San Francisco Company Files Application to Register GAS STATIONS IN SPACE as a Trademark for...Space Gas Stations?

Are space gas stations the future? Maybe. According to their website, San Francisco-based Orbit Fab, Inc. is apparently working on establishing the first gas station in space for satellite refueling. And the company recently filed a federal trademark application in that pursuit.

On June 26, Orbit Fab, Inc. filed an application to register GAS STATION IN SPACE as a trademark with the U.S. Patent and Trademark Office. The application covers the following goods and services:

• Fuel for satellites, spacecraft, space vehicles, and space stations; propellant for satellites, spacecraft, space vehicles, and space stations (Class 4); and
• Repair, maintenance, and refueling services for satellites, spacecraft, space vehicles, and space stations (Class 37).

In other words, space gas stations? The application was filed on an intent-to-use basis, so it may never register, but does indicate Orbit Fab, Inc. has plans to launch such gas stations (which is confirmed by the company's website).

But is GAS STATIONS IN SPACE merely descriptive of the underlying goods and services? If so, Orbit Fab will have a difficult time getting this mark registered (on the Principal Register, at least).

A trademark is generally "considered merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of an applicant’s goods or services." See TMEP 1209.01(b).

Does GAS STATIONS IN SPACE merely describe a quality, feature, function, or characteristic of the refueling services for satellites, spacecraft, space vehicles, and space stations? What about fuel for such vehicles? We'll find out what the USPTO thinks in approximately three months after this application is assigned to an examining attorney for review.

According to my quick search, this is the first ever federal trademark application filed by Orbit Fab, Inc.

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?

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.

Is This Trademark Application for ALMOND BUTTER Merely Descriptive or Generic? Not So Fast...

As I've blogged about before, the U.S. Patent and Trademark Office will not register (on the Principal Register at least) trademarks that are merely descriptive without a showing of acquired distinctiveness in the marketplace. 15 USC 1052(e)(1). Merely descriptive trademarks describe "an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services" and the law prefers that these descriptive designations remain free for all to use, at least until the relevant consuming public starts to associate that designation with a particular product or service. TMEP 1209.01(b). Generic terms, which are primarily understood to be the common or class name for particular goods or services, are never registerable as trademarks. TMEP 1209.01(c).

So will the USPTO register the mark ALMOND BUTTER (standard characters) filed by Slippery Squid, LLC on October 18, 2017? It's a descriptive, or possibly even generic, word combination, right? Not so fast. It all depends on the underlying goods or services, which in this case are described as "Audio recording and production; Entertainment services in the nature of live musical performances; Music publishing services; Presentation of musical performances; Production of sound and music video recordings." Is ALMOND BUTTER descriptive or generic for audio recording, music publishing, and music performances? Probably not (unless maybe the music is about almond butter).

In this case, ALMOND BUTTER is likely an arbitrary trademark because it has nothing to do with the underlying music services. Arbitrary trademarks "comprise words that are in common linguistic use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality, or characteristic of the goods or services." TMEP 1209.01(a). APPLE for computers is a good example of an arbitrary trademark. Arbitrary marks are much stronger than descriptive trademarks and therefore typically enjoy a greater degree of protection. Such marks can also be registered on the Principal Register without a showing of acquired distinctiveness.

This ALMOND BUTTER application is a good example of two important trademark concepts - (1) merely descriptive trademarks are weak, more difficult to register, and should be avoided, if possible and (2) the underlying goods and services play an important role in determining a trademark's strength (use of a word on some goods may be generic while use of the same word on other goods may be arbitrary).

In sum, had this application covered "almond butter" rather than music services, the applicant would have been in trouble. However, because the underlying services [probably] have nothing to do with almond butter, the risk of a refusal for being generic or descriptive is probably not likely (although there are several other issues that could prevent registration, such as creating a likelihood of confusion with a mark in a previously filed application or registration).

Is NUTTY NECKLACE Merely Descriptive of Necklaces Made of Stainless Steel Nuts? Not So Fast...

On August 5th, an individual in Pennsylvania filed an application to register NUTTY NECKLACE as a trademark with the U.S. Patent and Trademark Office. The application covers "necklaces" in Class 14 and indicates the mark has been in use since January 5, 2000.

The specimen submitted with the application (which is suppose to show how the mark is actually used in commerce and is seen above) indicates that this mark is used in conjunction with the sale of "hand-crafted jewelry using stainless steel nuts." Makes sense. But is it merely descriptive, and therefore not registerable on the Principal Register without a showing of acquired distinctiveness? See TMEP 1212; 15 USC 1052(f).

Typically, a mark is considered merely descriptive if it "describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services." TMEP 1209.01(b). However, if the mark is a "double entendre" in that it is a "word or expression capable of more than one interpretation" it will "not be refused registration as merely descriptive if one of its meanings is not merely descriptive in relation to the goods or services." TMEP 1213.05(c). For example, the mark NO BONES ABOUT IT was held not to be merely descriptive of boneless, pre-cooked ham given its double connotation. In re National Tea Co., 144 USPQ 286 (TTAB 1965).

Does NUTTY NECKLACE only describe a characteristic or quality of the necklaces? Or does it have another interpretation that is not merely descriptive, such as suggesting a quirky, non-traditional necklace? We'll find out what the Examining Attorney assigned to this application thinks in approximately three months.

Is RED CUP PONG Merely Descriptive of Beer Pong Tables?

College students might be in the best position to answer this question. On July 10th, a company in Virginia named Blue Ridge Product Solutions, LLC filed applications to register RED CUP PONG (in standard characters), and the stylized logo seen below, with the U.S. Patent and Trademark Office.

Both applications cover "Game tables; inflatable mattress swimming floats for recreational use, namely, beer pong floats; games, namely, table top games, equipment sold as a unit for playing drinking games, parlor games, singing games played with cards and game components" in Class 28.

According to the applications and specimens submitted with the same (see above), Blue Ridge Products Solutions, LLC is in the business of selling party games and accessories and has been using the "Red Cup" marks at least as early as December 1, 2010.

But are the marks merely descriptive of the underlying goods? A mark that merely describes the goods in connection with which it is being used cannot be registered on the USPTO's Principal Register without a showing of acquired distinctiveness. TMEP 1209; 15 USC 1052(e)(1). A mark is merely descriptive " if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services." TMEP 1209.01(b). However, if a mark is deemed merely descriptive, it can be registered upon proof of "acquired distinctiveness," which means the mark has become distinctive as applied to the applicant's goods in commerce (i.e., consumers associate the mark with the applicant's goods, rather than only as a descriptive term). TMEP 1212; 15 USC 1052(f).

So does RED CUP PONG or RED CUP describe a feature, purpose, or use of drinking games and beer pong floats? Or do the terms "require imagination, thought, or perception to reach a conclusion as to the nature of those goods..." in which case the mark would be suggestive and registerable on the Principal Register without a showing of acquired distinctiveness. TMEP 1209.01(a).

We'll find out what the examining attorney assigned to this application thinks in about three months. The applicant might hope for an examiner without too many "fun" college experiences...

Texas Proprietor Files Trademark Application for DOGGIE WETSUITS, But is it Merely Descriptive? Generic?

Wetsuits aren't just for humans anymore, they're for the dogs. That is, according to Surf'n Sea Custom Wetsuits, a sole proprietorship in Texas. On April 2nd, that business filed a federal trademark application for the stylized wording DOGGIE WETSUITS seen below, covering "dog wetsuits, sports, clothing, wetsuits, water activity, dog products" in Class 18.

According to the application, Surf'n Sea Custom Wetsuits has been selling these dog wetsuits as least as early as October 11, 2015.

But is this mark merely descriptive, or possibly generic for the underlying goods? Merely descriptive marks describe an "ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services" and can only be registered on the Principal Register at the USPTO upon a showing of acquired distinctiveness in the marketplace. See TMEP 1209.01(b); 15 USC 1052(f). Generic words or phrases, on the other hand, "are terms the relevant purchasing public understands primarily as the common or class name for the goods or services" and can never be registered with the USPTO. See TMEP 1209.01(c).

Is the term "doggie wetsuits" a term the relevant public would understand as primarily the common or class name for dog wetsuits? Does that term merely describe a function, feature, purpose, or use of the underlying goods? We will find out in approximately three months when this application is assigned to an examining attorney at the USPTO.

New York Dairy Files Trademark Application for WINE ICE CREAM and Design

I have a lot of questions about this trademark application. Where can I get it? Does it contain wine (hint - yes)? Is it merely descriptive?

The answer to the first question appears to be Mercer's Dairy in Boonville, New York. On March 17, an entity doing business under that name filed this federal trademark application, an application for WINE ICE CREAM and Design, seen below. The application covers only "ice cream" in Class 30. According to the application, Mercer's Dairy has been selling ice cream under this mark since as least May 1, 2007.

According to Mercer's website, there are several flavors of wine ice cream, including Chocolate Cabernet (which I think is pictured in the applicant's specimen submitted with the trademark application and seen below), Cherry Merlot, Riesling, and Red Raspberry Chardonnay.

But is this mark merely descriptive of the underlying goods with which it is used, such that the Trademark Office will refuse registration under Section 2(e)(1) of the Lanham Act? The Trademark Office generally considers a mark to be merely descriptive if it "describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services." TMEP 1209.01(b). Merely descriptive designations cannot be registered on the Principal Register without a showing of acquired distinctiveness (i.e., proof that the mark has become distinctive as applied to the applicant's goods). See TMEP 1212.

Does a picture of a wine glass and the text WINE ICE CREAM merely describe "ice cream"? We'll find out what the examining attorney assigned this application thinks in approximately three months when this application is assigned to an attorney at the Trademark Office.

Is HANDSOCKS Merely Descriptive or Suggestive of Mittens?

Here's a fun one. On December 30th, an entity named Handsocks, LLC filed a federal trademark application for the design seen below, the literal element of which is HANDSOCKS. The applicant filed the application in Class 25 for "mittens", listing a first use date of December 3, 2016.

A very clever mark, but is it merely descriptive?  Section 2(e)(1) of the Trademark Act prohibits the registration on the Principal Register of any mark that is merely descriptive of the goods or services to which it relates (without a showing of secondary meaning, that is). "A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services."  TMEP 1209.01(b). For example, BED & BREAKFAST REGISTRY has been held to be merely descriptive of lodging reservation services. In re Bed & Breakfast Registry, 229 USPQ 818 (Fed. Cir. 1986). In addition, APPLE PIE has been held to be merely descriptive of potpourri (which I'm assuming smelled like apple pie). In re Gyulay, 3 USPQ2d 1009 (Fed. Cir. 1987).

On the other hand, suggestive marks are legally strong and can be registered on the Principal Register without any proof of secondary meaning. Where merely descriptive marks immediately convey something about the underlying goods or services, suggestive marks require "imagination, thought, or perception to reach a conclusion as to the nature of the underlying goods or services." TMEP 1209.01(a). Additionally, the Trademark Trial and Appeal Board has noted that "somewhat incongruous word combinations whose import would not be grasped without some measure of imagination and 'mental pause'" is indicative of a suggestive mark. In re Shutts, 217 USPQ 363, 364-5 (TTAB 1983).

So what do you think?  Does HANDSOCKS immediately convey something about mittens? Or is it an incongruous word combination that requires some imagination and mental pause to determine the underlying goods? We'll find out what the Examining Attorney thinks when this is assigned to one in approximately three months.

Today's Tip for Saving Your Trademark Filing Fee - Avoid Descriptive Marks

I've blogged about it many times before. Descriptive words and phrases are weak trademarks and cannot be registered with the U.S. Patent and Trademark Office, on the Principal Register at least, without acquiring distinctiveness (which isn't that easy). 15 U.S.C. 1052(e)(1); 15 U.S.C. 1052(f).

Descriptive terms do not typically serve as source indicators (aka trademarks) but rather describe the underlying goods or services (which, in theory, everybody should be allowed to do without risking infringement).

Consider the federal trademark application for COOLING MATTRESS PAD filed by a company in Pennsylvania on September 3rd. The company filed this application in Class 024 for "[b]ed sheets, fitted bed sheet covers, bed flat sheets, and pillow cases used in the bedding, health care, home-health care and nursing home industries made of biodegradable film created from renewable bio-polymer resources."

Is COOLING MATTRESS PAD merely descriptive of the underlying goods? Possibly. A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. TMEP 1209.01(b).

Therefore, if the bed sheets, bed sheet covers, and/or pillow cases sold under the COOLING MATTRESS PAD mark have cooling features, this application will likely receive a refusal under Section 2(e)(1) of the Trademark Act for being merely descriptive of the underlying goods. Whether these goods actually have a cooling feature is unclear from the description, so the Examining Attorney who reviews this application will likely request additional information. TMEP 814.

In any event, the applicant will need to correct the specimen it submitted with the application. A specimen shows the manner in which the mark is seen by the public. TMEP 904. For goods, a good specimen typically shows the mark on the goods labels, tags, or commercial packaging. See TMEP 904.03.

The applicant, however, only submitted the text seen above. The Examining Attorney should give the applicant an opportunity to submit a substitute specimen, which must have been being used in commerce at least as early as the filing date.

If the Examining Attorney does refuse registration of this application for being merely descriptive (or any other reason), and the applicant cannot overcome the refusal, the applicant's $225 nonrefundable filing fee will be lost.

Today's Tip for Saving Your Trademark Filing Fee - Don't File TALKING BOTTLE OPENER for a Talking Bottle Opener

On August 18th, a corporation in California filed a a federal trademark application for TALKING BOTTLE OPENER in Class 021 for "[b]ottle openers." The problem? The mark is merely descriptive of the underlying goods.

Section 2(e)(1) of the Trademark Act prohibits the registration of a merely descriptive term on the Principal Register until it can be shown the term has acquired distinctiveness in the marketplace. A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. TMEP 1209.01(b). I've blogged about merely descriptive marks many times in the past (like here, here, and here).

The reasoning behind the 2(e)(1) prohibition is fairly simple - if one obtains the exclusive right to use a descriptive term, others will lose the ability to use that descriptive term to describe their goods or services. For example, how would an operator of a car wash describe his or her service if another business owned a trademark registration for the phrase "car wash?" 

Merely descriptive terms are not absolutely barred from registration, however. If a mark acquires distinctiveness, it can be registered on the Principal Register. In general, this means the mark "through usage by one producer with reference to his product, acquire[s] a special significance so that to the consuming public the word has come to mean that the product is produced by that particular manufacturer." TMEP 1212. The burden is on the applicant to claim acquired distinctiveness and submit the corresponding evidence therewith. TMEP 1212.01. The applicant for this mark has not done either.

So is the phrase TALKING BOTTLE OPENER descriptive of a characteristic, function, or feature of a bottle opener that talks when you use it (in this case, sings the USC fight song)? I think so. And when this application is assigned to an Examining Attorney at the U.S. Patent and Trademark Office in approximately three months, I think they will agree and issue an Office Action refusing to register this mark under 2(e)(1) of the Trademark Act. Unfortunately for the applicant, this means its $225 nonrefundable filing fee is all but lost.

Whole Foods Files Trademark Application for WORLD'S HEALTHIEST GROCERY STORE

A recent trademark application shows Whole Foods is attempting to secure its place as the "world's healthiest grocery store" (or rights to that phrase, at least). 

On June 23rd, Whole Foods Markets IP, L.P. (which I assume is a limited partnership holding Whole Food's intellectual property assets) filed a federal trademark application for the phrase WORLD'S HEALTHIEST GROCERY STORE.

The grocery store filed this application in Class 035 on an intent-to-use basis for "[r]etail grocery stores; [r]etail and on-line grocery store services featuring home delivery service; [and] [s]upermarkets[.]" If Whole Foods is successful in registering this trademark, it will have the exclusive, nationwide right to use the phrase in conjunction with services related to those listed above.

However, registration of this phrase is far from guaranteed. For one, the store filed this application on an intent-to-use basis. This means the store will need to actually start using the mark in commerce, and provide sufficient proof of such use to the Trademark Office, before the mark will register. See TMEP 902.

Additionally, there is a significant risk that the Trademark Office will deem this phrase to be a common laudatory phrase that is too descriptive or generic to serve as a trademark. See TMEP 1209.03(s). Descriptive and generic phrases are prohibited from registration on the Principal Register under Section 2(e)(1) of the Trademark Act until they acquire distinctiveness. 

For example, in In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) the phrase THE BEST BEER IN AMERICA, as applied to beer and ale, was found to be "so highly laudatory and descriptive as to be incapable of acquiring distinctiveness as a trademark." This decision was based, in part, on the fact "that 'The Best Beer in America' is a common phrase used descriptively by others before and concurrently with Boston Beer's use, and is nothing more than a claim of superiority."

So is the phrase WORLD'S HEALTHIEST GROCERY STORE, as applied to retail grocery stores and supermarkets, so highly laudatory and descriptive as to be incapable of acquiring distinctiveness as a trademark, much like THE BEST BEER IN AMERICA? Are other grocery stores using a similar phrase? Is it nothing more than a claim of superiority? I think so. In approximately three months when this application is assigned to an Examining Attorney at the Trademark Office, we will find out if I am right.

Today's Tip For Saving Your Trademark Filing Fee - Avoid Descriptive Marks

As I've blogged about many times (here and here, for example), an applicant who applies to register a certain trademark with the U.S. Patent and Trademark Office must take care to avoid marks that are merely descriptive.

Merely descriptive marks can only function as trademarks under limited circumstances and the Trademark Office will not register them pursuant to Section 2(e)(1) of the Trademark Act until those circumstances are met. 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 TMEP 1209.01(b).

On June 16th, a company in Cocoa Beach, Florida filed a federal trademark application for REMOTE DRUG TESTING in Class 044 (which I'm not sure is correct because the filing is for a good not a service). The applicant describes its "service" as follows:

Service where a package is sent to a remote location (residence, home, etc) to collect bodily fluids such as urine, saliva, blood, skin, hair, and fingernails etc to perform any number of clinical lab tests including but not limited to toxicology, urinalysis, hematology, chemical analysis, and dna. Many of the kits include a video confirmation for identity and to capture on site test results. The collected specimens are then sent to the lab and the appropriate tests are performed and reported back in a number of ways; paper, text, email, web portal and smartphone apps

The specimen for the mark, which has been used in commerce since June 14, 2016, is seen above.

Is the term REMOTE DRUG TESTING merely descriptive of a feature, characteristic, or function of a drug test sent to remote locations? I think so. And given the applicant's very recent first use date, this mark has not "acquired distinctiveness" to overcome this barrier to registration.

Unfortunately for this applicant, if he wanted a registration on the Principal Register (which affords all the benefits of a federal trademark registration), his $325 nonrefundable filing fee (which could have been lower had it taken advantage of certain application options at the Trademark Office) is all but lost.

Is This DRUNKEN FRUIT Trademark Merely Descriptive?

On May 27th, two enterprising individuals from Brooklyn, New York filed a federal trademark application for DRUNKEN FRUIT. The individuals filed the application in Class 029 for "[f]ruit preserved in alcohol; [f]ruits preserved in alcohol; [f]ruits in preserved form." Sounds pretty good to me.

Is the trademark merely descriptive though? A mark is merely descriptive "if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services." TMEP 1209.01(b). I have a feeling the Trademark Office will deem DRUNKEN FRUIT to be merely descriptive of an ingredient, quality, or characteristic of the underlying goods (namely, fruits preserved in alcohol).

Merely descriptive terms cannot be registered as trademarks under Section 2(e)(1) of the Trademark Act until and unless they acquire distinctiveness in the marketplace.

This application's saving grace may be the fact that this trademark has apparently been in use since June 2008. Under Section 2(f) of the Trademark Act, if the applicants can show "proof of substantially exclusive and continuous use" of the mark "in commerce for the five years before the date on which the claim of distinctiveness is made," the Trademark Office will accept such use as prima facie evidence of the fact that the mark has become distinctive as applied to the applicant's goods (aka the mark has "acquired distinctiveness"). A showing of acquired distinctiveness is required to register a merely descriptive term as a trademark.

The applicants did not make the 2(f) claim on the application, but may do so if the examining attorney at the Trademark Office deems this mark merely descriptive. On another note - where can I buy this?

Today's Tip for Saving Your Trademark Filing Fee - Avoid Descriptive Marks

I've blogged about it many times before. Here, and here, and here. But applicants continue to filing merely descriptive trademarks (typically without the help of an attorney).

What is wrong with a merely descriptive trademark? For one, Section 2(e)(1) of the Trademark Act prohibits the U.S. Patent and Trademark Office from registering such a mark. Also, since the mark is compromised of a descriptive term that many others are probably using, it often fails to distinguish one's goods or services in the marketplace.

What is considered a merely descriptive? A mark is merely descriptive if it "describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services." TMEP 1209.01(b).

Take a look at the trademark above. A federal application for this mark was filed by an individual in Florida on May 14th. The related goods are in Class 029 for "uncooked hamburger patties."

Is this trademark merely descriptive of "uncooked hamburger patties"? I think so. It certainly describes an ingredient and quality of the underlying goods. The fact that this mark is compromised of a design element in addition to descriptive words does not change this analysis. See TMEP 1209.03(f) ("...when a mark is comprised of wording that is descriptive under §2(e)(1) and a design element that is a pictorial representation of the goods, or that reinforces the descriptive meaning of the wording, the entire mark is merely descriptive.").

Unfortunately for the applicant, this means the Trademark Office will probably issue an Office Action refusing to register his mark because it is merely descriptive and his $325 filing fee is lost.

Note - the applicant could have opted for a TEAS Plus application and a $225 filing fee but instead opted for a TEAS Regular application for an unknown reason.

Today's Tip For Saving Your Trademark Filing Fee - Avoid Descriptive Trademarks

In another perfect example of what not to do, a company in Washington D.C. filed a federal trademark application on April 6th for SNACKABLE GRANOLA. The related goods are listed as "Granola; Granola snacks; and Granola-based snack bars" in Class 030.

The problem? The trademark is merely descriptive of the underlying goods. Trademarks that are merely descriptive will be refused registration on the Principal Register under Section 2(e)(1) of the Trademark Act. A trademark is merely descriptive "if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services." TMEP 1209.01(b).

Certainly the phrase SNACKABLE GRANOLA describes an ingredient and characteristic of "granola snacks" and "granola-based snack bars." Even the specimen submitted with the application, seen above, shows the purported trademark in an area on the packaging that is more likely to describe the actual goods. While "Oh-Mazing!" could be considered a trademark, the phrase "snackable granola" simply indicates what is inside the package.

While there is an exception to the rule that merely descriptive trademarks cannot be registered on the Principal Register, that exception requires substantial, continuous, and exclusive use in commerce, which does not apply here (the first use date is listed as February 26, 2016). See TMEP 1212 for more on acquired distinctiveness. 

Unfortunately for this applicant, who did not use a trademark attorney, the $225 filing fee submitted with this trademark application is all but lost.

Today's Tip For Saving Your Trademark Filing Fee - Avoid Descriptive Trademarks

If you want to successfully obtain a federal trademark registration, you must avoid trademarks that are generic or highly descriptive of your goods or services. With few exceptions, these terms are incapable of serving as trademarks and cannot be registered with the United States Patent and Trademark Office (USPTO).

An example of a trademark that is highly descriptive is the recently filed mark above. The applicant filed this application in Class 032 for "[l]emonade" on March 13, 2016.

A mark is 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, slogans are not registrable with the USPTO if the slogan is "merely informational in nature, or...common laudatory phrases or statements that would ordinarily be used in business or in the particular trade or industry." TMEP  1209.03(s). 

The reason these types of marks are not registrable as federal trademarks is because the law believes everybody should have the opportunity to use descriptive words and phrases to describe their goods or services (rather than give one entity a monopoly over the term).

Is the phrase FRESH SMASHED LEMONADE descriptive of an ingredient, quality, characteristic, or feature of lemonade? Is it informal or a common laudatory phrase ordinarily used by lemonade sellers? Probably, especially if the applicant is offering lemonade that is made by smashing fresh lemons. 

When this application is assigned to an examining attorney at the USPTO in approximately three months, I have a feeling an office action refusing to register this mark for being merely descriptive of the goods offered with it will be issued.

WINO WORKOUTS Trademark Filed

On November 11th, an individual in California filed a federal trademark application for WINO WORKOUTS.

The service listed on the application is "[p]roviding on-line videos featuring working out with wine, not downloadable[.]" Unfortunately this is an intent-to-use application so the applicant did not have to submit any evidence showing use of this trademark in commerce yet. It would be interesting to see how these wine workouts are marketed.

If the applicant is successful in obtaining this registration, he will obtain the exclusive, nationwide right to use the term WINO WORKOUTS as it applies to workout videos. However, I have a feeling the Trademark Office will consider this mark "merely descriptive" because the underlying service is essentially described by the trademark itself. Section 2(e)(1) of the Trademark Act prohibits the registration of a term that merely describes the underlying goods or services.

This mark may need to be amended to the Supplemental Register, where merely descriptive marks are allowed to hang out as they acquire distinctiveness in the marketplace. We will see in approximately three months when this application is assigned to an Examining Attorney at the Trademark Office.

NOT CHOCOLATE Not Merely Descriptive?

On November 8th, a Chilean-based business called The Not Company filed five different federal trademark applications in the U.S. for a variety of goods that are "not" what they appear. Those applications are:

• NOT PASTA for a pasta substitute;
• NOT MAYO for a vegetable based mayonnaise substitute;  
• NOT YOGURT for a dairy free yogurt substitute;
• NOT MILK for a dairy free milk substitute;
• NOT CHOCOLATE for a dairy free chocolate substitute.

The applications are for the respective design show below.

All these applications are on the Principal Register. As such, they cannot be merely descriptive if they are going to be fully registered. As I've blogged about many times before, the Trademark Office considers 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).

For example, in July I blogged about a trademark for CHORIZO DOG that was filed for preserved meats and sausages. As I predicted, this mark received an office action for being merely descriptive.

Is a mark like NOT CHOCOLATE merely descriptive of a chocolate substitute that is not actually chocolate? Maybe. We will find out in approximately three months when an examining attorney at the Trademark Offices looks over this application.

Trademark for EMOJI BANDAGES Filed

On October 23rd, a company out of Florida called Kangaroo Manufacturing filed a federal trademark application for EMOJI BANDAGES as it relates to "[a]dhesive bandages; Adhesive for bandages for skin wounds; Bandages for dressings; Bandages for skin wounds[.]"

A couple months ago, I blogged about EMOJI CARDS, a trademark filed for a charades-like card game involving emojis. It looks like Emoji Bandages are next. What a time to be alive.

Unfortunately, Kangaroo Manufacturing filed this trademark on an intent-to-use basis, meaning it is not yet using the mark and therefore we do not have a specimen showing the mark in commerce to see what these bandages might look like.

On another note, does this trademark application have any issues in being "merely descriptive" of the goods offered in conjunction with it? Maybe, if the bandages do in fact display emojis. Kangaroo Manufacturing should pay attention to the EMOJI CARDS application, which will be assigned to an examining attorney relatively soon, to see if an office action get issued by the Trademark Office regarding the potential descriptiveness of that application. If not, Emoji Bandages may be in the clear.