Merely Descriptive Refusals

(marks that are not Inherently Distinctive)

SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE

[Redacted] OFFICE ACTION from UNITED STATES PATENT AND TRADEMARK OFFICE

[This trademark was abandoned by the owner after the first refusal with no attempt to answer the office action.]

 

Registration is refused because the applied-for mark merely describes a feature of applicant’s services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods and/or services.  TMEP §1209.01(b); see In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987).

 

The determination of whether a mark is merely descriptive is considered in relation to the identified goods and/or services, not in the abstract.  In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (C.C.P.A. 1978); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061 (TTAB 1999) (finding DOC in DOC-CONTROL would be understood to refer to the “documents” managed by applicant’s software, not “doctor” as shown in dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (finding CONCURRENT PC-DOS merely descriptive of “computer programs recorded on disk” where relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system).  “Whether consumers could guess what the product is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).

 

Applicant seeks to register XXXXX MEDICINE in connection with “promoting the exchange of information and resources within the scientific research and medical communities to achieve advances in the field of healthcare.”

 

It appears that applicant considers the seminar series described in the “Sponsor Guide” to be a means by which information pertinent to “XXXXX medicine” is disseminated.

 

However, proposed mark that describes the subject matter of a seminar has been held to be merely descriptive for such educational services.  See In re The Am. Acad. of Facial Plastic & Reconstructive Surgery, 64 USPQ2d 1748 (TTAB 2002) (holding FACIAL PLASTIC SURGERY generic for training, association and collective membership services); In re Inst. Investor, Inc., 229 USPQ 614 (TTAB 1986) (holding INTERNATIONAL BANKING INSTITUTE for organizing seminars for bank leaders of major countries incapable); In re Indus. Relations Counselors, Inc., 224 USPQ 309 (TTAB 1984) (holding INDUSTRIAL RELATIONS COUNSELORS, INC. an apt name or so highly descriptive of educational services in the industrial relations field that it is incapable of exclusive appropriation and registration); In re Harcourt Brace Jovanovich, Inc., 222 USPQ 820 (TTAB 1984) (holding LAW & BUSINESS incapable of distinguishing the services of arranging and conducting seminars in the field of business law); In re Nat’l Shooting Sports Found., Inc., 219 USPQ 1018 (TTAB 1983) (holding SHOOTING, HUNTING, OUTDOOR TRADE SHOW & CONFERENCE incapable for trade show); see also TMEP §1209.01(b).

 

There appear to be three registrations in which “XXXXX MEDICINE” is present.  These are set forth in Attachments 8 through 15.  Third-party registrations featuring the same or similar goods and/or services as applicant’s goods and/or services are probative evidence on the issue of descriptiveness where the relevant word or term is disclaimed, registered under Trademark Act Section 2(f) based on a showing of acquired distinctiveness, or registered on the Supplemental Register.  See Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560, 1564-65, 4 USPQ2d 1793, 1797 (Fed. Cir. 1987); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006); In re Finisar Corp., 78 USPQ2d 1618, 1621 (TTAB 2006).


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Merely Descriptive of Services:

 [SECTION 2(e)(1) REFUSAL- the term is the common descriptor of the purpose or function of the services]

Registration is refused because the applied-for mark merely describes the purpose/function of applicant’s goods and/or services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods and/or services.  TMEP §1209.01(b); see In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987).  Moreover, a mark that identifies a group of users to whom an applicant directs its goods and/or services is also merely descriptive.  TMEP §1209.03(i); see In re Planalytics, Inc., 70 USPQ2d 1453, 1454 (TTAB 2004).

 

The applicant seeks to register the term THE XXXXX DONOR PROGRAM for services identified as XXXXX XXXXX donation services. The term immediately and clearly informs viewer of the specific nature of the services—offering a program which establishes XXXXX XXXXX donors for use by others. The specific term “XXXXX donor program” is not unique or coined by the applicant, but is consistently and commonly used by third parties offering the same or similar services to others—operating an XXXXX donor program ( see enclosed materials on such programs offered by third parties). As such, the term appears to be a common or generic method of describing these services, not appropriable by any one party.

 

The applicant has also disclaimed all wording apart from the mark as a whole. However, an entire mark may not be disclaimed.  TMEP §1213.06; see 15 U.S.C. §1056(a); In re Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re JT Tobacconists, 59 USPQ2d 1080, 1081 n.1 (TTAB 2001); In re Anchor Hocking Corp., 223 USPQ 85 (TTAB 1984).  If the applied-for mark is not registrable as a whole, a disclaimer will not make it registrable.  TMEP §1213.06.

 

Disclaimer of each of the words does not produce a term which, as a whole, does not merely describe the purpose of the program or services—providing XXXXX XXXXX donation services. Please withdraw the current disclaimer statement,since such a statement does not allow for registration.

 

For these reasons, registration is refused under the provisions of Section 2(e)(1) of the Trademark Act, on grounds that the term is the common descriptor of the purpose or function of the services.

 

In addition to being merely descriptive, the applied-for mark appears to be generic in connection with the identified services and, therefore, incapable of functioning as a source-identifier for applicant’s services. In re The Am. Acad. of Facial Plastic & Reconstructive Surgery, 64 USPQ2d 1748 (TTAB 2002); In re A La Vieille Russie, Inc., 60 USPQ2d 1895 (TTAB 2001); see TMEP §§1209.01(c) et seq., 1209.02.  Under these circumstances, neither an amendment to proceed under Trademark Act Section 2(f) nor an amendment to the Supplemental Register can be recommended.  See TMEP §1209.01(c).

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PLAN FOR A SUCCESSFUL, STRONG TRADEMARK

To maximize the commercial strength and minimize the weaknesses of a trademark, we start with these five steps:

1) Verify Inherent Strength (this avoids merely descriptive, geographically descriptive, likelihood of confusion and other office actions),

2) Verify Right to Use, (this avoids likelihood of confusion refusal office actions and others)

3) Verify Right to Register, (this avoids many types of refusals including merely descriptive, deceptively misdescriptive, geographically descriptive and others that can often be predicted)

 4) Verify the potential mark (as currently used) Functions As A Mark, and (this avoids specimen refusals, trade name refusals, and others. The USPTO is looking for valid use not just any use of a mark.)

5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing. (This avoids office actions to correct incorrect IDs  which can slow down a registration. Incorrect IDs  may be corrected during the prosecution of a trademark if they do not materially alter the mark or the ID. Correcting problems before application saves time and money. Filing in a new class after an application has been submitted to cure a problem ID is the same price as a new application in that class.)

*We don’t stop here but this is a good start!


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