After 5 years of fighting for trademark registration, the U.S. Chamber of Commerce (COC) might feel like it faced a basilisk, but it was actually a Federal Circuit panel. (The Federal Circuit’s opinion came out 5 years to the day after the COC filed its application.) Unfortunately, the COC didn’t have the Sword of Gryffindor in its trademark application, and its registration request was denied.
In re The Chamber of Commerce of the United States of America, No. 2011-1330 (Fed. Cir. Apr. 3, 2012) (Judges Prost, Mayer, and Reyna)
The COC applied for registration for NATIONAL CHAMBER for services within International Class 35, which includes, generally, advertising and business-related services. In particular, the NATIONAL CHAMBER mark would apply to “providing online directory information services featuring information regarding local and state Chambers of Commerce” and “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.”
The examiner rejected the application, stating that the mark was merely descriptive with respect to the description of the services. The Trademark Trial and Appeal Board (TTAB) agreed (although it sent the case back to the examiner twice to get a more complete record). And the Federal Circuit concluded that there was enough evidence to support the TTAB’s decision, so it affirmed.
The Federal Circuit’s opinion is straightforward—so straightforward it’s almost hard to explain. The court relied primarily on dictionary definitions of “national,” “chamber,” and “chamber of commerce” and on printouts of the COC’s website directory of local and state chambers of commerce. Based on the definitions of those terms, the court said that NATIONAL CHAMBER describes “providing online directory information services” for local chambers of commerce because the website identifies chambers of commerce nationwide. Also, since a chamber of commerce promotes commercial interests, NATIONAL CHAMBER describes the service of analyzing business policy “for the purpose of promoting the interests of businessmen and businesswomen.” The court (and I) agreed with the TTAB that “it takes no mental leap” to get from NATIONAL CHAMBER to the identified services.
Advice from Above
While the “merely descriptive” analysis is pretty simple, the Federal Circuit made a few remarks that are worth noting. First, the court rejected the government’s argument that NATIONAL CHAMBER was descriptive of any nationwide service within a general category of “chamber of commerce services.” The court reminded the government that descriptiveness is determined only with respect to the goods or services listed in the application, not to broad classifications.
Second, the court also rejected the COC’s argument that the TTAB’s decision was so conclusory that the Federal Circuit couldn’t meaningfully review the case. The court noted that “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” in the COC’s applications, but the decision was meaty enough to give the court something to work with. This is a useful bit of guidance for the TTAB, though. We’ll see if they follow this suggestion in the future.
I’d like to point out that this is the fourth trademark opinion the Federal Circuit has issued this year, and it’s also the fourth trademark opinion that the court has designated precedential—and it’s only April. Those stats are much higher than last year, when there were only 6 Federal Circuit trademark opinions in the entire year—2 of which were affirmed without a written opinion—and only 2 were designated precedential. It’s shaping up to be an interesting year on the Federal Circuit’s trademark docket!