The U.S. Court of Appeals for the Federal Circuit upheld the decision of the Trademark Trial and Appeal Board (TTAB) to refuse the service mark “NATIONAL CHAMBER” as merely descriptive of the web services promoted by the Chamber of Commerce of the United States of America. In re The Chamber of Commerce of the United States of America, Case No. 11-1330 (Fed. Cir., Apr. 3, 2012) (Reyna J.).
The U.S. Chamber of Commerce (COC) filed two intent-to-use applications for the service mark NATIONAL CHAMBER in conjunction with services for directory information regarding state and local chambers of commerce, information and news in the field of business, and discount programs for goods and services, as well as analysis of governmental policy and regulatory activity relating to businesses for the purpose of promoting the interests of businessmen and businesswomen, and business data analysis. The examining attorney refused registration of the mark pursuant to Section 2(e)(1) of the Lanham Act, which prohibits registration of any trademark that is merely descriptive of the goods or services with which it is used. The examining attorney reasoned that NATIONAL describes services that are nationwide in scope, and CHAMBER is descriptive of services that promote the interests of businesspersons, a purpose common to chambers of commerce.
The TTAB affirmed the examiner’s refusal. The TTAB reviewed the U.S. COC’s website and certain articles from local chambers of commerce describing their services. The TTAB also relied on a dictionary definition of “chamber” that can refer to “a chamber of commerce,” and a definition of “chamber of commerce,” which is an association of businesses and/or businesspersons for the promotion of commercial interests. The U.S. COC appealed the refusal to the Federal Circuit.
On appeal, the Court noted that there could be no recourse to secondary meaning or acquired distinctiveness because the applications are based not on actual use, but intent to use. Thus, the analysis must turn on the descriptiveness of the terms themselves. Further, a mark is merely descriptive if it describes even a single feature or attribute of the relevant goods or services; it need not recite each and every feature in detail.
The Court found that substantial evidence to support the TTAB’s factual finding that the mark was merely descriptive of at least one of the services described in the applications. The Court cited as examples services for providing directory information regarding local and state chambers of commerce, promotion of the interests of businesspersons and activities to help members become informed and involved in business-related legal and policy decisions by governments.
Further, the Court noted that a term is merely descriptive if it immediately conveys knowledge of a function of the goods and services for which it is to be used. Because the applications expressly recite the function of promoting the interests of businesspersons, within the traditional sphere of chambers of commerce, registration of the mark was rightly refused for being merely descriptive of that function.