The TTAB issued a precedential decision clarifying that there is no per se rule that a term that is descriptive of the source of goods is necessarily descriptive of the applied-for goods. Based on that determination, the TTAB reversed an examining attorney's refusal to register the mark CO-OP for bicycles and related goods because CO-OP did not describe characteristics of the bicycle goods at issue.
Retailer Recreational Equipment Inc. applied to register the mark CO-OP for bicycles and related goods. The examining attorney cited Section 1209.03(q) of the Trademark Manual of Examining Procedure ("Terms that identify the source or provider of a product or service may be merely descriptive under 15 U.S.C. § 1052(e)(1) or generic") and a 2001 precedential decision, In re Major League Umpires, 60 USPQ2d 1059 (TTAB 2001), which 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." Acknowledging REI's well-known status as a consumer cooperative, the examining attorney reasoned that the mark "co-op," as an abbreviation for "cooperative," was merely descriptive of REI. The examining attorney then concluded that "co-op" merely described a feature or characteristic of REI's goods. Because the Lanham Act prohibits registration of marks that are merely descriptive of the goods or services, the examining attorney refused registration of the mark.
REI appealed the decision to the TTAB. REI agreed that "co-op" described something about itself as an entity but denied that it described the goods in the application, namely, bicycles and bicycle parts. REI also asserted that entity identifiers are not per se merely descriptive. Finally, REI argued that doubts about the mark's distinctiveness should be resolved in its favor by allowing the mark to proceed to publication for opposition.
The TTAB noted that although the examining attorney found that "co-op" was descriptive of REI, the examining attorney did not make a finding that "co-op" was descriptive of the bicycle goods at issue. In effect, the examining attorney had adopted a per se rule that a mark descriptive of the source of goods was also descriptive of the goods themselves. The TTAB explained, however, that such a per se rule does not exist and would be inconsistent with the statutory text.
The TTAB distinguished the "broad" language of In re Major League Umpires, pointing out that the facts of the case were "unusual." In that case, the applicant—an entity created and operated by a group of Major League Baseball umpires—applied to register the mark MAJOR LEAGUE UMPIRE for baseball clothing and protective gear, including gear used by umpires. The applicant's advertisements touted the fact that it was owned and operated by three National League umpires, who also designed some of the goods themselves. Considering the evidence, the TTAB had concluded that MAJOR LEAGUE UMPIRE not only described the applicant, but also described characteristics of the goods: the goods were designed by major league umpires and were of a type used by major league umpires. Additionally, the advertising for the applied-for goods emphasized these descriptive characteristics. Major League Umpires, then, was an example of a case in which a mark was merely descriptive of the proposed goods because it provided specific information about the source of the goods.
In this case, however, a finding that "co-op" was descriptive of REI was not sufficient to support the refusal of the mark on descriptiveness grounds, because it did not support a finding that "co-op" immediately conveyed to consumers information about a quality, feature, or characteristic of the bicycle-related goods at issue. Here, the record lacked evidence that third parties or trade publications used "co-op" or "cooperative" in connection with bicycles or bicycle parts, or that REI's advertising used "co-op" descriptively in connection with the bicycles and parts. Consequently, although "co-op" described REI's business structure, it was not descriptive of the applied-for goods, and the TTAB reversed the refusal to register.
The case is In re Recreational Equip., Inc., No. 87186780, 2020 WL 6938376 (Nov. 20, 2020).
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