1209.02 Procedure for Descriptiveness and/or Genericness Refusal
The examining attorney must consider the evidence of record to determine whether a mark is merely descriptive or whether it is suggestive or arbitrary. See In re Noble Co., 225 USPQ 749, 750 (TTAB 1985). The examining attorney may request that the applicant submit additional explanation or materials to clarify the meaning of the mark or the nature of the goods or services. 37 C.F.R. §2.61(b); TMEP §814; see In re AOP LLC, 107 USPQ2d 1644, 1650-51 (TTAB 2013). This would be especially appropriate for goods or services where the meaning of the mark or the nature of the goods or services would be readily apparent only to someone knowledgeable in that field. The examining attorney should also do any necessary research to determine the nature of the use of the designation in the marketplace. To the fullest extent possible, the examining attorney will examine §1(b) applications for registrability under §2(e)(1) according to the same procedures and standards that apply to any other application. See In re Am. Psychological Ass’n, 39 USPQ2d 1467, 1469 (Comm’r Pats. 1996); TMEP §§1102 and 1102.01. “[T]he fact that applicant has filed an intent-to-use application does not limit the examining attorney’s evidentiary options, nor does it shield an applicant from producing evidence that it may have in its possession.” In re Promo Ink, 78 USPQ2d 1301, 1303 (TTAB 2006). If the examining attorney refuses registration, he or she must support the refusal with appropriate evidence. See generally In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087 (Fed. Cir. 2005) (finding a press release cited by the examining attorney relevant to show the public’s perception of the goods in an intent-to-use application).
In all cases, the examining attorney should try to make the Office action as complete as possible, so that the applicant may respond appropriately.