One of the more difficult office action rejections to respond to when filing for a trademark registration at the United States Patent and Trademark Office is that of a trademark that is merely descriptive of the goods/services that the trademark represents.
While this website has a prior discussion on the need to have a stronger trademark, not every company will create or find a mark that is fanciful. And if the USPTO claims that your trademark is merely descriptive, it is up to you, the applicant, to argue in response that your mark is at least suggestive of the goods/services or the qualities of the goods/services that you applied for. “Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought, or perception to reach a conclusion as to the nature of those goods or services. Thus, a suggestive term differs from a descriptive term, which immediately tells something about the goods or services.” T.M.E.P. § 1209.01(a). Suggestive marks are registrable on the Principal Register without proof of secondary meaning. Id. (For a further discussion on secondary meaning, please see another previous post.)
Section 2(e)(1) of the Trademark Act prohibits registration on the Principal Register of “a mark which, (1) when used on or in connection with the services of the applicant is merely descriptive . . . of them.” 15 U.S.C. § 1052(e)(1). For a term to be merely descriptive within the meaning of § 2(e)(1), it is not necessary that the term describe each feature of the services, only that 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 U.S., 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)); see also In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987).
Determining the descriptiveness of a mark under § 2(e)(1) of the Trademark Act is done in relation to an applicant’s goods or services, the context in which the mark is being used, and the possible significance the mark would have to the average purchaser because of the manner of its use or intended use. See In re Chamber of Commerce, 102 USPQ2d at 1219 (citing In re Bayer, 82 USPQ2d at 1831). In other words, the question is not whether someone presented only with the mark could guess the services listed in the identification. Rather, the question is whether someone who knows what the services are will understand the mark to convey information about them. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002)).
For example, when two or more merely descriptive terms are combined, the determination of whether the combined mark also has a merely descriptive significance turns on whether the combination of terms evokes a non-descriptive commercial impression. In re Oppedahl & Larson, 71 USPQ2d at 1372 (quoting Estate of P.D. Beckwith, Inc. v. Commr., 252 U.S. 538, 543 (1920)). However, in considering the mark as a whole, the USPTO may weigh the individual components of the mark to determine the overall impression or the descriptiveness of the mark and its various components. In re Oppedahl & Larson, 71 USPQ2d at 1372 (citing In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)). Thus, the USPTO may consider the significance of each element separately in the course of evaluating the mark as a whole. See DuoProSS v. Inviro, 103 USPQ2d at 1757 (reversing Board’s denial of cancellation for SNAP! with design for medical syringes as not merely descriptive when noting that the Board “to be sure, [could] ascertain the meaning and weight of each of the components that ma[de] up the mark”).
Giving a specific example, back in 2014 Experian Health, Inc. filed TOUCHLESS PROCESSING to represents goods/services of “Providing temporary use of on-line non-downloadable software for use in automating the electronic processing of patient information in the field of healthcare.” The USPTO, in an office action, rejected this application, stating that the trademark of TOUCHLESS PROCESSING is merely descriptive, since nobody would touch screens or devices in automated electronic processing.
In this particular example, the applicant uses the word “touchless” so that consumers can deduce, through thought, that the applicant’s services automate much of the revenue cycle workflow, not to describe the literal hands-free use of a computer keyboard or touchscreen.
Such hands-free use would have no application in this situation and would not be a desirable characteristic to most potential consumers. The applicant’s services, instead, filter certain accounts in the revenue cycle workflow, allowing users to focus on those accounts that need the most attention. For instance, the applicant’s services help to identify patients who need follow-up, prioritize and distribute work among staff, and connect the business office with front-end processes. While the Applicant services improve staff efficiency, ease certain patient processing tasks, and assist with organization, users must still physically touch the keyboard, input, and process much of the patient information. In summary, the applicant’s services are not literally “touchless,” and consumers would not request Applicant’s services in order to avoid “touch[ing] a keypad, screen, etc.” While “touchless” means hands-free use of “a keypad, screen, etc.,” and this definition may remind some people of the automation provided by applicant’s services, it would take a leap of the imagination to make this connection.
In this case, the descriptiveness rejection was removed and the mark was deemed to be, at least, suggestive, and TOUCHLESS PROCESSING was registered.
That is the key in the fine line of a trademark that is merely descriptive or suggestive: Showing that the trademark does not actually describe the goods/services involved.
A second path to registering the trademark.
Acquired distinctiveness refers to distinctiveness of a trademark that is not inherent (such as a merely descriptive trademark), but that rather develops through use of the mark over time, such that consumers associate the mark with a secondary meaning — as an indication of source — rather than just the term’s primary, descriptive meaning.
“Distinctiveness is acquired by ‘substantially exclusive and continuous use’ of the mark in commerce.” In re Owens-Corning Fiberglass Corporation, 774 F.2d 1116, 227 USPQ 417, 424 n. 11 (Fed. Cir. 1985), citing Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 222 USPQ 939, 942 (Fed. Cir. 1984). In order to establish acquired distinctiveness, applicant must show that the primary significance of the proposed marks in the minds of consumers is not the goods or services but the source of those goods and services. See In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005); In re Ennco Display Systems Inc., 56 USPQ2d 1279 (TTAB 2000).
Acquired distinctiveness may be shown by direct or circumstantial evidence. Direct evidence includes testimony, declarations or surveys of consumers as to their state of mind. Circumstantial evidence is evidence from which consumer association might be inferred, such as years of use, extensive amounts of sales and advertising, and any similar evidence showing wide exposure of the mark to consumers. There is no fixed rule for the amount of proof necessary to demonstrate acquired distinctiveness; however, the evidence required is in proportion to the degree of non-distinctiveness of the mark at issue. Yamaha Int. Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1008 (Fed. Cir. 1988). Thus, even long periods of substantially exclusive use may not be sufficient to demonstrate acquired distinctiveness. Moreover, the burden is particularly heavy when that use has not been exclusive. In re Gibson Guitar Corp., 61 USPQ2d 1948, 1952 (TTAB 2001) (66 years of use not sufficient given similarity of configuration to other guitars). See also Flowers Industries Inc. v. Interstate Brands Corp., 5 USPQ2d 1580, 1588-89 (TTAB 1987) (“long and continuous use alone is insufficient to show secondary meaning where the use is not substantially exclusive”).
Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), provides that “proof of substantially exclusive and continuous use” of a designation “as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made” may be accepted as prima facie evidence that the mark has acquired distinctiveness as used in commerce with the applicant’s goods or services. Trademark Rule 2.41(a)(3), 37 C.F.R. § 2.41(a)(3), states that an applicant may submit, in support of registration under Section 2(f), “appropriate evidence showing duration, extent, and nature of the use in commerce and advertising expenditures in connection therewith … and verified statements, letters or statements from the trade or public, or both, or other appropriate evidence of distinctiveness.”
“To show that a mark has acquired distinctiveness, an applicant must demonstrate that the relevant public understands the primary significance of the mark as identifying the source of a product or service rather than the product or service itself.” In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005).
In 2018, Food Psych Programs, Inc. filed FOOD PSYCH as a trademark representing goods/services of “Downloadable podcasts featuring lectures and classes on health and nutrition.” This was rejected as merely descriptive (“food” representing “health and nutrition” and the “psych” as “psychology” for the “lectures and the classes”).
To show acquired distinctiveness, there is a three-step process:
- There is exclusive use.
- There is continuous use.
- There is much media coverage.
There is exclusive use.
The Examining Attorney has not found any third-party marks that would cause a likelihood of confusion on the Principal Register. Also, unlike the situations in Ayoub, Inc. v. ACS Ayoub Carpet Serv., 118 USPQ2d 1392, 1404 (TTAB 2016); Nextel Commc’ns, Inc. v. Motorola, Inc., 91 USPQ2d 1393, 1408 (TTAB 2009); Target Brands, Inc. v. Hughes, 85 USPQ2d 1676, 1682-83 (TTAB 2007); Marshall Field & Co. v. Mrs. Fields Cookies, 11 USPQ2d 1355, 1357-58 (TTAB 1989), there are no third-party registrations or uses. This means that the Applicant has had exclusive use of the phrase “Food Psych” in the goods/services applied for since the beginning of the claimed use.
In addition to that use, the applicant in this case submitted an exhibit, showing podcast episodes since September 9, 2013. That is continuous use through the calendar year of 2017, over 4 years. The exhibit also shows the amount of downloads for each episode of the podcast. Many episodes of the podcast have 50,000 or even 60,000 downloads. In sum total, the “Food Psych” podcast has 3,104,612 downloads and the exhibit shows that over 2,000,000 of these downloads are from the United States. Compare this to Target Brands Inc. v. Hughes, 85 USPQ2d 1676, 1681 (TTAB 2007) (“The sales figures for 14 years, standing alone and without any context in the trade, are not so impressive as to elevate applicant’s highly descriptive designation to the status of a distinctive mark.”); In re Boston Beer Co., 53 USPQ2d at 1058; In re Bongrain Int’l Corp., 13 USPQ2d at 1729. See also In re Candy Bouquet Int’l, Inc., 73 USPQ2d 1883, 1888-89 (TTAB 2004). The applicant has exclusive use of the mark in the goods/services in the application and the applicant has context to show that consumers relate the the applicant to the mark.
There is continuous use.
While Flowers Indus. Inc. v. Interstate Brands Corp., 5 USPQ2d 1580, 1588-89 (TTAB 1987) states that long and continuous use alone is insufficient to show secondary meaning where the use is not substantially exclusive, the Applicant has shown that the use is exclusive. The exhibits the applicant submitted to the USPTO show that the use is continuous. There are downloads starting in 2013. There are reviews from consumers in 2013 in. Both are true through the time of filing the trademark application and the time to respond to the USPTO office action rejection. This means there is over four years of evidence of continuous use at the time.
There is media coverage.
In determining whether the applicant has demonstrated acquired distinctiveness of the proposed mark for its goods, there must be an examination of the evidence of record, including any evidence of advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, and consumer studies (linking the name to a source). In re Steelbuilding.com, 75 USPQ2d at 1424; Cicena Ltd. v. Columbia Telecomms. Grp., 900 F.2d 1546, 14 USPQ2d 1401, 1406 (Fed. Cir. 1990). On this list, no single fact is determinative. In re Tires, Tires, Tires Inc., 94 USPQ2d 1153, 1157 (TTAB 2009). See also In re Ennco Display Sys. Inc., 56 USPQ2d 1279, 1283 (TTAB 2000) (“Direct evidence [of acquired distinctiveness] includes actual testimony, declarations or surveys of consumers as their state of mind. Circumstantial evidence, on the other hand, is evidence from which consumer association might be inferred, such as years of use, extensive amount of sales and advertising, and any similar evidence showing wide exposure of the mark to consumers.”). In this instance, the applicant showed fifteen different media stories that include the use of the phrase FOOD PSYCH in relationship to the applicant and the owner of the corporate entity that is the applicant.
In this case, secondary meaning through acquired distinctiveness was shown and the FOOD PSYCH trademark was registered.
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