Numbers and Model Numbers as Slogans

Numbers in trademarks/slogans can be a problem and lead to a descriptive refusal. If a number describes a characteristic or feature of the goods or services, it can be refused as being descriptive if it cannot be disclaimed (the whole mark can’t be disclaimed). The use of number(s) must typically be arbitrary to be distinctive in a trademark.  


What are other problems with using Numbers and Model Numbers as trademarks?

A trademark examiner can enter a Request for Information as part of an Office Action refusal. This may be a result of the application not being definite enough about the use of the mark and/or its meaning. This can be an early problem for an intent to use application where the applicant is not ready to provide the requested information and must provide this information before the 6-month deadline is reached. Planning and following through on a trademark application strategy (rather than just filling out a form) can help prevent this type of problem.


Here are a couple of examples of number-based trademark refusals:

Request for Information

To permit proper examination of the application, applicant must submit additional product information about the goods.  See 37 C.F.R. §2.61(b); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814.  The requested product information should include fact sheets, instruction manuals, and/or advertisements.  If these materials are unavailable, applicant should submit similar documentation for goods of the same type, explaining how its own product will differ.  If the goods feature new technology and no competing goods are available, applicant must provide a detailed description of the goods.

The submitted factual information must make clear how the goods operate, their salient features, and their prospective customers and channels of trade.  Conclusory statements regarding the goods will not satisfy this requirement.

Applicant must also explain whether “the numbers in the trademark”  have any meaning or significance in the industry in which the goods and/or services are manufactured/provided, or if such wording is a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §814.

Further, applicant must provide additional information about this wording to enable proper examination of the application.  Specifically, applicant must respond to the following questions:  Does the “number in the trademark or trademark phrase” identify a particular type or product?  Are the applicant’s goods used to manufacture a particular type of product?  If so, explain in detail how said goods operate in connection with this trademark and indicate whether the goods are used with other products.

 Failure to respond to a request for information is an additional ground for refusing registration.  See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI, 67 USPQ2d at 1701-02.  Merely stating that information about the goods is available on applicant’s website is an inappropriate response to a request for additional information and is insufficient to make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).  Further, applicant should note that use of the general “mark has no significance” template in the Response to office Action form is not a complete response to this inquiry.

DESCRIPTIVENESS OF THE MARK – SECTION 2(e)(1) REFUSAL

Registration is refused because the applied-for mark merely describes applicant’s services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods and/or services.  TMEP §1209.01(b); see In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987).  Moreover, a mark that identifies a group of users to whom an applicant directs its goods and/or services is also merely descriptive.  TMEP §1209.03(i); see In re Planalytics, Inc., 70 USPQ2d 1453, 1454 (TTAB 2004).

In this case, applicant’s mark, XXX 4, merely describes the fact that applicant’s testing services deal with XXX 4 tests.  See Exhibits A through C.  A mark that combines descriptive words may be registrable if the composite creates a unitary mark with a separate, nondescriptive meaning.  In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968) (holding SUGAR & SPICE not merely descriptive of bakery products because of the mark’s immediate association with the nursery rhyme “sugar and spice and everything nice”).  However, the mere combination of descriptive words does not automatically create a new nondescriptive word or phrase.  See, e.g., In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988) (holding GROUP SALES BOX OFFICE merely descriptive for theater ticket sales services).

The registrability of a mark created by combining only descriptive words depends on whether a new and different commercial impression is created, and/or the mark created imparts an incongruous meaning as used in connection with the goods and/or services.  TMEP §1209.03(d); e.g., In re Copytele, Inc., 31 USPQ2d 1540, 1542 (TTAB 1994); In re Associated Theatre Clubs, 9 USPQ2d at 1662.  Where, as in this case, the combination of the descriptive words creates no incongruity, and no imagination is required to understand the nature of the services, the mark is merely descriptive.

The determination of whether a mark is merely descriptive is considered in relation to the identified goods and/or services, not in the abstract.  In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (C.C.P.A. 1978); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061 (TTAB 1999) (finding DOC in DOC-CONTROL would be understood to refer to the “documents” managed by applicant’s software, not “doctor” as shown in dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (finding CONCURRENT PC-DOS merely descriptive of “computer programs recorded on disk” where relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system).  “Whether consumers could guess what the product is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).  When the mark is viewed in connection with applicant’s goods, consumers would be immediately apprised of the fact that applicant’s testing services are for XXX 4 tests.


If you plan to use a number in a trademark, call us first, they can be tricky but are not usually impossible. We can help. Good trademark strategies come from good planning. Plan to be successful. Call us at 1-651-500-7590  .


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