Precedential No. 13: TTAB Reverses Requirement to Disclaim "ARCHITECT" in KORN FERRY ARCHITECT for HR Services

The Board upended the USPTO's refusal to register the mark KORN FERRY ARCHITECT absent a disclaimer of the word ARCHITECT, for, inter alia, "executive search, recruitment and placement services; business consultation services in the field of human resources management and development" and for "providing temporary use of online non-downloadable software in the field of human resources." The evidence failed to show that "architect" "identifies a defined position in the human resources field, or that it "immediately describes any quality, characteristic, feature, function, purpose, or use of any of the services identified in the application." In re Korn Ferry, 2024 USPQ2d 1166 (TTAB 2024) [precedential] (Opinion by Judge Christopher C. Larkin).

Under Section 6(a) of the Lanham Act, the USPTO "may require the applicant to disclaim an unregistrable component of a mark otherwise registrable." The examining attorney here required a disclaimer of the word ARCHITECT on the ground of mere descriptiveness under Section 2(e)(1), primarily arguing that the applicant “may provide its services for architects." He also maintained that "architect" is a human resources industry term for "someone who sets the conceptual and political stage for accomplishing any work related to organizational issues or talent."

The applicant pointed to its eight registrations for marks containing the word ARCHITECT, none of which includes a disclaimer of that term. The Board once again pointed out that each mark must be assessed on its own facts and record, and that "prior decisions and actions of other trademark examining attorneys in registering other marks are not binding upon the USPTO or the Board."

The applicant next argued that KORN FERRY ARCHITECT is a unitary term and therefore no disclaimer should be required. The Board disagreed: "Applicant’s corporate name KORN FERRY is separable from the final word ARCHITECT, and the mark [KORN FERRY ARCHITECT] does not have 'a distinct meaning of its own independent of the meaning of its constituent elements.'"

Finally, the applicant argued that the mark is at most suggestive of the services because "there is no known “human resources architect” position or role in connection with employment and recruitment services."

With respect to the Examining Attorney's argument that the term ARCHITECT is descriptive because it identifies consumers of the recited services, the Board reviewed the few precedents of relevance and concluded:

Taken together, these cases hold that a mark or term comprising part of a mark is merely descriptive of goods or services if it immediately identifies the consumers to which the identified goods or services, or an appreciable number of the goods or services, are at least primarily directed. The possible mere descriptiveness of a term under this theory is determined on the basis of the term itself, the identification of goods or services, and any evidence of the applicant’s use of the term.

Beginning with the "mark itself," the Board found that, "in the context of Applicant’s mark as a whole and the services identified in the application, . . . the word ARCHITECT does not immediately identify a person 'who designs and supervises the construction of buildings or other large structures' as the type of individual to whom all or an appreciable number of Applicant’s services are primarily directed."

As to the identifications of services, the Board found nothing that indicates the consumers of the services. Although the services are identified broadly enough to encompass professional architects as possible consumers. the Board "decline[d] to infer from the identifications alone that the services are primarily directed to, or primarily consumed by, professional architects."

As to applicant's specimen of use, it "does not make it clear that an appreciable part, or even any part, of Applicant’s services are primarily directed to architects." 

Turning to the examining attorney's alternative argument that "architect" is a term of art in the human resources industry, the references cited "do not show that the word identifies a particular defined position in the human resources field, and do not show that the word ARCHITECT in Applicant’s KORN FERRY ARCHITECT mark immediately describes any quality, characteristic, feature, function, purpose, or use of any of the services identified in the application."

The Board has frequently acknowledged the “fine line between suggestive marks and descriptive terms,” and given that fine line, in this case "we must resolve any doubt in favor of finding the term [ARCHITECT] suggestive rather than descriptive.” 

The Board concluded that the examining attorney failed to prove that the word ARCHITECT is merely descriptive of any of the services identified in the application. And so, the disclaimer requirement was rejected and the refusal reversed.

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TTABlogger comment: Korn Ferry sounds to me like a boat trip across the Mississippi from Illinois to Iowa. But then, I lived in central Illinois for ten years. 

Text Copyright John L. Welch 2024.