TMEP 1207.01(b)(ix): Weak or Descriptive Marks

October 2017 Edition of the TMEP

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1207.01(b)(ix)    Weak or Descriptive Marks

The Court of Appeals for the Federal Circuit and the Trademark Trial and Appeal Board have recognized that merely descriptive and weak designations may be entitled to a narrower scope of protection than an entirely arbitrary or coined word. See Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1338-39, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015); Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005); Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020, 1026 (TTAB 2009); In re Box Solutions Corp., 79 USPQ2d 1953, 1957-58 (TTAB 2006); In re Cent. Soya Co., 220 USPQ 914, 916 (TTAB 1984). However, even a weak mark is entitled to protection against the registration of a similar mark for closely related goods or services. See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 1401 182 USPQ 108, 109 (C.C.P.A. 1974).

With respect to marks registered on the Supplemental Register, the Board stated the following in In re Hunke & Jochheim:

[R]egistration on the Supplemental Register may be considered to establish prima facie that, at least at the time of registration, the registered mark possessed a merely descriptive significance. This is significant because it is well established that the scope of protection afforded a merely descriptive or even a highly suggestive term is less than that accorded an arbitrary or coined mark. That is, terms falling within the former category have been generally categorized as "weak" marks, and the scope of protection extended to these marks has been limited to the substantially identical notation and/or to the subsequent use and registration thereof for substantially similar goods.

185 USPQ 188, 189 (TTAB 1975) (citation omitted).

However, even marks that are registered on the Supplemental Register may be cited under §2(d). In re Clorox Co., 578 F.2d 305, 308-09, 198 USPQ 337, 341 (C.C.P.A. 1978).