How to Successfully Defend a Merely Descriptive Rejection of a Trademark

Written by Mark Terry   

In an informative decision today, the Trademark Trial and Appeal Board (TTAB) reversed a Trademark Examining Attorney’s merely descriptive rejection. The In re Fujarek case, which I prosecuted, illustrates how to successfully defend a mere descriptiveness rejection of a trademark at the Trademark Office.

As background, the Applicant’s mark was VOICE and the description of goods and services were “broadcasting services, namely, radio and television broadcasting by satellite and mobile phones, via a global computer network”. The Examining Attorney had issued a mere descriptiveness refusal, which we appealed to the TTAB.

In reversing the mere descriptiveness refusal, the first thing the TTAB pointed out was that the applied-for mark (VOICE) had a variety of different meanings. This goes to the “immediacy” requirement for a merely descriptive rejection, which requires that a consumer immediately ascertains the nature of the goods or services being sold by viewing the applied-for mark. The TTAB found:

We are not persuaded by the Examining Attorney’s arguments that the consuming general public will immediately, without reflection, recognize that “voice,” as used with Applicant’s services, is merely descriptive of a feature of Applicant’s services, namely, that it identifies the “the sound or sounds uttered through the mouths of human beings.” “Voice” has additional meanings; “to give utterance or expression to; declare; proclaim; to voice one’s discontent” and as “an instrument or medium of expression .” We find that these additional definitions are more apt in the context of the specified services, and that giving “utterance or expression to; declare; proclaim; to voice one’s discontent” or being “an instrument or medium of expression” are non-specific in nature and convey nothing about the services. They hence are without the required immediacy of meaning or significance in the context of Applicant’s identified services.

Next, the TTAB reiterated our arguments that although you could argue that the applied-for mark may describe one aspect of the description of goods and services, there were other aspects of the description of goods and services that were not described by the applied-for mark. That is, the “immediacy” aspect of a merely descriptive rejection applies to the entire description of goods and services, not just a portion. The TTAB wrote:

In addition, as Applicant points out, “Applicant’s services also include the use of satellites, mobile phones, communication towers, electrical equipment, music, televisions, electrical components, and numerous other components[, and] Applicant also provides videos, instrumental music and other music products, and visual art”; and “[t]he fact that a person’s voice is one component utilized in conjunction with a variety of other components does not mean that a consumer will ‘immediately’ ascertain” Applicant’s services. In sum, the evidence does not establish the immediacy required pursuant to In re Abcor Development Corp., 200 USPQ at 217-18. The refusal to register under Section 2(e)(1) is therefore reversed.

Lessons Learned: In reviewing a merely descriptive rejection, the savvy practitioner will inquire whether a typical consumer will immediately ascertain the nature of the goods and services being sold under the applied-for mark. The practitioner will also determine whether all of the goods and services in the description satisfy the immediacy requirement. If not, then there are good grounds for a reversal at the TTAB.

The trademark attorneys at The Plus IP Firm have experience in responding to merely descriptive rejections and have obtained numerous U.S. trademark registrations on behalf of their clients. To schedule a free consultation with a trademark attorney with The Plus IP Firm, click here.


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