In Re: North Carolina Lottery
866 F.3d 1363
| Fed. Cir. | 2017Background
- North Carolina Lottery (N.C. Lottery) applied to register the mark FIRST TUESDAY for lottery cards/scratch cards and lottery services, asserting use since 2013 to advertise new scratch-off games introduced on the first Tuesday of each month.
- Specimens submitted included promotional materials that used explanatory phrases like “new scratch-offs the first Tuesday of every month.”
- The PTO examining attorney refused registration as merely descriptive, reasoning the mark describes a feature of the goods/services (timing of new releases).
- The Trademark Trial and Appeal Board (TTAB) affirmed, finding consumers would immediately understand FIRST TUESDAY to mean new scratch-off games are offered on the first Tuesday monthly.
- N.C. Lottery appealed, arguing the TTAB improperly relied on explanatory text in the specimens and that the mark is suggestive (requiring imagination) rather than merely descriptive.
- The Federal Circuit reviewed the TTAB’s legal conclusions de novo and factual findings for substantial evidence and affirmed the refusal to register.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether FIRST TUESDAY is merely descriptive of the goods/services | FIRST TUESDAY does not itself convey that meaning without imagination; mark is suggestive | Specimens show consumers will understand the mark to describe the timing feature; mark is descriptive | Held descriptive: substantial evidence supports TTAB that mark simply describes the feature (timing of new games) |
| Whether explanatory text in specimens may be considered in the descriptiveness analysis | Explanatory text cannot supply additional meaning when the mark alone does not convey that meaning; specimens should be read without such text | Commercial context (including explanatory text) is relevant and may be considered to determine public perception | Held: Court may consider explanatory text as part of commercial context; doing so here supported descriptiveness finding |
Key Cases Cited
- Abercrombie & Fitch Co. v. Hunting World, 537 F.2d 4 (2d Cir. 1976) (articulates the trademark distinctiveness spectrum: generic, descriptive, suggestive, arbitrary/fanciful)
- DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247 (Fed. Cir. 2012) (distinguishes descriptive vs. suggestive marks; suggestive requires imagination)
- In re Nett Designs, 236 F.3d 1339 (Fed. Cir. 2001) (commercial context and any competent source may show public understanding of a mark)
- Tumblebus, Inc. v. Cranmer, 399 F.3d 754 (6th Cir. 2005) (use of explanatory advertising can support finding a mark is suggestive when a mental leap remains)
- Swatch AG v. Beehive Wholesale, LLC, 739 F.3d 150 (4th Cir. 2014) (promotional materials explaining product function supported suggestive finding when a further leap was required)