Under the federal trademark law, called The Lanham Act, the United States Patent and Trademark (“USPTO”) office is directed to refuse registration of marks that fall within certain defined categories.  When you, as an entrepreneur, are contemplating developing a trademark, these factors should be kept in mind since it makes absolutely no sense to start marketing a “brand” that eventually may not be registrable.  The advantages of registration are considerable. Read “Should I Register My Trademarks?”

        There are many reasons for rejection of application.  This is what the provisions of 15 U.S.C. state in part in regard to marks that are not registrable on the principal register.  Many of these are self-evident and thus I will limit my discussion in this article to issues related to “descriptiveness” and a case discussing those issues since that is what is frequently the basis for rejection.

Sec. 1052. - Trademarks registrable on principal register; concurrent registration

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it –

(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits,[emphasis added] identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.

(b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.

(c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.

(d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to

(1) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; [balance of these sub-provisions not included herein]
With regard to the above provisions, one of the most significant aspects of a thorough trademark search is to seek to discover any uses of marks that may be confusingly similar to the proposed mark.  This search should not be limited to just an online search but should cover both registered and unregistered marks, common law marks, other uses including business names etc.  Such a report should be reviewed by an attorney with experience in these matters.  Such reports however are not conclusive and it is always up to the USPTO to refuse registration on this ground irrespective of the applicant’s opinion.  [Concurrent registration is discussed in this article.]
(e) Consists of a mark which
(1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them,
(2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title,
(3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them,
(4) is primarily merely a surname, or
(5) comprises any matter that, as a whole, is functional.
(f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant's goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant's goods in commerce before December 8, 1993. [emphasis added] A mark which when used would cause dilution under section 1125(c) of this title may be refused registration only pursuant to a proceeding brought under section 1063 of this title. A registration for a mark which when used would cause dilution under section 1125(c) of this title may be canceled pursuant to a proceeding brought under either section 1064 of this title or section 1092 of this title
        [For a discussion of dilution, read “Trademark Dilution: The “Victoria’s Secret” Case.”]

Descriptive Marks

        Under section (e) above, marks are often refused because they are deemed “descriptive.”

        The Trademark Manual of Examining Procedure states in part as follows:

1209.01 Distinctiveness/Descriptiveness Continuum

With regard to trademark significance, matter may be categorized along a continuum, ranging from marks that are highly distinctive to matter that is a generic name for the goods or services.  The degree of distinctiveness -- or, on the other hand, descriptiveness -- of a designation can be determined only by considering it in relation to the specific goods or services.  [emphasis added] Remington Products, Inc. v. North American Philips Corp., 892 F.2d 1576, 13 USPQ2d 1444, 1448 (Fed. Cir. 1990) (the mark must be considered in context, i.e., in connection with the goods).

At one extreme are marks that, when used in relation to the goods or services, are completely arbitrary or fanciful.  Next on the continuum are suggestive marks, followed by merely descriptive matter.  Finally, generic terms for the goods or services are at the opposite end of the continuum from arbitrary or fanciful marks.  As stated in H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986), “[t]he generic name of a thing is in fact the ultimate in descriptiveness.”

Fanciful, arbitrary and suggestive marks, often referred to as “inherently distinctive” marks, are registrable on the Principal Register without proof of acquired distinctiveness.  See TMEP §1209.01(a).

Marks that are merely descriptive of the goods or services may not be registered on the Principal Register absent a showing of acquired distinctiveness under 15 U.S.C. §1052(f).  See TMEP §1209.01(b) regarding merely descriptive marks, and TMEP §§1212 et seq. regarding acquired distinctiveness.  Merely descriptive marks may be registrable on the Supplemental Register.  15 U.S.C. §1091.

Matter that is generic for the goods or services is not registrable on either the Principal or the Supplemental Register under any circumstances.  See TMEP §§1209.01(c) et seq.

        The TMEP goes on at length detailing the general statements above but for the purposes of this article, I will not cover the details.

        Under section (f) above, however, a descriptive mark can be registered (subject to the exceptions and provisions indicated therein) if the applicant can show that the mark has become distinctive through the applicant’s use of the mark in commerce.  This means that the burden is on the applicant to demonstrate that an otherwise descriptive mark has become a source identifier by which the public identifies that mark with the goods or services of the applicant, i.e. has developed a “secondary meaning.”

        A case decided as an appeal from a decision of the Trademark Trial and Appeal Board (TTAB) discusses some of these issues.   In  In Re MBNA America Bank, N.A., No. 02-1558 (Fed Cir. August 15, 2003), the Federal Circuit Court of Appeals had to decide if two registration applications for credit cards called “Philadelphia Series” and “Montana Series” were properly rejected by the United States Patent and Trademark Office as “descriptive.”

        The original applications, filed on the basis of an intention to use, were later amended to state, in the Court’s words:

The recitation of services for the two marks was later amended to read: ‘credit card services featuring credit cards depicting scenes or subject matter of, or relating to,’ the state of Montana, or the city of Philadelphia, respectively. The term ‘CARD’ in PHILADELPHIA CARD has been disclaimed.
        The application was part of a series of applications on the part of the applicant seeking registration for such credit cards in relationship to many states and cities.

        The Court summarized the legal issues thusly:

“In order to be registered, a mark must be capable of distinguishing the applicant's goods from those of others." Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992) (citing 15 U.S.C. § 1052). A mark is "distinctive and capable of being protected if it either (1) is inherently distinctive or (2) has acquired distinctiveness through secondary meaning." Id. at 769 (citation omitted). In the present case, MBNA does not argue that its marks MONTANA SERIES and PHILADELPHIA CARD have acquired distinctiveness through secondary meaning, and has not pursued registration under 15 U.S.C. § 1052(f) for such acquired distinctiveness. Rather, it contends that its marks are inherently distinctive. [see above]

Marks are often classified, according to their increasing degree of inherent distinctiveness, as: (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful. Id. at 768. Suggestive or arbitrary marks are deemed inherently distinctive and are entitled to registration as such; generic or descriptive marks are not.

        The Court discussed “descriptiveness” as follows:
A mark is merely descriptive if it immediately conveys information concerning a quality or characteristic of the product or service. Nett Designs, 236 F.3d at 1341. The perception of the relevant purchasing public sets the standard for determining descriptiveness. Id. Thus, a mark is merely descriptive if the ultimate consumers immediately associate it with a quality or characteristic of the product or service. On the other hand, "if a mark requires imagination, thought, and perception to arrive at the qualities or characteristics of the goods [or services], then the mark is suggestive." Id. The most inherently distinctive marks are arbitrary; they do not even suggest any of the qualities or characteristics of the goods or services.
        The Court went on to state the applicant’s position:
Here, MBNA argues that MONTANA SERIES and PHILADELPHIA CARD are not merely descriptive, but suggestive or arbitrary, because they do not immediately convey information concerning MBNA's credit card services, such as the terms of financing, interest rates, the annual fee, the extended warranty program, rewards program, or other features of MBNA's financial services. The Board, however, found that MBNA provided not only financial services, but "regional affinity" credit card services -- a financial service in conjunction with satisfying a social or lifestyle association with a particular city or state. Finding that the marks thus identified the community of intended users as well as the images on the plastic credit card itself, the Board found that the marks merely described significant features or characteristics of the affinity credit card services.[emphasis added]
        The Court agreed with the finding of the TTAB, saying:
Substantial evidence supports the Board finding that MBNA offers affinity credit card services. MBNA indeed offers, advertises, and provides affinity credit cards depicting subject matters appealing to groups with various geographic affinities. Here, the credit card specimens filed with the amendment in the MONTANA SERIES application depict a stereotypical Montana scene having a foreground of grasslands and a background of mountain peaks. Such association between credit card services and non-financial matters is not accidental, but rather the result of MBNA's strategic business planning and promotion. For example, in an advertisement for its "TEXAS SERIES" credit card services, MBNA not only depicts credit cards with various scenes from Texas but also includes the text: "Celebrate your pride in Texas with the Texas Series credit cards and a special low rate!" Thus, MBNA offers not simply financial services, but affinity credit card services providing both credit services and a feeling of social pride or connection through the particular affinity card with words and images identifying a particular city or state.[emphasis added]

We further conclude that substantial evidence supports the Board finding that MONTANA SERIES and PHILADELPHIA CARD are merely descriptive of a significant feature or characteristic of the affinity credit card services, i.e., feeling of pride in identification with the specific regional location. The words MONTANA SERIES and PHILADELPHIA CARD are displayed prominently on MBNA's promotional materials. The appeal to regional pride and loyalties is a significant feature of MBNA's method of promoting and marketing these affinity credit cards as well as of the services themselves. Thus, to the consumers, MONTANA SERIES and PHILADELPHIA CARD immediately convey information about the specific regional affinity, or the user group to which these services are directed. One does not need "imagination, thought, and perception" to arrive at the conclusion that MONTANA SERIES is a series of cards featuring Montana and appealing to those who would like to have credit cards naming their favored state and depicting Montana scenes, and that PHILADELPHIA CARD features scenes of Philadelphia on the cards and appeals to those favoring Philadelphia and wishing to be identified with it. Thus, the two marks clearly are not suggestive. Neither are the marks arbitrary when used for the affinity credit card services because the marks describe which geographic region the affinity card concerns. The marks could be arbitrary, therefore inherently distinctive, only if used for purely financial services. However, here, the services are not simply credit card services but affinity credit card services featuring specific regional affiliations. We therefore conclude that substantial evidence supports the Board finding that MONTANA SERIES and PHILADELPHIA CARD merely describe a significant feature of MBNA's affinity credit card services, as set forth expressly in the applications. Indeed, the evidence of descriptiveness in not merely substantial, but conclusive. [emphasis added]

        The Court also stated:
A regional designation can be inherently distinctive if it is not generic or does not merely describe a feature or characteristic of the goods or services for which the designation is used.
        However, the Court agreed with the TTAB that in this instance, there was no inherent distinctiveness because the use of the said marks, in the context of this application, were merely descriptive.

        Furthermore, the Court rejected MNBA’s legal argument that the TTAB had erroneously relied on the trade dress (i.e. the design) of the cards in making its finding.  The Court stated:

The Board's finding of mere descriptiveness is indeed based on the services recited rather than the picture designs on the cards or on advertising. The Board did comment that the designs of stereotypical Montana or Philadelphia images reinforced the respective regional themes. The Board also discussed that MBNA's advertising materials were intended to evoke regional pride using picture designs and slogans. However, these statements described evidence for the finding that MBNA's credit card services, viewed as a whole, were affinity credit card services, not simply traditional financial services. Additionally, the Board correctly found MBNA's emphasis on the regional theme through marketing promotions and picture designs provides circumstantial evidence of how the relevant public perceives the marks in a commercial environment that already includes a background of affinity card services. Ultimately, it is the perception of the ultimate consumer that sets the standard for determining mere descriptiveness. Nett Designs, 236 F.3d at 1341. Thus, MBNA's advertising materials that promote the association of its credit card services with geographical affiliation are relevant to a determination of descriptiveness of the marks. We conclude that MBNA's argument that the Board's finding of descriptiveness is based on trade dress is not supported. Indeed, we accept the Board's express statement that it was relying on the applications. [emphasis added]
        The Court further stated that the TTAB had used the correct legal test for determining descriptiveness, which is ‘[t]he primary significance of the registered mark to the relevant public…”

        There was a dissent in the decision, the basis being that the dissenting justice would not have found the marks to be descriptive.


As indicated above, any party contemplating establishing a trademark should initially have a thorough trademark search done to seek out any marks that might be deemed to conflict with the proposed mark because one of the other bases for rejection is likelihood of confusion with an existing mark.  However, in addition to the issues related to confusion, a party seeking to develop a trademark has to consider the relative strength of the mark, both from a design and marketing standpoint but also, as the article and the case point out, from a legal standpoint.  Such mark has to be capable of functioning as a source identifier for the user’s goods or services, i.e. one that is not descriptive, both in the marketplace as well as in the courts.

Copyright © 2003 Ivan Hoffman.  All Rights Reserved.


This article is not intended as legal advice and is not legal advice.  This article is intended to provide only general, non-specific legal information.  This article is not intended to cover all the issues related to the topic discussed.  The specific facts that apply to your matter may make the outcome different than would be anticipated by you.  This article is based on United States law.  You should consult with an attorney familiar with the issues and the laws of your country.  This article does not create any attorney client relationship.


No portion of this article may be copied, retransmitted, reposted, duplicated or otherwise used without the express written approval of the author.



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