Wednesday, July 20, 2016

TTAB Test: Is FIRST TUESDAY Merely Descriptive of Lottery Services?

The USPTO refused to register the mark FIRST TUESDAY under Section 2(e)(1) of the Trademark Act, deeming the mark merely descriptive of "lottery cards; scratch cars for playing lottery games" and for "lottery services." Applicant North Carolina Lottery appealed, arguing that, based solely on the mark itself, the phrase merely suggests a particular day, but "leaves it to the consumer's imagination what happens on that particular day." How do you think this came out? In re North Carolina Lottery, Serial No. 86411401 (July 12, 2016) [not precedential].


Examining Attorney Lindsey Ben maintained that the proposed mark is merely descriptive of a feature of the goods and services, namely, new scratch-off lottery games that begin on the first Tuesday of every month. Applicant argued that "mental thought and multi-step reasoning" was required to glean the meaning of the mark.

[t]o connect the mark FIRST TUESDAY to Applicant’s lottery services and lottery cards, a consumer must be told that Applicant issues new instant scratch-off games on the first Tuesday of every month. Absent this knowledge, an ordinary consumer would not be able to discern the meaning of the phrase "first Tuesday."

The Board observed that when considering the context in which a mark is being used, it may look at labels, packaging, advertising, and the like to determine how the purchaser encounters the mark in the marketplace. Applicant's specimens of use [see example above] and its website indicate that new scratch tickets are available on the first Tuesday of each month. The Board therefore found that FIRST TUESDAY merely describes a feature or characteristic of lottery cards and lottery services. No mental thought or multi-step reasoning is required to reach a conclusion about these goods and services.

The lack of use of the phrase by competitors is irrelevant to the issue of mere descriptiveness. Nor does the fact that applicant may be the first or only user of a descriptive designation justify registration.

Finally, the Board noted once again that a mark must be considered not in a vacuum, but in the context of the goods or services with which it is used. Consumers encountering FIRST TUESDAY for lottery cards and lottery services will understand that it describes "an important feature" of applicant's goods and services: i.e., that new scratch tickets are offered on the first Tuesday of the month.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: How did you do? Is this a WYHA?

Text Copyright John L. Welch 2016.

4 Comments:

At 7:35 AM, Blogger RT said...

In the 9th Circuit, that reasoning would have worked fine for the applicant, it seems to me! Still a WHYA for registration, though.

 
At 10:35 AM, Blogger Brad Salai said...

The problem is that the test is tough, if you know what the product is, would you think the purported mark merely describes it. What we often argue is that you can't figure out what the goods/services are from the mark. That's just not going to fly these days, so, no I wouldn't have appealed.

 
At 11:10 AM, Blogger John L. Welch said...

One of my Top Ten Losing TTAB Arguments is this "guessing game" assertion.

 
At 9:34 AM, Blogger Brad Salai said...

It's a good article, I commend it to anyone who hasn't read it.

It seems to me that there are two types of losing arguments, those that are sound legal arguments, but hard to prove, and those that are unsound, like this one, and arguing distinctions between the goods that are narrower than the descriptions in the registration/application,that have no chance.

You might even consider updating it and republishing it.

 

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