To be refused registration on the Principal Register under Trademark Act §2(e)(1), 15 U.S.C. §1052(e)(1), a mark must be merely descriptive or deceptively misdescriptive of the goods or services to which it relates. A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. See In re TriVita, Inc., 783 F.3d 872, 874 (Fed. Cir. 2015) (NOPALEA held merely descriptive of dietary and nutritional supplements); In re Oppedahl & Larson LLP, 373 F.3d 1171, 1172-73 (Fed. Cir. 2004) (PATENTS.COM held merely descriptive of computer software for managing a records database and tracking status of the records); In re Bed & Breakfast Registry, 791 F.2d 157, 159-60 (Fed. Cir. 1986) (BED & BREAKFAST REGISTRY held merely descriptive of lodging reservations services); In re MetPath Inc., Ser. No. 73189744, 1984 TTAB LEXIS 153, at *6 (1984) (MALE-P.A.P. TEST held merely descriptive of clinical pathological immunoassay testing services for detecting and monitoring prostatic cancer). Similarly, a mark is considered merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of an applicant’s goods or services. In re N.C. Lottery, 866 F.3d 1363, 1367 (Fed. Cir. 2017) (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963-64 (Fed. Cir. 2007)); In re Chamber of Com. of the U.S., 675 F.3d 1297, 1300 (Fed. Cir. 2012); In re Gyulay, 820 F.2d 1216, 1217 (Fed. Cir. 1987) (quoting In re Quik-Print Copy Shops, Inc., 616 F.2d 523, 525 (C.C.P.A. 1980)).

The examining attorney is not required to prove that others have used the mark at issue or that they need to use it; the correct test is whether the mark conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods. In re Fat Boys Water Sports LLC, Ser. No. 86490930, 2016 TTAB LEXIS 150, at *10(2016); see also KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 122 (2004) (trademark law does not countenance someone obtaining "a complete monopoly on use of a descriptive term simply by grabbing it first"); In re Walker Mfg. Co., 359 F. 2d 474, 476(C.C.P.A. 1966); (quoting Board decision with approval) ("The question . . . is not whether the Board or others may or would utilize ‘CHAMBERED PIPE’ to describe applicant's goods, but whether this designation does, in fact, describe such goods. That there are other words which others may employ to describe or define applicant's goods does not, in any way, lessen the descriptive character of the words ‘CHAMBERED PIPE.’").

The determination of whether a mark is merely descriptive must be made in relation to the goods or services for which registration is sought, not in the abstract. In re Chamber of Com. of the U.S., 675 F.3d at 1300 (quoting In re Bayer Aktiengesellschaft, 488 F.3d at 964); In re Omniome, Inc., Ser. No. 87661190, 2019 TTAB LEXIS 414, at *11 (2019) (quoting In re Fat Boys Water Sports LLC, 2016 TTAB LEXIS 150, at *4); see In re Abcor Dev. Corp., 588 F.2d 811, 814 (C.C.P.A. 1978). This requires consideration of the context in which the mark is used or intended to be used in connection with those goods or services, and the possible significance that the mark would have to the average purchaser of the goods or services in the marketplace. See In re Chamber of Com. of the U.S., 675 F.3d at 1300 (quoting In re Bayer Aktiengesellschaft, 488 F.3d at 964); In re Nett Designs, Inc., 236 F.3d 1339, 1341-42 (Fed. Cir. 2001); In re Omaha Nat’l Corp., 819 F.2d 1117, 1119 (Fed. Cir. 1987); In re Abcor Dev. Corp., 588 F.2d at 814. Sources for considering the context in which the mark is or may be used include websites, publications, labels, packages, advertising material, and explanatory text on specimens for the goods and services. See In re N.C. Lottery, 866 F.3d at 1368; In re Nett Designs, Inc., 236 F.3d at 1342; In re Abcor Dev. Corp., 588 F.2d at 814.

Similarly, evidence that a term is merely descriptive to the relevant purchasing public may be "obtained from any competent source, such as dictionaries, newspapers, or [consumer] surveys." Heritage All. v. Am. Pol’y Roundtable, 133 F.4th 1063, 1068 (Fed. Cir. 2025) (quoting In re Bayer Aktiengesellschaft, 488 F.3d at 964); In re Bed & Breakfast Registry, 791 F.2d at 160 (citing In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 1559 (Fed. Cir. 1985); In re Abcor Dev. Corp., 588 F.2d at 814)); see In re N.C. Lottery, 866 F.3d at 1367 ("This court has explained that the public's understanding of a mark can be evidenced by ‘[a]ny competent source.’" (quoting In re Nett Designs, Inc., 236 F.3d 1339, 1341 (Fed. Cir. 2001))).

It is not necessary that a term describe all of the purposes, functions, characteristics, or features of a product to be considered merely descriptive; it is enough if the term describes one significant function, attribute, or property. In re Chamber of Com. of the U.S., 675 F.3d at 1300 (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346 (Fed. Cir. 2001)); In re Zuma Array Ltd., Ser. No. 79288888, 2022 TTAB LEXIS 281, at *4 (2022) (quoting In re Fat Boys Water Sports LLC, 2016 TTAB LEXIS 150, at *4); In re Fallon, Ser. No. 86882668, 2020 TTAB LEXIS 464, at *21 (2020); see In re Oppedahl & Larson LLP, 373 F.3d at 1173 ("A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services."). Similarly, the mark need not describe all the goods and services identified, as long as it merely describes one of them. In re Chamber of Com. of the U.S., 675 F.3d at 1300; In re Oppedahl & Larson LLP, 373 F.3d at 1173 (citing In re Dial-A-Mattress Operating Corp., 240 F.3d at 1346); In re Gyulay, 820 F.2d at 1218; In re Zuma Array Ltd., 2022 TTAB LEXIS 281, at *6-7; In re Positec Grp. Ltd., Ser. No. 77920346, 2013 TTAB LEXIS 469, at *16-17 (2013) ("[I]f the mark is descriptive of some identified items – or even just one – the whole class of goods still may be refused by the examiner."); see also In re Omaha Nat’l Corp., 819 F.2d at 1119 (rejecting argument that descriptiveness should be limited to a quality or characteristic of the service itself and holding that it includes a designation descriptive of the service provider).

A term also may be considered merely descriptive if the identified services fall within a subset of services indicated by the term. See In re Am. Soc’y of Clinical Pathologists, Inc., 442 F.2d 1404, 1406-07 (C.C.P.A. 1971) (holding that REGISTRY OF MEDICAL PATHOLOGISTS was descriptive of certain claimed services that were implicitly subsumed within service of providing a registry of medical pathologists and of additional claimed services that were "supporting, ancillary or auxiliary to the primary function" of applicant’s registry services); see also In re Chamber of Com. of the U.S., 675 F.3d at 1301-02 (NATIONAL CHAMBER held descriptive because "substantial evidence supports the TTAB's determination that the designated business and regulatory data analysis services are within the scope of traditional chambers of commerce activities" of "promoting the interests of businessmen and businesswomen").

The great variation in facts from case to case prevents the formulation of specific rules for specific fact situations. Each case must be decided on its own merits. See In re Ampco Foods, Inc., Ser. No. 73313197, 1985 TTAB LEXIS 46, at *7 (1985); In re Venturi, Inc., Ser. No. 73004593, 1977 TTAB LEXIS 200, at *7 (1977).

See TMEP §§1209.03–1209.03(y) regarding factors that often arise in determining whether a mark is merely descriptive or generic, §§1213–1213.11 regarding disclaimers of merely descriptive matter within marks, and §1306.04 regarding assessing descriptiveness in certification marks.