1209.03(c) First or Only User
The fact that an applicant may be the first and only user of a merely descriptive designation does not justify registration if the only significance conveyed by the term is merely descriptive. See In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1514 (TTAB 2016) In re Nat'l Shooting Sports Found., Inc., 219 USPQ 1018, 1020 (TTAB 1983); see also KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 122 (2004) (trademark law does not countenance someone obtaining "a complete monopoly on use of a descriptive term simply by grabbing it first") (citation omitted). Likewise, the fact that an applicant may be the first or only user of a generic designation does not justify registration if the only significance conveyed by the term is that of a category of goods. In re Empire Tech, Dev. LLC, 123 USPQ2d 1544, 1549 (TTAB 2017) (citing In re Greenliant Systems Ltd., 97 USPQ2d 1078, 1083 (TTAB 2010). See also In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1569, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987) ("To allow trademark protection for generic terms, i.e., names which describe the genus of goods being sold, even when these have become identified with a first user, would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are."); In re Preformed Prods. Co., 323 F.2d 1007, 1008, 139 USPQ 271, 273 (CCPA 1963) (exclusive use, even when coupled with "large sales volume of such goods and its substantial advertising expenditure... cannot take the common descriptive name of an article out of the public domain and give the temporarily exclusive user of it exclusive rights to it, no matter how much money or effort it pours into promoting the sale of the merchandise") (quoting J. Kohnstam, Ltd. v. Louis Marx & Co., 280 F.2d 437, 440 (CCPA 1960); TMEP §1212.06(e)(i).