United States Court of Appeals
for the Federal Circuit
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(Serial Nos. 77/147,075 & 77/975,745)
IN RE THE CHAMBER OF COMMERCE
OF THE UNITED STATES OF AMERICA
__________________________
2011-1330
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Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board.
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Decided: April 3, 2012
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WILLIAM M. MERONE, Kenyon & Kenyon, LLP, of
Washington, DC, argued for appellant. With him on the
brief was EDWARD T. COLBERT.
CHRISTINA J. HIEBER, Associate Solicitor, United
States Patent and Trademark Office, of Alexandria,
Virginia, argued for appellee. With her on the brief were
RAYMOND T. CHEN, Solicitor, and SYDNEY O. JOHNSON, JR.,
Associate Solicitor. Of counsel was THOMAS V. SHAW,
Associate Solicitor.
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Before PROST, MAYER, and REYNA, Circuit Judges.
IN RE CHAMBER OF COMMERCE 2
REYNA, Circuit Judge.
The Chamber of Commerce of the United States of
America (“COC”) appeals the decision of the Trademark
Trial and Appeal Board (“TTAB”) finding that COC’s
service mark, NATIONAL CHAMBER, was correctly
refused registration for being merely descriptive under 15
U.S.C. § 1052(e)(1). Because we find that substantial
evidence supports the TTAB’s finding of descriptiveness,
we affirm.
I. BACKGROUND
This appeal involves two related applications for
COC’s service mark NATIONAL CHAMBER. The two
applications designate the services for which the mark
would be used as follows (collectively, the “Subject Ser-
vices”):
Application Serial No. 77/147,075 (“the ’075 applica-
tion”):
(1) “[p]roviding online directory information ser-
vices featuring information regarding local
and state Chambers of Commerce”; 1
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 pre-
served.”) (citing various cases).
3 IN RE CHAMBER OF COMMERCE
(2) “providing information and news in the field of
business, namely information and news on
current events and on economic, legislative,
and regulatory developments that can impact
businesses”; and
(3) “administration of a discount program ena-
bling participants to obtain discounts on goods
and services.”
Application Serial No. 77/975,745 (“the ’745 applica-
tion”):
(1) “analysis of governmental policy relating to
businesses and analysis of regulatory activity
relating to businesses, all for the purpose of
promoting the interests of businessmen and
businesswomen”; and
(2) “business data analysis.”
The Subject Services are all within International Class
35, which generally encompasses advertising and busi-
ness-related services. 2
The United States Patent and Trademark Office re-
fused registration of the NATIONAL CHAMBER mark
2 Originally, the ’075 application designated the
service of “analysis of data, policy and regulatory activity”
in International Class 45, which generally encompasses
personal and social services. The ’745 application was
subsequently filed as a divisional application of the ’075
application to separate out the International Class 45
services. The Examining Attorney later determined that
the “analysis of data, policy and regulatory activity”
service was improperly classified, and re-assigned it to
International Class 35. The particular descriptions of the
designated services in both applications were amended
throughout prosecution to place them in their final forms
listed above.
IN RE CHAMBER OF COMMERCE 4
pursuant to Section 2(e)(1) of the Lanham Act (15 U.S.C.
§ 1052(e)(1)), which prohibits registration of any trade-
mark which “when used on or in connection with the
goods of the applicant is merely descriptive . . . of them . .
. .” The Examining Attorney initially concluded that
NATIONAL CHAMBER was merely descriptive because
it “immediately imparts information about an important
feature, function or purpose of the identified services.”
A51. 3 Unable to persuade the Examining Attorney to the
contrary, COC appealed to the TTAB. Prior to taking up
COC’s appeal on the merits, the TTAB remanded twice to
the Examining Attorney for further prosecution and
development of the record. In the course of the remand
proceedings, the Examining Attorney further explained
the refusal was proper since NATIONAL describes “ser-
vices that are nationwide in scope,” and CHAMBER is
descriptive of the services 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.” A656-57.
On the merits, the TTAB affirmed the descriptiveness
refusal, finding it “clear” that a consumer encountering
the mark would “immediately understand NATIONAL
CHAMBER, used in connection with applicant’s services .
. . as conveying information about them.” A10-11. The
TTAB relied explicitly on the following evidence to sup-
port its decision:
(1) A dictionary definition showing that the word
“national” means “of, relating to, or belonging
to a nation as an organized whole”;
3 Citations to “A___” herein refer to the Joint Ap-
pendix filed in this appeal.
5 IN RE CHAMBER OF COMMERCE
(2) A dictionary definition showing that the word
“chamber” can refer to “a chamber of com-
merce”;
(3) Dictionary definitions showing that a “cham-
ber of commerce” is an association of busi-
nesses and/or businesspersons for the
promotion of commercial interests in a com-
munity; and
(4) Printouts of COC’s website showing its “direc-
tory” and “search” services for individuals
seeking information about local and state
chambers of commerce across the United
States.
A5-6, A8-10. Based on this evidence, the TTAB concluded
that “[i]t takes no mental leap to understand that appli-
cant is using the mark for the services in both applica-
tions as a national chamber of commerce, whether
promoting the interests of businesspersons or industry on
a national level, or connecting local chambers of com-
merce through a nationwide network.” A11. This appeal
followed. We have jurisdiction pursuant to 28 U.S.C.
§ 1295(a)(4)(B).
II. DISCUSSION
A. The Law of Descriptiveness
“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 deter-
mined in the abstract. Id. at 963-64. Descriptiveness
must be evaluated “in relation to the particular goods for
which registration is sought, the context in which it is
IN RE CHAMBER OF COMMERCE 6
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.” Id.
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.
A mark “need not recite each feature of the relevant
goods or services in detail to be descriptive,” it need only
describe a single feature or attribute. In re Dial-A-
Mattress Operating Corp., 240 F.3d 1341, 1346 (Fed. Cir.
2001) (holding that 1-888-M-A-T-T-R-E-S-S “immediately
conveys the impressions that a service relating to mat-
tresses is available by calling the telephone number”).
Moreover, a mark need not be merely descriptive of all
recited goods or services in an application. A descriptive-
7 IN RE CHAMBER OF COMMERCE
ness refusal is proper “if the mark is descriptive of any of
the [services] for which registration is sought.” In re
Stereotaxis Inc., 429 F.3d 1039, 1041 (Fed. Cir. 2005)
(citations omitted).
The TTAB’s determination that a mark is merely de-
scriptive is a factual finding which we review for substan-
tial evidence. Bayer, 488 F.3d at 964. “Evidence that a
term is merely descriptive to the relevant purchasing
public may be obtained from any competent source, such
as dictionaries, newspapers, or surveys.” Id. (citation and
internal quotation marks omitted). 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.
2010).
B. NATIONAL CHAMBER was Properly
Refused Registration for Descriptiveness
We conclude that substantial evidence supports the
TTAB’s finding of descriptiveness. The dictionary defini-
tions relied upon by the TTAB suggest that NATIONAL
CHAMBER is a mark that might be viewed as descriptive
of services that are nationwide in scope and relate to
chambers of commerce. COC concedes that “national”
means nationwide in scope and that “chamber” is com-
monly used to refer to a chamber of commerce, and COC
does not dispute that a chamber of commerce generally
serves to promote the interests of businesspersons in
various ways. The government contends that all of the
Subject Services are traditionally offered by chambers of
commerce to promote business interests, and urges us to
rule that NATIONAL CHAMBER is merely descriptive of
any nationwide service that is within a broad genus of
“chamber of commerce services.” We decline to announce
such an expansive general rule since descriptiveness is
IN RE CHAMBER OF COMMERCE 8
determined with respect to the particularly recited ser-
vices in an application, and must be supported by evi-
dence that pertains to those particularly recited services.
See Bayer, 488 F.3d at 963-64.
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.
Regarding the ’075 application, the TTAB cited print-
outs of COC’s website showing its online service providing
directory information for local and state chambers of
commerce across the United States. NATIONAL
CHAMBER is descriptive of such services, recited in the
’075 application as “[p]roviding online directory informa-
tion services featuring information regarding local and
state Chambers of Commerce,” since this service provides
information to identify chambers of commerce nationwide.
The descriptiveness refusal of the ’075 application was
therefore proper. See Stereotaxis Inc., 429 F.3d at 1041.
The designated services of the ’745 application are (1)
“analysis of governmental policy relating to businesses
and analysis of regulatory activity relating to businesses,
all for the purpose of promoting the interests of business-
men and businesswomen”; and (2) “business data analy-
sis.” The record shows that chambers of commerce are
organizations that promote the interests of businessper-
sons generally, and includes articles indicating that
9 IN RE CHAMBER OF COMMERCE
chambers of commerce often engage in activities to help
their members network with other businesspersons,
become informed and involved in business-related legal
and policy decisions by governments, and receive training
and support to grow and retain business. 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. We need not decide the descriptive-
ness issue on that basis alone, however, since NATIONAL
CHAMBER also describes the expressly recited function
of the former service listed in the ’745 application—i.e.,
that the service is performed “for the purposes of promot-
ing the interests of businessmen and businesswomen.”
See Bayer, 488 F.3d at 963 (“A term is merely descriptive
if it immediately conveys knowledge of a quality, feature,
function, or characteristic of the goods or services with
which it is used.”) (emphasis added); Stereotaxis Inc., 429
F.3d at 1040-43 (affirming TTAB’s finding that
STEREOTAXIS was descriptive of certain magnetic
medical devices and services because it described their
functions and purposes—performing the “stereotaxis”
brain surgery technique). We therefore find that the ’745
application was properly refused for descriptiveness.
Lastly, we address COC’s contention that the TTAB’s
reasoning was so conclusory as to preclude meaningful
appellate review. We disagree with COC that the TTAB’s
necessary findings were not “expressed with sufficient
particularity to enable our court, without resort to specu-
lation, to understand the reasoning of the Board, and to
determine whether it applied the law correctly and
whether the evidence supported the underlying and
ultimate fact findings.” COC Br. at 15 (quoting Gechter v.
Davidson, 116 F.3d 1454, 1457-58 (Fed. Cir. 1997)) (al-
teration removed). The TTAB specifically cited COC’s
IN RE CHAMBER OF COMMERCE 10
own online chambers of commerce directory, and ex-
pressly found that the promotion of business interests is
the core function of a chamber of commerce. While 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 applica-
tions, 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. See A11 (“It takes no mental leap to
understand that applicant is using the mark for the
services in both applications as a national chamber of
commerce, whether promoting the interests of business-
persons or industry on a national level, or connecting local
chambers of commerce through a nationwide network.”).
This case does not present the kinds of critical omissions
that were present in Gechter, a patent case, where “the
Board’s opinion lack[ed] a claim construction, ma[de]
conclusory findings relating to anticipation, and omit[ted]
any analysis on several limitations.” 116 F.3d at 1460. 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 substan-
tial evidence.
III. CONCLUSION
For the foregoing reasons, the judgment of the TTAB
is
AFFIRMED