The US Court of Appeals for the Federal Circuit affirmed a Trademark Trial and Appeal Board (TTAB) decision denying registration of the mark FIRST TUESDAY for use in connection with lottery services and games based on descriptiveness of the mark in the context of the accompanying explanatory text. In re N.C. Lottery (Fed. Cir., Aug. 10, 2017) (Prost, CJ).

North Carolina Lottery (NC Lottery) filed an application to register the mark FIRST TUESDAY for use in connection with lottery services and games to market the introduction of new scratch-off lottery games on the first Tuesday of every month. The promotional material for the FIRST TUESDAY mark included language indicating that “new scratch-off games are offered on the first Tuesday of every month.” The examining attorney refused registration of the mark, finding that the mark, when used in connection with promotional materials, merely described a feature of the goods and services, namely new versions of the goods and services that are offered the first Tuesday of every month.

NC Lottery appealed to the TTAB, arguing that the mark was not descriptive. The TTAB affirmed the examiner’s decision, concluding that the “promotional materials make clear that new scratch-off games are offered on the first Tuesday of every month” and it found that “such fact would be so understood by the relevant consumers who encounter the designation FIRST TUESDAY in the marketplace.” NC Lottery appealed.

The Federal Circuit agreed with the TTAB. It found that “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,” and that “no mental thought or multi-step reasoning is required to reach a conclusion as to the nature of the involved goods and services.”

NC Lottery argued that the TTAB erred in relying on the explanatory text that was included with the specimens to supplement the meaning of the mark itself and that the inquiry should be limited to what a consumer with only general knowledge of NC Lottery’s goods and services and without additional context from the explanatory text would immediately understand the mark to mean. The Federal Circuit disagreed, explaining that “the public’s understanding of a mark can be evidenced by any competent source” such as explanatory text. “The distinctiveness of a mark in the context of explanatory text remains a case-specific analysis,” and here, the “TTAB did not err by considering the explanatory text of the specimens in the descriptiveness inquiry.”