You guys are going to make me work!
Here's how you are wrong. First of all, John Berryhill argued for 7 pages that my client lacked trademark rights. The panel disagreed and found that we did. Why? First, we were not using ENGINEER to describe engineers. My client provided a job listing/job search service. Is the word ENGINEER descriptive of a job service? There is some relation, when the word is taken in context with an engineer job search site, but that means that the mark is most likely suggestive.
In any event, even if you argue that his mark is somehow descriptive, my client has made extensive use of the mark in commerce in connection with job search services for roughly ten years. He has roughly 70,000 visitors per day to his site and at least 15-20 major corporate clients that currently place jobs with him. Many, many people associate ENGINEER.NET with my client's services.
It is absolutely not true that descriptive marks are not entitled to trademark protection. Let's look at the Trademark Manual of Examining Procedure:
1209.01 Distinctiveness/Descriptiveness Continuum
With regard to trademark significance, matter may be categorized along a continuum, ranging from marks that are highly distinctive to matter that is a generic name for the goods or services. The degree of distinctiveness -- or, on the other hand, descriptiveness -- of a designation can be determined only by considering it in relation to the specific goods or services. Remington Products, Inc. v. North American Philips Corp., 892 F.2d 1576, 13 USPQ2d 1444, 1448 (Fed. Cir. 1990) (the mark must be considered in context, i.e., in connection with the goods).
At one extreme are marks that, when used in relation to the goods or services, are completely arbitrary or fanciful. Next on the continuum are suggestive marks, followed by merely descriptive matter. Finally, generic terms for the goods or services are at the opposite end of the continuum from arbitrary or fanciful marks. As stated in H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986), "[t]he generic name of a thing is in fact the ultimate in descriptiveness."
Fanciful, arbitrary and suggestive marks, often referred to as "inherently distinctive" marks, are registrable on the Principal Register without proof of acquired distinctiveness. See TMEP §1209.01(a).
Marks that are merely descriptive of the goods or services may not be registered on the Principal Register
absent a showing of acquired distinctiveness under 15 U.S.C. §1052(f). See TMEP §1209.01(b) regarding merely descriptive marks, and TMEP §§1212 et seq. regarding acquired distinctiveness. Merely descriptive marks may be registrable on the Supplemental Register. 15 U.S.C. §1091.
How does a mark acquire distinctiveness?
1212 Acquired Distinctiveness or Secondary Meaning
. . . nothing herein shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant's goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. . .
If a proposed mark is not inherently distinctive, it may be registered on the Principal Register only upon proof of acquired distinctiveness, or "secondary meaning," that is, proof that it has become distinctive as applied to the applicant's goods or services in commerce. If the applicant establishes, to the satisfaction of the examining attorney, that the matter in question has acquired distinctiveness as a mark in relation to the named goods or services, then the mark is registrable on the Principal Register under §2(f) of the Trademark Act, 15 U.S.C. §1052(f).
* * *
The purpose and significance of secondary meaning may be described as follows:
A term which is descriptive ... may, through usage by one producer with reference to his product, acquire a special significance so that to the consuming public the word has come to mean that the product is produced by that particular manufacturer. 1 Nims, Unfair Competition and Trademarks at §37 (1947). This is what is known as secondary meaning.
The crux of the secondary meaning doctrine is that the mark comes to identify not only the goods but the source of those goods. To establish secondary meaning, it must be shown that the primary significance of the term in the minds of the consuming public is not the product but the producer (citations omitted). This may be an anonymous producer, since consumers often buy goods without knowing the personal identity or actual name of the manufacturer.
So, the rule is not that a word used in a descriptive manner cannot obtain trademark rights. The rule is that a decriptive mark CAN attain distinctiveness once it is used widely enough that the public associates it with a particular good or service. Some examples of well-known descriptive marks are CHAPSTICK, HOLIDAY INN, FORD MOTOR COMPANY,
and WORLDBOOK ENCYCLOPEDIA.
The rule that I believe that you are confusing is where "Company A" owns a dictionary word trademark, but uses their mark in a non-descriptive way -- let's say APPLE to sell computers and iPods. "Company B" registers <Apple.biz> and starts selling apples -- a descriptive use. Company A claims that Company B infringed its rights. In such a case, Company A's rights would likely be limited, and Company B's use would likely be legitimate.
I have no fever. I am perfectly well!!!
