675 F.3d 1297
Fed. Cir.2012Background
- COC seeks registration for NATIONAL CHAMBER for two services in International Class 35; services include online directory information and business/news analysis.
- TTAB twice remanded to the Examining Attorney; the Examining Attorney maintained the descriptiveness refusal.
- TTAB found NATIONAL CHAMBER merely descriptive for both applications, supported by dictionaries and COC’s own website showing nationwide chamber services.
- COC appeals, arguing descriptiveness should not be inferred and that TTAB gave insufficient analysis of the specific services.
- Court reviews TTAB’s descriptiveness determination for substantial evidence and whether the record supports using NATIONAL CHAMBER as descriptive for at least one service in each application.
- Court affirms TTAB’s decision, holding substantial evidence supports descriptiveness for both applications.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Is NATIONAL CHAMBER merely descriptive? | COC contends the mark is not descriptively tied to all recited services. | USPTO argues the term describes nationwide chamber-of-commerce services. | Descriptive; substantial evidence supports. |
| Is TTAB's reasoning sufficiently explicit for review? | COC claims TTAB’s reasoning is conclusory and lacking specific ties to each service. | USPTO contends the reasoning is explicit enough to validate the descriptiveness finding. | Reasoning is sufficiently clear; not reversible for lack of specificity. |
Key Cases Cited
- In re Bayer Aktiengesellschaft, 488 F.3d 960 (Fed. Cir. 2007) (descriptiveness test and relation to goods/services context)
- In re Gyulay, 820 F.2d 1216 (Fed. Cir. 1987) (descriptiveness assessment requires context)
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (U.S. 1992) (secondary meaning and distinctiveness standards)
- Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844 (U.S. 1982) (primary significance of term identifying source)
- Stereotaxis Inc., 429 F.3d 1039 (Fed. Cir. 2005) (descriptiveness of function/purpose of services)
- In re Richardson Ink Co., 511 F.2d 559 (CCPA 1975) (registration refused if mark descriptive of any recited services)
- Gechter v. Davidson, 116 F.3d 1454 (Fed. Cir. 1997) (review of TTAB reasoning and sufficiency of findings)
- Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Cir. 1983) (jurisdictional scope of appellate review of TTAB)
- Mighty Leaf Tea, 601 F.3d 1342 (Fed. Cir. 2010) (substantial evidence standard for descriptiveness)