This article previously appeared in Last Month at the Federal Circuit, May, 2012.
Judges: Prost, Mayer, Reyna (author)
[Appealed from TTAB]
In In re Chamber of Commerce of the United States of America, No. 11-1330 (Fed. Cir. Apr. 3, 2012), the Federal Circuit affirmed the TTAB's refusal to register the U.S. Chamber of Commerce's ("COC") NATIONAL CHAMBER mark because it was merely descriptive.
COC filed two related intent-to-use applications for the NATIONAL CHAMBER service mark. The first application covered (1) providing online directory information services featuring information regarding local and state chambers of commerce; (2) providing information and news in the field of business; and (3) the administration of a discount program enabling participants to obtain discounts on goods and services (Class 35). The second application covered (1) analysis of governmental policy and regulatory activity relating to businesses to promote the interests of businessmen and businesswomen; and (2) business data analysis (Class 35).
The PTO refused registration of the NATIONAL CHAMBER mark after concluding that it was merely descriptive. The Examining Attorney found the mark unregisterable because it "immediately imparts information about an important feature, function or purpose of the identified services." Slip op. at 4 (citation omitted). COC then appealed to the TTAB. Before hearing the appeal, however, the TTAB twice remanded the case to the Examining Attorney for further prosecution and development of the record. On remand, the Examining Attorney further explained that descriptiveness refusal was proper because NATIONAL describes services nationwide in scope and CHAMBER is descriptive because it "illustrates the purposes of the services—promot[ing] the interests of businessmen and businesswomen," which "is a purpose common to chambers of commerce." Id. (alteration in original) (citation omitted).
The TTAB affirmed the Examining Attorney's refusal, finding that a consumer encountering the NATIONAL CHAMBER mark would immediately understand the mark as conveying information about COC's services. The TTAB relied explicitly on dictionary definitions showing that (1) the word "national" means "of, relating to, or belonging to a nation as an organized whole"; (2) the word "chamber" can refer to "a chamber of commerce"; and (3) "chamber of commerce" is "an association of businesses and/or businesspersons for the promotion of commercial interests in a community." Id. at 4-5 (citation omitted). The TTAB also relied on printouts of COC's website showing its directory and search services for individuals seeking information about local and state chambers of commerce across the United States.
"[W]e 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. . . . Because we find that NATIONAL CHAMBER describes at least one designated service within each of COC's applications, we affirm the descriptiveness refusals." Slip op. at 8 (citation omitted).
On appeal, the Court held that substantial evidence supported the TTAB's finding of descriptiveness. The Court explained that to decide the 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." Id. at 8 (emphasis added) (citation omitted). The Court declined, however, to adopt the government's argument that NATIONAL CHAMBER is merely descriptive of any nationwide service that is within a broad genus of "chamber of commerce services." In refusing to adopt such an expansive general rule, the Court explained that descriptiveness is determined based on the particular services recited in the application and must be supported by evidence of those particularly recited services.
With respect to the first application, the Federal Circuit noted that the TTAB cited printouts of COC's website showing its online directory services for individuals seeking information about chambers of commerce across the country. The Court concluded that NATIONAL CHAMBER was descriptive of such services since it provides information allowing individuals to identify chambers of commerce nationwide. Thus, the Court held that the TTAB's refusal of the application was proper.
Regarding the second application, the Federal Circuit noted that the record showed that chambers of commerce promote the interests of businesspersons generally. The record also included articles indicating that chambers of commerce often engage in activities to help their members network with other businesspeople, become informed about governments' business-related legal and policy decisions, and receive training and support to grow and retain business. The Court held that, on this record, "substantial evidence supports the TTAB's determination that the designated business and regulatory data analysis services are within the scope of traditional chambers of commerce activities." Id. at 9. The Court further explained that it did not need to decide the descriptiveness on that basis alone because NATIONAL CHAMBER also describes the expressly recited function of the first service listed in the application—that the service is performed for the purposes of promoting the interests of businesspersons. Here again, the Court held that the TTAB's refusal of the application was proper.
Finally, the Court addressed COC's argument that the TTAB's reasoning was not expressed with sufficient particularity to allow for meaningful appellate review. The Court noted that the TTAB specifically cited COC's online chambers of commerce directory and found that the promotion of business interests is the main function of a chamber of commerce. The Court explained that "[w]hile the TTAB's decision would have been more helpful to us had it more explicitly tied its particular evidentiary findings to the individually recited services within the two applications, its reasoning in this case is sufficiently clear to permit us to understand why it believed that NATIONAL CHAMBER was descriptive of at least the two services discussed above." Id. at 10. Thus, the Court upheld the TTAB's refusal to register the service mark.
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