from the United States Patent and Trademark Office, Trademark
Trial and Appeal Board in No. 86/411, 401.
E. Bennett, Coats & Bennett, PLLC, Cary, NC, argued for
appellant. Also represented by DAVID D. Kalish.
William LaMarca, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, argued for
appellee Joseph Matal. Also represented by NATHAN K. Kelley,
Thomas L. Casagrande, Christina Hieber.
Prost, Chief Judge, Chen and Hughes, Circuit Judges.
North Carolina Lottery (" N.C. Lottery") seeks to
register the mark "FIRST TUESDAY' in connec- tion
with lottery services and games, to market the introduction
of new scratch-off lottery games on the first Tuesday of each
month. It appeals the decision of the U.S. Patent and
Trademark Office's ("PTO") Trademark Trial and
Appeal Board ("TTAB") denying registration of the
mark. We affirm.
Lottery is a state agency that began operating traditional
lottery drawing games and instant lottery scratch-off games
in North Carolina in 2006. "In order to maintain
interest in its instant scratch-off games, " it
introduces new scratch-off games on the first Tuesday of each
month. Appellant's Opening Br. 3. N.C. Lottery asserts
that it has continuously used the mark FIRST TUESDAY since
July 2013 in print materials, on its Website, and on
point-of-sale displays for related advertising.
October 1, 2014, N.C. Lottery applied for registration of the
mark FIRST TUESDAY for "Lottery cards; scratch cards for
playing lottery games" and for "Lottery
services." J.A. 10-11. It submitted specimens, including
the promotional materials reproduced below, that have
explanatory text such as "[n]ew scratch-offs" or
"[n]ew scratch-offs the first Tuesday of every
16, 18; see also J.A. 17, 19-21. The examining
attorney refused registration, finding that the mark used in
the context of N.C. Lottery's promotional materials
"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." J.A. 24.
Lottery appealed to the TTAB, which affirmed the refusal to
register. Like the examining attorney, the TTAB reasoned that
N.C. Lottery's promotional materials make clear that
"new scratch-off games are offered on the first Tuesday
of every month" and found that such fact would "be
so understood by the relevant consumers who encounter the
designation FIRST TUESDAY in the marketplace." J.A. 5-6.
It found that "[n]o mental thought or multi-step
reasoning is required to reach a conclusion as to the nature
of the involved goods and services." J.A. 6.
Lottery timely appealed. We have jurisdiction under 28 ...