## Facts

- Seats, Inc. provided computerized ticket reservation and issuing services for events and sought to register the service mark “SEATS,” claiming use since 1973.
- The PTO examining attorney refused registration, first concluding the term was merely descriptive because ticket reservation involves reserving seats.
- Seats amended its position and later asserted acquired distinctiveness under Lanham Act § 2(f), submitting affidavits and statements from dealers and customers that the public associated “SEATS” with Seats, Inc.
- The examiner maintained refusal, characterizing “SEATS” as the common descriptive name of the “purpose” or “end product” of the services and treating the evidence as only “de facto” secondary meaning.
- The Trademark Trial and Appeal Board affirmed, finding “SEATS” merely descriptive under § 2(e)(1) and “so highly descriptive” that it was incapable of functioning as a service mark even with secondary-meaning evidence.
- Seats, Inc. appealed the refusal to the United States Court of Appeals for the Federal Circuit.

## Issues

1. Whether “SEATS” for computerized ticket reservation and issuing services is generic or otherwise legally incapable of functioning as a service mark.
2. Whether the PTO may deny registration by labeling a mark “highly descriptive” and “incapable” despite substantial evidence that the term has acquired distinctiveness under Lanham Act § 2(f).

## Decision

- The Federal Circuit reversed the TTAB’s refusal to register.
- The court held that “SEATS” was not the generic name of the services and was not rendered unregistrable merely because it was deemed “highly descriptive.”
- Because the record contained substantial evidence of acquired distinctiveness and the Board did not make a genuine genericness finding, § 2(f) permitted registration.

## Legal Principles

- Generic terms are never registrable; descriptive terms may be registered upon proof that they have become distinctive of the applicant’s goods or services under Lanham Act § 2(f).
- A characterization of a term as “highly descriptive” does not, standing alone, establish legal “incapability” to function as a mark absent a finding that the term is generic for the relevant goods or services.
- When evidence shows that consumers perceive a descriptive term as indicating a single source, the PTO must give that evidence legal effect under § 2(f) rather than dismissing it as merely “de facto” distinctiveness.
- Registrability must be assessed based on the applied-for mark as used for the identified services, not by treating other descriptive terms as substitutes for the mark at issue.

## Conclusion

The Federal Circuit required registration of “SEATS” because the term was not shown to be generic for the services and the applicant presented substantial evidence that the public associated the term with a single source, satisfying Lanham Act § 2(f).


In re Seats, Inc., 757 F.2d 274 (Fed. Cir. 1985)