An application for a trademark registration may be refused as being merely descriptive if “consist[s] merely of words descriptive of the qualities, ingredients or characteristics of' the goods or services related to the mark.” In re Oppedahl & Larson LLP, 373 F.3d 1171 (Fed. Cir. 2004) (quoting Estate of P.D. Beckwith, Inc. v. Comm'r of Patents, 252 U.S. 538, 543 (1920)); In re Gyulay, 820 F.2d 1216 (Fed. Cir. 1987).

Whether a particular term is merely descriptive is determined in relation to the goods for which registration is sought and the context in which the term is used, not in the abstract or on the basis of guesswork. In re Abcor Dev. Corp., 588 F.2d 811 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002).

A merely descriptiveness refusal under Section 2(e)(1) may be overcome by a showing of acquired distinctiveness under Section 2(f).

HI-LO SOLUTIONS

The Trademark Trial and Appeal Board (“TTAB”) addressed a merely descriptiveness refusal of a trademark application was for the HI-LO SOLUTIONS mark for electronic books and printed matter in the field of remedial education in Class 9 and 16, respectively. In re Saddleback Educational, Inc., Ser. No. 88488869 (TTAB Jun. 23, 2022).

The evidence of record showed that that HI-LO (or alternatively “high/low”) describes reading material that is of high-interest to readers but written for low readability or low reading levels. As Applicant's president and co-owner stated, the goal of HI-LO books “is to offer age-appropriate content—something that will grab [readers'] interest—at a readability level that is accessible.” There also was evidence that the term HI-LO is used by third-parties to refer to remedial reading books.

Hi-Lo Descriptiveness

The application was refused under Section 2(e)(1) for being merely descriptive of the applicant's goods. On appeal, the TTAB was not persuaded by the applicant's argument that a multi-step reasoning process was needed to ascertain any possible meaning of “Hi-Lo” in connection with the applicant's goods.

The test is not whether someone encountering the mark alone could guess what the goods are. It is whether someone who knows what the goods are will understand the mark to convey information about them. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). Here, the meaning of HI-LO is readily apparent when used in connection with high-interest and low readability books intended for struggling learners.

Nor was the TTAB persuaded by the different spellings in the third-party evidence (hi/lo and high/low) with respect to the merely descriptive nature of the term HI-LO.

A slight misspelling of a word will not turn a descriptive or generic word into a non-descriptive mark. See In re Calphalon Corp., 122 USPQ2d 1153, 1164 (TTAB 2017) (holding SHARPIN, the phonetic equivalent of “sharpen,” merely descriptive of knife blocks with built-in sharpeners); In re ING Direct Bancorp, 100 USPQ2d 1681, 1690 (TTAB 2011) (holding PERSON2PERSON PAYMENT generic for direct electronic funds transfers including electronic payment services between individuals).

The applicant also argued that the term “solutions” in the applied-for mark has a number of possible meanings, including some which relate to chemistry. This argument was unpersuasive to the TTAB because “consumers seeking remedial reading material would be unlikely to understand SOLUTIONS to refer to chemical processes.”

The TTAB found that the applied-for HI-LO SOLUTIONS mark was merely descriptive of electronic books and printed matter in the field of remedial education.

Intent-to-Use and Acquired Distinctiveness

This was an intent-to-use (“ITU”) application, and claim of distinctiveness under Section 2(f) normally is not raised in a Section 1(b) ITU application because a claim of acquired distinctiveness, by definition, requires prior use. In re Binion, 93 USPQ2d 1531, 1538 (TTAB 2009).

Nonetheless, “[a]n intent-to-use applicant may assert a claim of acquired distinctiveness under § 2(f) as to part of a mark prior to filing an acceptable allegation of use if the applicant has already used the relevant part of the mark in commerce on or in connection with the specified goods or services, or related goods or services.” TMEP § 1212.09(b).

“[A]n applicant can establish a prima facie case of acquired distinctiveness in the mark in an intent-to use application where it can show that same mark acquired distinctiveness for sufficiently similar or related goods, and that this acquired distinctiveness will transfer to the goods specified in the application when the mark is used in connection with them.” In re Olin Corp., 124 USPQ2d 1327, 1333 (TTAB 2017). “Section 1(b) applicants face a heavy burden in establishing that their mark will acquire distinctiveness when use commences.” Id. at 1335.

No Acquired Distinctiveness

Applicants may show acquired distinctiveness by direct or circumstantial evidence. Schlafly v. Saint Louis Brewery, LLC, 909 F.3d 420 (Fed. Cir. 2018) (both direct and circumstantial evidence may show secondary meaning).

Direct evidence includes testimony, declarations or surveys of consumers as to their state of mind.

Circumstantial evidence, on the other hand, is evidence from which a consumer association may be inferred, such as years of use, prior registrations, extensive sales and advertising, unsolicited media coverage, and any similar evidence showing wide exposure of the mark to consumers. See Tone Bros. v. Sysco Corp., 28 F.3d 1192 (Fed. Cir. 1994).

The TTAB found that because Applicant has not submitted a declaration under 37 C.F.R. § 2.20, Applicant has not made a proper claim of acquired distinctiveness under 37 C.F.R. § 2.41(a)(2).

Also, the third-party use of HI-LO to refer to the same type of remedial books undermined the claim of acquired distinctiveness. See Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401 (Fed. Cir. 1984) (“When the record shows that purchasers are confronted with more than one (let alone numerous) independent users of a term or device, an application for registration under Section 2(f) cannot be successful, for distinctiveness on which purchasers may rely is lacking under such circumstances.”); Flowers Indus. Inc. v. Interstate Brands Corp., 5 USPQ2d 1580, 1588-89 (TTAB 1987) (“[L]ong and continuous use alone is insufficient to show secondary meaning where the use is not substantially exclusive.”).

The TTAB affirmed the refusal to register the HI-LO SOLUTIONS mark on the ground that the mark is merely descriptive under Section 2(e)(1) and without acquired distinctiveness under Section 2(f).

The trademark attorneys at Thomas P. Howard, LLC prosecute trademark applications, as well as litigate trademarks nationwide including in Colorado.