Disclaimer of the word “CENTER”

If the mark you are trying to register contains the word “CENTER” be prepared for a descriptiveness rejection and a disclaimer requirement if the description of goods contains merchandise.  Some Examining Attorneys will make the rejection, others will not.  Searching the register it appears that some registrations have the disclaimer while others do not.   The basis for the descriptiveness rejection is that “the wording CENTER is defined as ‘a store or establishment devoted to a particular subject or hobby, carrying supplies, materials, tools, and books as well as offering guidance and advice.’”  Therefore, the word CENTER merely describes a feature of the applicant’s goods and services, namely, that they are provided or found in a particular store or establishment.  Applicant can argue the commercial impression of the mark as whole does not allow for the conclusion that CENTER is descriptive. 

 An old case that might be able to be used in support of the argument that “CENTER” is not always descriptive of merchandise is In re Tennis in the Round Inc., 199 U.S.P.Q. 496 (TTAB 1978).   In re Tennis found that the mark “TENNIS IN THE ROUND” is not descriptive of a tennis facility containing eleven tennis courts and the facility was a round shape.  

 John C. Thomas III

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