OVERCOMING A MERELY DESCRIPTIVE REFUSAL

A mark does not have to be totally lacking in meaning (completely non-descriptive) to be registrable, the USPTO trademark examiner may require an applicant to disclaim exclusive rights to part of the mark that is unregistrable rather than refuse the entire mark. See 15 U.S.C. §1056(a) Disclaimer of unregisterable matter. Refusals can be overcome by arguing that the trademarks are suggestive, arbitrary, fanciful or fall into one of the many exceptions to the rules rather than merely descriptive.


Overcoming a merely descriptive refusal is also possible when it can be effectively argued that the mark has acquired distinctiveness sufficient to move it to the left (red arrow) in the diagram below. Unfortunately, what would constitute an effective argument is subjective to the facts involved in any particular situation and is not conducive to form answers.




For more information on geographically descriptive or geographically misdescriptive refusals see http://merely-descriptive.com/geographictrademark.html. See more on acquired distinctiveness for Section 2(f) or 2(f) in part at Trademark2f.com.

 

Examples of USPTO Trademark Office Action Rejections based on being “merely descriptive”

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

[This trademark was abandoned by the owner after several refusals (37 months from filing to abandonment).]

Merely Descriptive

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.

A mark is merely descriptive under Trademark Act Section 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.  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); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b).

The examining attorney must consider whether a mark is merely descriptive in relation to the identified goods, not in the abstract.  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); In re American Greetings Corp., 226 USPQ 365 (TTAB 1985).  TMEP §1209.01(b). 

It is not necessary that a term describe all of the purposes, functions, characteristics or features of the goods to be merely descriptive.  It is enough if the term describes one attribute of the goods.  In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).  TMEP §1209.01(b). In this case, the mark is AMERICAN MADE for XXXXX. As previously stated, AMERICAN is defined as follows, “of or relating to the United States of America.” AMERICAN MADE then is descriptive because it describes the origin of the goods. 

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

[This trademark was abandoned by the owner after one refusal (11 months from filing to abandonment).]

Section 2(e)(1) - Descriptive Refusal

Registration is refused because the proposed mark merely describes applicant’s services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq. In addition to being merely descriptive, the proposed 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 and Reconstructive Surgery, 64 USPQ2d 1748 (TTAB 2002); In re A La Vieille Russie, Inc., 60 USPQ2d 1895 (TTAB 2001).  But see In re Mgmt. Recruiters Int’l, Inc., 1 USPQ2d 1079 (TTAB 1986).  Under these circumstances, neither an amendment to proceed under Trademark Act Section 2(f), nor an amendment to the Supplemental Register can be recommended.

 A mark is merely descriptive under Section 2(e)(1) if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods and/or services.  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); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b). Furthermore, 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 (CCPA 1978); see, e.g., In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (CONCURRENT PC-DOS found merely descriptive of “computer programs recorded on disk” where relevant trade uses the denomination “concurrent” as a descriptor of this 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); see TMEP §1209.01(b).  Moreover, when a mark is comprised of descriptive terms, the mere combination does not obviate the descriptive nature of the mark when the combination does not create a different commercial impression which is incongruous in relation to the goods/services and therefore no longer descriptive.  E.g., In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988) (finding GROUP SALES BOX OFFICE descriptive for theater ticket sales services).  E.g., In re Copytele Inc., 31 USPQ2d 1540, 1542 (TTAB 1994); Associated Theatre Clubs, 9 USPQ2d at 1662. 

Applicant’s proposed mark, AMERICANMADEXXXXXX.COM is for “Operating an online shopping site in the field of goods and services.”  American made products are those goods or products which are made or manufacture in America.  The wording describes a type or class of goods. See attached excerpts from a LEXIS® database search of the wording.

Terms that are generic for a type of good are also generic for the service of selling primarily those goods.  See In re A La Vieille Russie Inc., 60 USPQ2d 1895, 1900 (TTAB 2001) (RUSSIANART held generic for art dealership services in the field of Russian art); In re Log Cabin Homes Ltd., 52 USPQ2d 1206 (TTAB 1999) (LOG CABIN HOMES held generic for architectural design of buildings and retail outlets featuring kits for constructing buildings, especially houses); In re Bonni Keller Collections Ltd., 6 USPQ2d 1224 (TTAB 1987) (LA LINGERIE held generic for retail store services featuring clothing); In re Wickerware, Inc., 227 USPQ 970 (TTAB 1985) (WICKERWARE held generic for mail order and distributorship services featuring products made of wicker); In re Half Price Books, Records, Magazines, Inc., 225 USPQ 219 (TTAB 1984 (HALF PRICE BOOKS RECORDS MAGAZINES held generic for retail book and record store services); TMEP §1209.03(r).  Furthermore, the top-level domain (TLD) “.COM” in an Internet address merely indicates that the domain name owner is a commercial, for-profit organization or business.  In re Oppedahl & Larsen LLP, 373 F.3d 1171, 1176, 71 USPQ2d 1370, 1373-1374 (Fed. Cir. 2004); see Interactive Prods. Corp. v. a2z Mobile Office Solutions, Inc., 326 F.3d 687, 691, 66 USPQ2d 1321, 1322 (6th Cir. 2003); In re CyberFinancial.Net, Inc., 65 USPQ2d 1789, 1791-1792 (TTAB 2002); TMEP §1215.01.  Accordingly, the inclusion of “.COM” does not obviate the instant refusal.


For the foregoing reasons, the examining attorney refuses registration on the Principal Register, per Section 2(e)(1) of the Trademark Act.

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

[This trademark was abandoned by the owner after several refusals, several amendments and a first abandonment and revival (36 months from filing to abandonment).]

Section 2(e)(1) Refusal – Merely Descriptive --Continued [from last office action]

 Registration is refused because the applied-for mark merely describes the purpose and characteristics 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. 

 

According to the applicant’s specimen filed on February 2, 2007, NETXXXX LIVE offers live entertainment via broadband, TV, radio, etc.  It also described itself as a “network like no other.”  It is a global media network that broadcasts live events via multiple media platforms.  See the applicant’s web site, http://www.netXXXlive.com/, searched at 1:53 PM on 6/21/2008. 

 

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).

 

The applicant’s services are “streaming and download of live and recorded audio and audiovisual content via the Internet and mobile devices; broadcasting of audio and audiovisual content via the internet, mobile devices, computing devices, television, radio, and satellite radio;” and “providing tickets for various entertainment shows and events; and entertainment services, namely, producing, directing, and distribution for others, of live and recorded audiovisual programming in the fields of entertainment, music, comedy, drama, and news.”  The live entertainment is broadcast via the applicant’s Internet network.  Furthermore, a purpose of a network is to produce the content.  The mark is clearly not suggestive of the services as asserted by the applicant in the response to the office action.  Rather, the mark is merely descriptive of the applicant’s services.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

Supplemental Register

 

The applied-for mark has been refused registration on the Principal Register.  Applicant may respond to the refusal by submitting evidence and arguments in support of registration and/or by amending the application to seek registration on the Supplemental Register.  See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.  Amending to the Supplemental Register does not preclude applicant from submitting evidence and arguments against the refusal.

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

[This trademark was abandoned (37 months from filing to abandonment) by the owner after a final refusal for likelihood of confusion with other similar marks. The laudatory terms below were disclaimed as recommended by the trademark examiner but it was not enough to overcome the likelihood of confusions.]


DISCLAIMER REQUIREMENT for Laudatory Descriptiveness


If the mark is determined to be otherwise registrable, the applicant must still disclaim the following unregistrable matter FINEST and GLUTEN-FREE.  The applicant must disclaim the wording FINEST because it is laudatorily descriptive to denote a certain quality of the goods.  Laudatory terms, i.e., those terms that attribute quality or excellence to goods or services, are considered descriptive terms under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §1209.03(k).  That is, laudatory terms, phrases and slogans are nondistinctive and unregistrable without proof of acquired distinctiveness.  In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001) (THE ULTIMATE BIKE RACK); In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (THE BEST BEER IN AMERICA); In re Dos Padres Inc., 49 USPQ2d 1860 (TTAB 1998) (QUESO QUESADILLA SUPREME); In re Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995) (SUPER BUY); General Foods Corp. v. Ralston Purina Co., 220 USPQ 990 (TTAB 1984) (ORIGINAL BLEND).  Also, the wording GLUTEN-FREE is descriptive of the type of goods provided or ingredients contained therein the goods.


The Office can require an applicant to disclaim exclusive rights to an unregistrable part of a mark, rather than refuse registration of the entire mark.  Trademark Act Section 6(a), 15 U.S.C. §1056(a).  Under Trademark Act Section 2(e), 15 U.S.C. §1052(e), the Office can refuse registration of the entire mark where it is determined that the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods.  Thus, the Office may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic).  TMEP §1213.03(a).  If an applicant does not comply with a disclaimer requirement, the Office may refuse registration of the entire mark.  TMEP §1213.01(b).


A “disclaimer” is thus a written statement that an applicant adds to the application record that states that applicant does not have exclusive rights, separate and apart from the entire mark, to particular wording and/or to a design aspect.  The appearance of the applied-for mark does not change.


A disclaimer does not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording and/or design separate and apart from the mark as shown in the drawing.

Answering Office Actions

There are no canned answers on how to answer office actions for the rejections received because there are no typical rejections. Registration of a mark is specific to the facts involved. (See Function As A Mark for more Office Actions.) Some rejections are dependent not only on the trademark being proposed (very fact specific) but also on how the application is filled out, especially the specimens submitted. Sometimes just a better specimen is all it takes. Sometimes a better identification of goods and services. Sometimes parts of the trademark must be disclaimed. Sometimes the applicable law must be examined and arguments made that are very specific to the actual words and designs being proposed. It depends on what is being rejected and why.


Not every office action has an answer, some proposed trademarks just do not comply with U.S. Trademark Law and do not qualify for common law protection because they  are conflicting marks, lack distinctiveness or lack acquired secondary meaning or the capability of acquiring secondary meaning. If we believe that the mark as originally applied cannot be saved, we will let you know (no charge) and help you to get a quick start on a new application that overcomes the initial application’s problems. Very often the same specimen that shows a potential mark with a likelihood of confusion also shows other potential marks that may not have the same flaw.


If your trademark has value and you want to preserve the trade identity rights that you have already invested and secure more rights through federal registration, call us at 1-651-500-7590  . If the fix required is a minimal fix, we have a low minimum cost. The cost of having a Not Just Patents ® Legal Services provide your Response to Office Action (ROA) and/or Amendment to Allege Use (AAU)(after an Intent-to-Use application) may be less than what you think and the time saved may be months or years. Better yet, have Not Just Patents ® Legal Services prepare your application (including choosing the best specimens) from the beginning.


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!


Call us at 1-651-500-7590   for a Strong Trademark. A Strong Trademark is Not Just a tool to increase sales to customers–it is also easier to sell to your investors & licensees.



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Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

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