Friday, February 8, 2019

Is TEXAS PRISON WEDDINGS Merely Descriptive of Officiating...Texas Prison Weddings?

On February 4, an individual in Texas filed an application to register the words TEXAS PRISON WEDDINGS as a trademark with the U.S. Patent and Trademark Office. According to the application, the mark has been in use since December 20, 2015. A specimen submitted with the application, which covers "Providing wedding officiant services" in Class 45, is below.
But is TEXAS PRISON WEDDINGS merely descriptive of "providing wedding officiant services"? If so, the USPTO must refuse registration under Section 2(e)(1) of the Trademark Act (unless the mark has acquired distinctiveness).

According to TMEP 1209.01(b), a mark is merely descriptive if "it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services." This determination involves "consideration of the context in which the mark is used..." Id. An examining attorney at the USPTO can look to sources like "websites, publications, labels, packages, advertising material, and explanatory text on specimens for the goods and services" to determine whether the mark is descriptive. Id. In sum, if a mark "immediately conveys knowledge of a quality, feature, function, or characteristic of an applicant’s goods or services," it is merely descriptive. Id.

So does the term TEXAS PRISON WEDDINGS immediately describe or convey knowledge of a quality, feature, function, or characteristic of the applicant's services, which are wedding officiant services directed towards Texas prisons, according to the specimen?

If the answer is yes, the applicant will need to (1) overcome the refusal by submitting arguments as to why the term isn't descriptive, (2) convince the USPTO that TEXAS PRISON WEDDINGS has acquired distinctiveness and is therefore eligible for registration on the Principal Register (extremely difficult to do, especially when the mark is less than five years old), (3) amend the application to the Supplemental Register, or (4) let the application lapse.

What do you think?

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