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Fed. Circuit Addresses Trademarks and 'Acquired Distinctiveness'

By Tanya Roth, Esq. on April 05, 2012 | Last updated on March 21, 2019

Registering a trademark isn't as easy as it sounds. The Chamber of Commerce of the United States recently fought for the right to register the service mark "National Chamber" but were met with resistance from the Trademark Trial and Appeal Board.

The reason for the resistance? TTAB claimed that the service mark "National Chamber" was too descriptive of the services offered in connection with the mark, in violation of 15 USC 1052.

In In re Bayer Aktiengesellschaft, the Federal Circuit held, "a term is merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used."

The problem for the Chamber was the intricacies of the law, which provided further that the mark didn't necessarily have to describe every feature of the product for it to be considered descriptive-- description of one feature or attribute was enough to cause problems in registering the mark.

The Chamber of Commerce attempted to register the service mark in connection with an online directory of information featuring local and state Chambers, an information and news portal and a discount program for members.

In rejecting the application, the reviewer said that the service mark "National Chamber" was descriptive, since the term "National" described services that were nationwide in scope and "Chamber" described services promoting the interests of businessmen and businesswomen, a "purpose common to chambers of commerce."

TTAB agreed with the findings of the initial reviewing attorney.

The Federal Circuit, in addressing the appeal, stated that descriptiveness of a mark must be evaluated in relation to the goods for which registration is sought. Thus, it's a contextual analysis.

Trademark law on descriptive marks provides a loophole. If the mark being sought has obtained a secondary meaning or an acquired distinctiveness, then a descriptive mark can be registered. The test for acquired distinctiveness is that "in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself."

Part of the uphill battle of the Chamber in establishing the acquired distinctiveness of the "National Chamber" mark was that they had not put that mark in use yet.

The Federal Circuit Court of Appeals affirmed the holding of TTAB. As for the Chamber of Commerce, they'll have to get their marketing people together to brainstorm a new name; one that is less descriptive.

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