MN Group, LLC

Trademark Trial and Appeal Board

Mar 30, 2017

No. 86879481 (T.T.A.B. Mar. 30, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: March 30, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re MN Group, LLC
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Serial No. 86879481
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Eugene Beliy of BreanLaw LLC,
for MN Group, LLC.

David C. Reihner, Trademark Examining Attorney, Law Office 111,
Robert L. Lorenzo, Managing Attorney.
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Before Kuhlke, Cataldo, and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Applicant MN Group, LLC seeks registration of PRESS PAPERS, in standard
characters, for “providing a website featuring resources, namely, non-downloadable
publications in the nature of newsletters, white papers, press releases in the field of
health, education, and business” in International Class 41.1

1 Application Serial No. 86879481 was filed on January 19, 2016, based on Applicant’s
allegation of a bona fide intention to use the mark in commerce under Trademark Act Section
1(b), 15 U.S.C. § 1051(b).
Serial No. 86879481
2

The Examining Attorney has refused registration on the ground that the proposed
mark is merely descriptive of the identified services within the meaning of Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1). After the refusal was made final,
Applicant appealed. We reverse the refusal to register.
Trademarks can be categorized along a continuum of distinctiveness, from generic
and descriptive to suggestive, arbitrary, and fanciful terms. See In re Hotels.com LP,
573 F.3d 1300, 9 USPQ2d 1532, 1534 (Fed. Cir. 2009); In re Davia, 110 USPQ2d 1810,
1814 (TTAB 2014); In re Ruffin Gaming LLC, 66 USPQ2d 1924, 1932 (TTAB 2002).
A mark is suggestive if it “requires imagination, thought, and perception to arrive at
the qualities or characteristics of the goods or services.” In re Franklin Cty. Historical
Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012). A term is merely descriptive within the
meaning of Section 2(e)(1) if it immediately conveys knowledge of an ingredient,
quality, characteristic, function, feature, purpose, or use of the goods or services with
which it is used. See, e.g., In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102
USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009,
1009 (Fed. Cir. 1987).
Whether a particular term is merely descriptive must be determined not in the
abstract, but in relation to the goods or services for which registration is sought, the
context in which the mark is used, and the possible significance that the mark is
likely to have to the average purchaser encountering the goods or services in the
marketplace. See, e.g., In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574, 1575 (Fed.
Cir. 2015); Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458,
Serial No. 86879481
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1473 (TTAB 2014). In other words, the issue is whether someone who knows what
the goods or services are will understand the mark to convey information about them.
In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1512 (TTAB 2016).
As noted supra, the services recited in the application are “providing a website
featuring resources, namely, non-downloadable publications in the nature of
newsletters, white papers, press releases in the field of health, education, and
business.” The only evidence submitted by the Examining Attorney are two dictionary
definitions from Oxford University Press (2016) for, in most relevant part:
• Press: “(the press) [TREATED AS SINGULAR OR PLURAL] Newspapers or
journalists viewed collectively” and “Coverage in newspapers and
magazines.”2
• Paper: “(usually papers) A piece or sheet of paper with something
written or drawn on it”; “(papers) Significant or important documents
belonging to a person”; and “A government report or policy document.”3
We cannot conclude, based on the record evidence, that someone who knows what
Applicant’s services are will understand PRESS PAPERS to convey information
about them. Although Applicant’s services include providing a website featuring non-
downloadable “press releases” and “white papers,” PRESS and PAPERS – alone and
in combination – are simply too vague on this record to signify to purchasers the types
of resources provided through Applicant’s recited services. Therefore, we find
Applicant’s mark to be suggestive.

2 May 4, 2016 Office action at TSDR 9 (from oxforddictionaries.com/us/definition/american_
english/press/#press).
3 Id. at TSDR 2-3 (from oxforddictionaries.com/us/definition/american_english/paper/#
paper).
Serial No. 86879481
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Decision: The refusal to register is reversed, and the application will proceed to
publication in due course.