October 25, 2021

Volume XI, Number 298

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October 22, 2021

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CAFC Upheld TTAB’s Decision to Deny Registration of a Mark Merely Descriptive of a Feature of Goods and Services

IN RE:  NORTH CAROLINA LOTTERY:  August 10, 2017.  Before Prost, Chen and Hughes. 

Takeaway:

  • As a legal matter, the TTAB did not err by considering the explanatory text of the specimens in the inquiry of whether the mark was descriptive.

  • A mark that merely describes a feature of goods and services in view of the explanatory text of the specimens and the commercial context is merely descriptive.

Procedural Posture:

Appellant, North Carolina Lottery, appealed the TTAB’s decision denying registration of a mark in connection with lottery services and games.  CAFC affirmed.

Synopsis:

  • Trademark: The CAFC affirmed the TTAB’s decision denying registration of the mark “FIRST TUESDAY.”  The TTAB did not err by considering the explanatory text of the specimens in the inquiry of whether the mark was descriptive.  Substantial evidence supported the TTAB’s finding that “FIRST TUESDAY” was a merely descriptive mark.  The commercial context demonstrated that a consumer would immediately understand that the mark referred to a new good or service being offered on the first Tuesday of a month.  The mark was less an identifier of the source of goods or services and more a description of a feature or characteristic of those goods or services.

Copyright © 2021, Hunton Andrews Kurth LLP. All Rights Reserved.National Law Review, Volume VII, Number 298
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About this Author

Gregory L. Porter, Intellectual Property Attorney, Andrews Kurth, Law Firm
Partner

Greg Porter has extensive experience representing and advising companies in all aspects of patent and trade secret law, including acting as lead counsel in successful jury trials and preliminary injunction hearings, as well as advising on patent procurement and designing around competitor's patents. Greg also has counseled Fortune 500 clients on the creation and management of their patent portfolios.

Over the years, Greg has successfully litigated cases in a diverse range of technologies from oil field tools to polymers and computer networking. Greg has drafted and...

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Zaed Billah, Andrews Kurth Law Firm, Patent Litigation Attorney
Associate

Zaed has a decade of experience with patent litigation in U.S. District Courts and the U.S. International Trade Commission. He also has substantial experience with inter partes review proceedings in the U.S. Patent and Trademark Office and with appeals before the U.S. Court of Appeals for the Federal Circuit.

Zaed’s litigation responsibilities include taking and defending fact and expert depositions, writing motions and briefs, examining witnesses at trial, and preparing witnesses for deposition and trial. His recent litigations...

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Qi Zhao patent law attorney Andrews Kurth Law Firm
Associate

Qi has over eight years of experience in assisting clients on patent matters. She has handled more than 100 opinion matters in the areas of pharmaceuticals, chemicals and medical devices. She prepares infringement, validity and freedom-to-operate opinions relating to filings of Abbreviated New Drug Applications and 505(b)(2) New Drug Applications by a generic drug manufacturer. She also prepares and prosecutes patent applications in various technical areas, including small molecule pharmaceuticals, biologics, antibodies, vaccines, diagnostic assays, personalized medicine, food products,...

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