Court affirms TTAB refusal to register ‘FIRST TUESDAY’ trademark for NC Lottery

In re N.C. Lottery, (Fed. Cir. Aug. 10, 2017) (Before Prost, C.J., Chen, and Hughes, J.) (Opinion for the court, Prost, C.J.)

Appellant North Carolina Lottery (“N.C. Lottery”) sought to register the mark “FIRST TUESDAY” 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 Trademark Trial and Appeal Board  denied the registration and N.C. Lottery appealed.

N.C. Lottery’s application included promotional materials with explanatory text such as “[n]ew scratch-offs the first Tuesday of every month.”  The examining attorney found that the mark, as used in context of the promotional material, was merely descriptive.  The Board affirmed the refusal to register, finding that “[n]o mental thought or multi-step reasoning is required to reach a conclusion as to the nature of the involved goods and services.”


On appeal, N.C. Lottery contended that the descriptiveness inquiry should not include the additional context from its advertising.  The Court responded that the Board “must consider a mark in its commercial context to determine the public’s perception.”  In re Nett Designs, 236 F.3d 1339, 1342 (Fed. Cir. 2001).  The public’s understanding or perception of a mark is evidenced by “[a]ny competent source,” including websites, publications, or advertising materials. In re Abcor Dev. Corp., 588 F.2d 811, 814 (C.C.P.A. 1798); see also In re Nett Designs at 1342 (Fed. Cir. 2001).  Here, the commercial context demonstrated that a consumer would immediately understand the intended meaning of FIRST TUESDAY and that the mark is less an identifier of the source of goods than a description of a feature or characteristic of those goods or services.  The Court declined to categorically discount explanatory text from supplying commercial context in a descriptiveness inquiry.  While explanatory text associated with a mark does not necessary make the mark descriptive, “distinctiveness of a mark in the context of explanatory text remains a case-specific analysis.”  The Court affirmed the Board’s decision refusing to register FIRST TUESDAY.

The distinctiveness of a mark in the context of explanatory text is a case-specific analysis that turns on evidence of the public’s understanding or perception of a mark.


The Author

Robert Schaffer

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Robert Schaffer

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

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  1. Gene Quinn August 30, 2017 12:26 pm

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