TTABlog Test: Is UNITED STATES COAST GUARD Merely Descriptive of Employment Counseling and Recruiting Services?
The USPTO refused to register the word-and-design mark shown below, for "Employment counseling and recruiting; providing career information," absent a disclaimer of the words UNITED STATES COAST GUARD under Section 6(a) of the Trademark Act. Applicant DHS argued that the phrase UNITED STATES COAST GUARD should be considered in the abstract, outside of the context of Applicant's employment and recruiting services, because consumers would "immediately think of the Coast Guard’s well-known law enforcement services." How do you think this appeal came out? In re United States Department of Homeland Security AKA DHS, Serial No. 97824026 (March 31, 2025) [not precedential] (Opinion by Judge Elizabeth K. Brock).
DHS acknowledged that the phrase UNITED STATES COAST GUARD is understood by the public to refer to the military organization of that name, one of the country’s armed forces operating under the Department of Homeland Security. DHS also acknowledged that the USCG "offers employment counseling and recruiting and provides career information as a public service."
Examining Attorney Andrea Saunders maintained that UNITED STATES COAST GUARD is descriptive of the recited services in three ways: (1) it describes the provider of the services; (2) it describes at least some of the intended users of the services, e.g., members of USCG; and (3) consumers who know the employment and recruiting services offered under the mark will immediately understand that those services pertain to the UNITED STATES COAST GUARD, i.e., that the employment and recruitment services are, in part, for USCG or its USCG members.
Applicant agreed that the mark must be considered in the context of the services, not in the abstract. The Board found that "the average purchaser of Applicant’s services, which includes members of the general public as well as the USGC, would understand the wording UNITED STATES COAST GUARD to refer to the USCG as part of the United States’ armed forces, as well as UNITED STATES COAST GUARD members."
Because recruiting activity is "an important function to USCG, and the average purchaser who may be a member of the general public or USCG is likely aware of this recruiting activity," the Board found for DHS’s “recruiting” services," the average purchaser encountering the wording UNITED STATES COAST GUARD in the mark would understand it to refer to USCG’s, or UNITED STATES COAST GUARD’s, recruiting services."
The Board also found that prospective and current members of USCG are some of the intended users of the recited services, and so the wording UNITED STATES COAST GUARD is descriptive of a significant population of the users.
And finally, the phrase UNITED STATES COAST GUARD describes DHS as the provider of the services. The Board noted that "there is no per se rule of law that wording descriptive of the provider or source of services is also necessarily descriptive of those services." Distinguishing the ORLANDO MIRACLE case (involving publications under the inherently distinctive name of the now defunct WNBA team):
In contrast with WNBA, the Examining Attorney’s evidence showed and Applicant conceded that the “phrase (‘UNITED STATES COAST GUARD’) accurately describes a portion of the organization’s primary responsibilities, namely, maritime security, search, rescue, and law enforcement.” We need not and do not decide whether UNITED STATES COAST GUARD is, in fact, the actual “name of applicant’s … [armed] services” as well as “a term which merely describes them.” And Applicant’s offering of employment and recruiting services “in the same manner that it is the mark under which applicant renders” its armed forces services does not elevate the UNITED STATES COAST GUARD wording from its descriptive function when it operates in the same manner, i.e., to describe the recruiting services of that armed force.
And so, the Board upheld the disclaimer requirement. However, because DHS had requested entry of the disclaimer should the Board find that same be required, the application was allowed to proceed with the proposed disclaimer.
Read comments and post your comment here.
TTABlogger comment: The Board's discussion of the ORLANDO MIRACLE case was not the clearest.
Text Copyright John L. Welch 2025.
posted by John L. Welch @ 4/08/2025
9 comments
9 Comments:
I am SO confused by this decision. Words are merely descriptive when they "describe" the SOURCE of the services? What am I missing...PLEASE? USCG USCG isn't a trademark of the USCG?
Is recruiting "employees" for your own benefit a registrable service? would that have been a better basis for refusal?
It is not a service, John. Just like paying your employees is not a service. Great point. I hope someone answers my question because this decision is making my head explode
Although the Board distinguished the ORLANDO MIRACLE case, I think this case is similar for the reason you said. USCG is a protectable mark, like ORLANDO MIRACLE.
Agree that recruiting "employees" for your own benefit should not be a registrable service, but the issue might be premature as this is a 1(b) application with no specimen of use.
Lol wut? This outcome is insane. USCG can't register USCG as a TM because consumers associate USCG with USCG?! Was this decision issued on April 1? Next up, Coca Cola Company can't register COCA COLA as a TM for soft drinks because consumers would immediately know that drinks sold under the COCA COLA mark pertain to products sold by the Coca Cola Company.
This was a clear loser from the outset. Our tax dollars spent on an appeal that should have never been brought.
DOGE - please come to the rescue to stop this wasteful spending!
I'm as confused as Gene. Is MCDONALD'S descriptive for restaurant services because its the source? Isn't the whole point of a mark to identify the source of the goods/services?
@Gene - I believe it is a service. The recruiting also benefits the recruite.
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