820 F.2d 1216 (Fed. Cir. 1987)
Why APPLE PIE was refused for potpourri — and the standard for mere descriptiveness under §2(e)(1): a mark that immediately conveys a quality or characteristic of the goods.
The 30-second version
Not every Office Action is about a conflicting mark. The other great substantive refusal is descriptiveness — and APPLE PIE for potpourri is the case first-years learn it from.
Joseph Gyulay applied to register APPLE PIE for potpourri. The potpourri was scented to smell like apple pie. The Office refused under Section 2(e)(1) as merely descriptive, and the Federal Circuit affirmed.
The reasoning is the whole lesson: a mark is merely descriptive when it immediately tells the buyer something about the goods. For a product sold for its scent, a term naming that scent describes the single thing the customer is buying.
Joseph Gyulay seeks to register APPLE PIE for potpourri scented to smell like apple pie.
The Office refuses: APPLE PIE merely describes a significant characteristic of the goods — their scent.
The court affirms, finding the term immediately conveys knowledge of the goods’ scent to prospective purchasers.
Descriptiveness is a refusal founders often run into, because the names that sell a product best — the ones that tell buyers exactly what they are getting — are the ones the Office will not register. The closer a mark comes to naming a quality, ingredient, or characteristic of the goods, the weaker it is, down to terms that cannot sit on the Principal Register at all.
The test
The test is immediacy. A mark is merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods — no imagination or multi-step reasoning required.
In context
Judged in context. Descriptiveness is not decided in the abstract but in relation to the specific goods and how the term is encountered by the relevant purchasers.
If a term takes thought, imagination, or a leap to connect it to the goods, it is suggestive and registrable. If the connection is immediate — as APPLE PIE is to a pie-scented product — it is merely descriptive. The line between suggestive and descriptive is where most §2(e)(1) responses are won or lost.
Goods sold on scent
The potpourri’s defining characteristic was its scent; the Board found APPLE PIE described that scent.
Immediate conveyance
A buyer seeing APPLE PIE on scented potpourri instantly understands the scent — no reasoning step is required.
A significant characteristic
The court agreed the term described a significant characteristic of the goods, the hallmark of mere descriptiveness.
“A mark is merely descriptive if it immediately conveys … knowledge of the ingredients, qualities, or characteristics of the goods … with which it is used.”
The rule to memorize
A mark is merely descriptive under §2(e)(1) if it immediately conveys a quality, ingredient, function, or characteristic of the goods, judged in the context of those goods. If understanding requires imagination or a mental leap, the mark is suggestive and registrable.
Applicant’s mark is not merely descriptive because it does not immediately convey a quality or characteristic of the goods; understanding the connection requires imagination and a multi-step reasoning process. Unlike the term in In re Gyulay, 820 F.2d 1216 (Fed. Cir. 1987), which instantly named the scent of a scented product, Applicant’s mark only suggests [characteristic] after a mental leap, and is therefore suggestive and registrable.
Win descriptiveness on the imagination gap. Show the steps a consumer must take to get from the mark to the goods — the more steps, the more suggestive. If the term truly is descriptive, pivot to the Supplemental Register or a §2(f) acquired-distinctiveness showing.
GYULAY, JOSEPH · Serial 73510531
The application at issue — APPLE PIE for potpourri. Refused as merely descriptive and affirmed on appeal; it never registered.
Live USPTO records in GleanMark — click through for full prosecution history.
APPLE PIE for potpourri has taught the descriptiveness line to generations of trademark lawyers precisely because it is so clean: name the one thing your product is sold for, and you have named it out of a registration. The art is in the marks that only seem to.
What makes a trademark “merely descriptive”?
A mark is merely descriptive under Section 2(e)(1) if it immediately conveys a quality, ingredient, function, or characteristic of the goods or services, judged in the context of those goods — no imagination required.
What is the difference between descriptive and suggestive marks?
A suggestive mark requires imagination or a multi-step reasoning process to connect it to the goods, and is registrable. A descriptive mark conveys the information immediately, and is refused on the Principal Register absent acquired distinctiveness.
What did In re Gyulay decide?
The Federal Circuit affirmed that APPLE PIE was merely descriptive of potpourri scented to smell like apple pie, because the term immediately conveyed knowledge of the product’s scent — a significant characteristic of the goods.
In re E.I. du Pont de Nemours & Co.
The §2(d) factors · CCPA 1973
Juice Generation, Inc. v. GS Enterprises LLC
Crowded field of weak marks · Fed. Cir. 2015
In re i.am.symbolic, llc
Marks compared in their entireties · Fed. Cir. 2017
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Foreign equivalents & fame · Fed. Cir. 2005
Jack Wolfskin Ausrüstung für Draußen GmbH v. New Millennium Sports, S.L.U.
Crowded field; weak design elements · Fed. Cir. 2015
Coach Services, Inc. v. Triumph Learning LLC
Fame as a §2(d) factor · Fed. Cir. 2012
In re Abcor Development Corp.
Descriptiveness standard · CCPA 1978
In re Viterra Inc.
Similarity; standard-character display · Fed. Cir. 2012
In re Thor Tech, Inc.
Goods-relatedness coexistence · TTAB 2015
In re Shell Oil Co.
Relatedness of goods and services · Fed. Cir. 1993
In re National Data Corp.
Dominant feature; disclaimed matter · Fed. Cir. 1985
In re Detroit Athletic Co.
First-word dominance; similarity · Fed. Cir. 2018
Stone Lion Capital Partners, L.P. v. Lion Capital LLP
Least-sophisticated purchaser · Fed. Cir. 2014
In re Bayer Aktiengesellschaft
Descriptiveness; internet evidence · Fed. Cir. 2007
Paste the serial number to read your letter in plain English. Free, no account.