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Federal Circuit Affirms Refusal to Register 'National Chamber'; Says Mark Is Descriptive

Monday, April 9, 2012
By Tamlin H. Bason

“National Chamber” is merely descriptive of a nationwide organization that focuses on promoting the interests of business, and thus the term cannot be registered as a trademark by the Chamber of Commerce if the United States of America, the U.S. Court of Appeals for the Federal Circuit held April 3 (In re Chamber of Commerce of the United States, Fed. Cir., No. 2011-1330, 4/3/12).

The court affirmed the Trademark Trial and Appeal Board's decision upholding the Patent and Trademark Office's refusal to register the mark after determining that the applied for mark was merely descriptive of the services that were offered by the Chamber of Commerce, and thus not registrable under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d).

Chamber of Commerce Seeks ‘National Chamber' Mark
In 2007 the Chamber of Commerce filed two intent-to-use applications for the “National Chamber” mark under Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b) (77/147,075, 77/975,745). The trademark examining attorney refused registration after determining that the mark was merely descriptive and thus not registrable under Section 2(d) of the Trademark Act. Specifically, the examining attorney initially determined that the term National Chamber “immediately imparts information about an important feature, function or purpose of the identified services.”

The Chamber appealed the refusal to the TTAB, and the board subsequently remanded back to the examining attorney twice with instructions to further develop the record. Ultimately, the examining attorney refused registration after determining that the word “National” described nationwide services and the word “Chamber” defined those nationwide services as being related to the promotion of business and industry.

Before making its ruling, the TTAB looked to dictionary definitions for the words “national” and “chamber” and for the phrase “chamber of commerce.” The TTAB also examined printouts from the Chamber's website in which it described the services that it offered. The TTAB then affirmed the refusal, finding the National Chamber mark to be descriptive of the services that the Chamber intended to offer under the mark.

The Chamber appealed to the Federal Circuit.

Court Refuses to Issue ‘Expansive General Rule.'
The Patent and Trademark Office sought a ruling that held the term to be merely descriptive of “any nationwide service that is within the broad genus of ‘chamber of commerce services.' ”

But the court said that such “an expansive general rule” was unnecessary because “descriptiveness is determined with respect to the particularly recited services in the application, and must be supported by evidence that pertains to those particularly recited services.”

Mark is Descriptive of One or More Chamber Services
The Chamber's ‘745 application stated that the services being offer under the applied for mark will be:
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; business data analysis.

The ‘075 application states that the services will include:
Providing online directory information services featuring information regarding local and state Chambers of Commerce; providing information and news in the field of business, namely, information and news on current events and on economic, legislative, and regulatory developments as it relates to and can impact businesses; administration of a discount program enabling participants to obtain discounts on goods and services.

Looking to the record, Judge Jimmie V. Reyna noted, “chambers of commerce are organizations that promote the interests of businesspersons generally” by, among other things “engag[ing] in activities to help their members network with other businesspersons, become involved in business-related legal and policy decisions by governments, and receive training and support to grow and retain business.”

Thus, the court concluded that the mark was merely descriptive of the Chamber's services relating both to business promotion and data analysis.

Indeed, the court pointed out that the ‘745 application states that the services will be performed “for the purpose of promoting the interests of businessmen and businesswomen.” Accordingly, the court said the proposed mark “expressly describes” the service. The court then affirmed the TTAB's judgment upholding the PTO's refusal to register the mark.

Judges Sharon Prost and Robert Meyna joined the opinion.

The Chamber was represented by William M. Merone of Kenyon & Kenyon, Washington, D.C. The PTO was represented by Christina J. Hieber.

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