IP Law Daily, TRADEMARK—Fed. Cir.: Mere descriptiveness of FORMULARYHUB mark affirmed, (Feb 20, 2025)

By Kevin M. Finson, J.D.

The mark FORMULARYHUB was unregistrable for being merely descriptive because the product it was to be used with consisted of a central hub for a collection of formularies.

A software company’s proposed mark FORMULARYHUB was merely descriptive of its goods, the U.S. Court of Appeals for the Federal Circuit has held. Dictionary definitions, as well as testimony and the company’s own specimen, showed that the software acted as a central location, or hub, for a collection of formularies (In re Agadia Systems Inc., No. 23-1993 (Fed. Cir. Feb. 20, 2025)).

Agadia Systems, Inc. (Agadia) sought registration of the standard character mark FORMULARYHUB. The Examining Attorney refused registration of both this application and a sister application for FORMULARYHUB.COM on the ground of mere descriptiveness. Agadia appealed both refusals to the Trademark Trial and Appeal Board (TTAB), and during the pendency of the appeal the Examining Attorney withdrew the refusal as to the FORMULARYHUB.com registration due to a technical issue with evidence that had not been properly made of record. The TTAB remanded the FORMULARYHUB.COM appeal and affirmed the refusal as to the FORMULARYHUB mark.

Agadia appealed, arguing that waiver, judicial estoppel, and equitable estoppel should bar the rejection of the FORMULARYHUB mark and that the Board erred in finding the FORMULARYHUB mark was merely descriptive.

Waiver and estoppel. Agadia argued that the Board erred in finding that the PTO was not barred by the doctrines of waiver, judicial estoppel, or equitable estoppel from opposing the registration of the FORMULARYHUB mark in light of its withdrawal of its descriptiveness refusal to the similar proposed FORMULARYHUB.com mark.

None of these arguments was persuasive. The PTO’s withdrawal of its descriptiveness refusal in a separate proceeding due to a perceived technical error was not an intentional relinquishment or abandonment of any right in this proceeding. For equitable estoppel to apply, the PTO must have engaged in misleading conduct that led Agadia to “reasonably infer that rights will not be asserted against it.” The court pointed out that Agadia could not have reasonably inferred that the PTO would withdraw its descriptiveness refusal in the FORMULARYHUB proceeding, given the principle that the PTO must decide each application on its own merits.

The Board’s “acceptance” of the PTO’s withdrawal of its descriptiveness refusal to the proposed FORMULARYHUB.com mark did not implicate judicial estoppel in this case because the PTO did not succeed in persuading the Board of anything regarding the descriptiveness of the proposed FORMULARYHUB.com mark. "Instead, the PTO withdrew its descriptiveness refusal in the FORMULARYHUB.com proceeding, thus rendering the issue moot and depriving the Board of jurisdiction.

Mere descriptiveness. Agadia argued that the Board's descriptiveness finding was in error because the Board failed to evaluate FORMULARYHUB in relationship to Agadia’s customizing computer software services and because the Board adopted a nonhardware-based definition of the term “hub.” However, the Board had found that Agadia’s specimen showed Agadia’s software functioned as a centralized location for a collection of formularies, and upon consideration of dictionary definitions of both “formulary” and “hub,” alongside other evidence, determined that the words together and separately simply described the product. The Federal Circuit said that this was substantial evidence to support the Board’s finding, and the court declined to re-weigh the evidence on appeal.

The Federal Circuit affirmed the decision of the Board.

The Case is No. 23-1993.

Judge: Reyna, J.

Attorneys: Jayson Macyda (Kyko Global Inc. and Affiliates) for Agadia Systems Inc. Michael Chajon, U.S. Patent and Trademark Office, for the Coke Morgan Stewart.

Companies: Agadia Systems Inc.

Cases: Trademark FedCirNews USPTO