The USPTO refused to register the term CO-OP for “Bicycles, bicycle seats, bicycle wheels, bicycle tires, bicycle handlebars, bicycle forks, bicycle handle bar stems,” finding it to be merely descriptive of the goods under Section 2(e)(1). The Examining Attorney maintained that term “co-op” merely describes something about Applicant REI, namely, that Applicant is a cooperative business. How do you think this came out? In re Recreational Equipment, Inc., 2020 USPQ2d 11386 (TTAB 2020) [precedential] (Opinion by Deputy Chief Judge Mark A. Thurmon].
Applicant REI conceded that it is indeed a co-op. The Examining Attorney relied on In re Major League Umpires, 60 USPQ2d 1059 (TTAB 2001), and, according to the Board, effectively applied a per se rule: “she found the mark merely descriptive of the source and then refused registration on the basis that the mark merely describes the goods.”
In Major League Umpires the Board broadly stated that, “[i]t is well-established that a term which describes the provider of goods or services is also merely descriptive of those goods and services.” Id. at 1060 (citing In re E. I. Kane Inc., 221 USPQ 1203 (TTAB 1984) and cases cited therein). However, when that statement is read in context, “it becomes clear that Major League Umpires does not require or support the use of a per se rule.”
The mark at issue there was MAJOR LEAGUE UMPIRE. The evidence established that the applicant was owned and operated by three National League umpires. In addition, these three umpires “actually designed some of the goods, a fact touted in the applicant’s advertising.” The Board also found that major league umpires are among the class of purchasers of the goods, and the mark described the goods as being of a type used by major league umpires.
A careful reading of the Major League Umpires decision suggests the Board was not making a broad holding that all terms that describe something about the source of goods are per se unregistrable as merely descriptive of the goods, but rather the Board was stating that this result followed given the facts of the Major League Umpires case. The mark went well beyond simply describing something about the source of the goods. It also described characteristics of the goods.
The Board concluded “the mark MAJOR LEAGUE UMPIRE would immediately convey to such purchasers a characteristic of the gear/clothing, i.e., that it is designed by a major league umpire.” Thus Major League Umpires did not apply a per se rule, but rather found the mark to be merely descriptive of the goods in at least three different ways: as to the source, the nature of the designer, and a portion of the classes of consumers.
The Board acknowledged that in some cases a proposed mark that provides specific information about the source of the goods or services will be merely descriptive.
When the mark describes a characteristic of the source, and that characteristic is used to actively promote the goods, the mark probably also describes a feature of the goods for purposes of Section 2(e)(1). See In re MBNA Am. Bank, N.A., 340 F.3d 1328, 67 USPQ2d 1778 (Fed. Cir. 2003) (emphasis on the MONTANA SERIES and PHILADELPHIA CARD marks in promotional materials signifies that they are “a significant feature of MBNA’s method of promoting and marketing these affinity credit cards as well as of the services themselves.”).
When a mark describes something about the source of the goods or services, the evidence should be carefully evaluated to determine whether the mark also describes something about the goods or services.
This principle was particularly applicable in Major League Umpires because of the nature of the goods. If the goods at issue in Major League Umpires had been luxury automobiles or fly fishing gear or sewing machines, a different result may have been reached. It is the connection between the mark and the nature of the goods that supported the Section 2(e)(1) refusal in Major League Umpires. Thus, the Major League Umpires decision should not be read as supporting a per se rule of law.
In this case, there was no evidence “showing what consumers are likely to think when they see the CO-OP mark on bicycles or bicycle components.” There was no evidence of third-party use of “co-op” in connection with bicycles or parts, no descriptive use in advertising, or of such usage by consumers or the trade. Although some consumers may be aware that Applicant REI is a co-op (the largest consumer cooperative in the country), “the record does not support a finding that the mark CO-OP immediately conveys to average consumers information about a quality, feature, or characteristic of bicycles and the other goods identified in the application.”
Finding the USPTO’s proofs to be inadequate, the Board reversed the refusal.
Read comments and post your comment here.
TTABlog note: WYHRR? Would you have refused registration?
Text Copyright John L. Welch 2020.