TMEP 1202.17(d)(i): Merely Descriptive

October 2017 Edition of the TMEP

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1202.17(d)(i)    Merely Descriptive

Often, when the examining attorney has determined that a universal symbol fails to function because it only provides information about the goods or services, the available evidence will also support a refusal (or a disclaimer requirement) under Trademark Act §2(e)(1), 15 U.S.C. §1052(e)(1), based on mere descriptiveness.

If a mark consists of a merely descriptive universal symbol and other descriptive, generic, or otherwise non-source-indicating matter, then the mark is merely descriptive in its entirety and the examining attorney must issue a refusal under §2(e)(1). If a mark consists of a merely descriptive universal symbol, along with other arbitrary, fanciful, or suggestive matter, the examining attorney must require a disclaimer of the universal symbol unless the composite mark creates a unitary commercial impression. See Trademark Act §6(a), 15 U.S.C. §1056(a);  TMEP §§ 12.3, 1213.01(b), 1213.02, 1213.03(a).

When both a §2(e)(1) and a failure-to-function refusal are issued, the examining attorney should not suggest that the applicant claim acquired distinctiveness or amend to the Supplemental Register. For more information, see TMEP §1202.17(c)(ii)(B).