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Appeals by the Numbers

By Matt Schneller and Erin Hennessy

Two of the main substantive causes for refusals of U.S. federal trademark applications are descriptiveness refusals (under Section 2(e) of the Lanham Act, 15 U.S.C. '1052(e)(1)) and likelihood of confusion refusals (under Section 2(d) of the Lanham Act, 15 U.S.C. '1052(d)). The U.S. Patent & Trademark Office's examiners and the Trademark Trial and Appeal Board's judges, who review ex parte appeals from examiners' final refusals to register pending applications, apply very different standards as 'tiebreakers' when the evidence and arguments submitted by the applicant against the two types of refusals create doubt about the appropriate outcome.

Any reasonable doubt as to whether a mark is merely descriptive or contains any suggestive element must be resolved in favor of the applicant. The rule grew out of Section 2(e)(1) refusals of merely descriptive marks, see, e.g., In re Aid Laboratories, Inc., 221 USPQ 1215 (TTAB 1983), In re MVP Group Int'l, Ser. No. 85074276 (TTAB May 16, 2012), and also applies to applies to 2(e)(2) refusals that the mark is primarily merely geographically descriptive,'see, e.g., In re International Taste Inc., 53 USPQ2d 1604, 1605-06 (TTAB 2000), and to 2(e)(4) that the mark is primarily merely a surname, see, e.g., In re Yeley, 85 USPQ2d 1150, 1151 (TTAB 2007); In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-1334 (TTAB 1995). The standard of proof does not apply to Section 2(e)(3) refusals that a mark is primarily geographically deceptively misdescriptive or to 2(e)(5) refusals that the matter applied for is functional.

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