On My Mind Blog

Background

A descriptive term immediately conveys information about a feature, quality, or characteristic of a product or service rather than its source. Such a mark is not registrable on the U.S. Principal Register (which is for marks that actually distinguish the source of goods or services). 

However, such a mark can be registered on the U.S. Supplemental Register (which is for descriptive marks capable of acquiring source significance through use and advertising, known as “secondary meaning”). See our Blog post on “The U.S. Supplemental Register.”

Once a descriptive mark can be shown to have acquired secondary meaning, it can be registered on the Principal Register.

A generic term is the common name for a class or category of goods or services.  It generally can never become a source indicator, and such a mark cannot be registered on either Register.

Determining whether a term is generic is a question of fact, which involves a two-step inquiry:

1. What is the genus, or class or category, of goods or services at issue; and
2. Does the relevant consumer for those goods or services understand the term primarily to refer to that genus.

If the Examining Attorney establishes an apparent case that a term is generic by a preponderance of the evidence, the burden shifts to the applicant to present rebuttal evidence.  This evidence may include listings in dictionaries, trade journals, newspapers magazines, or websites, purchaser testimony, consumer surveys, and the applicant’s own uses of that term.

When two generic terms are strung together to create a compound term, courts must determine whether the combination conveys some distinctive, source-identifying meaning that each component term individually lacks.  If not, then the compound term itself is generic.

The FOODANALYZER case

Access Medical Laboratories, Inc. applied to register FOODANALYZER in plain lettering as a mark for food sensitivity testing services.  The Examining Attorney found this mark to be merely descriptive of the services and refused registration on the Principal Register.  Since Applicant had used this mark for only about four months, it could not claim that it had acquired secondary meaning.

After that, Applicant amended its application to seek to register its mark on the Supplemental Register.  The Examining Attorney then refused registration on the Supplemental Register on the ground that the mark was generic for the services and therefore incapable of acquiring source significance.

Applicant appealed to the Trademark Trial and Appeal Board (TTAB), which found the mark to be merely descriptive, rather than generic, and reversed the Supplemental Register refusal.

Genus.  Everyone agreed that the genus of services was coextensive with the identification in the application—food sensitivity testing services.

Consumer Understanding.  The ultimate question was whether consumers who buy, use, or provide such services understand FOODANALYZER primarily to be the common name of those services as distinguished from a mere description of those services.

The record included dictionary definitions for “food” and “analyzer” separately, but not the compound term “foodanalyzer.”  Applicant contended that the compound term was ambiguous in that it could refer to analyzing food itself, analyzing a person’s reaction to food, or analyzing dietary patterns more broadly. The TTAB gave that argument limited weight because it did not focus on the broader question of relevant public understanding. The TTAB pointed out that a term may be highly descriptive of services without being generic for them.

The evidence also included third-party service lists using “food analyzer” without much context; other third-party uses, some with house marks or trademark symbols, suggesting source-identifying intent; other third-party wording suggesting that they were referring to Applicant’s own test; and the Applicant’s own uses of its mark in a stylized manner clearly intended to be source-identifying. 

The TTAB viewed this record as “mixed” creating doubt about whether consumers perceive the compound term primarily as a common name rather than as a merely descriptive term.

Conclusion.  As the TTAB recognized, it is not always an easy task to distinguish between what is highly descriptive and what is generic.  The TTAB applied the principle that doubt must be resolved in favor of the Applicant.

Accordingly, the TTAB reversed the refusal to register the merely descriptive mark FOODANALYZER on the Supplemental Register.

In re s Medical Laboratories, Inc., Application No. 97708719 (T.T.A.B. June 9, 2026).

For further information, please contact William M. Borchard or your CLL attorney.