A Distinct Category: How to Overcome a 2(e)(1) Refusal
Alex Sandler | August 25, 2020
Under Section §2(e)(1) of the Trademark Act, the USPTO may refuse to register a trademark that merely describes the goods or services. To overcome a §2(e)(1) refusal (i.e., a descriptiveness refusal), a trademark applicant can either (1) submit arguments and evidence to show that the mark is distinct, (2) amend the application to seek registration on the Supplemental Register, or (3) demonstrate that the mark has acquired distinctiveness. This article will discuss the first option: how to successfully argue that a mark is distinct.
A trademark must be distinctive to be registered on the Principal Register. A distinct mark sets the mark’s goods or services apart from those of others. Descriptive marks are not distinct because they use words or phrases that tell what a product or service is rather than identifying a source (e.g., a brand called SOFT could not secure a trademark for selling sweaters because the mark uses a descriptive term; it is not distinctive). The USPTO will refuse a trademark application if a literal element describes any of the goods or services identified in the application (using the same example, examiners would likely also refuse to register FLUFFY, WOOLY, or KNITTED as brand names for sweaters because the words describe common attributes of sweaters).
One way to overcome a §2(e)(1) refusal is by arguing that your client’s mark is suggestive. Alternatively, you can argue that your client’s mark is incongruous with its goods and services or is a double entendre, both of which are signs of a distinct mark. We’ll discuss these arguments in detail so you know how to successfully respond to a §2(e)(1) refusal.
Argue that the mark is suggestive
In response to a §2(e)(1) office action, many trademark attorneys will first argue that the client’s mark is not descriptive but rather suggestive. Descriptive marks are often similar to suggestive marks, which are distinct. Although the line between suggestive and descriptive isn’t always clear, the distinction is crucial because establishing that a mark is suggestive entitles it to trademark protection on the Principal Register. The TTAB and the Federal Circuit have provided a few tests to differentiate between descriptive and suggestive marks.
The primary test to determine whether a mark is suggestive is the “imagination test.” The “imagination test” maintains that if a mark requires consumers to use their imaginations to draw conclusions about the goods or services offered, then it is suggestive. A mark that consists of ambiguous or broad terms requires consumers to exercise imagination. For example, the Federal Circuit held that “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). In contrast, a descriptive mark will specify a good or service with a degree of particularity. For example, “WORLD BOOK” for encyclopedias is descriptive because it is specific and gives consumers an immediate idea of what the book is about.
If others in your client’s industry are not using the mark as a descriptive reference, that can serve as evidence that your client’s mark is not descriptive but suggestive. One of the reasons registration of descriptive terms is prohibited is because the federal government wants to prevent companies from harming their competitors by having a monopoly over a useful term. For example, if someone wanted to register the mark “COLD AND CREAMY” for ice cream, the USPTO would refuse their registration because there is a need for ice cream retailers to use these terms while marketing their ice cream brands. If you can show that others in your client’s industry do not commonly use the language, this may help your client overcome a §2(e)(1) refusal.
For example, the Trademark Trial and Appeal Board (TTAB) held that the mark “THE LONG ONE” as applied to a loaf of bread was suggestive, in part, because the mark does not describe the bread with a degree of particularity. See In re Gourmet Bakers, 173 U.S.P.Q. (BNA) 565 (TTAB 1972). Rather, the mark suggests the size of the loaf. See id. The Board also relied on the evidence that showed that “THE LONG ONE” is not commonly used among bakery companies. See id. This meant that registering the mark would not prevent others in the industry from properly describing their goods. See id. Although this case was a close call (as many are!), the applicant convinced the Board that the mark fell within the realm of suggestion.
Below is an excerpt from a successful office action response to a 2(e)(1) refusal in which the applicant argued that “BRUFFIN” is not merely descriptive of a brioche muffin because the mark is ambiguous and is, therefore, suggestive:
Applicant’s mark is in fact suggestive because “imagination, thought, or perception is required to reach a conclusion on the nature of the goods or services.” In re Quik-Print Shops, Inc. 616 F.2d 523, 525, 205 U.S.P.Q. 505, 507 (C.C.P.A. 1980). The Examining Attorney has assumed that “bruffin” is a readily understood phrase that has a particular meaning. However, the examples show a couple recipes on the internet for a “breakfast-muffin” and a reference to a “bread- muffin.” With all due respect, the Bruffin is neither of these. It is loosely based on a Brioche and a Muffin, but it has come to be known for a line of high-end pastry products, filled with sweet and savory ingredients. The name “Bruffin” was coined when the initial item created was by using a brioche dough, filling it with bacon and cheese and baking it in a muffin pan. The Bruffin is now a line – an umbrella Mark under which over a dozen “Bruffins” are currently offered on the market each with its own unique combination of ingredients culled from selected nations throughout the world forming The International Bruffin Collection. As the new specimens submitted herewith demonstrate, the Bruffin line is imaginative and varied. It is not simply a description of a product, but a branded line of special products. The word “bruffin” does not have a commonly understood meaning, despite a scant appearance on various recipe pages. Because “bruffin” does not have a specific meaning in the food and baked goods world, Applicant’s mark is ambiguous and incapable of immediately conveying information about Applicant’s goods. Such ambiguity demonstrates that the term BRUFFIN is not merely descriptive with respect to applicant’s goods.
This argument was persuasive because the applicant pointed out that “BRUFFIN” is ambiguous as it does not have a commonly understood meaning as applied to a brioche muffin. As a result, consumers must use their imaginations to understand what the mark means.
Argue that the mark is incongruous
If your client’s mark creates an incongruity, you should argue that the mark is distinct. The TTAB has long held that a mark that creates an incongruity is distinct. A mark that is incongruous may consist of words that clash or are redundant, such as “FRANKWURST,” in which “frank” means wiener and “wurst” means sausage. Incongruity may also be present when the words in the mark don’t quite fit together, such as “URBAN SAFARI.” Essentially, if the combination of the words in your client’s mark creates a bizarre meaning, you should argue that the mark results in an incongruity.
For example, in In re Tennis in the Round, the TTAB reversed the examining attorney’s refusal to register the mark “TENNIS-IN-THE-ROUND” for services providing facilities and offering instructions in tennis. See 199 U.S.P.Q. (BNA) 496, 498 (TTAB 1978). The Board maintained that the first thing that comes to mind when seeing the mark is the word “theater-in-the-round.” See id. As a result, the Board held that the mark creates an incongruity because the services do not involve a tennis court in the middle of an auditorium as a theater-in-the-round stage would. See id. This kind of word combination is bizarre and requires consumers to use their imaginations to understand the services.
Take a look at this successful office action response, where the applicant argues both that “KNOWLEDGEMANAGER” used for predictive modeling is suggestive and that the two parts of the name are incongruous:
“In the context of predictive models, the word KNOWLEDGE is only suggestive, not merely descriptive. As the Examining Attorney has established, KNOWLEDGE is understood to mean information, understanding, or skill that you get from experience or education, such as the experience gained by one’s individual life, or the education obtained by a student. By contrast, predictive models analyze existing statistical information to predict outcomes about unknown events.
In the context of predictive models, KNOWLEDGE is only suggestive because the word conveys the qualities of being derived from personal experience or education. The typical purchaser of Applicant’s software and services is aware that predictive models do not involve knowledge as defined under the definition provided by the Examining Attorney. Instead, the word KNOWLEDGE is only suggestive of the aspirational qualities associated with personal experience or education. As such, the word KNOWLEDGE does not convey any immediate or substantial quality, characteristic, function, feature, purpose, or use of Applicant’s goods or services. A mark is only descriptive if it immediately conveys information concerning a quality or characteristic of the product or service. In re MBNA American Bank, N.A., 67 USPQ2d 1778, 1780 (Fed. Cir. 2003) (emphasis added).
Applicant further submits that in the context of predictive models, the combination of the words KNOWLEDGE and MANAGER is arbitrary and incongruous. Applicant has established that the word KNOWLEDGE is only suggestive of aspirational qualities of the goods and services listed in the application. The juxtaposition of MANAGER with the indefinite and aspirational qualities conveyed by the word KNOWLEDGE is incongruous, as it is not readily apparent how something derived from experience and education can be “managed.”
This response was persuasive because the applicant explained that “KNOWLEDGE” does not convey immediate information about the service, as customers do not acquire knowledge in the typical sense. Rather, “KNOWLEDGE” suggests a desirable outcome of using predictive modeling. Also, the applicant argued that the mark as a whole creates an incongruity because knowledge is not something that is ordinarily managed.
Argue that the mark is a double entendre
It can also be useful to point out that your client’s mark is a “double entendre.” A double entendre is a word or expression that is capable of more than one interpretation. If your client’s mark is a double entendre, and one of the meanings is not descriptive of goods or services, your client’s mark can register on the Principal Register. Both meanings must be readily apparent to consumers when they see your client’s mark, which means how your client has spelled or stylized the mark may be relevant. Generally, marks that form rhyming patterns or have catchy expressions have a readily apparent second meaning.
If you can prove that your client’s mark creates a recognizable double entendre, you may be able to overcome a §2(e)(1) refusal. For example, the TTAB held that the applicant’s mark “MUFFUNS” for baked mini muffins was not descriptive due to the mark’s second meaning. See In re Grand Metropolitan Foodservice, Inc., 30 U.S.P.Q.2d (BNA) 1974, 1976 (TTAB 1994). The Board found that the mark is suggestive of the muffin’s cute and festive nature, and therefore consumers would not simply perceive the generic term “muffins” when confronted with the mark. See id. at 1975. The applicant’s stylized and inventive spelling of “muffins” supported the Board’s conclusion that both meanings are readily apparent from the mark. See id. at 1976. In another illustrative case, the Board held that the mark “SUGAR & SPICE” for baked goods was suggestive despite having descriptive components, because the mark is a double entendre. See In re Colonial Stores, Inc., 394 F.2d 549, 552 (CCPA 1968). The Board found that consumers would associate the mark with the nursery rhyme, “sugar and spice and everything nice,” and therefore the mark is distinct. See id.
Here is an example of a successful office action response where the applicant argued that a mark is not merely descriptive because it is a double entendre:
“Applicant’s Mark is ‘YOUR HOME IN THE CLOUD.’ It must be looked at as a whole to determine descriptiveness, rather than dissecting it into its individual elements. Concurrent Technologies, Inc. v. Concurrent Technologies Corp., 12 USPQ2d 1054, 1057 (TTAB 1989). Applicant’s mark as a whole is not descriptive since the Mark has suggestive significance, most importantly the interplay of the terms ‘HOME’ and ‘CLOUD’ is essential to the connotation of the mark, as it denotes a classic ‘double entendre’” as applied to Applicant’s goods. See In re Symbra’ette, Inc., 189 USPQ 448 (TTAB 1975) (the term ‘SHEER ELEGANCE’ for panty hose held to be a registrable unitary expression, thereby any disclaimer of the term ‘SHEER’ deemed unnecessary). Applicant’s Mark is designed to be applied to home building construction data for reference – not an actual ‘home’ that resides in an online computer network. As such, the reference is not to ‘home’ as to a where [sic] one resides (i.e., your house), but rather denotes a suggestiveness that would be readily made by the public.”
This was persuasive because the second meaning is apparent from the mark itself. “YOUR HOME IN THE CLOUD” refers to cloud services that store data related to real estate and construction. A consumer could also interpret the mark to mean someone’s actual home stored in a cloud.
In contrast, in a losing case, the TTAB did not even consider whether the mark “THE GREATEST BAR” is a double entendre because both meanings were not apparent from the mark itself. See In re The Place Inc., 76 U.S.P.Q.2d (BNA) 1467, 1471 (TTAB 2005). The applicant argued that “greatest” refers to celebrities and landmarks and that consumers understand this second meaning because the bar is decorated with motifs that feature some of the greatest people, places, and events in history. See id. at 1469. However, because consumers would not perceive the second meaning until they were actually at the bar, the Board ultimately held that the mark is descriptive. See id. at 1471. The second meaning really has to be apparent on the face of the mark to claim a double entendre.
Although it can be difficult to overcome a §2(e)(1) refusal, you can be successful by making well-informed arguments. If your client’s mark is truly descriptive, then providing evidence that the mark has acquired distinctiveness may be the only way for your client to enjoy federal trademark protection on the Principal Register. The Trademark Manual Examining Procedure (TMEP) guide under §1212 has more information on how to establish acquired distinctiveness. Alternatively, you can always amend the application to register the mark on the Supplemental Register. Click here for more information on how to amend an application.