“FIRST TUESDAY” trademark descriptive of new lottery games

In the case In re: North Carolina lottery, Case No. 2016-2558, Fed. Cir. August 10, 2017 (Available Here), the Federal Circuit affirmed the Trademark Trial and Appeal Board’s (“TTAB”) decision refusing to register the mark FIRST TUESDAY in connection with lottery services and games. 

North Carolina Lottery (“N.C. Lottery”) is a state agency that operates lottery games in North Carolina.  It began to introduce a new scratch-off game on the first Tuesday of each month.  N.C. Lottery has continuously used the mark FIRST TUESDAY since July 2013.  On October 1, 2014, N.C. Lottery applied to register its mark for lottery cards, scratch cards for playing lottery games and for lottery services.  With the specimens, they submitted a explanatory text that the specimens were “new scratch offs” and “new scratch-offs the first Tuesday of every month.”  

The examining attorney refused registration of the mark, finding that the mark used in the context of N.C. Lottery’s promotional material merely describes a feature of its goods and services, namely new versions of the goods and services are offered the first Tuesday of every month. N.C. Lottery appealed and the TTAB affirmed finding that new scratch off games are offered on the first Tuesday of every month and such fact would be so understood by the relevant consumers who encounter the mark FIRST TUESDAY in the marketplace.  No mental thought or multi-step reasoning is required to reach a conclusion as to the nature of the involved goods and services.

First N.C. Lottery argued that the TTAB erred as a matter of law by relying on the explanatory text of the specimens to supplement the meaning of the mark itself.  The Court found that the public’s understanding of a mark can be evidenced by any competent source.  The distinctiveness of a mark in the context of explanatory text remains a case-specific analysis.  The Federal Circuit held that the TTAB did not err by considering the explanatory text of the specimens in the descriptiveness inquiry.  

The Court distinguished the cases cited by N.C. Lottery where it was found that the explanatory text was evidence that the mark was not merely descriptive.  The Court found that the connection between the mark FIRST TUESDAY and its reference to when new scratch-off lottery games are being offered is much closer and more straightforward than the connection between TUMBLEBUS and its reference to mobile gymnastics instruction, or the connection between SWAP and its reference to watches with interchangeable components.

Accordingly, the Federal Circuit found that substantial evidence supports the TTAB’s finding that FIRST TUESDAY is a merely descriptive mark.  The commercial context demonstrates that a consumer would immediately understand the intended meaning of FIRST TUESDAY.  In other words, the evidence shows that the mark is less an identifier of the source and more a description of a feature of those goods or services.

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