once an applicant provides a translation of a foreign term that is a generic or descriptive term for the goods in English, it has a more difficult burden to then show that the term is not merely descriptive or generic. An applicant is not likely to succeed in this challenge when it relies primarily on the argument of its counsel.
    • In re Tokutake Industry Co., Ltd., Serial No. 79018656 (TTAB 2008)
      • Once an applicant provides a translation of a foreign term that is a generic or descriptive term for the goods in English, it has a more difficult burden to then show that the term is not merely descriptive or generic. An applicant is not likely to succeed in this challenge when it relies primarily on the argument of its counsel.
  • In addition to considering the applied-for mark in relation to the goods or services for which registration is sought, the proper test for descriptiveness also considers the context in which the mark is used and the significance that the mark is likely to have on the average purchaser encountering the goods or services in the marketplace.
    • In re Paul Leonhardt, Serial No. 78666879 (TTAB 2008)
      • In addition to considering the applied-for mark in relation to the goods or services for which registration is sought, the proper test for descriptiveness also considers the context in which the mark is used and the significance that the mark is likely to have on the average purchaser encountering the goods or services in the marketplace. In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991); and In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986).
  • More importantly, just as a term need not describe all aspects of a product for it properly to be refused as descriptive, a term need not describe every type or variation of a product listed in an identification for the term to be merely descriptive. It is sufficient that it merely describe a type of product that is within the scope of the identification.
    • In re Petroglyph Games, Inc., Serial No. 78806413 (TTAB 2009)
      • More importantly, just as a term need not describe all aspects of a product for it properly to be refused as descriptive, a term need not describe every type or variation of a product listed in an identification for the term to be merely descriptive. It is sufficient that it merely describe a type of product that is within the scope of the identification.
  • Case Finding: Because there is sufficient dictionary and other evidence on which to conclude that BATTLE and CAM both would be viewed as descriptive terms when considered in conjunction with applicant's goods, and because the combination of the terms does not result in a composite that alters the meaning of either of the elements, refusal on the ground of descriptiveness is appropriate.
    • In re Petroglyph Games, Inc., Serial No. 78806413 (TTAB 2009)
      • Because there is sufficient dictionary and other evidence on which to conclude that BATTLE and CAM both would be viewed as descriptive terms when considered in conjunction with applicant's goods, and because the combination of the terms does not result in a composite that alters the meaning of either of the elements, refusal on the ground of descriptiveness is appropriate. See In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111 (Fed. Cir. 1987). See also, In re Zanova, supra, In re Sun Microsystems, supra, In re Polo International, supra, and In re Pennzoil, supra.
  • Whether a term is merely descriptive is determined not in the abstract, but in relation to the goods or services for which registration is sought, the context in which it is being used on or in connection with the goods or services, and the possible significance that the term would have to the average purchaser of the goods or services because of the manner of its use; that a term may have other meanings in different contexts is not controlling.
    • In re Dean S. Carlson, Serial No. 78752616 (TTAB 2009)
      • Whether a term is merely descriptive is determined not in the abstract, but in relation to the goods or services for which registration is sought, the context in which it is being used on or in connection with the goods or services, and the possible significance that the term would have to the average purchaser of the goods or services because of the manner of its use; that a term may have other meanings in different contexts is not controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
In re Thomas Nelson, Inc., Serial No. 76681269 (TTAB 2011) In re Greenliant Systems, Ltd., Serial No. 78724139 (TTAB 2010) In re Petroglyph Games, Inc., Serial No. 78806413 (TTAB 2009) In re Dean S. Carlson, Serial No. 78752616 (TTAB 2009) In re ICE Futures U.S., Inc., Serial No. 78199832, 78199843, 78199848 (TTAB 2008) Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Limited, Opposition No. 91165010, (TTAB 2008) In re Rosemount Inc., Serial Nos. 78180535 and 78180540 (TTAB 2008) In re Tea and Sympathy, Inc., Serial No. 77054914 (TTAB 2008) Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008 (TTAB 2008) In re Paul Leonhardt, Serial No. 78666879 (TTAB 2008) In re Tokutake Industry Co., Ltd., Serial No. 79018656 (TTAB 2008) In re Cox Enterprises, Inc., Serial No. 76591278, (TTAB 2007) In re Fiesta Palms, LLC, Serial No. 76595049, (TTAB 2007) In re Ginc UK Limited, Serial No. 78618843, (TTAB 2007) In re IP Carrier Consulting Group, Serial No. 78542726, 78542734, (TTAB 2007) In re Litehouse, Incorporated, Serial No. 78494701, (TTAB 2007) In re South Park Cigar, Inc., Serial No. 78486382, (TTAB 2007) In re The Council on Certification of Nurse Anesthetists, Serial No. 75722091, (TTAB 2007) In re America Online, Inc., Serial No. 75460305, (TTAB 2006) In re Box Solutions Corp., Serial No. 76267086, (TTAB 2006) In re Classic Media, Inc., Serial No. 78278235, (TTAB 2006) In re Finisar Corporation, Serial No. 76300876, (TTAB 2006) In re Grand Forest Holdings Incorporated, Serial No. 78220033, (TTAB 2006) In re Hunter Fan Company, Serial No. 78195616, (TTAB 2006) In re King Koil Licensing Company, Inc., Serial No. 76565486, (TTAB 2006) In re Promo Ink, Serial No. 76541018, (TTAB 2006) In re Vanilla Gorilla, L.P., Serial No. 76561135, (TTAB 2006) In re Viventia Biotech Inc., Serial No. 76424575, (TTAB 2006) In re Westlake Plastics Company, Serial No. 76310516, (TTAB 2006) Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006) In re Eddie Z's Blinds and Drapery, Inc., Serial No. 76112441, (TTAB 2005) In re The Place, Inc., Serial No. 76436826, (TTAB 2005) In re Planalytics, Inc., Serial No. 76322156, (TTAB 2004) Capital Project Management, Inc. v. IMDISI, Inc., Opposition No. 121,819, (TTAB 2003) In re Microsoft Corporation, Serial No. 78/013678, (TTAB 2003) Interpayment Services Limited, and Travelex Global and Financial Services Ltd. v. Docters & Thiede, Opposition No. 119,852, (TTAB 2003) The Goodyear Tire & Rubber Company v. Continental General Tire, Inc., Opposition No. 91/118,372, (TTAB 2003) Callaway Vineyard & Winery v. Endsley Capital Group, Inc., Opposition No. 121,583, (TTAB 2002) In re Alpha Analytics Investment Group, LLC, Serial No. 75/829,220, (TTAB 2002) In re Best Software, Inc., Serial No. 75/496,422, (TTAB 2002) In re Fitch IBCA, Inc., Serial No. 75/628,232, (TTAB 2002) In re Jose Remacle, Serial No. 75/932,290, (TTAB 2002) In re Mine Safety Appliances Company, Serial No. 75/501,608, (TTAB 2002) In re Ruffin Gaming, LLC, Serial No. 75/899,614, (TTAB 2002) In re SPX Corporation, Serial No. 75/877,999, (TTAB 2002) In re Tower Tech, Inc., Serial No. 75/709,532, (TTAB 2002) In re Major League Umpires, Serial No. 75/154,506, (TTAB 2001) In re Styleclick.com Inc., Serial No. 75/459,912, (TTAB 2001) In re Sun Microsystems, Inc., Serial No. 75/430,946, (TTAB 2001) In re Zanova, Inc., Serial No. 75/519,495, (TTAB 2001) In re Styleclick.com Inc., Serial No. 75/459,910, (TTAB 2000) In re Dial A Mattress Operating Corporation, Serial No. 75/131,355, (TTAB 1999) In re Jose Ignacio Guisado Urbano, Serial No. 74/441,447, (TTAB 1999) In Re Joseph Edward Page, Serial No. 75/066,101. (TTAB 1999) In re Dos Padres, Inc., Serial No. 75/075,701, (TTAB 1998) In re Patent & Trademark Services, Inc., Serial No. 75/009,424, (TTAB 1998) Grand Total
In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681 (Fed. Cir. 2010) 1
In re La Peregrina Ltd., 86 USPQ2d 1645 (TTAB 2008) 1
In re Spirits International, 86 USPQ2d 1078 (TTAB 2008) 1
In re BetaBattInc., 89 USPQ2d 1152 (TTAB 2008) 1
In re Litehouse Inc., 82 USPQ2d 1471 (TTAB 2007) 1
In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828 (Fed. Cir. 2007)  3
In re Cox Enterprises Inc., 82 USPQ2d 1040 (TTAB 2007) 1
In re 1st USA Realty Professionals, Inc., 84 USPQ2d 1581, 1583 (TTAB 2007) 1
In re Finisair Corp., 78 USPQ2d 1618 (TTAB 2006) 1
In re Jump Designs LLC, 80 USPQ2d 1370 (TTAB 2006) 1
In re Promo Ink, 78 USPQ2d 1301 (TTAB 2006) 1
In re Rodale Inc., 80 USPQ2d 1696 (TTAB 2006) 1
In re Thomas, 79 USPQ2d 1021 (TTAB 2006) 1
In re Vanilla Gorilla, L.P., 80 USPQ2d 1637 (TTAB 2006) 1
In re Westlake Plastics Company, Serial No. 76310516, (TTAB 2006) 1
In re King Koil Licensing Co., 79 USPQ2d 1048 (TTAB 2006) 1
In re Hunter Fan Co., 78 USPQ2d 1474 (TTAB 2006) 2
In re Eddie Z's Blinds and Drapery Inc., 74 USPQ2d 1037 (TTAB 2005) 1
In re First Draft Inc., 76 USPQ2d 1183 (TTAB 2005) 1
In re The Place Inc., 76 USPQ2d 1467 (TTAB 2005) 2
Surfvivor Media, Inc. v. Survivor Productions, 406 F.3d 625, 74 USPQ2d 1621 (9th Cir. 2005) 1
In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004) 4
In re Planalytics Inc., 70 USPQ2d 1453 (TTAB 2004) 1
In re California Innovations Inc., 329 F.3d 1334, 66 USPQ2d 1853, (Fed. Cir. 2003) 1
In re Ethnic Home Lifestyles Corp., 70 USPQ2d 1156 (TTAB 2003) 1
In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778 (Fed. Cir. 2003) 8
In re Pacer Technology, 338 F.3d 1348, 67 USPQ2d 1629 (Fed. Cir. 2003) 1
Entrepreneur Media Inc. v. Smith d/b/a EntrepreneurPR, 279 F3d 1135, 61 USPQ2d 1705 (9th Cir. 2002) 1
In re CyberFinancial.Net Inc., 65 USPQ2d 1789 (TTAB 2002) 1
In re Fitch IBCA Inc., 64 USPQ2d 1058 (TTAB 2002) 1
In re Martin Container Inc., 65 USPQ2d 1058 (TTAB 2002) 1
In re Remacle, 66 USPQ2d 1222 (TTAB 2002) 5
In re SPX Corp., 63 USPQ2d 1592 (TTAB 2002) 1
In re Tower Tech Inc., 64 USPQ2d 1314 (TTAB 2002) 9
J & J Snack Foods Corp. v. Earthgrains Co. 220 F.Supp.2d 358, 65 USPQ2d 1897 (D.N.J. 2002) 1
In re Mine Safety Appliances Co., 66 USPQ2d 1694 (TTAB 2002) 1
In re Alpha Analytics Investment Group LLC, 62 USPQ2d 1852 (TTAB 2002) 1
Ford Motor Co. v. Lapertosa, 126 F.Supp2d 463, 62 USPQ2d 1789 (E.D. Mich. 2001) 1
In re A La Vieille Russie Inc., 60 USPQ2d 1895 (TTAB 2001) 1
In re Best Software Inc., 58 USPQ2d 1314 (TTAB 2001) 1
In re Wilson, 57 USPQ2d 1863 (TTAB 2001) 1
The Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357, 57 USPQ2d 1720 (Fed. Cir. 2001) 1
In re Dial A Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001) 1
In re Nett Designs Inc., 236 F.3d 1339, 957 USPQ2d 1564 (Fed. Cir. 2001) 15
In re Zanova Inc., 59 USPQ2d 1300 (TTAB 2001) 1
In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) 4
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000) 1
In re Lamb-Weston Inc., 54 USPQ2d 1190 (TTAB 2000) 1
In re Taylor & Francis [Publishers] Inc., 55 USPQ2d 1213 (TTAB 2000) 1
Brookfield Communications Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 50 USPQ2d 1545 (9th Cir. 1999) 1
In re Boston Beer Co. L.P, 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) 2
In re Nett Designs, 236 F.3d 1297, 57 USPQ2d 1564 (Fed. Cir. 1999) 1
In re Page, 51 USPQ2d 1660 (TTAB 1999) 1
In re Polo International Inc., 51 USPQ2d 1061 (TTAB 1999) 3
800 Spirits Inc. v. Liquor By Wire Inc., 14 F.Supp.2d 675 (D.N.J. 1998) 1
In re Central Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998) 3
In re Dos Padres Inc., 49 USPQ2d 1860 (TTAB 1998) 1
In re Patent & Trademark Services Inc., 49 USPQ2d 1537 (TTAB 1998) 8
In re Volvo Cars of North America Inc., 46 USPQ2d 1455 (TTAB 1998) 1
Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d 1628 (TTAB 1998) 1
Hotmail Corp. v. Van$ Money Pie Inc., 47 USPQ2d 1020 (N.D. Cal. 1998) 1
Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137, 43 USPQ2d 1734 (2d Cir. 1997) 1
In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997) 1
In re Organik Technologies Inc., 41 USPQ2d 1690 (TTAB 1997) 3
Nupla Corp. v. IXL Manufacturing Co., 114 F.3d 191, 42 USPQ2d 1711 (Fed. Cir. 1997) 1
In re Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995) 4
Express Mortgage Brokers Inc. v Simpson Mortgage Inc., 31 USPQ2d 1371 (E.D. Mich. 1994) 1
In re Copytele Inc., 31 USPQ2d 1540 (TTAB 1994) 2
In re Cryomedical Sciences Inc., 32 USPQ2d 1377 (TTAB 1994) 1
In re Grand Metropolitan Foodservices Inc., 30 USPQ2d 1974 (TTAB 1994) 1
In re Grand Metropolitan Foodservice Inc., 30 USPQ2d 1974 (TTAB 1994) 3
Bell v. Kidan, 836 F.Supp. 125, 28 USPQ2d 1077 (S.D.N.Y. 1993) 1
Dranoff-Perlstein Associates v. Sklar, 23 USPQ2d 1174 (3d Cir. 1992) 1
In re Atavio Inc., 25 USPQ2d 1361 (TTAB 1992) 1
In re Disc Jockeys Inc., 23 USPQ2d 1715 (TTAB 1992) 2
In re E S Robbins Corp., 30 USPQ2d 1540 (TTAB 1992) 1
In re Eden Foods Inc., 24 USPQ2d 1757 (TTAB 1992) 2
INB National Bank v. Metrohost Inc., 22 USPQ2d 1585 (TTAB 1992) 1
Institut National Des Appellations D'Origine v. Vintners Int'l Co., 958 F.2d 1574, 22 USPQ2d 1190 (Fed. Cir. 1992) 2
Kelley Blue Book v. Car-Smarts Inc., 802 F.Supp. 278, 24 USPQ2d 1481 (C.D. Cal. 1992) 1
In re Atavio, 25 USPQ2d 1361 (TTAB 1992) 1
Perma Ceram Enterprises Inc. v. Preco Industries Ltd., 23 UPSQ2d 1134 (TTAB 1992) 1
Dena Corp. v. Belvedere International Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991) 1
In re Entenmann's Inc., 15 USPQ2d 1750, 1751 (TTAB 1990), aff'd in opinion not for publication, Appeal No. 90-1495 (Fed. Cir. February 13, 1991) 2
In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991) 5
In re Pebble Beach Co., 19 USPQ2d 1687 (TTAB 1991) 1
In re Cabot Corp., 15 USPQ2d 1224 (TTAB 1990) 1
In re Home Builders Association of Greenville, 18 USPQ2d 1313 (TTAB 1990) 6
Taj Mahal Enterprises Ltd. v. Trump, 745 F. Supp. 240, 16 USPQ2d 1577 (D.N.J. 1990) 1
Concurrent Technologies Inc. v. Concurrent Technologies Corp., 12 USPQ2d 1054 (TTAB 1989) 2
Dial-A-Mattress Franchise Corp. v. Page, 880 F.2d 675, 11 USPQ2d 1644 (2d Cir. 1989) 1
G. Heileman Brewing Co. v. Anheuser-Busch Inc., 873 F.2d 985, 10 USPQ2d 1801 (7th Cir. 1989) 1
In re Analog Devices Inc., 6 USPQ2d 1808, 1810 (TTAB 1988), aff'd 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989) 1
In re Lowrance Electronics, 14 USPQ2d 1251 (TTAB 1989) 1
Murrin v. Midco Communications Inc., 726 F. Supp. 1195, 13 USPQ2d 1815 (D. Minn. 1989) 1
TBC Corporation v. Grand Prix Ltd., 12 USPQ2d 1311 (TTAB 1989) 1
In re Lowrance Electronics, 14 USPQ2d 1251 (TTAB 1989)  1
In re Energy Products of Idaho, 13 USPQ2d 2049 (TTAB 1989) 1
In re Budge Manufacturing Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988) 1
In re Classic Beverage Inc., 6 USPQ2d 1383 (TTAB 1988) 1
In re Hershey, 6 USPQ2d 1470 (TTAB 1988) 1
Yamaha Int'l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988) 1
In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) 7
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987) 27
In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987) 1
In re Merrill Lynch, Pierce, Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987) 2
In re Omaha National Corp. 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987) 8
National Aeronautics and Space Administration v. Bully Hill Vineyards Inc., 3 USPQ2d 1671 (TTAB 1987) 1
Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987) 2
Trump v. Caesars World Inc., 645 F. Supp. 1015, 230 USPQ 594, 599 and 595 (D.N.J. 1986), aff'd in op. not for pub., 2 USPQ2d 1806 (3d Cir. 1987) 1
In re Federated Department Stores, 3 USPQ2d 1541 (TTAB 1987) 1
Bausch & Lomb Inc. v. Leupold & Stevens Inc., 1 USPQ2d 1497 (TTAB 1986) 1
H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986) 1
Hunter Publishing Co. v. Caulfield Publishing, Ltd., 1 USPQ2d 1996 (TTAB 1986) 1
In re BankAmerica Corporation, 231 USPQ 873 (TTAB 1986) 1
In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986) 1
In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986) 7
In re Lean Line Inc., 229 USPQ 781 (TTAB 1986) 1
In re Professional Learning Centers Inc., 230 USPQ 70 (TTAB 1986) 1
In re San Miguel Corp., 229 USPQ 617 (TTAB 1986) 1
In re Wells Fargo & Company, 231 USPQ 95 (TTAB 1986) 1
In re Oriental Daily News, Inc., 230 USPQ 637 (TTAB 1986) 2
In re American Greetings Corp., 226 UPSQ 365 (TTAB 1985) 11
In re Northland Aluminum Products, 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985) 1
In re U.S. Steel Corp., 225 USPQ 750 (TTAB 1985) 2
In re Venture Associates, 226 USPQ 285 (TTAB 1985) 1
In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985) 7
No Nonsense Fashions Inc. v. Consolidated Foods Corporation, 226 USPQ 502 (TTAB 1985) 2
In re Acuson, 225 USPQ 790 (TTAB 1985) 1
Cytanovich Reading Center v. The Reading Game, 225 USPQ 588 (Cal. Ct. App. 1984) 1
In re Brock Residence Inns Inc., 222 USPQ 920 (TTAB 1984) 1
In re Camel Mfg. Co., 222 USPQ 1031 (TTAB 1984) 1
In re Chopper Industries, 222 USPQ 258 (TTAB 1984) 2
In re E. I. Kane Inc., 221 USPQ 1203 (TTAB 1984) 2
In re Industrial Relations Counselors Inc., 224 USPQ 309 (TTAB 1984) 1
In re MetPath Inc., 223 USPQ 88 (TTAB 1984) 1
In re Packaging Specialists Inc., 221 USPQ 917 (TTAB 1984) 1
In re Priefert Mfg. Co. Inc., 222 USPQ 731 (TTAB 1984) 1
In re Rank Organization Ltd., 222 USPQ 324 (TTAB 1984) 1
In re S.D. Fabrics Inc., 223 USPQ 54 (TTAB 1984) 3
In re The Officers' Organization For Economic Benefits, Limited, 221 USPQ 184 (TTAB 1984) 1
Real Property Management Inc. v. Marina Bay Hotel, 221 USPQ 1187 (TTAB 1984) 1
In re Capital Formation Counselors Inc., 219 USPQ 916 (TTAB 1983) 1
In re Gagliardi Bros., Ind., 218 USPQ 181 (TTAB 1983) 2
In re Inter-State Oil Co., 219 USPQ 1229 (TTAB 1983) 2
In re Kraft, 218 USPQ 571 (TTAB 1983) 1
In re National Shooting Sports Foundation Inc., 219 USPQ 1018 (TTAB 1983) 4
In re Shutts, 217 USPQ 363 (TTAB 1983) 2
Plus Products v. Plus Discount Foods Inc., 722 F.2d 999, 222 USPQ 373 (2d Cir. 1983) 1
University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co. Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983) 1
In re Inter-State Oil Co. Inc., 219 USPQ 1229 (TTAB 1983) 1
Care Corp. v. Nursecare International Inc., 216 USPQ 993 (TTAB 1982) 1
In re H.U.D.D.L.E, 216 USPQ 358 (TTAB 1982) 8
Yankee Inc. v. Geiger, 216 USPQ 996 (TTAB 1982) 1
In re The Computer Store Inc., 211 USPQ 72 (TTAB 1981) 1
Marcal Paper Mills Inc. v. American Can Co., 212 USPQ 852 (TTAB 1981) 1
In re Quik- Print Copy Shop Inc., 616 F.2d 523, 205 USPQ 505 (CCPA 1980) 8
In re Universal Water Systems Inc., 209 USPQ 165 (TTAB 1980) 2
Dan Robbins & Associates Inc. v. Questor Corporation, 599 F.2d 1009, 202 USPQ 100 (CCPA 1979) 1
In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979) 25
In re Hunter Publishing Co., 204 USPQ 957 (TTAB 1979) 1
Hecon Corporation v. Magnetic Video Corporation, 199 USPQ 502 (TTAB 1978) 1
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978) 34
In re Consolidated Foods Corp., 200 USPQ 477 (TTAB 1978) 1
In re Tennis in the Round Inc., 199 USPQ 496 (TTAB 1978) 3
In re TMS Corp. of the Americas, 200 USPQ 57 (TTAB 1978) 1
In re Wileswood Inc., 201 USPQ 400 (TTAB 1978) 3
In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB 1977) 4
In re Recovery, 196 USPQ 830 (TTAB 1977) 4
In re Samuel Moore & Co., 195 USPQ 237 (TTAB 1977) 3
In re Scholastic Testing Service Inc., 196 USPQ 517 (TTAB 1977) 2
Southwire Co. v. Kaiser Aluminum & Chemical Corp., 196 USPQ 566 (TTAB 1977) 2
In re Orleans Wines Ltd., 196 USPQ 516 (TTAB 1977) 3
Abercrombie & Fitch Co. v. Hunting World Inc., 537 F.2d 4, 189 USPQ 759 (2d Cir. 1976) 2
Firestone Tire & Rubber Co. v. Goodyear Tire & Rubber Co., ___ F.2d___, 189 USPQ 348 (CCPA 1976) 1
In re Delaware Punch Company, 186 USPQ 63, 64 (TTAB 1975) 1
Exquisite Form Industries Inc. v. Exquisite Fabrics of London, 378 F.Supp. 403, 183 USPQ 666 (SDNY 1974) 1
In re Champion International Corp., 183 USPQ 318 (TTAB 1974) 1
In re Duofold Inc., 184 USPQ 638 (TTAB 1974) 1
In re Magic Muffler Serv., 184 USPQ 1225 (TTAB 1974) 1
Caesars World Inc. v. Caesar's Palace Inc., 179 USPQ 14 (D. Neb. 1973) 1
In re MBAssociates, 180 USPQ 338 (TTAB 1973) 10
In re American Screen Process Equipment Co., 175 USPQ 561 (TTAB 1972) 2
In re Perkin-Elmer Corp., 174 USPQ 57 (TTAB 1972) 2
General Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270 (TTAB 1972) 1
In re Calgon Corp., 435 F.2d 596, 598, 168 USPQ 278 (CCPA 1971) 1
Phillips Petroleum Co. v. C. J. Webb Inc., 442 F.2d 1376, 170 USPQ 35 (CCPA 1971) 1
Cosmetically Yours Inc. v. Clairol Inc., 424 F.2d 1385, 165 USPQ 515 (CCPA 1970) 1
Spin Physics Inc. v. Matsushita Electric Industrial Co., 168 USPQ 605 (TTAB 1970) 1
In re Colonial Stores Inc., 394 F.3d 549, 157 USPQ 382 (CCPA 1968) 4
In re Nash-Finch Co., 160 USPQ 210 (TTAB 1968) 2
In re Wyandotte Chemicals Corp., 156 USPQ 100 (TTAB 1967) 1
Kaiser Aluminum & Chemical Corp. v. American Meter Co., 153 USPQ 419 (TTAB 1967) 1
Foremost Dairies, Inc. v. The Borden Company, 156 USPQ 153 (TTAB 1967) 1
Hi-Shear Corp. v. National Automotive Parts Association, 152 USPQ 341 (TTAB 1966) 3
Calgon Corporation v. Hooker Chemical Corporation, 151 USPQ 359 (TTAB 1966) 1
Shaw-Barton Inc. v. John Baumgarth Co., 313 F.2d 167, 136 USPQ 116, 117 (7th Cir. 1963), cert. denied, 374 U.S. 831 (1963) 1
Fleetwood Co. v. Mende, 298 F.2d 797, 132 USPQ 458 (CCPA 1962) 1
Roselux Chemical Co. v. Parsons Ammonia Co., 299 F.2d 855, 132 USPQ 627 (CCPA 1962) 1
Supreme Wine Co. v. American Distilling Co., 310 F.2d 888, 135 USPQ 481 (2d Cir. 1962) 1
King-Kup Candies Inc. v. King Candy Co., 288 F.2d 944, 129 USPQ 272 (CCPA 1961) 2
Nife Incorporated v. Gould-National Batteries Inc., 128 USPQ 453 (TTAB 1961) 1
Weiss Noodle Co. v. Golden Cracknel and Specialty Co., 290 F.2d 845, 129 USPQ 411 (CCPA 1961) 1
Meehanite Metal Corp. v. International Nickel Co., 262 F.2d 806, 120 USPQ 293 (CCPA 1959) 3
Modern Optics Inc. v. Univis Lens Co., 234 F.2d 504, 110 USPQ 293 (CCPA 1956) 2
In re Duvernoy & Sons Inc., 212 F.2d 202, 101 USPQ 288 (CCPA 1954) 1
Hancock v. American Steel & Wire Co. of New Jersey, 203 F.2d 737, 97 USPQ 330 (CCPA 1953) 1
Stork Restaurant Inc. v. Sahati, 166 F.2d 348, 76 USPQ 374 (9th Cir. 1948) 1
Andrew J. McFarland Inc. v. Montgomery Ward & Co., 164 F.2d 603, 76 USPQ 97 (CCPA 1947) 1
Armstrong Paint & Varnish Works v. Nu-Enamel Corp., 305 U.S. 315 (1938) 3
American Druggist Syndicate v. United States Industrial Alcohol Co., 2 F.2d 942 (D.C. Cir. 1924) 1
Estate of P.D. Beckwith Inc. v. Commissioner, 252 U.S. 538, 543 (1920) 2
Standard Paint Co. v. Trinidad Asphalt Mfg. Co., 220 U.S. 446 (1911) 2
Grand Total 24 1 22 28 5 1 2 2 9 13 7 17 5 16 14 22 2 1 4 11 8 16 7 9 5 7 15 1 3 1 1 13 16 4 12 2 9 12 7 8 5 6 11 13 7 9 1 6 12 9 5 5 2 10 6 11 480

Sec. 1052. Trademarks registrable on principal register; concurrent registration

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it--
  1. (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.
  2. (b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.
  3. (c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.
  4. (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; (2) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Use prior to the filing date of any pending application or a registration shall not be required when the owner of such application or registration consents to the grant of a concurrent registration to the applicant. Concurrent registrations may also be issued by the Director when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Director shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons.
  5. (e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional.
  6. (f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant's goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant's goods in commerce before December 8, 1993.
A mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be refused registration only pursuant to a proceeding brought under section 1063 of this title. A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be canceled pursuant to a proceeding brought under either section 1064 of this title or section 1092 of this title.

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