Westchester Women's Bar Association

Overcoming a Merely Descriptive Refusal

One of the more difficult refusals to overcome is a 2(e)(1) refusal, where it is alleged that the mark is merely descriptive of the goods or services. When these types of refusals are appealed, the Trademark Trial and Appeal Board (the “Board”) affirms the refusal 90% of the time. Last year it was reported that the Board affirmed descriptive refusals 93% of the time. Each case is fact specific, but certain arguments seem to be more effective than others in overcoming these types of refusals.

A mark is merely descriptive “if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used.” In re Chamber of Commerce of the United States of America, 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). The idea must be conveyed with a degree of particularity. In re TMS Corporation of the Americas, 200 USPQ 57, 59 (TTAB 1978). One way to overcome the refusal and to register the mark on the Principal Register is if the Applicant can prove acquired distinctiveness. For the basics on this topic, see our webpage entitled, What Is Acquired Distinctiveness & Secondary Meaning? However, if an applicant cannot prove acquired distinctiveness through five or more years of use, from relying on prior registrations for the same mark on the Principal Register or through other evidence, other arguments must be made to overcome the refusal.

One argument that has been successful with the Board and with Examining Attorneys is that the mark comprises a double entendre. This means the mark when applied to the goods has a double meaning. If one of the meanings as applied to the goods or services is not merely descriptive, then the mark will not be refused on the Principal Register. See In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983), where the Board didn’t require a disclaimer of "LIGHT" apart from the mark "LIGHT N’ LIVELY" for reduced calorie mayonnaise. Even though “LIGHT” had a merely descriptive significance, when used as a phrase "LIGHT N’ LIVELY", the Board held that the term “LIGHT” lost its descriptive meaning. Often alliteration in the mark assists in tipping the scales towards perceiving the terms as a unitary phrase and not as individual parts.

 If the mark has multiple interpretations, this must be apparent to the public from the mark alone. See In re The Place, Inc., 76 USPQ2d 1467, 1470 (TTAB 2005), where the Board held that the second meaning must be apparent from the mark itself. If the public would need to view the mark along- side the trademark dress, advertising material, or other promotional materials to understand the second meaning, then it is not a double entendre. The following cases held the mark was a double entendre , In re National Tea Co., 144 USPQ 286 (TTAB 1965) (NO BONES ABOUT IT for fresh pre-cooked ham); In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (C.C.P.A. 1968) (SUGAR & SPICE for bakery products); and In re Simmons Co., 189 USPQ 352 (TTAB 1976) (THE HARD LINE for mattresses and bed springs).

Another argument that has been successful in overcoming a merely descriptive refusal is when the mark combines two or more terms creating incongruity. If there is incongruity, the mark will be considered unitary and no disclaimer will be required of the nondistinctive elements. See In re Dunham, Serial No. 86941745 (April 6, 2018) [not precedential], where the Applicant argued that the mark BRAND THERAPY for consulting in the field of graphic design created incongruity of a brand going through therapy. The Examining Attorney did not produce evidence that third parties used the term to refer to graphic design services. The Board held that thought and imagination were required to leap past the incongruity to discern a descriptive quality, and therefore the mark was suggestive. If the mark creates ambiguity and requires some imagination or thought to comprehend a descriptive feature or characteristic, the mark is suggestive. See also, In re Original Grain, LLC, Serial No. 87511343 (January 23, 2020) [not precedential], where the Board reversed a merely descriptive finding for Original Grain for restaurant services. The Board underscored that any doubt as to descriptiveness must be resolved in favor of the applicant. See also, In re Atavio Inc., 25 USPQ 1361 (TTAB 1992).

Lastly, in cases involving intentional misspellings of descriptive words, a misspelling will not overcome a descriptive refusal if consumers would perceive the alternate spelling as the equivalent of the descriptive term. Thus, there must be an argument that the misspelling was selected because of a secondary meaning of the misspelled word. For example, see In re Choice Traders LLC, Serial Nos. 87770413 and 87950215 (March 31, 2020) [not precedential], where the Board held the mark ARTIZEN for essential oils and related products was more than a misspelling. The Board reasoned that consumers would understand there was a play on words involving the term “zen”. The Board agreed with the Applicant’s argument that the mark ARTIZEN was an inventive word, and an incongruous play on the word ARTISAN, creating more than one meaning and a different commercial impression than the word ARTISAN. Applicant argued that the essential oils used in aromatherapy will evoke a zen-like feeling. This case reminds me of a precedential holding of the Board from 2008, see In re Tea and Sympathy, Inc., 88 USPQ2d 1062 (TTAB 2008) [precedential], where the Board reversed a descriptive refusal for the mark THE FARMACY for a retail store featuring natural herbs and organic products. The Board agreed with the Applicant that the mark THE FARMACY had a double meaning and was a play on the words pharmacy and farm. If you have questions regarding merely descriptive refusals or other trademark related inquiries, please contact the firm for a courtesy consultation.

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