Legal Footnote: In re Recreational Equipment, Inc.

Many loyal customers to REI (Recreational Equipment Inc.) know the company to be a co-op. The term co-op is an abbreviation for cooperative, which is a company owned by the members. In 2016, REI filed a standard word trademark application for the brand CO-OP for “Bicycles, bicycle seats, bicycle wheels, bicycle tires, bicycle handlebars, bicycle forks, bicycle handle bar stems” in international class 012. In the course of the examination, the trademark Examiner refused registration because “the abbreviation ‘co-op’ describes the provider of the goods” essentially adopting a per se rule that if the mark is merely descriptive of the source or provider of an applicant’s goods, the mark is merely descriptive, and unregistrable on the Principal Register.

The board opinion, which is precedential, provides, there is not a per se rule that if the mark is merely descriptive of the source then the mark should be refused registration on that basis. This is an important decision, because trademark examiners have routinely rejected marks as merely descriptive on the basis of the mark being descriptive of the source of the goods rather than descriptive of the goods themselves.

While Examiners are cautioned against a per se rule, trademark Applicants should resist the urge to pursue marks that describe something about the goods or services if the Applicant wishes the strongest in the spectrum of trademark protection.

Read the opinion here

Angela Grayson, CIPP/US, CLP is an author, speaker, and lawyer. She is the Principal and Founder of Precipice IP, PLLC.  Angela is a patent, trademark, copyright, and technology law attorney with almost 20 years of experience helping science and technology companies protect products, brands, designs, and data from idea to launch.

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