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ARTICLE · 22 MAY 2014

Prior Registration Defense Not Available When A Mark Is Challenged As Merely Descriptive

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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Can a mark be challenged as merely descriptive when the owner also owns an incontestable registration for the identical mark covering near identical services?

United StatesIntellectual Property
Naresh Kilaru
Naresh Kilaru
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Can a mark be challenged as merely descriptive when the owner of the mark also owns an incontestable registration for the identical mark covering substantially identical services? The Board recently addressed this question in Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ.2d 1458 (TTAB 2014).

The petitioner in this case owned two registrations for the mark PERKS covering volume discount buying services. One registration was incontestable; the other was not. Petitioner sought to cancel a registration for the mark PERKSPOT covering similar services based on a likelihood of confusion. Respondent counterclaimed that Petitioner's PERKS mark was generic (with respect to the incontestable registration) or descriptive (with respect to the other registration).

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