A trademark examining attorney required Korn Ferry to disclaim the word ARCHITECT in its mark KORN FERRY ARCHITECT for human resources and recruiting services. The Trademark Trial and Appeal Board reversed the requirement in a precedential decision, In re Korn Ferry, Serial No. 90890949 (TTAB June 27, 2024). The outcome rests on a careful analysis of the evidentiary record and turns on a principle that applies well beyond this particular applicant: the examining attorney bears the burden of showing mere descriptiveness, and the evidence has to support the theory advanced.
The Disclaimer Requirement
When a trademark application contains a word that is merely descriptive of the goods or services, the USPTO can require the applicant to disclaim it. A disclaimer is a statement in the application record that the applicant does not claim exclusive rights to that word standing alone. The composite mark can still be registered; the applicant just cannot later assert independent trademark rights in the disclaimed element. Failure to provide a required disclaimer is itself grounds for refusing registration.
The examining attorney in this case required Korn Ferry to disclaim ARCHITECT on two separate theories: first, that architects are potential consumers of the identified services, and second, that "architect" is a recognized term of art in the human resources field.
The Purchaser Description Theory
The first theory drew on a line of precedential TTAB cases holding that a mark is merely descriptive if it immediately identifies the consumers to whom an applicant's goods or services are primarily directed. The Board summarized the standard from cases like In re Hunter Publishing Co. (1979), In re Camel Mfg. Co. (1984), and In re Planalytics, Inc. (2004): a term is merely descriptive under this theory if it immediately identifies the consumers to which the identified goods or services, or an appreciable number of them, are at least primarily directed.
The examining attorney argued that because Korn Ferry's services were broadly identified and could encompass professional architects as consumers, the word ARCHITECT described those potential purchasers. The Board rejected this.
The key distinction from the cases where this theory succeeded was that in those cases, the actual use of the mark made it clear that the named class of people was the primary audience. In Hunter Publishing, the trade magazine's contents made it obvious the publication was directed to automotive jobber and warehouse executives. In Camel Mfg., the applicant's catalog made it clear the goods were aimed at mountain campers. In Planalytics, the identification of services itself stated they were in the field of pricing and purchasing decisions for natural gas, which pointed directly to gas buyers as the primary users.
None of that was present here. Korn Ferry's identification of services never mentioned architects. The specimen of use, which the examining attorney did not even address in the briefs, described a product that streamlines job design, work measurement, and talent processes, and referred to "job architecture" as a framework for organizing roles within an organization. There was no indication that professional architects, in the construction sense, were the primary audience for any of these services.
The Board declined to infer from the breadth of a service identification alone that any named class of consumers was primarily served. That the services were broad enough to theoretically encompass architects as potential users was not the same as showing that architects were the primary consumers.
The Term of Art Theory
The second theory was that "architect" functions as a recognized term of art in the human resources field, identifying a particular type of HR professional. The examining attorney cited thirteen webpages in support.
The Board went through each one. Five of the cited pages did not use the word "architect" at all, but instead used "architecture," which is a different word. A sixth used "architect" as a figure of speech, analogizing HR professionals to building architects responsible for functional structures, which the Board read as figurative language rather than a recognized industry title.
Of the remaining pages, three used the word as part of a service mark in the same figurative sense as Korn Ferry's own mark, identifying companies like HR Architects, Impact Architects, and People Architects. These showed that "architect" was being used as a brand name, not as a defined position in the field.
The remaining pages described job listings for roles such as "Center of Expertise HR Architect" at Stanford Health Care, "HR Solutions Architect" at Chubb, and "Solution Architect Manager (HR)" at Accenture. The Board found these used "architect" loosely in connection with systems design and technology work, not as a uniformly recognized title in the human resources field. There was no showing that any of these uses established ARCHITECT as a term that immediately describes a quality, characteristic, feature, function, purpose, or use of Korn Ferry's identified services.
The Board also noted that the examining attorney never explained what specific attribute of Korn Ferry's services ARCHITECT was supposed to describe under this theory, which left the record without a coherent account of how the word connected to the services.
The Unitary Mark Argument and Prior Registrations
Korn Ferry added two arguments that the Board rejected, that KORN FERRY ARCHITECT is a unitary mark and that prior registrations contained the word ARCHITECT without a disclaimer.
Korn Ferry argued that KORN FERRY ARCHITECT was a unitary mark and therefore had no separable unregistrable component. The Board disagreed. A unitary mark is one whose elements combine to create a distinct meaning independent of the meaning of its constituent parts. The Board found that KORN FERRY, as Korn Ferry's corporate name, was simply separable from ARCHITECT, and the mark did not create a single distinct commercial impression that transcended its components.
Korn Ferry also pointed to eight prior USPTO registrations for its other marks containing the word ARCHITECT without any disclaimer requirement. The Board acknowledged those registrations but gave them no weight. Prior examination decisions are not binding on the USPTO or the Board, and each application is assessed on its own record. The absence of a disclaimer in a prior registration does not establish that the word is distinctive or that a disclaimer was inappropriate.
The Outcome and Takeaways
The Board reversed the disclaimer requirement, holding that the examining attorney had not established that ARCHITECT was merely descriptive of any of Korn Ferry's identified services under either theory advanced. Where the evidence is genuinely ambiguous, doubt is resolved in the applicant's favor, and a suggestive finding is preferred over a descriptive one.
The decision is designated precedential, which means it carries binding weight in future TTAB proceedings. It reinforces several principles that apply across trademark prosecution.
The burden of showing mere descriptiveness rests with the examining attorney, not the applicant. That burden requires more than showing that a word could theoretically relate to the services. Under the purchaser description theory, the examiner needs to show that the named class of consumers is actually the primary audience for the services, drawing on the mark itself, the identification of services, and any available evidence of actual use. Breadth of a service identification is not a substitute for that showing.
Under the term of art theory, the examiner needs to identify what quality, characteristic, feature, function, purpose, or use of the services the word immediately describes. A collection of webpages using a word loosely in a field, in varying senses and contexts, does not satisfy that standard if the pages do not consistently point to a single defined meaning that immediately maps onto the identified services.
If you have received a descriptiveness refusal or a disclaimer requirement and want to evaluate your options, Five Dogs Law offers a free consultation. Book a time here.
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