United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE: NORTH CAROLINA LOTTERY,

Appellant

______________________ 

2016-2558

______________________ 

Appeal from the United States Patent and Trademark 

Office, Trademark Trial and Appeal Board in No. 

86/411,401.

______________________ 

Decided: August 10, 2017

______________________ 

 DAVID E. BENNETT, Coats & Bennett, PLLC, Cary, 

NC, argued for appellant. Also represented by DAVID D.

KALISH. 

 WILLIAM LAMARCA, Office of the Solicitor, United 

States Patent and Trademark Office, Alexandria, VA, argued for appellee Joseph Matal. Also represented by NATHAN K. KELLEY, THOMAS L. CASAGRANDE, CHRISTINA 

HIEBER. 

______________________ 

Before Prost, Chief Judge, Chen and Hughes, 

Circuit Judges.

PROST, Chief Judge. 

Appellant North Carolina Lottery (“N.C. Lottery”) 

seeks to register the mark “FIRST TUESDAY” in connec-
2 IN RE: NORTH CAROLINA LOTTERY

tion with lottery services and games, to market the introduction of new scratch-off lottery games on the first Tuesday of each month. It appeals the decision of the U.S. Patent and Trademark Office’s (“PTO”) Trademark Trial and 

Appeal Board (“TTAB”) denying registration of the mark. 

We affirm.

I. BACKGROUND

N.C. Lottery is a state agency that began operating 

traditional lottery drawing games and instant lottery 

scratch-off games in North Carolina in 2006. “In order to 

maintain interest in its instant scratch-off games,” it introduces new scratch-off games on the first Tuesday of 

each month. Appellant’s Opening Br. 3. N.C. Lottery asserts that it has continuously used the mark FIRST 

TUESDAY since July 2013 in print materials, on its Website, and on point-of-sale displays for related advertising. 

On October 1, 2014, N.C. Lottery applied for registration of the mark FIRST TUESDAY for “Lottery cards; 

scratch cards for playing lottery games” and for “Lottery 

services.” J.A. 10–11. It submitted specimens, including 

the promotional materials reproduced below, that have 

explanatory text such as “[n]ew scratch-offs” or “[n]ew

scratch-offs the first Tuesday of every month.”
IN RE: NORTH CAROLINA LOTTERY 3

J.A. 16, 18; see also J.A. 17, 19–21. The examining attorney refused registration, finding that the mark used in 

the context of N.C. Lottery’s promotional materials “merely describes a feature of [its] goods and services, namely, 

new versions of the goods and services are offered the first 

Tuesday of every month.” J.A. 24.

N.C. Lottery appealed to the TTAB, which affirmed 

the refusal to register. Like the examining attorney, the 

TTAB reasoned that N.C. Lottery’s promotional materials 

make clear that “new scratch-off games are offered on the 

first Tuesday of every month” and found that such fact 

would “be so understood by the relevant consumers who 

encounter the designation FIRST TUESDAY in the marketplace.” J.A. 5–6. It found that “[n]o mental thought or 

multi-step reasoning is required to reach a conclusion as 

to the nature of the involved goods and services.” J.A. 6.

N.C. Lottery timely appealed. We have jurisdiction 

under 28 U.S.C. § 1295(a)(4)(B).
4 IN RE: NORTH CAROLINA LOTTERY

II. DISCUSSION

This court reviews the TTAB’s conclusions of law de 

novo and findings of fact for substantial evidence. See In 

re Thrifty, Inc., 274 F.3d 1349, 1351 (Fed. Cir. 2001). 

Substantial evidence “means such relevant evidence as a 

reasonable mind might accept as adequate to support a 

conclusion.” In re Bayer Aktiengesellschaft, 488 F.3d 960, 

964 (Fed. Cir. 2007).

As formulated by Judge Friendly in Abercrombie & 

Fitch Co. v. Hunting World, Inc., there are four categories 

of trademarks that lie along a spectrum. 537 F.2d 4, 10–

11 (2d Cir. 1976). When arranged “in an ascending order 

which roughly reflects their eligibility for trademark status and the degree of protection accorded,” these four categories are: generic (or “common” descriptive), merely descriptive, suggestive, and arbitrary (or fanciful) marks. 

Id.; see also In re Chippendales USA, Inc., 622 F.3d 1346, 

1350–51 (Fed. Cir. 2010) (citing Abercrombie for the four 

categories of marks). Relevant to this case, marks that 

are merely descriptive cannot be registered unless they 

acquire secondary meaning under § 2(f) of the Lanham 

Act, 15 U.S.C. § 1052(f), but marks that are suggestive 

are “inherently distinctive” and can be registered. Chippendales, 622 F.3d at 1351. A mark is merely descriptive 

if it immediately conveys information concerning a feature, quality, or characteristic of the goods or services for 

which registration is sought. Bayer, 488 F.3d at 963. In 

contrast, “a suggestive mark requires imagination, 

thought and perception to reach a conclusion” about the 

nature of the goods or services. DuoProSS Meditech Corp. 

v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1252 (Fed. 

Cir. 2012) (internal quotation marks omitted).
IN RE: NORTH CAROLINA LOTTERY 5

N.C. Lottery asks us to reverse the TTAB’s conclusion 

that the mark FIRST TUESDAY is merely descriptive.1 

Specifically, it argues that the TTAB erred as a matter of 

law by relying on the explanatory text of the specimens to 

supplement the meaning of the mark itself. Instead, it 

contends that the inquiry should be limited to what a consumer with “only general knowledge” of N.C. Lottery’s 

goods and services, and without additional context from 

the explanatory text, would immediately understand the 

mark to mean. Appellant’s Reply Br. 1. Working from 

that premise, N.C. Lottery argues that “there is nothing 

in the words ‘first Tuesday’ that conveys th[e] complete 

understanding which the Director [of the PTO] attributes 

to the mark itself.” Id. at 4–5. Rather, “some imagination 

is needed in order to connect the mark FIRST TUESDAY 

with [its] goods and services,” such that the mark is suggestive and eligible for registration.2 Appellant’s Opening 

Br. 7.

We begin with N.C. Lottery’s argument regarding the 

role of explanatory text. We review this legal argument 

de novo. Thrifty, 274 F.3d at 1351. N.C. Lottery concedes 

that for purposes of analyzing descriptiveness, this court’s 

precedent allows consideration of specimens, such as advertising materials, showing how a mark is used. See, 

e.g., Appellant’s Reply Br. 1 (“Nor has N.C. Lottery argued that [its] advertising is irrelevant to the question of 

descriptiveness.”); Oral Arg. 2:28–2:40, 7:02–7:12, 

 

1 N.C. Lottery does not argue in the alternative 

that the mark is eligible for registration on the basis that, 

even if it is merely descriptive, it has acquired distinctiveness through secondary meaning. We therefore do not 

address secondary meaning.

2 N.C. Lottery does not dispute that the timing of 

when new scratch-off lottery games are offered is a feature or characteristic of its goods or services.
6 IN RE: NORTH CAROLINA LOTTERY

http://oralarguments.cafc.uscourts.gov/mp3/2016-2558.

mp3 (same). But it argues that any explanatory text in 

such specimens cannot supply additional meaning to a 

mark when “the mark itself does not convey that meaning.” Appellant’s Reply Br. 1–2; see also Oral Arg. 11:54–

12:05 (arguing that explanatory text need not be considered). At bottom, N.C. Lottery contends that one must 

consider the specimens as if they did not include the explanatory text. Oral Arg. 9:09–9:17 (“Had that explanatory text not been on the specimen, no one I don’t think 

would ever, ever guess what that mark meant.”); id. at 

9:42–9:52 (“My point is that without that explanation, the 

connection between the mark and the goods you can’t 

make.”).

As the PTO argues, the TTAB “must consider a mark 

in its commercial context to determine the public’s perception.” Appellee’s Br. 9–10 (citing In re Nett Designs, 236 

F.3d 1339, 1342 (Fed. Cir. 2001); In re Abcor Dev. Corp., 

588 F.2d 811, 814 (C.C.P.A. 1798)). This court has explained that the public’s understanding of a mark can be 

evidenced by “[a]ny competent source.” Nett Designs, 236 

F.3d at 1341; see also DuoProSS, 695 F.3d at 1254 (“[T]he 

question is whether someone who knows what the goods 

and services are will understand the mark to convey information about them.”). These sources may include 

Websites, publications, and use “in labels, packages, or in 

advertising material directed to the goods.” Abcor, 588 

F.2d at 814; see also Nett Designs, 236 F.3d at 1342 (relying on advertising brochure statements). At oral argument, N.C. Lottery all but conceded that the analysis of 

descriptiveness should not completely “ignore the explanation in the specimen,” but it had difficulty articulating 

the significance of the explanatory text in this case if not 

to serve as evidence of the significance of FIRST TUESDAY in the commercial context. Oral Arg. 7:02–9:57. We 

have not carved out the explanatory text in such materi-
IN RE: NORTH CAROLINA LOTTERY 7

als from supplying commercial context and decline to do 

so today.

That is not to say, however, that the use of explanatory text with a mark necessarily renders that mark merely 

descriptive. “Placement of a term on the continuum [of 

distinctiveness] is a question of fact.” In re Dial-AMattress Operating Corp., 240 F.3d 1341, 1344 (Fed. Cir. 

2001). The distinctiveness of a mark in the context of explanatory text remains a case-specific analysis. As a legal 

matter, however, the TTAB did not err by considering the 

explanatory text of the specimens in the descriptiveness 

inquiry.

Turning next to the impact of the explanatory text in 

this particular case, N.C. Lottery argues that “the fact 

that N.C. Lottery found it necessary to explain the connection between the mark and [its] goods and services 

shows that the mark is not descriptive.” Appellant’s

Opening Br. 8. It relies on cases such as Tumblebus Inc. 

v. Cranmer, 399 F.3d 754 (6th Cir. 2005), and Swatch AG 

v. Beehive Wholesale, LLC, 739 F.3d 150 (4th Cir. 2014), 

as examples where courts have relied in part on explanatory text to find that a mark was not merely descriptive. 

Appellant’s Opening Br. 10–12. But not only are these 

cases not binding on this court, they are also distinguishable.

In Tumblebus, the Sixth Circuit held that the mark 

“TUMBLEBUS”—for mobile gymnastics instruction services—was suggestive, not merely descriptive, based in 

part on “the fact that Tumblebus, Inc. has found it necessary to include explanatory phrases such as ‘Gym On 

Wheels’ in its advertising material.” 399 F.3d at 759. 

And in Swatch, the Fourth Circuit affirmed a finding that 

the mark “SWAP”—for watches with interchangeable faces and bands—was suggestive because “[e]xplaining the 

function of [defendant’s] product” through promotional 

materials containing diagrams, arrows, and text, evi-
8 IN RE: NORTH CAROLINA LOTTERY

denced the need for “a further leap.” 739 F.3d at 157 (internal quotation marks omitted) (first alteration in original). As the PTO points out, however, the connection between the mark FIRST TUESDAY and its reference to 

when new scratch-off lottery games are being offered is 

much closer and more straightforward than the connection between TUMBLEBUS and its reference to mobile 

gymnastics instruction, or the connection between SWAP 

and its reference to watches with interchangeable components. Understanding that FIRST TUESDAY refers to a 

new good or service being offered on the first Tuesday of a 

month requires much less of a mental leap than that 

which was required in Tumblebus and Swatch. 

On the record of this case, we agree with the PTO that 

substantial evidence supports the TTAB’s finding of mere 

descriptiveness. As N.C. Lottery concedes, the explanatory text accompanying the mark FIRST TUESDAY is not 

complicated. Oral Arg. 24:05–24:10. That text simply uses the same two words as the mark—“first Tuesday”—

along with words like “new” and “every month” to describe 

the relevant feature or characteristic of N.C. Lottery’s 

scratch-off lottery games. The commercial context here 

demonstrates that a consumer would immediately understand the intended meaning of FIRST TUESDAY. In other words, the evidence shows that the mark is less an 

identifier of the source of goods or services and more a description of a feature or characteristic of those goods or 

services. Substantial evidence therefore supports the 

TTAB’s finding that FIRST TUESDAY is a merely descriptive mark.

III. CONCLUSION

For the foregoing reasons, we affirm the TTAB’s decision refusing to register the mark FIRST TUESDAY.

AFFIRMED