Merely Descriptive- Difference Between Descriptive and Suggestive



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  • Definition: Suggestive term.
    • Callaway Vineyard & Winery v. Endsley Capital Group, Inc., Opposition No. 121,583, (TTAB 2002).
      • A term is suggestive if some imagination, thought or perception is required to determine the nature of the goods and/or services.
  • Difference between a suggestive term and a descriptive term.
    • 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.
    • 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).
  • Case Finding: QUEST is descriptive of goods and services used for research.
    • ProQuest Information and Learning Company v. Jacques R. Island, Opposition No. 91158016, (TTAB 2007).
      • Contrary to applicant's position that the term "Quest" is descriptive for opposer's products, we find that the "Quest" portion of opposer's mark is most likely suggestive of its goods and services, i.e., inasmuch as these goods and services are used for research, the word "Quest" has a suggestive meaning in terms of hunting for answers. In fact, the "Quest" element, as the most distinctive portion of opposer's mark, is also the dominant portion of its mark. Accordingly, when "Quest" is combined with the syllable, "Pro-," opposer's resulting ProQuest mark appears on this record to be strong. The resulting mark appears capable of two related connotations in that the product is a "help" in the quest for answers, and that it is good or "professional" in the help it provides. The mark's inherent strength is further reinforced with the fame that opposer has built up around its mark over the past fifteen years in the academic, educational and research fields. See Bose Corp. v. QSC Audio Prods. Inc., supra at 1309.
  • A mark is suggestive, and therefore registrable on the Principal Register without a showing of acquired distinctiveness, if imagination, thought or perception is required to reach a conclusion on the nature of the goods or services.
    • In re Paul Leonhardt, Serial No. 78666879 (TTAB 2008)
      • A mark is suggestive, and therefore registrable on the Principal Register without a showing of acquired distinctiveness, if imagination, thought or perception is required to reach a conclusion on the nature of the goods or services. "Whether a given mark is suggestive or merely descriptive depends on whether the mark 'immediately conveys . knowledge of the ingredients, qualities, or characteristics of the goods . with which it is used,' or whether 'imagination, thought, or perception is required to reach a conclusion on the nature of the goods.'" (citation omitted) In re Gyulay, 3 USPQ2d at 1009; 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 Paul Leonhardt, Serial No. 78666879 (TTAB 2008) In re IP Carrier Consulting Group, Serial No. 78542726, 78542734, (TTAB 2007) Grand Total
Bose Corp. v. QSC Audio Prods., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002) 1
In re Home Builders Association of Greenville, 18 USPQ2d 1313 (TTAB 1990) 1
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987) 1
In re American Greetings Corp., 226 UPSQ 365 (TTAB 1985) 1
In re Shutts, 217 USPQ 363 (TTAB 1983) 1
In re Universal Water Systems Inc., 209 USPQ 165 (TTAB 1980) 1
In re Tennis in the Round Inc., 199 USPQ 496 (TTAB 1978) 1
Grand Total 3 4 7
No Statutes Listed.