Cowan, Liebowitz & Latman, P.C.

08/20/2026

Cowan, Liebowitz & Latman is Proud to Have 19 Lawyers Listed in the 2027 Editions of The Best Lawyers in America and the Best Lawyers: Ones to Watch in America Publications

Best Lawyers has recognized 19 Cowan, Liebowitz & Latman attorneys in its newly released 2027 publications. The Best Lawyers in America lists thirteen attorneys: William M. Borchard (Copyright and Trademark); Jeffrey Chery (Copyright); Richard Dannay (Copyright and IP Litigation); Mary A. Donovan (Copyright); Kieran G. Doyle (Copyright and IP Litigation); Louis Ederer (IP Litigation); Mary L. Kevlin (IP Litigation and Trademark); Jonathan Z. King (Copyright); Thomas Kjellberg (Copyright); Maryann E. Licciardi (Copyright); Richard S. Mandel (Copyright and IP Litigation); Ronald W. Meister (Commercial Litigation); and Joelle A. Milov (Copyright).

Best Lawyers: Ones to Watch™ in America lists six Cowan Liebowitz attorneys: Jaime Berman (IP Law and IP Litigation); Avanthi Cole (IP Law); Allison Furnari (IP Law and IP Litigation); Paige Geier (IP Law and IP Litigation); Sarah Sue Landau (IP Law and IP Litigation); and John S. Miranda (IP Law and IP Litigation).

Best Lawyers describes its listing as follows:

"Recognition by Best Lawyers is based entirely on peer review. Our methodology is designed to capture, as accurately as possible, the consensus opinion of leading lawyers about the professional abilities of their colleagues within the same geographical region and legal practice area. Best Lawyers employs a sophisticated, conscientious, rational and transparent survey process designed to elicit meaningful and substantive evaluations of the quality of legal services."

Read More:
https://www.cll.com/newsroom-news-174066

Best Lawyers has recognized 19 Cowan, Liebowitz & Latman attorneys in its newly released 2027 publications. The Best Lawyers in America lists thirteen attorneys: William M. Borchard (Copyright and Trademark); Jeffrey Chery (Copyright); Richard Dannay (Copyright and IP Litigation); Mary A. D...

08/13/2026

On My Mind Blog -- Any Registration of a Mark May Require Proof of Actual Use for Goods or Services in U.S. Commerce

You may have obtained a U.S. registration of a mark you claim to have used in commerce. Nevertheless, a third party may petition the U.S. Patent and Trademark Office to cancel your use-based registration requiring you to present direct proof that goods or services under the mark actually were provided in commerce (regulated by Congress, or in one state but affecting interstate commerce, or in more than one state, or between the U.S. and another country) at the time you applied to register your mark.

This means that your trademark must have been used on or in connection with goods actually transported in commerce, or your service mark must have been displayed in the sale or advertising of services actually rendered in commerce. Use of your mark only to promote or advertise your goods or services is insufficient.

The registered service mark DISCUSS.IO was ordered cancelled in such a proceeding.

Read More:
https://www.cll.com/OnMyMindBlog/any-registration-of-a-mark-may-require-proof-of-actual-use-for-goods-or-services-in-u-s-commerce

You may have obtained a U.S. registration of a mark you claim to have used in commerce.  Nevertheless, a third party may petition the U.S. Patent and Trademark Office to cancel your use-based registration requiring you to present direct proof that goods or services under the mark actually were prov...

08/13/2026

Cowan, Liebowitz & Latman’s Trademark and Copyright Practices Receive Highest Ranking in 2026 Managing Intellectual Property IP STARS Guide

Cowan, Liebowitz & Latman’s Trademark and Copyright Practices received the highest ranking in the 2026 Managing Intellectual Property IP STARS Guide. Cowan’s Trademark Practice received the highest ranking for both Trademark Disputes and Trademark Prosecution, and Cowan’s Copyright Practice received the highest ranking for Copyright & Related Rights. Cowan’s attorneys also received a total of 16 honors, including seven Trademark Star designations, four Copyright Star designations, three Rising Star recognitions, and two Notable Practitioner honors.

Jonathan King, Richard Mandel, Joel Karni Schmidt, and Eric Shimanoff, were ranked as Trademark Stars and Copyright Stars and Maryann Licciardi, Meichelle MacGregor, and Deborah Squiers were ranked as Trademark Stars. Dasha Chestukhin, Joelle Milov, and Raphael Nemes were ranked as Rising Stars, and Lou Ederer and Mary Kevlin were ranked as Notable Practitioners.

Founded in 1957, Cowan, Liebowitz & Latman is recognized worldwide as a leading intellectual property law and litigation firm. The firm has achieved extraordinary results, offering top-notch service, practical expertise, and cost-effective solutions. The firm regularly handles matters involving emerging issues, such as artificial intelligence, blockchain, and NFTs, among other new technological innovations. The firm's success is attributable to the extensive experience of its talented attorneys and staff, its use of new technologies and resources, and its collaborative approach to problem-solving. Cowan’s litigators boast a strong track record, handling landmark cases before the U.S. Supreme Court, federal and state appellate courts, the U.S. Trademark Trial and Appeal Board, and international courts and tribunals. Leveraging its global network of experienced foreign counsel, the firm offers comprehensive trademark clearance, prosecution, and enforcement services worldwide. It manages thousands of global trademark registrations, applications, and contested proceedings, helping its clients protect their brands globally. Cowan’s Copyright Practice has been at the forefront of efforts to protect both creators and users of copyrighted works in the age of artificial intelligence. The group represents a wide range of clients, including music publishers and entertainment companies, financial services companies, game developers and publishers, fashion brands, news and media organizations, libraries and museums, universities, and artists.

Managing IP describes its methodology as follows:

“Each year, Managing IP’s research analysts in London, New York and Hong Kong obtain information from thousands of firms, IP practitioners and their clients through interviews, emails and online surveys. Before compiling the rankings, our research analysts also conduct their own independent research, including an analysis of publicly available information (such as court or IP office data) and the existing data we hold on firms. All our rankings are based on the information available at the time the research was completed. Except for firm name changes, any subsequent developments or information that can influence our ranking decisions will be considered during the research for the next edition. However, Managing IP reserves the right to remove a firm or individual from our website at any time. The research is conducted rigorously and impartially. There is no fee to pay to participate in the research.”

Read More:
https://www.cll.com/newsroom-news-174063

Cowan, Liebowitz & Latman’s Trademark and Copyright Practices received the highest ranking in the 2026 Managing Intellectual Property IP STARS Guide.  Cowan’s Trademark Practice received the highest ranking for both Trademark Disputes and Trademark Prosecution, and Cowan’s Copyright Practice ...

08/04/2026

On My Mind Blog -- Composite Marks: The Interplay between Textual and Design Elements

The U.S. Trademark Act prohibits the registration of marks that are likely to be confused with other marks that have either been registered with the U.S. Patent and Trademark Office (USPTO) or are in use by another entity in the United States. 15 U.S.C. §1052(d).

Generally, the word element is considered dominant in a composite mark consisting of words and design elements. However, such a mark can be found to differ sufficiently from a competitor’s mark if, for example, the word and design elements present a distinguishing cohesive narrative.

Background

USPTO tribunals assess the likelihood of confusion between two marks by employing the thirteen so-called DuPont Factors delineated in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973). Some of these factors are:

- the similarity of the marks themselves “as to appearance, sound, connotation and commercial impression.”
- the relatedness of the goods in the marketplace,
- the channels of trade in which the goods are sold,
- the nature of the consumers to whom the goods are sold,
- and the relative sophistication of the consumers.

The TTAB evaluates the overall impression to the average consumer rather than any specific factor. The TTAB has described the first DuPont factor—the similarity of the marks—as “critical.” Differences in the respective marks, especially when they incorporate both words and designs, sometimes can outweigh the other factors.

Two recent cases illustrate how the TTAB analyzes the relationship between textual and design elements in composite marks.

Read More:
https://www.cll.com/OnMyMindBlog/composite-marks-the-interplay-between-textual-and-design-elements

The U.S. Trademark Act prohibits the registration of marks that are likely to be confused with other marks that have either been registered with the U.S. Patent and Trademark Office (USPTO) or are in use by another entity in the United States. 15 U.S.C. §1052(d).

07/28/2026

Trademark Law Alert -- Decanted, Not Decided: Second Circuit Holds That TTAB Likelihood-of-Confusion Ruling Was Not Binding in Wine Trademark Litigation

The U.S. Supreme Court’s decision in B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. 138 (2015) established that a likelihood-of-confusion determination by the USPTO’s Trademark Trial and Appeal Board (TTAB) may, in appropriate cases, prevent a party from relitigating that issue in subsequent litigation. Specifically, the Court determined that issue preclusion applies only when the ordinary elements of preclusion are satisfied and “the usages adjudicated by the TTAB are materially the same as those before” the district court. We reported on that decision in a prior Client Alert “The Supreme Court Decides That Some Trademark Office Tribunal Decisions Are Binding In Later Court Cases.”

The U.S. Court of Appeals for the Second Circuit’s summary order in Peju Province Winery L.P. v. Cesari S.R.L., No. 24-1903 (2d Cir. June 8, 2026) (summary order), illustrates the practical importance of the B&B Hardware limitation. In a dispute between Italian and California wine producers, the Second Circuit reversed a decision of the U.S. District Court for the Southern District of New York after concluding that the TTAB did not take into account the same material factors that were before the District Court.

Background

Cesari S.R.L., an Italian winemaker and owner of the trademark LIANO for wine successfully opposed an application to register the LIANA trademark for wine by Peju Province Winery L.P., a California winemaker. The TTAB found a likelihood of confusion based solely on the identification of the goods set forth in the registration and application and the similarity of the marks. It did not consider the particular nature of the goods, channels of trade, and classes of purchasers in the marketplace.

More than a decade later, Cesari sued Peju for trademark infringement in the U.S. District Court for the Southern District of New York. Peju argued that consumers were not likely to be confused as to the source in the marketplace because its LIANA wine was (1) a dessert wine, (2) sold only in Peju’s own wineries and websites, and (3) made only from grapes grown in California, not Italy.

Cesari moved for summary judgment on the ground that Peju was precluded from relitigating the issue of likelihood of confusion that had been decided by the TTAB. The District Court granted Cesari’s motion because the TTAB had broadly concluded that parties’ marks differed by only one letter and their identified goods were identical. Peju therefore appealed the decision to the Second Circuit Court of Appeals.

Second Circuit Decision

The Second Circuit reversed the District Court’s decision because the TTAB’s likelihood-of-confusion analysis was limited to the application and registration as written, whereas the infringement action turned on how the parties actually used their marks in the marketplace.

The Second Circuit recognized that it was appropriate for the TTAB to limit its likelihood-of-confusion analysis to the four corners of Peju’s application and Cesari’s registered mark, presumably because the TTAB generally evaluates likelihood of confusion based on the goods and/or services identified in the application and registration, not the parties’ actual marketplace uses. However, it concluded that “because the issues before the TTAB and the district court were not the same, the district court should not have given preclusive effect to the TTAB’s ruling on the likelihood of confusion.”

Citing B&B Hardware, the Second Circuit emphasized that “where ‘the TTAB d[id] not consider the marketplace usage of the parties’ marks, the TTAB’s decision should have no later preclusive effect in a suit where the actual usage in the marketplace is the paramount issue’” (citations omitted). The Second Circuit reversed and remanded the case to the District Court for further proceedings.

Read More:
https://www.cll.com/newsroom-news-174060

The U.S. Supreme Court’s decision in B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. 138 (2015) established that a likelihood-of-confusion determination by the USPTO’s Trademark Trial and Appeal Board (TTAB) may, in appropriate cases, prevent a party from relitigating that issue in subse...

07/22/2026

Billboard Names Richard Mandel a 2026 Top Music Industry Lawyer

Cowan, Liebowitz & Latman is pleased to announce that partner Richard Mandel has been selected for inclusion in Billboard's 2026 Top Music Lawyers list, published on July 20, 2026. Billboard’s Top Music Lawyers list recognizes the attorneys whose legal counsel is helping guide artists, record labels, music publishers, executives, investors, and other key participants in today's rapidly evolving music industry.

Richard Mandel, who heads the firm's Litigation & Dispute Resolution Group, has more than 40 years of experience handling complex intellectual property disputes involving copyrights, trademarks, unfair competition, false advertising, licensing, rights of publicity, and emerging technologies. He regularly represents major entertainment and music industry clients in high-profile litigation and enforcement matters. Among his recent music-related matters, Richard has represented leading music industry publishers in significant copyright litigation involving artificial intelligence and the use of copyrighted lyrics and musical works in AI model training, an area that Billboard identified as one of the most important legal challenges facing the music business today. This recognition reflects Richard's longstanding commitment to protecting and advancing the intellectual property rights of clients across the entertainment industry and reinforces Cowan, Liebowitz & Latman's reputation as a trusted advisor to companies and creators whose brands and content shape popular culture.

Read More:
https://www.cll.com/newsroom-news-174062

Cowan, Liebowitz & Latman is pleased to announce that partner Richard Mandel has been selected for inclusion in Billboard's 2026 Top Music Lawyers list, published on July 20, 2026. Billboard’s Top Music Lawyers list recognizes the attorneys whose legal counsel is helping guide artists, record labe...

07/21/2026

Copyright Developments Blog -- Did Destruction of a Sculpture Violate VARA?

In June 2026, the U.S. District Court for the District of Minnesota denied the Franconia Sculpture Park’s motion for partial summary judgment seeking to dismiss sculptor John Hock’s claim that the Sculpture Park violated the Visual Artists Rights Act of 1990 (“VARA”) when it removed and destroyed Hock’s sculpture, Prometheus III. The court found material questions of fact existed as to whether the work was made for hire and whether the sculpture was “of recognized stature.”

Background

In 1995, Plaintiff Hock co-founded Franconia Sculpture Park (“Franconia”), a sprawling park in Minnesota dotted with contemporary sculptures. Mr. Hock served as the park’s CEO and Artistic Director until his termination by Franconia in 2018. From roughly 2006 to 2018, Mr. Hock built the Prometheus III sculpture on the grounds of Franconia. The work was monumental, weighing 34,000 pounds and standing 53 feet tall.

In a 2019 settlement agreement following Mr. Hock’s dismissal from Franconia, he agreed to remove the sculpture from the park. Nevertheless, after a miscommunication with a Franconia board member, the artwork was never removed. Franconia subsequently arranged for the work's removal and destruction in 2023, selling it for scrap metal.

Mr. Hock filed suit against Franconia in 2024, claiming that the organization had violated his rights under VARA.

VARA

Under VARA, an amendment to the Copyright Act, artists are granted the right “to prevent any destruction of a work of recognized stature.” The statute notably does not encompass works made for hire.

VARA has made headlines in recent years following the destruction of other outdoor artistic landmarks. For example, in Cohen v. G&M Realty L.P., 320 F. Supp. 3d 421 (E.D.N.Y. 2018), Judge Frederic Block ruled that a property owner violated the rights of a group of graffiti artists whose works were painted over as part of the development of the 5Pointz complex in Long Island City, Queens, in 2013. The court awarded statutory damages of $150,000 for each of forty-five works that were wrongfully destroyed, totaling a $6.75 million award.

Franconia’s Motion for Summary Judgment

Franconia moved for summary judgment, seeking dismissal of Mr. Hock’s VARA claim, arguing that Prometheus III was a work made for hire and that the work was not of recognized stature when it was standing at the park.

Work-for-hire. In analyzing the work-for-hire issue, the court focused on three issues:

(a) whether the sculpture was made by Mr. Hock as employee of Franconia acting within the scope of his employment;
(b) whether the creation of the sculpture occurred largely within “authorized time and space limits;” and
(c) whether Mr. Hock created the work to serve Franconia.

The court found that factual disputes existed regarding all three issues. For example, while Mr. Hock built the sculpture on the grounds of Franconia, he built it on his own time, and it was unclear whether the sculpture was more for his personal artistic development or for the purpose of serving Franconia.

Recognized stature. Similarly, the court found that whether the work was of “recognized stature” was a factual dispute. Drawing inferences in favor of Mr. Hock, the non-movant, the court found genuine disputes of fact as to the recognition and stature of the work. Even though the sculpture attracted minimal critical attention during its lifespan, an art collector and other artists provided support for the work’s recognition in the artistic community. The court found that this evidence, in tandem with Mr. Hock’s credentials, could provide support for the sculpture’s stature.

In sum, the court denied summary judgment on the VARA claim, finding that further factual development was required.

Looking Ahead

Because the court denied summary judgment, the case will head to trial where it will be determined if VARA covers the destruction of Mr. Hock’s work. This determination will hopefully shed light on VARA’s definitional contours going forward.

The coming year may provide further color on the scope of VARA’s protections. Just this month, environmentalist-artist https://www.theguardian.com/football/2026/jun/08/dallas-fifa-mural-lawsuit-robert-wyland after his mural in Dallas celebrating marine life was painted over to make way for a new mural commemorating the 2026 World Cup.

Read More:
https://www.cll.com/CopyrightDevelopmentsBlog/did-destruction-of-a-sculpture-violate-vara

07/17/2026

Jaime Berman Co-Chairs Intellectual Property Institute and Speaks at Lavender Law Conference

Cowan, Liebowitz & Latman attorney Jaime Berman co-chaired the Intellectual Property Institute and spoke on Hot Topics in Copyright Law as part of the panel “Hot Topics in Intellectual Property Law” at the 2026 Lavender Law Conference & Career Fair, held July 13–15, 2026, in Chicago, Illinois. In addition, Jaime spoke on the “Developmental Skills for the Litigation-Focused Junior Associate” panel, providing career advice for law students and junior associates

The Lavender Law Conference & Career Fair, presented by the National LGBTQ+ Bar Association, is the nation's largest gathering of LGBTQ+ and ally legal professionals. The conference brought together attorneys, judges, corporate counsel, government officials, and law students from across the country for educational programming, networking, and professional development.

Read More:
https://www.cll.com/newsroom-news-174059

Cowan, Liebowitz & Latman attorney Jaime Berman co-chaired the Intellectual Property Institute and spoke on Hot Topics in Copyright Law as part of the panel “Hot Topics in Intellectual Property Law” at the 2026 Lavender Law Conference & Career Fair, held July 13–15, 2026, in Chicago, Illinois....

07/14/2026

On My Mind Blog -- Non-U.S. Trademark Registrants Beware!

A non-U.S. party can obtain a U.S. trademark or service mark registration based on a home country registration and without use of the mark in the U.S. However, a Declaration of Use or Excusable Nonuse must be filed in the U.S. within six years after the date of registration plus a 6-month grace period. If that Declaration is not filed, that U.S. registration will be cancelled and given no further effect after the end of the six-year period.

Allowing such a U.S. registration to lapse can have an unfortunate consequence, as demonstrated in a precedential decision of the Trademark Trial and Appeal Board (TTAB).

A Canadian company named TextNow Inc. (Applicant) obtained a U.S. registration of the mark TOUCH MOBILE for telecommunications and wireless digital messaging goods and services based on its Canadian registration, without any claim of U.S. use. That registration (the Prior Registration) was cancelled after six years, for failure to file a Declaration of Use or Excusable Nonuse.

While the Prior Registration was still subsisting, but after Applicant had missed the filing deadline for its Declaration of Use or Excusable Nonuse, Applicant reapplied in the U.S. to register the identical mark for the identical goods and services. The Examining Attorney refused registration, on the ground that the mark TOUCH MOBILE was likely to be confused with a cited third-party registration for MOBILE TOUCH, which had been registered while the Prior Registration was in effect, covering services in part legally identical to Applicant’s services (the Cited Registration).

Applicant appealed to the TTAB, which affirmed the refusal.

Applicant argued that its Prior Registration weighed against a likelihood of confusion, relying on In re Strategic Partners, Inc., Application No. 77903451 (T.T.A.B. 2012). In that case, the prior registrant prevailed because its U.S. registration was over five years old and thus it could not be attacked by the cited registrant on grounds of priority or likelihood of confusion. The TTAB found that none of the determinative facts in Strategic Partners were present at the time the new MOBILE TOUCH application was examined.

Here, even though the two registrations had co-existed, the Prior Registration had lapsed and as such was not entitled to any weight. Additionally, the TTAB said, “Simply put, co-existence of marks on the trademark register does not equate to co-existence in the marketplace”, an illusory notion where the Prior Registration and current application were each based on non-U.S. registrations, and not on use in U.S. commerce.

Applicant also argued that the Prior Registration was equivalent to a final judgment, barring reconsideration of the likelihood of confusion issue. The TTAB rejected this argument and stated, “Bottom line, ‘there is no rule that a prior registration entitles [an applicant] to another registration.’”

A further argument by Applicant was that the Cited Registration mark was weak in trademark significance, because it had been simultaneously registered to Applicant. However, there was no evidence of any commercial strength for either mark. Moreover, the Cited Registration did not have a claim of acquired distinctiveness, so it was entitled to the normal scope of conceptual strength for inherently distinctive marks.

TOUCH MOBILE is a mere transposition of the Cited Mark MOBILE TOUCH. The marks conveyed the same meaning, covered legally identical services at least in part, as well as covering goods closely related to those services, and were presumed to overlap in trade channels and classes of consumers in the absence of any restrictions in the application or Cited Registration.

Accordingly, the TTAB gave no effect to the lapsed Prior Registration, affirming the finding of a likelihood of confusion with the Cited Registration.

Read More:
https://www.cll.com/OnMyMindBlog/non-u-s-trademark-registrants-beware

A non-U.S. party can obtain a U.S. trademark or service mark registration based on a home country registration and without use of the mark in the U.S. However, a Declaration of Use or Excusable Nonuse must be filed in the U.S. within six years after the date of registration plus a 6-month grace peri...

07/09/2026

On My Mind Blog -- Merely Descriptive or Generic Marks

A descriptive term immediately conveys information about a feature, quality, or characteristic of a product or service rather than its source. Such a mark is not registrable on the U.S. Principal Register (which is for marks that actually distinguish the source of goods or services).

However, such a mark can be registered on the U.S. Supplemental Register (which is for descriptive marks capable of acquiring source significance through use and advertising, known as “secondary meaning”). See our Blog post on “The U.S. Supplemental Register.”

Once a descriptive mark can be shown to have acquired secondary meaning, it can be registered on the Principal Register.

A generic term is the common name for a class or category of goods or services. It generally can never become a source indicator, and such a mark cannot be registered on either Register.

Determining whether a term is generic is a question of fact, which involves a two-step inquiry:

1. What is the genus, or class or category, of goods or services at issue; and
2. Does the relevant consumer for those goods or services understand the term primarily to refer to that genus.

If the Examining Attorney establishes an apparent case that a term is generic by a preponderance of the evidence, the burden shifts to the applicant to present rebuttal evidence. This evidence may include listings in dictionaries, trade journals, newspapers magazines, or websites, purchaser testimony, consumer surveys, and the applicant’s own uses of that term.

When two generic terms are strung together to create a compound term, courts must determine whether the combination conveys some distinctive, source-identifying meaning that each component term individually lacks. If not, then the compound term itself is generic.

The FOODANALYZER case

Access Medical Laboratories, Inc. applied to register FOODANALYZER in plain lettering as a mark for food sensitivity testing services. The Examining Attorney found this mark to be merely descriptive of the services and refused registration on the Principal Register. Since Applicant had used this mark for only about four months, it could not claim that it had acquired secondary meaning.

After that, Applicant amended its application to seek to register its mark on the Supplemental Register. The Examining Attorney then refused registration on the Supplemental Register on the ground that the mark was generic for the services and therefore incapable of acquiring source significance.

Applicant appealed to the Trademark Trial and Appeal Board (TTAB), which found the mark to be merely descriptive, rather than generic, and reversed the Supplemental Register refusal.

Genus. Everyone agreed that the genus of services was coextensive with the identification in the application—food sensitivity testing services.

Consumer Understanding. The ultimate question was whether consumers who buy, use, or provide such services understand FOODANALYZER primarily to be the common name of those services as distinguished from a mere description of those services.

The record included dictionary definitions for “food” and “analyzer” separately, but not the compound term “foodanalyzer.” Applicant contended that the compound term was ambiguous in that it could refer to analyzing food itself, analyzing a person’s reaction to food, or analyzing dietary patterns more broadly. The TTAB gave that argument limited weight because it did not focus on the broader question of relevant public understanding. The TTAB pointed out that a term may be highly descriptive of services without being generic for them.

The evidence also included third-party service lists using “food analyzer” without much context; other third-party uses, some with house marks or trademark symbols, suggesting source-identifying intent; other third-party wording suggesting that they were referring to Applicant’s own test; and the Applicant’s own uses of its mark in a stylized manner clearly intended to be source-identifying.

The TTAB viewed this record as “mixed” creating doubt about whether consumers perceive the compound term primarily as a common name rather than as a merely descriptive term.

Conclusion. As the TTAB recognized, it is not always an easy task to distinguish between what is highly descriptive and what is generic. The TTAB applied the principle that doubt must be resolved in favor of the Applicant.

Accordingly, the TTAB reversed the refusal to register the merely descriptive mark FOODANALYZER on the Supplemental Register.

Read More:
https://www.cll.com/OnMyMindBlog/merely-descriptive-or-generic-marks

The line between a merely descriptive term and a generic term can be difficult to draw.  We previously wrote about this in “Avoid Selecting a Generic Term as Your Trademark.”