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appealtrialburden of proofpatenttrademark
appealtrialpatenttrademark

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In re Merrill Lynch, Pierce, Fenner, and Smith, Inc., 828 F.2d 1567, 56 USLW 2204, 4 U.S.P.Q.2d 1141

Facts

The Commissioner of Patents and Trademarks, through the Trademark Trial and Appeal Board, refused registration of the term 'CASH MANAGEMENT ACCOUNT' for stock brokerage services, money market fund administration, and loans against securities. The applicant, Merrill Lynch, already held an incontestable registration for the same term for different financial services involving credit cards. The Board concluded that the term was generic for the services described in the application, which led to the appeal.

The Commissioner of Patents and Trademarks, through the Trademark Trial and Appeal Board, refused registration of the term 'CASH MANAGEMENT ACCOUNT' for stock brokerage services, money market fund administration, and loans against securities. The applicant, Merrill Lynch, already held an incontestable registration for the same term for different financial services involving credit cards.

Issue

Did the Board err in concluding that the term 'CASH MANAGEMENT ACCOUNT' is a generic or commonly descriptive name for the financial services for which registration was sought?

Did the Board err in concluding that the term 'CASH MANAGEMENT ACCOUNT' is a generic or commonly descriptive name for the financial services for which registration was sought?

Rule

A term that is generic cannot attain trademark status, while a 'merely descriptive' term can acquire distinctiveness through secondary meaning.

A term that is generic cannot attain trademark status, while a 'merely descriptive' term can acquire distinctiveness through secondary meaning.

Analysis

The court analyzed the evidence presented regarding the public's understanding of the term 'CASH MANAGEMENT ACCOUNT'. It found that the Board's determination of the term as generic was not supported by clear evidence, as there was substantial recognition of the term's association with Merrill Lynch. The court emphasized that the burden of proof lies with the Patent and Trademark Office to demonstrate that a term is generic.

The court analyzed the evidence presented regarding the public's understanding of the term 'CASH MANAGEMENT ACCOUNT'. It found that the Board's determination of the term as generic was not supported by clear evidence, as there was substantial recognition of the term's association with Merrill Lynch.

Conclusion

The court reversed the Board's decision, stating that the term 'CASH MANAGEMENT ACCOUNT' should be considered 'merely descriptive' and remanded the case for further evaluation of the evidence of distinctiveness.

The court reversed the Board's decision, stating that the term 'CASH MANAGEMENT ACCOUNT' should be considered 'merely descriptive' and remanded the case for further evaluation of the evidence of distinctiveness.

Who won?

Merrill Lynch prevailed in the case because the court found that the Board's conclusion of the term being generic was clearly erroneous and not supported by the evidence.

Merrill Lynch prevailed in the case because the court found that the Board's conclusion of the term being generic was clearly erroneous and not supported by the evidence.

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