IP Law Daily, TRADEMARK—TTAB: EQ LEARNING found deceptively misdescriptive for employment counseling services, (Sep 19, 2022)

By Linda Panszczyk, J.D.

The determination of whether a term is merely descriptive must be made in relation to the services for which registration is sought, not in the abstract.

A Trademark Examining Attorney's refusal to register a proposed mark, EQ LEARNING, for employment counseling services and educational services on the ground that the mark was deceptively misdescriptive of the goods or services to which they were applied was affirmed by the Trademark Trial and Appeal Board. The proposed mark was therefore ineligible for registration on the Principal Register in the absence of a showing of acquired distinctiveness (In re Res-Care, Inc., September 14, 2022, Lykos, A.).

Res-Care, Inc., the Applicant, sought to register the mark EQ LEARNING in standard characters on the Principal Register for services ultimately identified as providing employment counseling services in International Class 35 and educational services, namely, providing live online instruction, online group seminars, and education courses offered through online non-downloadable videos to individuals seeking employment, in the field of employment counseling for job placement and online educational testing in International Class 41.

The Trademark Examining Attorney refused registration under the Trademark Act on the grounds that the mark is deceptively misdescriptive of the Applicant’s identified services. TTAB affirmed the refusal as to both classes of services and did not consider the exhibits attached to the Applicant’s appeal brief.

The Trademark Act prohibits registration on the Principal Register of designations that are deceptively misdescriptive of the goods or services to which they are applied in the absence of a showing of acquired distinctiveness. A mark is considered deceptively misdescriptive if (1) the mark misdescribes a quality, feature, function, or characteristic of the goods or services with which it is used, and (2) consumers would be likely to believe the misrepresentation.

Did the Applicant’s mark misdescribe the identified services? For a term to misdescribe services, the term must be merely descriptive of a significant aspect of the services which the identified services could plausibly possess, but in fact, do not.

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. This determination must be made in relation to the services for which registration is sought, not in the abstract. This requires consideration of the context in which the mark is used or intended to be used in connection with those services, and the possible significance that the mark would have to the average purchaser of the services in the marketplace.

To show that EQ LEARNING merely describes a significant aspect that the Applicant’s International Class 35 and 41 services could plausibly possess, the Examining Attorney submitted an online dictionary definition showing that “EQ” is an abbreviation for “emotional intelligence.” To further illustrate the meaning of the abbreviation EQ, the Examining Attorney made of record third-party websites showing use of the term EQ in connection with employment counseling and educational services as signifying the ability to manage social interactions, emotions and conflict at work. Taken together, this evidence demonstrated that the abbreviation EQ modifies the noun LEARNING to indicate a type of employment counseling and instruction. Thus, EQ LEARNING merely describes a significant characteristic or feature that the services could plausibly possess.

To ascertain whether EQ LEARNING misdescribed the Applicant’s services, during prosecution, the Examining Attorney made an information request under Trademark Rule 2.61(b) and, according to the Board, the Applicant’s responses unequivocally established that EQ LEARNING misdescribes the Applicant’s employment counseling and educational services.

Would a reasonably prudent consumer believe the misrepresentation? Having met the first prong of the test, the Board turned to the issue of whether a reasonably prudent consumer would be likely to believe the misrepresentation. To establish this element of the test, the Examining Attorney pointed to evidence showing that competitors in the field promote to consumers the benefits of employment counseling and education services designed to improve the consumer’s EQ or “emotional intelligence.”

According to TTAB, the evidence showed that consumers are accustomed to encountering in the marketplace career counseling and education services touting the advantages of the acquisition of knowledge and learning skills pertaining to EQ or emotional intelligence. It is therefore likely that the reasonably prudent consumer (namely job seekers, and those looking for career advice or advancement) will be deceived by the Applicant’s misrepresentation.

Given the nature of the Applicant’s services, and the evidence that competitors in the industry frequently use EQ to describe to consumers the subject matter of their career counseling and educational services, TTAB was unpersuaded that prospective consumers, most of whom are likely unfamiliar with the Applicant’s “evidenced-informed Talent Delivery Model (TDM)- Employability Quadrants (EQ),” would attribute any other meanings to the Applicant’s mark.

The case is Serial No. 90309408.

Attorneys: April E. Reeves for the USPTO. Amy Sullivan Cahill (Steptoe & Johnson PLLC) for Res-Care, Inc.

Companies: Res-Care, Inc.

Cases: Trademark USPTO