Court: Court of Appeals for the Federal Circuit; August 15, 2003; Federal Appellate Court
MBNA America Bank, N.A. (MBNA) appealed a decision from the United States Patent and Trademark Office's Trademark Trial and Appeal Board (the Board) that affirmed the Examining Attorney's refusal to register the marks MONTANA SERIES and PHILADELPHIA CARD under Section 2(e)(1) of the Lanham Act, which prohibits the registration of merely descriptive marks. The Board found that both marks were merely descriptive of credit card services featuring images related to Montana and Philadelphia, respectively.
MBNA initially filed intent-to-use applications for the marks in 1993, later amending their descriptions to specify that the cards depicted scenes from the respective regions. The term "CARD" in PHILADELPHIA CARD was disclaimed. After various rejections and adjustments, the Examining Attorney concluded that the marks were descriptive, leading to MBNA's appeal.
The Board determined that MBNA's services constituted "regional affinity" credit card services aimed at appealing to regional pride and loyalties, evidenced by their marketing strategies. The Board affirmed the Examining Attorney's refusal, concluding that the marks merely described a significant feature of the services offered. The decision was supported by substantial evidence, and no legal errors were identified in the Board’s findings.
MBNA has appealed the Board's decision regarding the registration of the marks "MONTANA SERIES" and "PHILADELPHIA CARD," asserting the court's jurisdiction under 28 U.S.C. 1295(a)(4)(B). The court reviews the Board's legal conclusions without deference but upholds factual findings like descriptiveness if supported by substantial evidence. The main issue is whether there is substantial evidence backing the Board's conclusion that the marks are merely descriptive. MBNA argues that the Board erred in its legal interpretations, including the assertion that regional designations are never inherently distinctive, reliance on trade dress for descriptiveness, application of a purchaser motivation test, and failure to resolve doubts in favor of the applicant.
To be eligible for registration, a mark must distinguish the applicant's goods from others, as per 15 U.S.C. 1052. A mark can be either inherently distinctive or have acquired distinctiveness through secondary meaning. MBNA does not claim that its marks have acquired distinctiveness but argues they are inherently distinctive. Marks are categorized by inherent distinctiveness: generic, descriptive, suggestive, and arbitrary or fanciful. Suggestive or arbitrary marks are inherently distinctive and eligible for registration, while generic or descriptive marks are not.
The core question is whether the marks are suggestive or arbitrary (inherently distinctive) or merely descriptive. The Board upheld the Examining Attorney's rejection based on Section 2(e)(1) of the Lanham Act, which prohibits registration for marks that are merely descriptive or deceptively misdescriptive. A mark is deemed merely descriptive if it conveys immediate information about a product's qualities or characteristics. The determination of descriptiveness relies on the perception of the relevant purchasing public. Conversely, a mark is suggestive if it requires imagination to connect it to the product's characteristics, with the most distinctive marks being arbitrary and non-suggestive of the goods or services.
MBNA contends that the trademarks MONTANA SERIES and PHILADELPHIA CARD are suggestive or arbitrary rather than merely descriptive, arguing they do not directly inform consumers about the specific terms of its credit card services. However, the Board determined that MBNA's offerings include "regional affinity" credit card services, which cater to customers' social or lifestyle connections to specific locations. The Board concluded that these trademarks describe significant aspects of the affinity credit card services, as they identify the target community and relevant imagery.
The analysis indicates that MBNA’s credit card services differ fundamentally from standard offerings, specifically featuring cards that showcase scenes related to Montana and Philadelphia. The Examining Attorney had initially required MBNA to broaden its service description beyond generic credit card services, yet the refusal was later reaffirmed based on the argument that the marks describe a primary feature of the services.
Substantial evidence supports the Board's conclusion that MBNA provides affinity credit cards that resonate with geographic identities, as demonstrated by promotional materials depicting relevant local scenes and invoking regional pride. The MONTANA SERIES and PHILADELPHIA CARD marks are thus seen as merely descriptive, emphasizing the emotional connection to the particular locations, which is a key aspect of MBNA's marketing strategy.
MONTANA SERIES and PHILADELPHIA CARD are described as marks that convey specific regional affiliations related to affinity credit card services. The marks directly indicate their geographic focus—Montana and Philadelphia—making them merely descriptive rather than suggestive or arbitrary. The distinction arises because these services are not generic credit card offerings; they specifically cater to consumers with an affinity for these regions. The Board's conclusion that the marks are descriptive is supported by substantial, conclusive evidence, indicating that they highlight a significant feature of the services.
MBNA argued that the Board erred in stating that regional designations can never be inherently distinctive, but this was a mischaracterization of the Board's reasoning. The Board did not categorically rule out inherent distinctiveness for regional designations; instead, it found that the specific context of the services rendered these marks descriptive. Furthermore, MBNA's claim that the Board based its descriptiveness finding on trade dress or advertising materials was incorrect, as the Board focused solely on the services outlined in MBNA's applications, emphasizing that the marks clearly convey information about the intended user community.
The credit card designation "MONTANA SERIES" is deemed merely descriptive of the associated credit card services, regardless of the absence of graphic trade dress. The Board's conclusion is grounded in the nature of the services rather than the designs on the cards or advertising strategies. Although the designs evoke regional themes, they serve as supporting evidence for the characterization of MBNA's services as affinity credit card offerings, distinct from standard financial services. The Board emphasized that consumer perception is crucial in determining descriptiveness, aligning with the principle that advertising suggesting geographical affiliation is pertinent to this assessment.
MBNA's claim that the Board relied on trade dress for its descriptiveness finding is rejected; the Board explicitly stated it was focused on the applications. Additionally, MBNA contends that the Board improperly applied a "purchaser motivation test," contrary to the Lanham Act, which stipulates that the primary significance of a mark to the public—not purchaser motivation—determines if a mark has become generic. The Board acknowledged that purchaser motivation should not influence the descriptiveness finding. Despite MBNA's interpretation of the Board's comments regarding consumer choice, the Board's analysis centered on public perception of regional affinities, concluding that such descriptions of features cannot qualify for trademark registration.
MBNA argues that the Board did not adequately resolve uncertainties regarding the descriptiveness of its marks, MONTANA SERIES and PHILADELPHIA CARD, in its favor. MBNA asserts that any potential opposer of a merely descriptive mark can file a notice of opposition, citing Merrill Lynch. However, the Board found that both marks merely described a characteristic of MBNA's affinity credit card services, and it did not express any doubt regarding this determination. Consequently, the precedent of resolving doubts in favor of applicants does not apply here. The conclusion states that the Board committed no legal error, and substantial evidence supports its finding of descriptiveness, thus affirming the Board's decision.
Additionally, it is noted that MBNA could have appealed the Examining Attorney's decision instead of amending its application, which would have preserved its right to contest the amendment requirement. The discussion on state and city names as "public symbols" is acknowledged but deemed irrelevant to the current decision.
In dissent, Chief Judge Mayer argues that the Board's finding of descriptiveness is unsupported by substantial evidence, emphasizing that MBNA sought registration for credit card services, not specifically for cards depicting geographic scenes. Mayer highlights that the Board relied on a recitation of services that only emerged in a later office action, and although MBNA amended its application to expedite the process, it maintained that its marks were not merely descriptive. Mayer advocates for reversing the Board’s refusal based on section 1052(e)(1) of the Lanham Act.
