Introduction
Last week’s blog provided information on the Supplemental Register as part of its discussion on the Trademark Trial & Appeal’s Board’s refusal to register the generic mark FELATI on even the Supplemental Register. That blog briefly referred to the fact that merely descriptive marks may be registered on the Principal Register if: 1) they are found to be suggestive rather than merely descriptive; or 2) have become distinctive. Otherwise, merely descriptive marks may be registered on the Supplemental Register. For registration on either register, the examiner must have concluded that there is no likelihood of confusion with an existing registered mark.
This blog goes into depth as to what constitutes a merely descriptive mark by discussing the Board’s affirmance of the examining attorney’s Section 2(e)(1) refusal to register the proposed word mark SMART BEZEL. In re Zuma Array Limited, 2020 USPQ2d 736 (TTAB 2022) [precedential]. The opinion is instructive because it is a reminder that a proposed mark that describes the intended use or purpose of the goods may be a merely descriptive mark. In other words, the definition of a merely descriptive mark is not confined to those marks which merely describe a characteristic of the specified goods or services, e.g., CHUNKY CHOCOLATE for ice cream.
Discussion
Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), prohibits registration on the Principal Register of “a mark which, (1) when used on or in connection with the goods of the applicant is merely descriptive . . . of them,” unless the mark has acquired distinctiveness under Section 2(f) of the Lanham Act, 15 U.S.C. § 1052(f). A merely descriptive mark which has acquired distinctiveness according to the USPTO’s requirements may file for registration of the mark on the Principal Register under Section 2(f). If the mark is instead registered on the Supplemental Register, the registrant may later seek registration on the Principal Register if and when the merely descriptive mark acquires the required level of distinctiveness for such registration.
Here the Applicant’s identified goods under IC class 009 were for “electronic sensor modules for controlling and integrating home automation systems, including lighting and thermal control apparatus, energy control devices and household appliances, smart plugs, smart sockets for electric lights, electronic appliances and smart switches, audio and loudspeakers, alarms, and other security control apparatus and home monitoring equipment; electronic sensor modules for controlling and integrating smart lighting systems and smart heating systems; component parts and fittings for the aforesaid goods.”
In rejecting the mark SMART BEZEL on merely descriptive grounds, the examining attorney relied on: 1) the dictionary definition of the adjective “smart” in this context as using a built-in microprocessor for automatic operation, for processing of data, or for achieving greater versatility;” a dictionary definition of the word “bezel” as the “outer frame of a computer screen, mobile phone, or other electronic device;” and an article about a patent held by Apple where the article states the invention enabled Apple to create a “smart bezel.” Slip opinion @ 2. The Applicant acknowledged that “smart” is defined as “using a built-in microprocessor” and the word “bezel” refers to “the outer frame of a computer screen, mobile phone or other electronic device.” However, it also asserted, “none of the applied for goods … feature a ‘bezel’ at all.” The Examining Attorney, on the other hand, maintained that the proposed mark immediately conveys information about the goods because Zuma’s sensors are designed to be incorporated into the bezels of various electronic appliances and lighting and heating systems, “to render the bezels … capable of performing automatic operations for processing data or achieving greater versatility.”
The Board discounted the Applicant’s argument, finding the mark to be descriptive of a use or purpose of the goods’ modules, and thus ineligible for registration without proof of acquired distinctiveness. In reaching its conclusion, the Board took a somewhat different tack by focusing on the nature of the Applicant’s “electronic sensor modules.” First, the Board took judicial notice that a “module” is “a usually packaged functional assembly of electronic components for use with … other assemblies.” Second, the Board then relied on the wording in the Applicant’s own website to conclude that the proposed mark, by describing the intended use or purpose of the goods with which it is used, is merely descriptive. For example, the Applicant’s website states that “swap[ping] out a standard bezel for a Smart Bezel (TM)” enables homeowners to access a wide range of built-in sensors to support environmental, presence and life safety operations.” Slip opinion at 15. Citing precedent, the Board emphasized that “[P]roof of mere descriptiveness may originate from [the] applicant’s own descriptive use of its proposed mark, or portions thereof” in its materials and “an applicant’s own website and marketing materials may be . . . ‘the most damaging evidence’ in indicating how the relevant purchasing public perceives a term.’” Slip opinion at 14.
Accordingly, the Board concluded that the word BEZEL refers to the type of device on which Zuma’s sensors will be used. The commercial context of Applicant’s use of its proposed mark on its website “demonstrates that a consumer would immediately understand the intended meaning of” SMART BEZEL for electronic sensor modules, namely, that the modules are used to create a “smart bezel.”
The commentator notes that the Applicant should now have the option of seeking registration on the Supplemental Register.
Take Home Points
- Trademark law is complex. As this decision demonstrates, a merely descriptive analysis involves an evaluation of whether the proposed mark describes a particular characteristic of the specified goods/services and/or the intended usage of the proposed mark. Many applicants are focused on a likelihood of analysis rejection and not familiar with other types of registration rejections. Accordingly, a proposed mark that is not rejected on likelihood of confusion grounds may still be rejected on merely descriptive or generic grounds as the Zuma Array decision demonstrates.
- The USPTO may look beyond the Principal Register other registered marks to ascertain whether a mark is merely descriptive. Here, the examining attorney and the Board used dictionary definitions, a patent document, and the Applicant’s own website to find that the mark was merely descriptive.
- Interestingly there was no evidence that third parties were descriptively using “smart bezel” for the application’s specified goods. Although such proof can be highly relevant to a merely descriptive analysis, such lack of proof was of no consequence in the Zuma Array decision. “The fact that Applicant may be the first or only user of a term does not render the term distinctive if, as here, it has been shown to be merely descriptive of the goods identified in the application.” Slip opinion at 12. The commentator notes that Applicant may be able to establish distinctiveness in the future by, e.g., by providing satisfactory evidence that the consumer has come to associate the mark with the Applicant as the provider of the goods.
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