North Carolina Lottery

Trademark Trial and Appeal Board

Jul 12, 2016

No. 86411401 (T.T.A.B. Jul. 12, 2016)

This Opinion is not a
Precedent of the TTAB

Oral Hearing: May 4, 2016 Mailed: July 12, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re North Carolina Lottery
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Serial No. 86411401
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David E. Bennett of Coats & Bennett PLLC,
For North Carolina Lottery
Lindsey Ben, Trademark Examining Attorney, Law Office 108,
Andrew Lawrence, Managing Attorney.
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Before Wolfson, Shaw and Goodman,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
North Carolina Lottery (“Applicant”) seeks registration on the Principal Register
of the mark FIRST TUESDAY (in standard characters) for “Lottery cards; Scratch
cards for playing lottery games” in International Class 28 and for “Lottery services”
in International Class 41.1
The Trademark Examining Attorney has refused registration of Applicant’s
proposed mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on

1 Application Serial No. 86411401 was filed on October 1, 2014, based upon Applicant’s claim
of first use anywhere and use in commerce since at least as early as July 1, 2013.
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the ground that the term FIRST TUESDAY is merely descriptive of Applicant’s goods
and services.
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We affirm the refusal to register.
I. Applicable Law
Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), precludes registration
of a mark that, when applied to the goods or services of the applicant, is merely
descriptive of them. “A term is merely descriptive if it immediately conveys
knowledge of a quality, feature, function, or characteristic of the goods or services
with which it is used.” In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102
USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d
960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). Whether a term is merely descriptive
is determined not in the abstract, but “in relation to the particular goods [or services]
for which registration is sought, the context in which it is being used, and the possible
significance that the term would have to the average purchaser of the goods [or
services] because of the manner of its use or intended use.” In re Bayer
Aktiengesellschaft, 82 USPQ2d at 1831. See also In re Chamber of Commerce, 102
USPQ2d at 1219. “The question is not whether someone presented with only the mark
could guess what the goods or services are. Rather, the question is whether someone
who knows what the goods or services are will understand the mark to convey
information about them.” In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB
2002).
Serial No. 86411401
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II. Analysis
The Examining Attorney argues that the proposed mark is merely descriptive of
a feature of the goods and services, namely new scratch-off lottery games that begin
on the first Tuesday of every month. Applicant argues that the combined terms
FIRST TUESDAY do not convey any meaningful information about lottery services
or lottery cards, and that an ordinary consumer “would not be able to reach any
conclusion about the meaning of the phrase FIRST TUESDAY based solely on the
mark itself.”2 Applicant argues that
[t]o connect the mark FIRST TUESDAY to Applicant’s
lottery services and lottery cards, a consumer must be told
that Applicant issues new instant scratch-off games on the
first Tuesday of every month. Absent this knowledge, an
ordinary consumer would not be able to discern the
meaning of the phrase ‘first Tuesday.’3
Applicant submits that, based solely on the mark itself, “at most the phrase ‘first
Tuesday’ suggests a particular day to a consumer but leaves it to the consumer’s
imagination what happens on that particular day,”4 requiring mental thought and
multi-step reasoning to discern the meaning of the phrase “first Tuesday.”5 In its
brief, Applicant states that it “introduces a new scratch-off game on the first Tuesday
of every month.”6

2 4 TTABVUE 5, 6.
3 4 TTABVUE 6.
4 4 TTABVUE 5.
5 4 TTABVUE 4-5.
6 4 TTABVUE 3.
Serial No. 86411401
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When considering the context in which the mark is being used, we may look to
labels, packages, displays, or advertising material directed to these goods and
services as that is how the purchaser encounters the mark in the marketplace. In re
Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (looking at
applicant’s advertising brochures in connection with determining whether consumers
would perceive mark as descriptive); In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ
215, 218 (CCPA 1978) (in descriptiveness case, court stated, “Evidence of the context
in which a mark is used in labels, packages, or advertising materials directed to the
goods is probative of the reaction of prospective consumers to the mark.”). See, e.g.,
In re Carlson, 91 USPQ2d 1198 (TTAB 2009) (“Of course, specimens and promotional
material may be used to prove that a mark is merely descriptive, and statements
made in them can show that a term describes a feature or characteristic of the goods
or services.”); In re Hunter Fan Co., 78 USPQ2d 1474, 1476 (TTAB 2006) (finding that
the applicant’s use of applied-for mark, as evidenced in its specimen of use,
“highlights the descriptive nature of this term”).
The specimens submitted by Applicant are shown below.

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Applicant’s website also indicates that new scratch-off tickets are available the
first Tuesday of every month.

We find the proposed mark FIRST TUESDAY merely describes a feature or
characteristic of lottery cards, scratch lottery cards, and lottery services. As shown
by the specimens and Applicant’s website, new scratch-off games are offered on the
first Tuesday of every month, and will be so understood by the relevant consumers
Serial No. 86411401
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who encounter the designation FIRST TUESDAY in the marketplace. No mental
thought or multi-step reasoning is required to reach a conclusion as to the nature of
the involved goods and services.
We are unpersuaded by Applicant’s arguments that a lack of descriptiveness is
evidenced by the absence in the record of evidence of competitor use of the phrase
“first Tuesday” or evidence of any use of the term as a whole in connection with lottery
cards or lottery services. We note that the Examining Attorney is not required to show
such use in order to establish that a term is merely descriptive. See In re Fat Boys
Water Sports LLC, 118 USPQ2d 1511, 1514 (TTAB 2016) (no requirement that
examining attorney prove competitor’s need to use mark); In re Sun Microsystems
Inc., 59 USPQ2d 1084, 1087 (TTAB 2001) (citations omitted). The fact that an
applicant may be the first or only user of a descriptive designation does not justify
registration if that term is merely descriptive. Id. With regard to Applicant’s
argument that its proposed mark is suggestive “based solely on the mark itself,” we
note that is not the test. Rather, we must determine whether FIRST TUESDAY is
merely descriptive in the context in which it is used in connection with the recited
services. In re Bayer Aktiengesellschaft, 82 USPQ2d at 1831. As discussed above,
consumers encountering Applicant’s mark in connection with its lottery cards,
scratch cards and lottery services will understand FIRST TUESDAY to merely
describe an important feature of Applicant’s goods and services.
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III. Conclusion
The evidence discussed above shows that FIRST TUESDAY is merely descriptive
of a feature or characteristic of Applicant’s goods and services. Considering the two
terms together, relevant customers would readily perceive the alleged mark to mean
that new scratch-off lottery tickets are offered the first Tuesday of a month.
Decision: The refusal to register is affirmed.