“A term is merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used.” In re Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer AG, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); see also In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015). This requires consideration of the context in which the mark is used or intended to be used in connection with those goods or services, and the possible significance that the mark would have to the average purchaser of the services in the marketplace. Chamber of Commerce, 102 USPQ2d at 1219; Bayer, 82 USPQ2d at 1831; In re Omaha Nat'l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987). The issue is whether someone who knows what the goods or services are will understand the mark to convey information about them. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).

“A mark may be merely descriptive even if it does not describe the ‘full scope and extent' of the applicant's goods or services.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)). It is not necessary that a term describe all of the purposes, functions, characteristics, or features of a product or service to be considered merely descriptive; it is enough if the term describes one significant function, attribute, or property. Chamber of Commerce, 675 F.3d at 1300 (citing Dial-A-Mattress, 57 USPQ2d at 1812).

A competitive need to use a phrase is probative but not required to finding that a phrase is merely descriptive. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1514 (TTAB 2016) (“Under the current standard, there is no requirement that the Examining Attorney prove that others have used the mark at issue or that they need to use it, although such proof would be highly relevant to an analysis under Section 2(e)(1).”); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009) (competitor need is not the test for descriptiveness).

UNRIVALED LUXURY

The TTAB recently affirmed a refusal to register the UNRIVALED LUXURY mark for “Cruise ship services” as being merely descriptive under Section 2(e)(1). In re Seven Seas Cruises S. de R.L., Ser. No. 97219378 (TTAB Jan. 29, 2024).

The words “unrivaled luxury” had “no unique or incongruous meaning in relation to cruise ship services other than as a superlative,” and “no mental leap or multi-stage reasoning is required to understand that Applicant intends to market high-end cruise services.”

The TTAB also found that the evidence of record showed “it is not uncommon for competitors in the cruise ship industry to use the phrase ‘unrivaled luxury' to tout lavish features and amenities.”

Competitors in the cruise ship field should be free to continue to use this merely descriptive language when describing their own cruise ship services to the public in advertising and marketing materials

Thus, the TTAB concluded that UNRIVALED LUXURY was merely descriptive of “the superlative and extravagant nature of Applicant's cruise ship services.”

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.