Prior Registration Defense Not Available When a Mark is Challenged as Merely Descriptive

Author: Naresh Kilaru

Can a mark be challenged as merely descriptive when the owner of the mark also owns an incontestable registration for the identical mark covering substantially identical services? The Board recently addressed this question in Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ.2d 1458 (TTAB 2014).

The petitioner in this case owned two registrations for the mark PERKS covering volume discount buying services. One registration was incontestable; the other was not. Petitioner sought to cancel a registration for the mark PERKSPOT covering similar services based on a likelihood of confusion. Respondent counterclaimed that Petitioner’s PERKS mark was generic (with respect to the incontestable registration) or descriptive (with respect to the other registration).

As to the genericness counterclaim, the Board found that PERKS was not generic because a volume discount buying service is not, by its nature, a “perk” (i.e., an employee benefit). As to the descriptiveness counterclaim, the petitioner argued that because its two registrations for PERKS covered substantially identical services and one was incontestable, there was no way the respondent could be damaged by the second registration under Morehouse Manufacturing Corp. v. J. Strickland and Co., 160 USPQ 715, 717 (CCPA 1969) (“the opposer cannot be damaged . . . by the issuance to the applicant of a second registration where applicant already has an existing registration of the same mark for the same goods”). The Board rejected this argument, holding that because the prior registration defense set forth in Morehouse is purely equitable in nature, it can be raised only in connection with equitable defenses such as laches or acquiescence. It is not available against a claim of mere descriptiveness. The rationale underlying this principle is that it is in the public interest to cancel registrations of descriptive marks, no matter how long a party may have delayed and regardless of whether the mark owner also owns an incontestable registration for the identical mark.

The Board ultimately found PERKS to be descriptive on the ground the mark directly conveyed information about a characteristic of the petitioner’s services. The respondent’s descriptiveness counterclaim was therefore sustained and that particular registration of petitioner’s cancelled. With respect to the petitioner’s remaining incontestable registration for PERKS, the Board found there was no likelihood of confusion between PERKS and respondent’s PERKSPOT mark based on the fact that petitioner’s mark was descriptive (entitling it to only a narrow scope of protection) and the marks were sufficiently distinguishable.

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