"UX Academy" and the Genericness Line at the TTAB

Designlab Learning, Inc. sought to register the standard-character mark UX Academy (with ACADEMY disclaimed) for "Education services, namely, providing live and on-line classes, seminars, workshops in the field of user interface and user experience design." The Examining Attorney ultimately refused registration on the ground that UX Academy is generic for the identified services and rejected the applicant's claim of acquired distinctiveness under Section 2(f). The Trademark Trial and Appeal Board affirmed the refusal to register.

The Board framed generic terms as the common names that the relevant purchasing public primarily understands to describe the genus of goods or services being sold, and it explained that generic terms cannot indicate a single source and therefore cannot be registered as trademarks. The decision also treated acquired distinctiveness as irrelevant to a truly generic term, because the Board found the mark generic and stated it can never acquire distinctiveness.

The Genericness Test

The Board applied a two-part inquiry: (1) identify the genus of services at issue, and (2) determine whether the relevant public understands the proposed designation primarily to refer to that genus. In working through that second step, the Board emphasized that the mark must be considered as a whole, but it also proceeded in a structured way by examining the meaning of each component term (UX and ACADEMY) before evaluating the compound UX Academy.

For step one, the Board treated the application's identification of services as adequately defining the genus and adopted it essentially verbatim: "live and on-line classes, seminars, workshops in the field of user interface and user experience design."

For step two, because the identification contained no limitations on channels of trade or classes of consumers, the Board presumed the relevant public consisted of all potential purchasers of the identified educational services. To determine how the public understands a term, the Board stated that it may consider a wide range of sources, including consumer surveys, dictionaries, and consumer and competitor usage, among other competent evidence.

The "UX" Component

The Board applied the principle that an abbreviation or acronym is considered generic if (a) the wording it represents is generic for the goods or services, and (b) relevant purchasers understand the abbreviation to be substantially synonymous with that generic wording. In this case, the Board found that "UX" has a well-recognized meaning and is substantially synonymous with "user experience," referencing multiple dictionaries and reference definitions.

The Board then connected this meaning to the services by applying a key aspect/central focus concept, stating that a term can be deemed generic if it identifies a key aspect of the services, including the content or subject matter of training or educational services. The Board concluded that the evidence clearly demonstrated that "UX" (user experience) immediately conveys one of the subject matters of the applicant's classes, seminars, and workshops focused on user experience design.

The "Academy" Component

The Board observed that the applicant had disclaimed the term "ACADEMY" separately from the mark as a whole and treated the term as unregistrable in this context. The Board cited dictionary definitions describing an academy as a school for specialized instruction or as a place that teaches a specific subject or trains individuals for particular jobs. Consequently, it concluded that "ACADEMY" is generic in relation to the applicant's services.

The Compound Mark

After finding both "UX" and "ACADEMY" to be generic for the identified services, the Board evaluated the combined term "UX ACADEMY." They considered whether this combination provides any additional meaning that could distinguish the source. The Board concluded that it did not. They found that the meaning of the compound term is "no more than the sum of its individual generic parts." As a result, it was deemed generic and unregistrable as a whole.

Applicant Arguments

A recurring theme in the decision is that the absence of widespread third-party use of the precise proposed term is not dispositive where other evidence shows consumers will understand the term to refer to the genus (or a key aspect) of the services. The Board also found that the record did not support the premise that no one else used "UX ACADEMY" in connection with similar services, pointing to third-party uses that combined "UX" and "ACADEMY."

Additionally, the Board considered the applicant's promotional language indicative of consumer understanding, particularly phrases such as "Learn UX Design With UX Academy." This wording was seen as reinforcing the everyday meaning of the individual terms in the proposed mark. Additionally, the Board relied on the applicant's specimen and related materials, which demonstrated that the services were presented as UX/UI design education, with a focus on UX design lessons and projects.

Acquired Distinctiveness

The Board determined that the mark was generic and, therefore, incapable of acquiring distinctiveness. However, for the sake of thoroughness, it also examined the possibility of acquired distinctiveness, assuming arguendo that the mark was not generic but rather highly descriptive. The Board explained that acquired distinctiveness requires evidence that the relevant public views the mark's primary significance as identifying the source of the services, rather than the services themselves. It referenced a multi-factor approach that includes consumer surveys, the length and exclusivity of use, advertising efforts, sales data, instances of copying, and unsolicited media coverage.

The applicant presented a declaration from its Chief Executive Officer detailing several points, including thousands of students, years of operational experience, millions spent on marketing and advertising, and annual revenues in the millions. Additionally, it mentioned an ongoing opposition proceeding and provided examples of advertising and media coverage. Despite this, the Board determined that the evidence was insufficient. It emphasized that the record did not demonstrate how the public perceives "UX ACADEMY" as an indicator of source. Furthermore, the applicant provided only approximate figures rather than precise sales and advertising data, thereby preventing a more meaningful understanding of the market context.

Practical Implications

Applicants should not assume that being the first to use a mark or being the only one using that mark is a substitute for evidence of consumer understanding. The Board considered other competent evidence, such as dictionaries, applicant usage, and third-party usage, sufficient, even in the absence of proof that competitors commonly use the identical term in the same manner.

If acquired distinctiveness is the strategy, gather evidence that demonstrates the mark's standalone significance. This should include direct consumer evidence, such as surveys, as well as concrete and contextualized proof of sales and advertising. This is especially important when the Board regards the term as highly descriptive.