In re The Chamber of Commerce of the United States of America, 2012 WL 1088818, (Fed. Cir. 2012)
The Chamber of Commerce of the United States of America (“COC”) appeals the Trademark Trial and Appeal Board’s (“TTAB”) finding that the service mark NATIONAL CHAMBER is merely descriptive and therefore cannot be registered with the United States Patent and Trademark Office (“USPTO”).
The USPTO refused registration of the mark NATIONAL CHAMBER pursuant to 15 U.S.C. § 1052(e)(1), which prohibits registration of a mark which is merely descriptive of the goods and services it is registered for. As such, the Examining Attorney concluded that NATIONAL CHAMBER “immediately imparts information about an important feature, function or purpose of the identified services.” Furthermore, upon remand from the TTAB, the Examining Attorney pointed out that NATIONAL describes “services that are nationwide in scope,” and CHAMBER describes the promotion of business interests, which “is a purpose common to chambers of commerce.” Finally, the TTAB relied on the dictionary definitions of “national”, “chamber” and “chamber of commerce” and printouts of the COC’s website to further support it’s refusal to register the mark based on descriptiveness.
In it’s analysis, the Federal Circuit noted that the descriptiveness of a mark is judged “in relation to the particular goods for which registration is sought, the context in which it is being used, and the possible significance that the term would have to the average purchaser of the goods because of the manner of its use or intended use.” Thus, the Federal Court looked at services specifically listed in COC’s application, not any service that would fall under chamber of commerce services generally. In addition, the Federal Circuit stated that the mark must not be descriptive of all services listed in the application, but rather, the mark can be descriptive even if it only describes one designated service.
As a result, based on the same evidence used by the TTAB, the Federal Court affirmed the TTAB’s determination that the mark NATIONAL CHAMBER is merely descriptive. The court went on to conclude that the designated services on the application are “within the scope of traditional chambers of commerce activities.”
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