Wednesday, July 11, 2018

Is SAKE ICE CREAM Merely Descriptive of, or Generic for, Providing Sake Ice Cream and Ice Cream Parlors?

As a matter of practice, when filing a federal trademark application, I generally try to avoid using the term I'm trying to get registered in the identification of goods/services listed in the application. Such use generally signals that the designation the applicant seeks to register is merely descriptive of the underlying goods/services or, worse, generic for them.

Merely descriptive designations cannot function as trademarks until (and if) they acquire distinctiveness and the U.S. Patent and Trademark Office ("USPTO") will refuse to register merely descriptive designations on the Principal Register under Section 2(e)(1) of the Trademark Act. Generic terms can never function as trademarks and the USPTO will absolutely refuse to register such terms as trademarks.
Take a recent application for SAKE ICE CREAM filed by a New York LLC, for example. This application, filed on July 6th, covers
Catering services; Ice cream parlors; Providing of food and beverages namely sake ice cream for consumption on and off the premises; Provision of food and drink namely sake ice cream in restaurants and liquor stores and exhibition spaces; Services for providing food and drink namely sake ice cream
Is SAKE ICE CREAM merely descriptive of these services? Generic?

The USPTO will deem a mark merely descriptive "if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services." TMEP 1209.01(b). Additionally, "the mark need not describe all the goods and services identified, as long as it merely describes one of them." Id. For example, the mark APPLE PIE was deemed merely descriptive of potpourri that smelled like apple pie. In re Gyulay, 820 F.2d 1216 (Fed. Cir. 1987).

The USPTO will deem a designation generic "if its primary significance to the relevant public is the class or category of goods or services on or in connection with which it is used." TMEP 1209.01(c)(i). The USPTO applies a two part test: (1) what is the genus of goods or services at issue? and (2) does the relevant public understand the designation primarily to refer to that genus of goods or services? For example, the term SCREENWIPE for premoistened antistatic cloths for cleaning computer and television screens was determined to be generic for those goods. In re Gould Paper Corp., 834 F.2d 1017, 1018 (Fed. Cir. 1987).

Is SAKE ICE CREAM merely descriptive of the services of providing sake ice cream? Or is it generic? If the mark sought to be registered was ICE CREAM without "SAKE" in front, would it change your opinion?

The determination is significant - generic terms can never function as trademarks and never be registered, but merely descriptive terms may become trademarks upon a showing of acquired distinctiveness and the USPTO will register such terms (if in use) on the Supplemental Register until (and if) the applicant proves acquires distinctiveness. For more on acquired distinctiveness, see TMEP 1212 et seq.

We'll find out what the examining attorney assigned to this application thinks in approximately three months.

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