IP Law Daily, TRADEMARK—TTAB: Wholesaler’s CSTORE mark refused registration as ‘merely descriptive’ of target market, (Oct 18, 2022)

By Anne H. Gibson, J.D., LL.M.

The mark is a term of art that is common in the relevant industry meaning “convenience store.”

The trademark examining attorney was correct in refusing registration of the mark CSTORE for a wholesaler selling tobacco products, because “C-Store” is a common abbreviation for “convenience store” within the industry, the Trademark Trial and Appeal Board (TTAB) held in a non-precedential decision. The TTAB found that the mark CSTORE was “merely descriptive” of applicant Lakshmi Distributors’ target wholesale market and thus was ineligible for registration. This would be the case even if the average consumer would not necessarily be aware of the term’s meaning. The refusal to register the mark was affirmed (In re Lakshmi Distributors, September 27, 2022, Wellington, T.).

In September 2020, Lakshmi Distributors applied to register the mark CSTORE in standard characters for “wholesale store services featuring tobacco products” in International Class 35. It asserted that it had first used the mark in commerce on December 31, 2015. The examining attorney refused registration of the mark under Section 2(e)(1) of the Trademark Act on the grounds that it was “merely descriptive” of the services provided. The wholesaler appealed.

The examining attorney presented evidence in her decision that “Cstore” or “C-Store” is a common abbreviation within the wholesale industry for “convenience store.” It is used in websites and trade journals advertising to convenience stores, as well to the wholesalers who sell to them. She thus found that the mark CSTORE was merely descriptive of “the intended consumers of applicant’s wholesale store services.”

Mere descriptiveness. Lakshmi Distributors argued that the term CSTORE is not merely descriptive in relation to its business because “when an average consumer sees/hears CSTORE, perhaps a convenience store might come to mind, but wholesale store services featuring tobacco products do not.” However, this argument missed two important aspects of the test for “mere descriptiveness” under the Trademark Act, according to the TTAB.

In order be merely descriptive, the mark does not need to describe all aspects of the relevant goods or services, “it need only describe a single feature or attribute.” Consequently, a mark that describes the intended market for the services is still “merely descriptive,” even if it does not describe the services themselves.

Further, the evaluation of “mere descriptiveness” is made “in relation to the … possible significance that the term would have to the average purchaser of the goods [or services],” in this case, convenience store owners or operators, rather than the general public. Thus, the question is not whether an average consumer will accurately guess the applicant’s services based on the mark, but rather whether someone who “knows that Applicant offers wholesale store services featuring tobacco products will understand the term CSTORE to convey information about those services.”

Thus, the Board found that under this test, the mark was merely descriptive of the intended market for Lakshmi Distributors’ services. The refusal to register CSTORE was affirmed.

The Case is Serial No. 90174273.

Attorneys: Jeremy A. Smith (Lanier, Ford, Shaver & Payne, PC) for Lakshmi Distributors. Laura Golden for the USPTO.

Companies: Lakshmi Distributors

Cases: Trademark USPTO