Text from an application’s own specimen of use (“specimen”) can render a trademark merely descriptive of the features of its goods or services, and thus unregistrable. That is the ruling from the precedential August 10, 2017 Federal Circuit opinion In Re: North Carolina Lottery. This opinion presents a case study of what (and what not) to submit as a specimen of use to the Trademark Office in order to satisfy the use in commerce requirement.
As background, North Carolina Lottery (“NCL”) introduced new scratch-off games on the first Tuesday of each month consistently since 2006. Starting in 2013, NCL began using a trademark FIRST TUESDAY in print materials, on its website, and on point-of-sale displays for related advertising. As a result, in 2014 NCL filed a §1(a) in-use trademark application for FIRST TUESDAY for “lottery cards; scratch cards for playing lottery games.” With this application, NCL submitted specimens of use, including promotional materials that had explanatory text such as “New scratch-offs” or “New scratch-offs the first Tuesday of every month.” The application was refused because the mark merely described features of its goods and services, namely, new versions of the goods are offered on the first Tuesday of every month. The TTAB affirmed.
In affirming the above ruling, the Federal Circuit explained that a mark must be considered in its commercial context, for example in view of a specimen of use, to determine the public’s perception. Acknowledging that this contextual analysis is case-by-case, the question is whether someone who knows what the goods and services are will understand the mark to convey information about them. In the instance of NCL, the explanatory text accompanying the FIRST TUESDAY mark in the specimens uncomplicatedly described the relevant features or characteristics of the lottery games. As a result, a consumer would immediately understand the intended meaning of FIRST TUESDAY in the context of the specimens.
Of note, NCL unsuccessfully presented two examples in attempting to argue that courts have actually relied in part on explanatory text to find that a mark was not descriptive. In one, a trademark holder found it necessary to include the explanatory text “gym on wheels” in advertising for TUMBLEBUS for mobile gymnastics instruction services. However, the connection between FIRST TUESDAY and its reference to when the new lottery games are being offered was deemed much closer and required much less of a mental leap than the connection between TUMBLEBUS and its services.
Accordingly, it is wise to analyze any proposed or in-use trademark in the context of what it is intended to convey to the consumer, how it will be presented to the consumer, and in reference to its goods and services. Also, try to include people from different perspectives, for example sales, marketing and legal, in your analysis before proceeding.

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