Merely Descriptive Or Generic?

Many trademark disputes and Office Actions center around the issue of whether a mark is merely descriptive of the goods and/or services or possibly generic. A mark is considered merely descriptive if it describes a function, feature, purpose, use, quality, characteristic or ingredient of the goods or services identified in the trademark application (Trademark Manual of Examining Procedure 1209.01(b)). A mark will also be considered merely descriptive if it describes the intended audience of applicant’s services or goods. The mark itself has to immediately convey information about the goods and services to the relevant consumer. In other words, the determination of whether a mark is merely descriptive is made in relation to an applicant’s goods or services, not in the abstract. The question is whether someone who knows what the goods and services are will understand the mark to convey information about them.

A merely descriptive mark may be registered on the Supplemental Register or on the Principal Register if the applicant can demonstrate the mark has acquired distinctiveness or has developed secondary meaning. See our blog post, entitled, Overcoming A Descriptiveness Refusal Under 2(e)(1), for tips on responding to a descriptiveness refusal. However, one should keep in mind that it is possible for some marks to be so "highly descriptive" as to be incapable of exclusive appropriation as a trademark. The Court of Appeals for the Federal Circuit has reinforced this principle by asserting, "a phrase or slogan can be so highly laudatory and descriptive as to be incapable of acquiring distinctiveness as a trademark." This statement was made in relationship to the slogan, "THE BEST BEER IN AMERICA" for beer and ale. See In re Boston Beer Co. Ltd. Partnership, 198 F.3d 1370, 1373, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999).

A generic term is one that the purchasing public understands to be the common name for the goods and services. A proposed mark considered to be generic will not be allowed to register on either the Principal or Supplemental Register. A two-part test is used to determine if a term is generic: (1) what is the class of goods or services at issue and (2) does the relevant public understand the term or designation primarily to refer to that class of goods. See Sheetz of Delaware, Inc. v. Doctors Associates Inc., 108 U.S.P.Q 1341, 2013 WL 5315963 (TTAB 2013), where it was held that the mark FOOTLONG was generic for sandwiches. The examining attorney has the burden to show that a term is generic by "clear evidence". This is a high standard that the applicant can use to its advantage when replying to a refusal based on generic grounds.

Two recent Trademark Trial and Appeal Board cases illustrate the differences between a refusal on generic grounds and one on merely descriptive gounds. See In re Holland Akins Ventures, LLC, Serial No. 86650058 (January 31, 2017) [not precedential], where the Board held the mark LAUNDRY CAFE used in connection with washing and drying laundry services and restaurant services was generic. Here the individual words were generic for the services and the Board had to decide when using the two words together, did a different meaning or commercial impression develop. The Board held that once the public knows that the applicant is offering laundry and restaurant services, they would understand the mark to mean a class of goods and not to indicate a particular source. Evidence was presented that showed two independent businesses also identifying their establishments as "Laundry Cafes".

The second and more recent case of Frito-Lay North America, Inc. v. Real Foods Pty., Ltd., Oppositions Nos. 91212680 and 91213587 (February 21, 2017) [not precedential], found the marks CORN THINS, for corn cakes and RICE THINS for rice cakes merely descriptive of the goods, but not generic. The Opposer, Frito Lay claimed the marks were generic and so highly descriptive that both marks were incapable of functioning as trademarks. The Board did not see it this way. There was evidence of third party use for the term "Thins" showing both use as a trademark and descriptive use. The Board found that the terms corn, rice and thins were characteristics of the goods, hence merely descriptive of the goods, but not generic. In order to avoid a scenario where you are responding to an Office Action based on a refusal for generic or merely descriptiveness grounds, we recommend adopting a mark that is fanciful, arbitrary, or suggestive. We counsel our clients to select marks that are inherently distinctive. If you have trademark questions, please feel free to contact our office to schedule a courtesy consultation.