The opinion
This Opinion is a
Precedent of the TTAB
Hearing: January 18, 2024 Mailed: June 27, 2024
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Korn Ferry
_____
Serial No. 90890949
_____
David M. Perry of Blank Rome LLP for Korn Ferry.
Alex Keam, Trademark Examining Attorney, Law Office 114,
Nicole Nguyen, Managing Attorney.
_____
Before Taylor, Larkin, and Elgin,
Administrative Trademark Judges.
Opinion by Larkin, Administrative Trademark Judge:
Korn Ferry (“Applicant”) seeks registration on the Principal Register of the
standard-character mark KORN FERRY ARCHITECT for services ultimately
identified as follows:
Executive search, recruitment and placement services;
business consultation services in the field of human
resources management and development; assessment of
employment skills individuals for the purpose of selection,
promotion and other employment related
recommendations; auditing services for determining
business management capabilities; organizational
services, namely, services for organizing and coordinating
talent management for managers and executives; career
Serial No. 90890949
management, namely, providing career information and
career networking services for executives; employment
counseling and consultation in the field of executive
recruitment; providing a website featuring blogs in the
field of human resources management and development,
executive recruitment, talent management, and leadership
development, in International Class 35; and
Providing temporary use of online non-downloadable
software in the field of human resources that enables users
to conduct online evaluation of and to improve leadership
and managerial aptitudes, job performance and job
development, and for recruiting, and analysis and
evaluation of employment skills, in International Class
42.1
The Trademark Examining Attorney has refused registration under Section 6(a)
of the Trademark Act, 15 U.S.C. § 1056(a), on the ground that the word ARCHITECT
in Applicant’s mark is merely descriptive of the services in each class in the
application within the meaning of Section 2(e)(1) of the Trademark Act, 15 U.S.C. §
1052(e)(1), and must be disclaimed.
When the Examining Attorney made the refusal final, Applicant appealed and
requested reconsideration, which was denied. The appeal is fully briefed,2 and counsel
1 Application Serial No. 90890949 was filed on August 19, 2021 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on Applicant’s claim of first use of the mark
anywhere and first use of the mark in commerce at least as early as November 1, 2019 in
both classes.
2 Citations in this opinion to the briefs refer to TTABVUE, the Board’s online docketing
system. See New Era Cap Co. v. Pro Era, LLC, 2020 WL 2853282, at *1 n.1 (TTAB 2020). The
number preceding TTABVUE corresponds to the docket entry number, and any numbers
following TTABVUE refer to the page(s) of the docket entry where the cited materials appear.
Applicant’s appeal brief appears at 6 TTABVUE and its reply brief appears at 10 TTABVUE.
The Examining Attorney’s brief appears at 9 TTABVUE.
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Serial No. 90890949
for Applicant and the Examining Attorney appeared at an oral hearing before the
panel on January 18, 2024. We reverse the refusal to register.3
I. Record on Appeal4
The record on appeal consists of the file of Applicant’s subject application,
including its specimen of use;5 dictionary definitions of “architect”6 and
“architecture;”7 copies of the certificates of registration of other marks owned by
Applicant that contain the word ARCHITECT without a disclaimer of the word;8 and
printouts of third-party webpages using the words “architect” and “architecture” in
connection with human resources services and the provision of human resource and
recruiting services to architects.9
3 As part of an internal Board pilot program on broadening acceptable forms of legal citation
in Board cases, the citation form in this opinion is in a form provided in Section 101.03 of the
Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) (2024). This opinion cites
decisions of the U.S. Court of Appeals for the Federal Circuit and the U.S. Court of Customs
and Patent Appeals only by the page(s) on which they appear in the Federal Reporter (e.g.,
F.2d, F.3d, or F.4th). For decisions of the Board, this opinion employs citations to the Westlaw
(“WL”) database. Practitioners should also adhere to the practice set forth in TBMP § 101.03.
4 Citations in this opinion to the application record are to pages in the Trademark Status &
Document Retrieval (“TSDR”) database of the United States Patent and Trademark Office
(“USPTO”).
5 August 19, 2021 Application at TSDR 3-6. It appears that Applicant included the same two
pages from its website twice in its specimen.
6 May 23, 2022 Office Action at TSDR 2-7.
7 December 17, 2022 Final Office Action at TSDR 53-54.
8 November 23, 2022 Response to Office Action at TSDR 10-19; March 10, 2023 Request for
Reconsideration at TSDR 12-21. It was unnecessary for Applicant to make the registrations
of record more than once.
9 December 17, 2022 Final Office Action at TSDR 2-52, 55.
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Serial No. 90890949
II. Disclaimer Requirement Refusal
A. Applicable Law
“Under Section 6(a) of the Trademark Act, 15 U.S.C. § 1056(a), an applicant may
be required to disclaim an unregistrable component of a mark otherwise registrable.
‘The [USPTO] can condition the registration of a larger mark on an applicant’s
disclaimer of an ‘unregistrable component of a mark otherwise registrable.’” In re
Lego Juris A/S, 2022 WL 1744613, at *2 (TTAB 2022) (quoting In re La. Fish Fry
Prods, Ltd., 797 F.3d 1332, 1335 (Fed. Cir. 2015) (quoting 15 U.S.C. § 1056(a)).
Merely descriptive terms are unregistrable under Trademark Act Section 2(e)(1), 15
U.S.C. § 1052(e)(1), and are therefore subject to disclaimer if the mark is otherwise
registrable. “Failure to provide the required disclaimer constitutes a ground for
refusing registration.” Lego Juris, 2022 WL 1744613, at *2 (citing In re Stereotaxis
Inc., 429 F.3d 1039, 1041 (Fed. Cir. 2005); In re Am. Furniture Warehouse Co., 2018
WL 1942214, at *2 (TTAB 2018)).
The Examining Attorney has required disclaimer of the word ARCHITECT in
Applicant’s mark on the ground that it is “merely descriptive” of the services
identified in the application within the meaning of Section 2(e)(1) of the Trademark
Act. Merely descriptive terms may not be registered on the Principal Register in the
absence of a showing of acquired distinctiveness under Section 2(f) of the Trademark
Act, 15 U.S.C. § 1052(f).10 The mere descriptiveness of a word in a mark is assessed
10 Applicant does not seek registration of its mark without a disclaimer of ARCHITECT based
on a showing of acquired distinctiveness in part under Section 2(f) with respect to that word.
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Serial No. 90890949
in the same manner as the mere descriptiveness of an entire mark. See, e.g., In re
UST Glob. (Sing.) Pte Ltd., 2020 WL 2093068, at *2 (TTAB 2020).
“A term is deemed to be merely descriptive of goods or services, within the
meaning of Section 2(e)(1), if it forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use of the goods or services.” In
re Zuma Array Ltd., 2022 WL 3282655, at *3 (TTAB 2022) (internal quotations and
citations omitted). A term “need not immediately convey an idea of each and every
specific feature of the [services] in order to be considered merely descriptive; it is
enough if it describes one significant attribute, function or property of the [services].”
Id. (quoting In re Fat Boys Water Sports LLC, 2016 WL 3915986, at *2 (TTAB 2016)
(citing In re Gyulay, 820 F.2d 1216, 1217-18 (Fed. Cir. 1987)). In addition, a term
“need not be merely descriptive of all recited goods or services in an application. A
descriptiveness refusal is proper ‘if the mark is descriptive of any of the [services] for
which registration is sought.’” Id. (quoting In re Chamber of Com. of the U.S., 675
F.3d 1297, 1300 (Fed. Cir. 2012) (quoting Stereotaxis, 429 F.3d at 1041)).
Whether a term “is merely descriptive is evaluated in relation to the particular
goods [or services] for which registration is sought, the context in which it is being
used, and the possible significance that the term would have to the average purchaser
of the [services] because of the manner of its use or intended use,” In re Fallon, 2020
WL 6255423, at *8 (TTAB 2020) (quoting Chamber of Com., 675 F.3d at 1300), and
“not in the abstract or on the basis of guesswork.” Id. (quoting Fat Boys, 2016 WL
3915986, at *2) (citing In re Abcor Dev. Corp., 588 F.2d 811, 814 (CCPA 1978)). “We
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Serial No. 90890949
ask whether someone who knows what the goods and services are will understand
the [term] to convey information about them.” Id. (quoting Real Foods Pty Ltd. v.
Frito-Lay N. Am., Inc., 906 F.3d 965, 974 (Fed. Cir. 2018) (quoting DuoProSS
Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254 (Fed. Cir. 2012)).
Whether a term “is merely descriptive or not is determined from the viewpoint of the
relevant purchasing public.” Zuma Array, 2022 WL 3282655, at *4 (quoting In re
Omniome, Inc., 2019 WL 7596207, at *7 (TTAB 2019) (quoting Stereotaxis, 429 F.3d
at 1043)). The record evidence discussed below shows that the relevant purchasers of
the services identified in the application include companies and individuals seeking
assistance in hiring decisions and other human resources matters.
“Evidence of the public’s understanding of [a] term . . . may be obtained from any
competent source, such as purchaser testimony, consumer surveys, listings in
dictionaries, trade journals, newspapers[,] and other publications.” Id.
(quoting Fallon, 2020 WL 6255423, at *9 (quoting Real Foods, 128 USPQ2d at 1374)).
“These sources may include [w]ebsites, publications and use in labels, packages, or in
advertising materials directed to the goods [or services].” Id. (quoting Fallon, 2020
WL 6255423, at *9 (quoting In re N.C. Lottery, 866 F.3d 1363, 1367-68 (Fed. Cir.
2017) (internal quotation omitted))).
B. Summary of Arguments
Applicant makes three basic arguments against the disclaimer requirement. First,
Applicant argues that the USPTO has not required a disclaimer of ARCHITECT in
Applicant’s eight prior registrations of other marks containing the word. 6 TTABVUE
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9-10. According to Applicant, this shows “a recognition by the [USPTO] that the use
of the word ARCHITECT in this context is inherently distinctive, and that such
marks are registrable without a disclaimer.” Id. at 10.
Second, Applicant argues that KORN FERRY ARCHITECT is “a unitary mark,
and as such, it was improper for the Examining Attorney to require a disclaimer for
any portion of Applicant’s mark.” Id. at 11. Applicant claims that its KORN FERRY
ARCHITECT mark is unitary “because it is inherently incongruous.” Id. According to
Applicant,
the word KORN is a soundalike for the vegetable, corn . . .
the word FERRY literally describes a boat used for
transporting passengers or goods over short distances
[and] the word ARCHITECT denotes a person who is
qualified to design buildings and to plan and supervise
their construction. These three words, used together in the
mark KORN FERRY ARCHITECT, have a degree of
ingenuity in its phraseology.
Id.
Finally, Applicant argues that the word ARCHITECT is not merely descriptive of
the services identified in the application, but instead is at most suggestive. Id. at 13-
16. Applicant argues that
consumers must engage in at least a minimal amount of
reasoning to associate the ARCHITECT portion of
Applicant’s mark with Applicant’s services. They would
first need to engage in at least a minimal amount of
reasoning and reflection to dissect the mark into its
underlying component parts – KORN FERRY and
ARCHITECT; recognize the meanings of the individual
terms; consider the multiple meanings of the word
ARCHITECT conceded by the Examining Attorney and the
possible meanings of the combined expression KORN
FERRY ARCHITECT; and finally analyze and reorganize
the terms in such a way so as to develop an understanding
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Serial No. 90890949
of KORN FERRY ARCHITECT as used in the context of
Applicant’s services, rendering it impossible for relevant
consumers to immediately associate ARCHITECT with
such services.
Id. at 15 (emphasis supplied by Applicant).
According to Applicant, the word ARCHITECT does not immediately describe the
type of employees for whom Applicant provides its employment and recruitment
services, but instead “requires a sort of mental stretch – and not immediate
conveyance – on the part of consumers,” id. at 15-16, in part because there is no
known “human resources architect” position or role in connection with employment
and recruitment services. Id. at 16.
The Examining Attorney makes two basic arguments in support of the disclaimer
requirement. First, the Examining Attorney argues that Applicant “may provide its
services for architects,” noting that an “architect” is defined as “one who designs and
supervises the construction of buildings or other large structures,” 9 TTABVUE 4,
and that all of the services identified broadly in Applicant’s identifications could be
provided to architects. Id. at 4-7.11
Second, the Examining Attorney argues that
“Architect” is also a human resources industry term to
refer to someone who “sets the conceptual and political
stage for accomplishing any work related to organizational
issues or talent. One of the distinguishing abilities of the
Head of HR who acts as an organizational architect’s [sic]
is the capability to work at and across the organizational,
conceptual and cultural boundaries. In doing so, the head
looks well beyond the “people stuff” and looks at the entire
system. . . . And perhaps the greatest contribution of the
11 May 23, 2022 Office Action at TSDR 2 (THE AMERICAN HERITAGE DICTIONARY).
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Serial No. 90890949
organizational architect is the ability to see and then help
manage the alignment of customer needs, business
strategy, and organizational objectives, processes, systems
and structures.
Id. at 7.12
The Examining Attorney also responds to Applicant’s arguments. With respect to
Applicant’s prior registrations of marks without a disclaimer of ARCHITECT, the
Examining Attorney argues that they are for different marks and goods and services,
id. at 9, and that this case must be decided on its own merits. Id. at 9-10. The
Examining Attorney also rejects Applicant’s argument that its mark is unitary,
arguing that “ARCHITECT is separable and must be disclaimed as being merely
descriptive of the specified services.” Id. at 10. Finally, the Examining Attorney
argues that in “the context of human resources services, ARCHITECT is merely
descriptive of the services.” Id. at 11.
In its reply brief, Applicant argues that the Examining Attorney identified
“different interpretations of the word ARCHITECT to suggest that the word is merely
descriptive of Applicant’s services,” 10 TTABVUE 6, including as identifying the end
users of the services, and as a human resources term of art identifying a particular
leader in an organization. Applicant claims that each of these interpretations makes
the word suggestive, not merely descriptive, of the services. Id. at 6-8.
12 December 17, 2022 Final Office Action at TSDR 2 (LinkedIn) (the error does not appear in
the original quoted material).
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Serial No. 90890949
C. Analysis of Disclaimer Requirement Refusal
It is the Examining Attorney’s burden to show that a mark or term is merely
descriptive of an applicant’s goods or services. Zuma Array, 2022 WL 3282655, at *5.
In this section, we separately analyze Applicant’s first two arguments regarding its
prior registrations and its claim that KORN FERRY ARCHITECT is a unitary mark.
We consider Applicant’s third argument that ARCHITECT is not merely descriptive
in our discussion of the Examining Attorney’s two arguments that the USPTO’s
burden of showing that ARCHITECT is merely descriptive has been carried.
1. Applicant’s Reliance on Registrations of Other Marks
Without a Disclaimer of ARCHITECT
The USPTO has issued eight registrations for Applicant’s other marks containing
the word ARCHITECT without a disclaimer of that word, but that fact does not entitle
Applicant to a registration of the KORN FERRY ARCHITECT mark without a
disclaimer. Am. Furniture Warehouse, 2018 WL 1942214, at *7 (affirming disclaimer
requirements while acknowledging that the applicant’s “prior registrations ‘have
registered in the past without disclaimers’”). It is axiomatic that the “Board must
assess each mark on its own facts and record,” id. (citing In re Nett Designs Inc., 236
F.3d 1339, 1342 (Fed. Cir. 2001)), and that “the prior decisions and actions of other
trademark examining attorneys in registering other marks are not binding upon the
USPTO or the Board.” In re Dolce Vita Footwear, Inc., 2021 WL 2285577, at *2 n.6
(TTAB 2021) (citing In re USA Warriors Ice Hockey Program, Inc., 2017 WL 2572815,
at *4 n.10 (TTAB 2017)). “Each case is decided on its own facts, and each mark stands
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Serial No. 90890949
on its own merits.” Id. (citation omitted).13 See also In re Nat’l Data Corp., 753 F.2d
1056, 1059 (Fed. Cir. 1985) (“The absence of a disclaimer does not . . . mean that a
word or phrase in a registration is, or has become, distinctive in the registered mark,
so that part of the mark must be treated the same as an arbitrary feature” because
the “power of the PTO to accept or require disclaimers is discretionary under the
statute,” and “it is inappropriate to give the presence or absence of a disclaimer any
legal significance.”). We must determine whether Applicant is entitled to a
registration of KORN FERRY ARCHITECT without a disclaimer of ARCHITECT
based on the record here and for the specific services identified in this application.
2. Applicant’s Argument That KORN FERRY ARCHITECT is
a Unitary Mark
A “unitary mark simply has no ‘unregistrable component,’ but is instead an
inseparable whole.” Lego Juris, 2022 WL 1744613, at *3 (quoting Dena Corp. v.
Belvedere Int’l, Inc., 950 F.2d 1555, 1560 (Fed. Cir. 1991)). A unitary mark’s “elements
are inseparable. In a unitary mark, these observable characteristics must combine to
show that the mark has a distinct meaning of its own independent of the meaning of
its constituent elements. In other words, a unitary mark must create a single and
distinct commercial impression.” Dena, 950 F.2d at 1561.
13 In its reply brief, Applicant argues that the USPTO would achieve consistency in
examination by issuing a registration of KORN FERRY ARCHITECT without a disclaimer
of ARCHITECT. 10 TTABVUE 11. The Board has “recognize[d] that ‘consistency is highly
desirable,’ [but] consistency in examination is not itself a substantive rule of trademark law,
and a desire for consistency with the decisions of prior examining attorneys must yield to
proper determinations under the Trademark Act and rules.” Am. Furniture Warehouse, 2018
WL 1942214, at *7 (quoting In re Omega SA, 494 F.3d 1362, 1365 (Fed. Cir. 2007) and citing
In re Cordua Rests., Inc., 823 F.3d 594, 600 (Fed. Cir. 2016)).
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Serial No. 90890949
Several factors inform the unitariness analysis: the
physical connection of the potentially unregistrable
component to other elements of the proposed mark by lines
or other design features; the relative location of the
respective elements of the proposed mark; and the
significance of the terminology as used on or in connection
with the goods or services.
Lego Juris, 2022 WL 1744613, at *3 (citing Dena, 950 F.2d at 1561).
Applicant’s KORN FERRY ARCHITECT mark is not a unitary mark, as
Applicant’s corporate name KORN FERRY is separable from the final word
ARCHITECT, and the mark does not have “a distinct meaning of its own independent
of the meaning of its constituent elements.” Dena, 950 F.2d at 1561; see also In re
Royal Bodycare, Inc., 2007 WL 616034, at *2 (TTAB 2007) (“Cases have frequently
held that an applicant’s use of its corporate name or house mark along with another
trademark or trade name does not create a unitary mark.”) (citations omitted).
3. The Examining Attorney’s Argument That ARCHITECT
Merely Describes the Purchasers or End Users of
Applicant’s Services
As discussed above, the Examining Attorney’s primary theory of the mere
descriptiveness of the word ARCHITECT in Applicant’s mark is that Applicant “may
provide its services for architects.” 9 TTABVUE 4.14 With respect to the services
identified in the two classes in the application, the Examining Attorney argues that
[t]he “business consultation services in the field of human
resources management and development” may feature
architects. Its “assessment of employment skills
individuals for the purpose of selection, promotion and
other employment related recommendations” may assess
architects. The “auditing services for determining business
14 The Examining Attorney’s argument at the oral hearing was devoted primarily to this
theory.
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Serial No. 90890949
management capabilities” may audit architects or architect
organizations. The “services for organizing and
coordinating talent management for managers and
executives” may organize and coordinate architects. The
applicant may also provide “career information and career
networking services for executives” for and about
architects. “Employment counseling and consultation in
the field of executive recruitment” may feature architects.
The “blogs in the field of human resources management
and development, executive recruitment, talent
management, and leadership development” may also
feature architects. Finally, the “online non-downloadable
software in the field of human resources that enables users
to conduct online evaluation of and to improve leadership
and managerial aptitudes, job performance and job
development, and for recruiting, and analysis and
evaluation of employment skills” may be intended for
architects so that architects may be evaluated.
Id. The Examining Attorney cites third-party webpages, claiming that they support
this theory of descriptiveness. Id. at 4-7.
Neither the Examining Attorney nor Applicant cites any cases discussing this
theory of mere descriptiveness, and we have located very few precedential decisions,
and none of recent vintage, in which the Board has considered it. We summarize the
most pertinent precedential cases below.
In In re Hunter Publ’g Co., 1979 WL 24907 (TTAB 1979), which appears to be the
most frequently cited precedential case on this issue, the Board affirmed a mere
descriptiveness refusal to register JOBBER AND WAREHOUSE EXECUTIVE for a
trade magazine. The Board stated that it “has been consistently held that a mark
which describes the intended users of a particular product is merely descriptive of
such goods.” Id. at *5 (citations omitted).
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Serial No. 90890949
The Board held that publication titles “need not describe all of the various readers
or recipients of the publications” and that it “is sufficient for the purpose of falling
within the prohibition of Section 2(e)(1) that they describe with particularity
individuals or classes of individuals to whom the publications are primarily directed.”
Id.15 The Board found that JOBBER AND WAREHOUSE EXECUTIVE was merely
descriptive of the applicant’s trade magazine because “there is no question from the
contents of the publication of record herein that it is directed to jobber and warehouse
managers or executives in the automotive aftermarket and that this would be the
initial impact of the mark as used and encountered in the marketplace for such a
publication.” Id. at *6.
In In re Camel Mfg. Co., 1984 WL 63080 (TTAB 1984), the Board affirmed a mere
descriptiveness refusal to register MOUNTAIN CAMPER for “retail and mail order
services in the field of outdoor equipment and apparel” because the mark “merely
describes the type of customer to whom applicant’s services are directed.” Id. at *1.
Based on a review of the applicant’s catalog, the Board found that it was clear that
“at least some of applicant’s goods are directed toward the category of purchaser we
could refer to as the ‘mountain camper’ . . . .” Id. at *2. The Board “embrace[d] the
holding [in Hunter Publ’g] that a mark is merely descriptive if it describes the type of
individuals to whom an appreciable number or all of a party’s goods or services are
directed.” Id.
15Hunter Publ’g involved the title of a publication, but the Board noted that the same
principles applied to marks for other goods or services. Hunter Publ’g, 1979 WL 24907, at *5.
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Serial No. 90890949
In Hunter Publ’g Co. v. Caulfield Publ’g Ltd., 1986 WL 83351 (TTAB 1986), the
Board found that SYSTEMS USER for a periodic trade journal was not generic for
those goods. The applicant conceded that SYSTEMS USER was merely descriptive
under the Hunter Publ’g and Camel Mfg. cases discussed above because SYSTEMS
USER described the applicant’s readership, id. at *2-3, and the Board stated in dicta
that “it is clear that persons in the industry are referred to as ‘system users’ or
‘systems users’” and “[t]o that extent the title of applicant’s magazine is descriptive
as to some, if not all, of its readers or subscribers.” Id. at *3.
In In re Planalytics, Inc., 2004 WL 715031 (TTAB 2004), the Board affirmed a
mere descriptiveness refusal to register GASBUYER for services identified as
“providing on-line risk management services in the field of pricing and purchasing
decisions for natural gas” because the record showed that “gas buyer” was a “term
applied to people who purchase natural gas supplies,” id. at *2, “[a]pplicant’s
identification of services makes it clear that its services are directed to those who are
in the field of making purchasing decisions for natural gas,” id. at *4, and “applicant’s
mark describes a feature or characteristic of the services to the extent that it
immediately conveys that its services are intended for individuals who purchase
natural gas.” Id.
Taken together, these cases hold that a mark or term comprising part of a mark
is merely descriptive of goods or services if it immediately identifies the consumers to
which the identified goods or services, or an appreciable number of the goods or
services, are at least primarily directed. The possible mere descriptiveness of a term
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Serial No. 90890949
under this theory is determined on the basis of the term itself, the identification of
goods or services, and any evidence of the applicant’s use of the term.16
We turn now to the application of these cases to the word ARCHITECT in
Applicant’s mark KORN FERRY ARCHITECT. We begin our analysis with
Applicant’s mark itself. We find that, in the context of Applicant’s mark as a whole
and the services identified in the application and discussed below, the word
ARCHITECT does not immediately identify a person “who designs and supervises
the construction of buildings or other large structures”17 as the type of individual to
whom all or an appreciable number of Applicant’s services are primarily directed.
Camel Mfg., 1984 WL 63080, at *2.
We turn next to Applicant’s identifications of services and specimen. There is
nothing in the Class 35 and Class 42 identification of services themselves that
indicates the consumers of the services. Unlike the identification of services in
Planalytics (“providing on-line risk management services in the field of pricing and
purchasing decisions for natural gas”), which made “it clear that [the] services are
directed to those who are in the field of making purchasing decisions for natural gas,”
i.e., “gas buyers,” Planalytics, 2004 WL 715031, at *4, the identifications of
16 Applicant argues against the mere descriptiveness of ARCHITECT on this theory as
follows: “If the Examining Attorney’s interpretation were correct, consumers would have to
assume that Applicant’s services involve hiring or serving only ‘KORN FERRY
ARCHITECTS’ or ‘ARCHITECTS’ at large, but this certainly is not the case.” 10 TTABVUE
7. As discussed above, the applicable cases do not require the Examining Attorney to show
that ARCHITECT immediately describes the only users of Applicant’s services, but rather
the consumers to which the services are at least primarily directed.
17 May 23, 2022 Office Action at TSDR 2 (THE AMERICAN HERITAGE DICTIONARY).
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Serial No. 90890949
Applicant’s Class 35 human resources and recruiting services and Class 42 human
resources-related software services never allude to professional architects and do not
state or imply that the services are primarily directed to, or consumed primarily by,
professional architects. See Hunter Publ’g Co., 1979 WL 24907, at *6. Although the
identifications of services are broad enough to encompass professional architects as
possible consumers of Applicant’s services, we decline to infer from the identifications
alone that the services are primarily directed to, or primarily consumed by,
professional architects.
With respect to Applicant’s specimen, in the Hunter Publ’g and Camel Mfg. cases,
the Board specifically discussed and relied on the applicants’ actual uses of the
proposed marks in the course of finding them to be merely descriptive of the involved
goods. In Hunter Publ’g, the Board found that the contents of the applicant’s trade
magazine made it clear that the publication was “directed to jobber and warehouse
managers or executives in the automotive aftermarket,” Hunter Publ’g, 1979 WL
24907, at *6, while in Camel Mfg., the Board found that the applicant’s catalog made
it clear that “at least some of applicant’s goods are directed toward the category of
purchaser we could refer to as the ‘mountain camper’ . . . .” Camel Mfg., 1984 WL
63080, at *2.
Subsequent to the Board’s consideration of the applicants’ actual uses in these
cases, the Federal Circuit made clear in N.C. Lottery that the Board must consider a
mark in its commercial context in assessing mere descriptiveness where there is
record evidence of the commercial context of use, such as the applicant’s specimen,
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Serial No. 90890949
website, or other materials. N.C. Lottery, 866 F.3d at 1367-68. Applicant’s specimen
of use, which the Examining Attorney never discusses, begins as follows:
18
The body of the specimen makes no mention of professional architects as the intended
or even incidental users of the referenced services. The specimen states that “Korn
Ferry Architect streamlines job design, work measurement, and related talent
processes” and “enables you to design, evaluate and change jobs quickly and
efficiently and gives you a comprehensive view of where jobs sit in your
organization.”19 One page of the specimen states that “Korn Ferry Architect provides
organization and talent planning architecture for an agile, future-focused workforce
where everyone has opportunities to develop to their full potential,”20 while another
refers to “Job Architecture,” which enables users to “[c]reate order out of chaos with
a global framework that supports consistency across the business.”21 Applicant’s
specimen uses the word “Architect” figuratively in the sense of “[o]ne that plans,
devises, or organizes something,”22 not literally in the sense of “one who designs and
supervises the construction of buildings or other large structures.”23 Unlike the
18 August 19, 2021 Application at TSDR 3.
19 Id.
20 Id.
21 Id. at TSDR 4.
22 May 23, 2022 Office Action at TSDR 2 (THE AMERICAN HERITAGE DICTIONARY).
23 Id.
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evidence of actual use in the Hunter Publ’g and Camel Mfg. cases, Applicant’s
specimen of use here does not make it clear that an appreciable part, or even any
part, of Applicant’s services are primarily directed to architects.
We agree with the Examining Attorney that the record shows that professional
architects could be consumers of at least some of those services,24 but there is nothing
on the face of the mark, in the identifications of services, or in Applicant’s specimen,
that shows that the word ARCHITECT immediately identifies architects as the
consumers to which all or an appreciable number of those services are at least
primarily directed. See Hunter Publ’g, 1979 WL 24907, at *5. We find that the word
ARCHITECT in Applicant’s mark KORN FERRY ARCHITECT is not merely
descriptive of any of Applicant’s services under the Examining Attorney’s theory that
Applicant “may provide its services for architects.” 9 TTABVUE 4.
4. The Examining Attorney’s Argument That ARCHITECT is
a Recognized Term of Art in the Human Resources Field
The Examining Attorney’s second theory of mere descriptiveness is that
“‘architect’ is a term of art in the human resources industry referring to someone who
‘sets the conceptual and political stage for accomplishing any work related to
organizational issues or talent . . .’” Id. at 7.25 The Examining Attorney cites 13
24 Some of the websites made of record by the Examining Attorney show instances in which
human resources or recruiting firms explicitly state that they provide services to or for
architects. December 17, 2022 Final Office Action at TSDR 10 (archipro.com), 19
(ziprecruiter.com), 29 (hiring.monster.com), 30 (ivyexec.com), 35 (interiortalent.com), 36
(aecresources.com), 45 (architizer.com).
25 Id. at TSDR 2. The quoted record excerpt is a LinkedIn page captioned “HR’s Role as
Organizational Architect.” It discusses the importance of HR’s having a “seat at the table” in
the decision making in every organization. It explains that “an organization architect” “sets
the conceptual and political stage for accomplishing any work related to organizational issues
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webpages claiming that they show that ARCHITECT is merely descriptive under this
theory. Id. at 7-8. There is no explanation, however, as to what quality, characteristic,
feature, function, purpose, or use of any of Applicant’s services is immediately
described by the word ARCHITECT in Applicant’s KORN FERRY ARCHITECT
mark.
Five of the 13 record excerpts cited by the Examining Attorney do not even use
the word “architect,” but rather use the word “architecture,”26 while a sixth states
that “HR is the architect of work,” analogizes HR professionals to actual architects
who are “responsible for creating functional, safe, aesthetically pleasing, economical
structures,” and concludes that the “role of human resources is to be the architect of
work.”27 These excerpts do not show that there is a recognized meaning of the term
“architect” in the human resources field as identifying a particular person.
With respect to the remaining cited excerpts, three of them use ARCHITECT in
the plural as part of a service mark, in the manner of its use in the singular in
or talent” and states that “[o]ne of the distinguishing abilities of the Head of HR who acts as
an organizational architect is the capability to work at and across the organization,
conceptual and cultural boundaries” of an organization. Such “[a]n organizational architect
has, by definition, chosen to think about issues that cut across the entire spectrum of the
organization.” It lists a series of objectives for “an organizational architect.” This excerpt uses
“architect” figuratively to refer to a function of the human resources group in an organization
and its head, not to identify any specific identifiable “organizational architect.”
26 Id. at TSDR 4 (emplicity.com website stating that “emplicity knows architecture”); 5-6
(deloitte.com website referring in a headline and in text to “job architecture”); 26 (gradar.com
website captioned “Turn potential into performance with a powerful job architecture” and
discussing “What is a Job Architecture?”); 32 (skillsoft.com website captioned “Professional
in Human Resources: Job Architecture” and offering a video course including a module on
“Job Architecture Framework”); 47 (lattice.com website captioned “What is Job Architecture
and Why Does It Matter?” and discussing “Job Architecture”).
27 Id. at TSDR 3 (hrbartender.com).
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Serial No. 90890949
Applicant’s KORN FERRY ARCHITECT service mark, but not to identify or describe
a position in the human resources field. The HRArchitects.com website uses HR
ARCHITECTS to identify a “consulting company with the expertise on designing,
building and enhancing your Talent Management Strategies.”28 The
impactarchitects.com website uses IMPACT ARCHITECTS to identify “a human
resources advisory and recruiting firm driven to serve and scale growing businesses
by helping them to attract and develop talent to boost performance.” 29 The
peoplearchitects.io website uses PEOPLE ARCHITECTS to identify a company that
provides “Human Resources and Recruiting solutions for growing businesses.”30
A listing for a job at Stanford Health Care in Palo Alto, California described as
“Center of Expertise HR Architect (Talent Management)” states that “The CoE HR
Architect has the opportunity to contribute deep knowledge in an HR area and advise
within a Center of Expertise (CoE),” will “anticipate customer needs by providing
strategic service and developing programs in their areas of expertise to improve HR
offerings, processes and to align with market changes and industry” and “design,
develop and deploy new programs and own the direction in which HR programs in
their areas of expertise develop,” and has “the opportunity to identify areas of
28 Id. at TSDR 15. This appears to be a foreign website. Foreign websites may have probative
value on the meaning of a term in the United States under certain circumstances if it is likely
that “U.S. consumers will encounter foreign websites in the field in question.” In re Well
Living Lab. Inc., 2017 WL 2876809, at *4 n.10 (TTAB 2017). It is not clear that U.S.
consumers would engage a talent management consulting company located abroad.
29 December 17, 2022 Final Office Action at TSDR 27.
30 Id. at TSDR 28.
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improvement and develop new and leading programs for SHC.”31 The webpage
displays listings for more than 60 other “Similar jobs in the area,” none of which is
for an “HR Architect” or “Architect” of any sort.32
Cited excerpts from the chubb.com website and another website discuss the
availability of a job at Chubb called “HR Solutions Architect.”33 These pages describe
what appears to be a job called “The Lead HR Systems / Solutions Architect – Human
Resources,” who the description states is “responsible for the enablement of Chubb’s
Human Resources Modernization journey across different regions, supporting the
architecture design and governance, partnering with the delivery teams to ensure
solutions being implemented are aligned with Chubb’s architecture, security and
technology standards and strategies.”34 The position involves design and
development of “solution architecture” and requires “5+ years in solution architecture
with at least 2 years working on Human Capital / Payroll solutions.”35
Finally, a page on the accenture.com website lists a job description called “Solution
Architect Manager (HR) – Canada” in Mississauga, Ontario that describes the
position as the “Operations Solution Architecture Manager Talent Human Resources
HR,” a “client facing role that interprets and translates client requirement into a
solution that can be configured from a standard set of offerings” and a “single point
31 Id. at TSDR 51 (lensa.com).
32 Id.
33 Id. at TSDR 7, 50.
34 Id. at TSDR 7.
35 Id.
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of contact.”36 Among other things, the position “[c]ollaborate[s] with the Service
Architecture Products directors to plan and architect the overall delivery architecture
and capabilities to support the service offerings.”37
These record excerpts again use “architect” loosely to refer to various persons
engaged in some manner in the human resources field with some form of “job
architecture.” These various references to an “architect” do not show that the word
identifies a particular defined position in the human resources field, and do not show
that the word ARCHITECT in Applicant’s KORN FERRY ARCHITECT mark
immediately describes any quality, characteristic, feature, function, purpose, or use
of any of the services identified in the application.
The Board has frequently acknowledged the “fine line between suggestive marks
and descriptive terms,” and given that fine line, in this case we “must resolve any
doubt in favor of finding the term [ARCHITECT] suggestive rather than descriptive.”
In re Datapipe, Inc., 2014 WL 3543477, at *7 (TTAB 2014); see also Zuma Array, 2022
WL 3282655, at *5. We hold on this record that the Examining Attorney has not
established that the word ARCHITECT in Applicant’s KORN FERRY ARCHITECT
mark is merely descriptive of any of the services identified in the application, and it
thus need not be disclaimed.
Decision: The refusal to register is reversed.
36 Id. at TSDR 9. This website is that of a Canadian company. As noted above, it has probative
value on U.S. consumer perception of the meaning of the phrase “Solution Architect Manager”
only if it likely to be encountered by U.S. consumers, which is not clear in this case.
37 Id.
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