Lottery trademark rejected by Federal Circuit
The US Court of Appeals for the Federal Circuit has rejected the registration of the trademark ‘First Tuesday’, applied for by North Carolina Lottery.
‘First Tuesday’ was meant to market the introduction of new scratch-off lottery games on the first Tuesday of each month, according to NC Lottery.
But in a precedential decision handed down yesterday, the court held that the mark was descriptive, affirming a rejection by the Trademark Trial and Appeal Board (TTAB).
“In other words, the evidence shows that the mark is less an identifier of the source of goods or services and more a description of a feature or characteristic of those goods or services,” said Chief Judge Sharon Prost, on behalf of the court.
NC Lottery had applied for the mark in October 2014, for “lottery cards; scratch cards for playing lottery games” and for “lottery services”.
Along with its application, the lottery submitted specimens, including promotional materials that had explanatory text such as “new scratch-offs” and “new scratch-offs the first Tuesday of every month”.
The examining attorney refused registration based on descriptiveness, so NC Lottery appealed to the TTAB, which affirmed the refusal.
“It found that ‘[n]o mental thought or multi-step reasoning is required to reach a conclusion as to the nature of the involved goods and services’,” said the Federal Circuit on the TTAB’s reasoning.
NC appealed to the Federal Circuit, arguing that the board erred by “relying on the explanatory text of the specimens to supplement the meaning of the mark itself”.
The lottery claimed that “some imagination is needed in order to connect the mark ‘First Tuesday’
with [its] goods and services” and that the enquiry should have been limited to what a consumer with “only general knowledge” of NC Lottery’s goods and services would understand the mark to mean.
The Federal Circuit held that the board didn’t err by considering the explanatory text of the specimens and that substantial evidence supports the TTAB’s finding of mere descriptiveness.
NC Lottery also argued that, as it was necessary to explain the connection between the mark and its goods and services, the mark is not descriptive.
It relied on cases such as Tumblebus v Cranmer and Swatch v Beehive Wholesale as examples where courts have relied in part on explanatory text to find that a mark was not merely descriptive.
However, the Federal Circuit replied that not only are these cases not binding on this court, they are also distinguishable from the current facts.
“Understanding that ‘First Tuesday’ refers to a new good or service being offered on the first Tuesday of a month requires much less of a mental leap than that which was required in Tumblebus and Swatch,” said Prost.
In conclusion, she said: “The commercial context here demonstrates that a consumer would immediately understand the intended meaning of ‘First Tuesday’.”
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