Timex Group USA, Inc. v. Focarino

When the descriptive terms "Intelligent" and "Quartz" were combined, they formed a mark that was eligible for protection.

Plaintiff Timex Group, USA ("Timex") is an American corporation and watch manufacturer. Timex appealed the decision of the Patent and Trademark Office's ("PTO") Trademark Trial and Appeal Board ("TTAB") to deny Timex's application to register "Intelligent Quartz" as a trademark. The PTO's examining attorney refused to register "Intelligent Quartz" on the ground that it was merely descriptive of a characteristic or feature of the identified goods. Timex appealed the decision to the TTAB, which was subsequently affirmed. Timex then brought suit under 15 U.S.C. § 1071(b)(1) for judicial review of the decision. The court first noted that marks can fall under four categories: (i) generic, (ii) descriptive, (iii) suggestive, and (iv) arbitrary or fanciful; the first two unlikely to receive trademark protection, while the later two generally would. The court then found that while both "Intelligent" and "Quartz" were descriptive words, when they were combined into a single phrase, they could be found to be suggestive. Finally, the court analyzed the TTAB's reasoning for declaring "Intelligent Quartz" to be descriptive. The TTAB based its ruling on a finding that there was a quartz component in the watch controlled by a computer; however, the court found this finding to be incorrect based on submissions by Timex. Because of this, and the court's finding that "Intelligent Quartz" is suggestive, rather than descriptive, it GRANTED Timex's motion for summary judgment.