Merely Descriptive Trademarks: A Tricky Road to Navigate

Key Points

1. A merely descriptive mark is one which the mark is deemed to be merely descriptive of the specified goods and services.  
2. Such marks are not registrable on the Principal Register but they may be registered on the Supplemental Register.  They may later be registrable on the preferred Principal Register upon a showing of acquired distinctiveness. However, the USPTO’s requirements for meeting this showing to its satisfaction pose a very tough hurdle.  
3. The Supplemental Register provides the registrant with several rights, but the rights are less extensive than the rights afforded to the owner of mark registered on the Principal Register. Hence, marks registered on the Principal Register are generally considered more valuable than “Supplemental Register” marks. 
4. Merely descriptive mark rejections by an examining attorney may occasionally be overcome but reversal of a refusal on this ground upon appeal is rare at only 5-10%.
5. On June 17, 2024, the Trademark Trial & Appeal Board (TTAB) affirmed the examining attorney’s rejection of the proposed mark ECOPRENEUR for all of the applicant’s specified five classes of goods and services.  In re Time USA, LLC (SN90493176).
6. As the opinion demonstrates, choosing a mark for branding purposes is no easy task.  In addition to assessing the risk of a likelihood of confusion rejection, the trademark registration applicant should be cognizant of potential merely descriptive and generic mark refusals.  Generic marks are not even eligible for registration on the Supplemental Register.  The applicant should pay particular attention to marks with relative common words or marks which incorporate a word frequently used in the media or in a particular field of endeavor.  The TTAB, in rejecting ECONOPRENEUR for registration on the Principal Register, emphasized the word was frequently used to describe entrepreneurial efforts involving protecting the environment through services or climate-friendly products.  
7. It can be easy to get “reeled in” by a favored mark during the brand development process.    It’s human nature to refrain from thoroughly evaluating our creative efforts (which brand development is) from both a legal perspective and brand commercialization perspective.  Before spending funds on trademark registration and brand development, consider getting a legal perspective as to all potential risks from a likelihood of confusion rejection to a merely descriptive/generic perspective.  

For those interested in digging deeper into merely descriptive marks, the rest of this blog discusses the In re Time USA, LLC decision in detail.  Certain arguments may overcome such a rejection. In this case, the TTAB dismissed all of the applicant’s arguments as discussed below.  The ECOPRENEUR applicant’s option is to proceed with registration on the Supplemental Register which is perhaps better than nothing.  Such a luxury is not afforded to marks rejected on likelihood of rejection grounds. 

 

DISCUSSION

On June 17, 2024, the Trademark Trial & Appeal Board affirmed the examining attorney’s rejection of the proposed mark ECOPRENEUR for all of the applicant’s specified five classes of goods and services.  In re Time USA, LLC.  The descriptions of the goods/services for all five classes all included the word “environmental” or “environment.”  In rejecting registration of ECOPRENEUR on merely descriptive grounds, the examining attorney relied on various publications which discuss the increasing role of ecopreneurs in developing sustainable businesses embracing an approach to build sustainable brand and environmentally friendly businesses.  Based on these various publications, all of which used the word ecopreneur, the examining attorney concluded that the word was merely descriptive of “the characteristics and intended of audience” of the Applicant’s goods and services. This was because the goods/services can help a person to become an entrepreneur and people and businesses focused on environmental concerns.  The Applicant’s goods/services were deemed to be targeted to or used by ecopreneurs. 

Arguments that may be offered in favor of registration of a mark rejected on merely descriptive grounds are that: 1) the mark is suggestive rather than descriptive; 2) the mark is used in an incongruous manner; and/or 3) the mark requires consumer imagination to reach the conclusion as to the nature of the identified goods and services.

Regarding argument 1, examples of suggestive marks are Jaguar (suggests cars that are very fast), Netflix suggests movies (“flicks”) that are ordered online, and Coppertone (suggestive of the resulting skin color after using this tanning lotion.  As applied to the ECOPRENEUR matter, the author of this article provides the following example of a suggestive mark: ECOJAM’NEUR.  Here, the mark may be viewed as suggesting that the goods/services are for helping to address the “jam” facing the earth’s ecology wherein jam means plight. 

Regarding argument 2, an incongruous mark is generally comprised of at least two words wherein the usage of the two words together is odd or strange.  In re Shutts, 217 USPQ 363, 364–5 (TTAB 1983) (SNO-RAKE held not merely descriptive of a snow-removal hand tool); see also In re Vienna Sausage Mfg. Co., 156 USPQ 155, 156 (TTAB 1967) (FRANKWURST held not merely descriptive for wieners, the Board finding that although “frank” may be synonymous with “wiener,” and “wurst” is synonymous with “sausage,” the combination of the terms is incongruous and results in a mark that is no more than suggestive of the nature of the goods); In re John H. Breck, Inc., 150 USPQ 397, 398 (TTAB 1966) (TINT TONE held suggestive for hair coloring, the Board finding that the words overlap in significance and their combination is somewhat incongruous or redundant and does not immediately convey the nature of the product).  All examples are from the Trademark Manual Examining Procedure (TMEP).  

Regarding argument 3, such a mark is one that is ambiguous or broad enough that the consumer does not immediately associate the mark with the proffered goods or services – the consumers to exercise imagination. For example, the Federal Circuit held that the mark “TECHNOLOGY” used for computer products (specifically, etched metal electronic components, flexible circuits, actuator bands for disk drives, print bands, increment discs, and flexible assemblies for disk drives) was not merely descriptive because it is a broad term that encompasses many goods, and therefore doesn’t immediately tell consumers something about the product. See In re Hutchinson, 852 F.2d 552, 554-55 (Fed. Cir. 1988).  The example ECOJAM’NEUR mark would also meet the requirements of argument 3 because it would require that consumer to exercise some imagination as to what is meant by “jam.”  

The TTAB agreed with the examining attorney that the mark “immediately conveys knowledge of a quality, feature, function, or characteristic” of one or more of Applicant’s identified goods and services.  The descriptions of the various goods/services in the application were quite lengthy and did not all necessarily fall under the “merely descriptive” test.  The Board emphasized, however, because a proposed mark is merely descriptive of at least one product or service in each International Class, the “entire class will fail.”  

Moreover, trademark jurisprudence establishes that marks which describe the intended user of or purchaser of a product or service have routinely been found to be merely descriptive.  Cited mark examples in the Time USA opinion are GASBUYER, SYSTEMS USER, and MOUNTAIN CAMPER. Time USA did try and claim that ecopreneurs were not “the intended audience or purchasers” for its identified descriptions.  The TTAB discounted this assertion for two reasons.  First, Time USA’s brief contradicted itself by inserting the sentence that “ecopreneurs would not be the only audience or sort of people in the world interested in its goods and services.”  Second, the TTAB concluded that the Applicant’s “identification of goods and service was broad enough to encompass matters of interest to ecopreneurs, whether or not Applicant targets all its goods/services to ecopreneurs specifically.” 

The Applicant used the “suggestive” argument (argument #1 above) by arguing that the consumer’s “understanding of the goods and services in connection with the Mark is not instantaneous” but requires “several mental steps.” In making this argument, Time USA argued that it is not an “entrepreneur operating an environmentally sustainable business” or “a person or company who intend to sell products or services that are beneficial to the environment in some way.” The TTAB discounted this argument by stating that someone who knows that the Applicant offers environment-focused goods and services would understand that ECOPRENEUR conveys information about the intended users/purchasers of Applicant’s goods and services.  

Finally, the TTAB found that ECOPRENEUR was not representative of an incongruent mark.  As Time USA’s argument went, the mark uses the word in an “incongruent” manner because the term refers to “a type of person or entrepreneur”, which “is not how one would normally refer to goods and services.”  The TTAB re-emphasized that ecopreneurs are clearly the potential customers for at least one of the Applicant’s listed goods/services in every one of the application’s five specified International Classifications.”  Here, the mark clearly describes the intended users of the goods/services, namely, ecopreneurs.  Tellingly, the decision reminds us that the applicable question is not whether someone presented with only the mark could guess what the goods/services are.  Rather the question is whether someone who knows what the goods and services are will understand the mark to convey information about them.”  Slip opinion @ 11 citing DuoproSS Meditech Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247 (Fed. Cir. 2012). Here, someone who knows the products sold by Time USA are environmentally-focused and would understand that ECOPRENEUR conveys information about the intended user/purchasers of Applicant’s goods/services. 

As such, the TTAB refused registration of the mark on the Principal Register.  Time USA may register its merely descriptive mark on the Supplemental Register as discussed above.  

 

THANK YOU FOR YOUR INTEREST IN THIS ARTICLE.  THE CONTENT IS FOR          INFORMATIONAL PURPOSES ONLY AND IS NOT LEGAL ADVICE.