Wednesday, April 04, 2012

Chamber of Commerce loses trademark appeal at CAFC

The COC’s service mark, NATIONAL CHAMBER, was refused registration, and the CAFC affirmed.

In passing, within the decision:

In footnote 1:

During prosecution, COC offered a disclaimer of any exclusive rights to the word CHAMBER apart from the composite mark NATIONAL CHAMBER, but only with respect to “providing online directory information services featuring information regarding local and state Chambers of Commerce.” The Examining Attorney deemed this partial disclaimer improper, but that deter- mination was not challenged before the TTAB. COC raises this issue only via a footnote on appeal to this court, and so the issue is waived. SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006) (“[A]rguments raised in footnotes are not preserved.”) (citing various cases).

Of a descriptive mark:

“A term is merely descriptive if it immediately con- veys knowledge of a quality, feature, function, or charac- teristic of the goods or services with which it is used.” In re Bayer Aktiengesellschaft, 488 F.3d 960, 963 (Fed. Cir. 2007) (citing In re Gyulay, 820 F.2d 1216, 1217 (Fed. Cir. 1987)). Whether a mark is descriptive cannot be determined in the abstract. Id. at 963-64.


A descriptive mark can be registered if it has obtained “secondary meaning” or “acquired distinctiveness,” whereby the mark has come to serve a trademark func- tion of identifying a particular source of goods or services. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769 (1992); 15 U.S.C. § 1052(f) (“[N]othing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce.”). To establish secondary meaning or acquired distinctiveness, an applicant must show that “in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself.” Inwood Labs., Inc. v. Ives Labs., 456 U.S. 844, 851 n.11 (1982). COC’s applications in this case are based not on actual use in commerce, but on a bona fide intent to use the NATIONAL CHAMBER mark in connection with the Subject Services, pursuant to 15 U.S.C. § 1051(b). Accord- ingly, COC does not rely on any claim of secondary mean- ing or acquired distinctiveness to overcome the descriptiveness refusal, and we must analyze the mark to determine whether it is by its terms descriptive of the Subject Services based on the evidence of record.


To decide this case, we need only find that NATIONAL CHAMBER immediately conveys information about one feature or characteristic of at least one of the designated services within each of COC’s applications. See Stereotaxis, 429 F.3d at 1041 (“[R]egistration should be refused if the mark is descriptive of any of the goods for which registration is sought.”) (quoting In re Richardson Ink Co., 511 F.2d 559, 561 (CCPA 1975)). Because we find that NATIONAL CHAMBER describes at least one designated service within each of COC’s applications, we affirm the descriptiveness refusals.

Of substantial evidence

Evidence will be deemed substantial “if a reasonable person could find that the evidence is adequate to support the agency’s finding.” In re Mighty Leaf Tea, 601 F.3d 1342, 1346 (Fed. Cir.


In any event, as an appellate tribunal, “we sit to review judgments, not opinions,” Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1540 (Fed. Cir. 1983), and in this case the judgment of the TTAB is supported by substantial evidence.


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