In Re Merrill Lynch, Pierce, Fenner, & Smith, Inc, 828 F.2d 1567 (Fed. Cir. 1987). · Go Syfert
In Re Merrill Lynch, Pierce, Fenner, & Smith, Inc, 828 F.2d 1567 (Fed. Cir. 1987). Cases Citing This Book View Copy Cite
143 citation events (88 in the last 25 years) across 26 distinct courts.
Strongest positive: Moke America LLC v. American Custom Golf Cars, Inc. (vaed, 2023-05-03)
Treatment trajectory · 1987 → 2026 · click a year to view as-of
1987 2006 2026
Top citers, strongest first. 50 distinct citers. How cited ↗
discussed Cited as authority (verbatim quote) Moke America LLC v. American Custom Golf Cars, Inc.
E.D. Va. · 2023 · quote attribution · 1 verbatim quote · confidence high
generic terms ... are the antithesis of trademarks, and can never attain trademark status.
discussed Cited as authority (verbatim quote) Earnhardt v. Kerry Earnhardt, Inc.
Fed. Cir. · 2017 · signal: see, e.g. · quote attribution · 1 verbatim quote · confidence high
the board found that the term cash management account is generic or commonly descriptive, not 'merely descriptive.
discussed Cited as authority (verbatim quote) In Re Hotels.com, L.P.
Fed. Cir. · 2009 · quote attribution · 1 verbatim quote · confidence high
the examining attorney has the burden of proving that a term is generic by clear evidence.
discussed Cited as authority (verbatim quote) Bellsouth Corporation v. Datanational Corporation (2×) also: Cited as authority (rule)
Fed. Cir. · 1995 · quote attribution · 1 verbatim quote · confidence high
generic terms, by definition incapable of indicating source, are the antithesis of trademarks, and can never attain trademark status.
discussed Cited as authority (verbatim quote) Bellsouth Corp. v. Datanational Corp. (2×) also: Cited as authority (rule)
Fed. Cir. · 1995 · quote attribution · 1 verbatim quote · confidence high
generic terms, by definition incapable of indicating source, are the antithesis of trademarks, and can never attain trademark status.
examined Cited as authority (verbatim quote) In Re Analog Devices (4×) also: Cited as authority (rule), Cited "see"
Fed. Cir. · 1989 · quote attribution · 1 verbatim quote · confidence high
generic terms, by definition incapable of indicating source, are the antithesis of trademarks, and can never attain trademark status.
discussed Cited as authority (quoted) Marketquest Grp., Inc. v. BIC Corp.
S.D. Cal. · 2018 · signal: see · quote attribution · 1 verbatim quote · confidence high
he only thing that becomes incontestable is the right of the registrant to use the mark for the goods or services for which it is registered.
discussed Cited as authority (quoted) JFJ Toys, Inc. v. Sears Holdings Corp.
D. Maryland · 2017 · signal: see · quote attribution · 1 verbatim quote · confidence high
evidence of the public's understanding of the term may be obtained ' from any competent source....
discussed Cited as authority (rule) U.S. All Star Federation, Inc. v. Open Cheer & Dance Championship Series, LLC
11th Cir. · 2026 · confidence medium
Because “the relevant meaning of a term is its meaning to consumers,” Booking.com B.V., 591 U.S. at 556 , a court may look to “any compe- tent source” of the public’s understanding of the term to determine whether it is generic, such as “purchaser testimony, consumer sur- veys, listings in dictionaries, trade journals, newspapers, and other publications,” In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1570 (Fed.
cited Cited as authority (rule) In Re BRUNETTI
Fed. Cir. · 2025 · confidence medium
To that end, we have explained that “[e]ach application for registration must be considered on its own merits.” In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1569 (Fed.
discussed Cited as authority (rule) CHEMLOGIX LLC v. BULK TAINER LOGISTICS NORTH AMERICA, INC.
E.D. Pa. · 2023 · confidence medium
“Evidence of the public's understanding of the term [at issue] may be obtained from any competent source, such as purchaser testimony, consumer surveys, listings in dictionaries, trade journals, newspapers, and other publications.” Berner Int'l Corp. v. Mars Sales Co., 987 F.2d 975, 982 (3d Cir. 1993) (quoting In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1570 (Fed.
discussed Cited as authority (rule) Now-Casting Economics, LTD. v. Economic Alchemy LLC
S.D.N.Y. · 2021 · confidence medium
While “[e]vidence of the public’s understanding of [a generic] term may be obtained from any competent source,” including “trade journals, newspapers, and other publications,” In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1570 (Fed.
discussed Cited as authority (rule) In Re: Cordua Restaurants, Inc.
Fed. Cir. · 2016 · confidence medium
This is so because “[g]eneric terms, by definition incapable of indicating source, are the antithesis of trademarks, and can never attain trademark status.” In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1569 (Fed.Cir.1987); see also Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 965 (Fed.Cir.2015).
cited Cited as authority (rule) Select Comfort Corp. v. Baxter
D. Minnesota · 2016 · confidence medium
Genericness can be demonstrated “from any competent source.” In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1570 (Fed.Cir.1987).
examined Cited as authority (rule) In Re Louisiana Fish Fry Products, Ltd. (4×) also: Cited "see"
Fed. Cir. · 2015 · confidence medium
In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1571 (Fed.
discussed Cited as authority (rule) Princeton Vanguard, LLC v. Frito-Lay North America, Inc.
Fed. Cir. · 2015 · confidence medium
In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 1569 (Fed.Cir.1987) (“It is basic to the inquiry to determine whether members of the relevant public primarily use or understand the term to refer to the genus of goods or services.”).
discussed Cited as authority (rule) Inre: Nordic Naturals, Inc.
Fed. Cir. · 2014 · confidence medium
The PTO must establish this fact with “clear evidence of generic use.” In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1571 (Fed.Cir.1987) (quoting Trademark Manual of Examining Procedure § 1305.04 (1983)).
discussed Cited as authority (rule) Bedford Auto Dealers Assn. v. Mercedes Benz of N. Olmsted
Ohio Ct. App. · 2012 · confidence medium
Therefore, in accord with the primary justifications for protecting trademarks — to aid competition and lower consumers’ search costs — the law does not grant any party exclusive rights to use generic terms as trademarks. {¶20} In deciding whether a mark is generic, evidence of the relevant public’s understanding of a term “may be obtained from any competent source.” In re Merrill, Lynch, Pierce Fenner & Smith, Inc., 828 F.2d 1567, 1570 (Fed.Cir.1987).
cited Cited as authority (rule) Zurco, Inc. v. Sloan Valve Co.
W.D. Pa. · 2011 · confidence medium
Corp. v. Mars Sales Co., 987 F.2d 975, 982-83 (3rd Cir.1993) (citing In re Merrill Lynch, Pierce, Fenner, and Smith, Inc., 828 F.2d 1567, 1570 (Fed.Cir.1987)).
discussed Cited as authority (rule) PSK, LLC v. Hicklin
N.D. Iowa · 2010 · confidence medium
“In deciding genericness, evidence of the relevant public’s understanding of a term ‘may be obtained from any competent source.’” Id. (quoting In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1570 (Fed.Cir.1987)).
discussed Cited as authority (rule) Colt Defense LLC v. Bushmaster Firearms, Inc.
1st Cir. · 2007 · confidence medium
Such sources include consumer surveys, e.g., Keebler, 624 F.2d at 375 , the use of the term in media publications, e.g., Murphy Door Bed Co. v. Interior Sleep Sys., Inc., 874 F.2d 95 , 101 (2d Cir.1989), use of the term by competitors in the industry, e.g., Schwan’s, 460 F.3d at 975 , purchaser testimony concerning the term, e.g., In re Merrill Lynch, Pierce, Fenner, and Smith, Inc., 828 F.2d 1567, 1570 (Fed.Cir.1987), and the plaintiffs use of the term, Retail Servs., Inc. v. Freebies Publ’g, 364 F.3d 535 , 544 (4th Cir.2004).
cited Cited as authority (rule) In Re Reed Elsevier Properties
Fed. Cir. · 2007 · confidence medium
In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 1570 (Fed.Cir.1987).
cited Cited as authority (rule) In re Reed Elsevier Properties Inc.
Fed. Cir. · 2007 · confidence medium
In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 1570 (Fed.Cir.1987).
discussed Cited as authority (rule) Jewish Sephardic Yellow Pages, Ltd. v. DAG Media, Inc. (2×)
E.D.N.Y · 2007 · confidence medium
A mark’s common usage and understanding by the relevant public may be discerned from “any competent source,” In re Merrill Lynch, 828 F.2d 1567, 1570 (Fed.Cir.1987), including consumer surveys, testimony of consumers or trade professionals, dictionary definitions, uncontested usage of the mark by competitors to describe their products, generic usage in newspaper and magazine articles, and generic usage by the proponent of the trademark.
cited Cited as authority (rule) Krav Maga Ass'n of America, Inc. v. Yanilov
C.D. Cal. · 2006 · confidence medium
In re Merrill Lynch, 828 F.2d 1567, 1570 (Fed.Cir.1987).
discussed Cited as authority (rule) In Re Pennington Seed, Inc. (Mark Formerly Owned by Krb Seed Company, Llc)
Fed. Cir. · 2006 · confidence medium
As we stated in In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1569 (Fed.Cir.1987): Generic terms, by definition incapable of indicating source, are the antithesis of trademarks, and can never attain trademark status.
cited Cited as authority (rule) Globalaw Ltd. v. Carmon & Carmon Law Office
D.D.C. · 2006 · confidence medium
Sprinkler Co., 49 U.S.P.Q.2d 1194 , 1196, 1998 WL 929628 (Trademark Tr. & App. Bd.1998) (citing In re Merrill, Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 1571 (Fed.Cir.1987)).
discussed Cited as authority (rule) Schwan's IP v. Kraft Pizza Co.
8th Cir. · 2006 · confidence medium
Cir. 1989), for a competitor must be able to “describe his goods as what they are.” In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1569 (Fed.
discussed Cited as authority (rule) Schwan's Ip, LLC Schwan's Consumer Brands North America, Inc. v. Kraft Pizza Company
8th Cir. · 2006 · confidence medium
Veterans Found., 872 F.2d 1035, 1039 (D.C.Cir.1989), for a competitor must be able to “describe his goods as what they are.” In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1569 (Fed.Cir.1987) (quoting CES Publ’g Corp. v. St.
discussed Cited as authority (rule) Van Well Nursery, Inc. v. Mony Life Insurance
E.D. Wash. · 2006 · confidence medium
However, in deciding genericness, evidence of the relevant public’s understanding of a term “may be obtained from any competent source. ” In re Merrill, Lynch, Pierce Fenner & Smith, Inc., 828 F.2d 1567, 1570 (Fed.Cir.1987) (emphasis added).
cited Cited as authority (rule) SCHWAN'S IP, LLC v. Kraft Pizza Co.
D. Minnesota · 2005 · confidence medium
Genericness can be demonstrated “from any competent source.” In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1570 (Fed.Cir.1987) (citation *1021 omitted).
examined Cited as authority (rule) In Re MBNA America Bank, N.A. (4×) also: Cited "see"
Fed. Cir. · 2003 · confidence medium
In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1569 (Fed.Cir.1987).
discussed Cited as authority (rule) Nartron Corporation v. Stmicroelectronics, Inc.
6th Cir. · 2002 · confidence medium
In deciding genericness, evidence of the relevant public’s understanding of a term “may be obtained from any competent source.” In re Merrill, Lynch, Pierce Fenner & Smith, Inc., 828 F.2d 1567, 1570 (Fed.Cir.1987) (emphasis added).
examined Cited as authority (rule) Interstate Net Bank v. NetB@ Nk, Inc. (3×) also: Cited "see", Cited "see, e.g."
D.N.J. · 2002 · confidence medium
In re Merrill Lynch, 828 F.2d at 1568 (emphasis added). *520 In the instant matter, defendant’s claim that its mark is incontestable can apply as a matter of law only in connection with goods and services for which the mark was originally registered.
cited Cited as authority (rule) In re Watts
Fed. Cir. · 2001 · confidence medium
In re Merrill Lynch, 828 F.2d 1567, 1569 , 4 USPQ2d 1141, 1142 (Fed.Cir.1987).
examined Cited as authority (rule) In Re Dial-A-Mattress Operating Corporation (Serial No. 75/131,355) (7×) also: Cited "see"
Fed. Cir. · 2001 · confidence medium
They are by definition incapable of indicating a particular source of the goods or services, and cannot be registered as trademarks; doing so “would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are.” In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d at 1569 , 4 USPQ2d at 1142.
cited Cited as authority (rule) In Re Nett Designs, Inc.
Fed. Cir. · 2001 · confidence medium
In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 1570 , 4 USPQ2d 1141, 1143 (Fed.Cir.1987).
discussed Cited as authority (rule) Image Online Design, Inc. v. Core Ass'n
C.D. Cal. · 2000 · confidence medium
Nevertheless, “[ejvidence of the public’s understanding of a term may be obtained, from any competent source, such as purchaser testimony, consumer surveys, listings in dictionaries, trade journals, newspapers and other publications.” In re Merrill Lynch, 828 F.2d 1567, 1570 (Fed.
examined Cited as authority (rule) In Re the American Fertility Society (Now Known as American Society for Reproductive Medicine) (3×) also: Cited "see"
Fed. Cir. · 1999 · confidence medium
Id., 828 F.2d 1567 , 4 USPQ2d at 1144.
discussed Cited as authority (rule) Westchester Media Co. v. PRL USA Holdings, Inc.
S.D. Tex. · 1999 · confidence medium
See Avon Shoe Co. v. David Crystal, Inc., 279 F.2d 607 (2nd Cir.1960), cert. denied, 364 U.S. 909 , 81 S.Ct. 271 , 5 L.Ed.2d 224 (1960); In Re Loew’s Theatres, Inc., 769 F.2d 764 (Fed.Cir.1985); In Re Merrill Lynch, Pierce, Fenner and Smith, Inc. ., 828 F.2d 1567, 1568 (Fed.Cir.1987).
discussed Cited as authority (rule) DeVore & Sons, Inc. v. Thomas Nelson, Inc.
D. Kan. · 1998 · confidence medium
Just as the phrase “cash management account” was found to be non-generic by evaluating its meaning to the relevant consuming public, see In re Merrill Lynch, Pierce, Fenner, and Smith, 828 F.2d 1567, 1571 (Fed.Cir.1987), so too should “air door” be evaluated by examining its meaning to the relevant consuming public.
discussed Cited as authority (rule) Suh v. Yang
N.D. Cal. · 1997 · confidence medium
To show that a term has come to symbolize the general class or category of the product to the public, “evidence of the public's understanding of the term [at issue] may be obtained from any competent source, such as purchaser testimony, consumer surveys, listings in dictionaries, trade journals, newspapers, and other publications.” In re Merrill Lynch, 828 F.2d 1567, 1570 (Fed.Cir.1987). 4 In support of its contention that kuk sool is generic, Defendant has introduced evidence of the PTO’s refusal to register both the terms “kuk sool” and “Kuk Sool Won.” While the PTO’s refusal…
discussed Cited as authority (rule) Committee for Idaho's High Desert, Inc. v. Yost
9th Cir. · 1996 · confidence medium
Genericness Genericness is a question of fact, In re Northland Aluminum Products, Inc., 777 F.2d 1556, 1559 (Fed.Cir.1985), and therefore subject to clear-error review, In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 1569 (Fed.Cir.1987).
discussed Cited as authority (rule) Continental Grain Company v. Central Soya Company, Inc.
Fed. Cir. · 1995 · confidence medium
In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 1570 , 4 USPQ2d 1141, 1143 (Fed.Cir.1987). 15 As distinguished from descriptive marks, suggestive marks merely suggest, rather than describe, some quality or ingredient of goods.
discussed Cited as authority (rule) SportsChannel Associates v. Commissioner of Patents & Trademarks
E.D.N.Y · 1995 · confidence medium
In re Merrill Lynch, Pierce, Fenner & Smith, 828 F.2d 1567, 1569-70 (Fed.Cir.1987) (applying these standards to appellate review of the Appeal Board’s refusal to register a service mark); Northland Aluminum, 777 F.2d at 1559 (same); see also McCarthy, at § 12.18[1].
examined Cited as authority (rule) In Re K-T Zoe Furniture, Inc. (3×) also: Cited "see"
Fed. Cir. · 1994 · confidence medium
In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 1569 , 4 USPQ2d 1141, 1142 (Fed.Cir.1987).
discussed Cited as authority (rule) Berner International Corporation v. Mars Sales Company (2×) also: Cited "see"
3rd Cir. · 1993 · confidence medium
Even the Court of Appeals for the Seventh Circuit has recognized that “[dissecting marks often leads to error.” Liquid Controls, 802 F.2d at 934. 4 Just as the phrase "cash management account” was found to be non-generic by evaluating its meaning to the relevant consuming public, see In re Merrill Lynch, Pierce, Fenner, and Smith, 828 F.2d 1567, 1571 (Fed.Cir.1987), so too should “air door” be evaluated by examining its meaning to the relevant consuming public. 5 Even though the term “air door” may be the combination of two commonly used words, it is a phrase that *982 has some m…
examined Cited as authority (rule) The Loglan Institute, Inc. v. The Logical Language Group, Inc. (3×) also: Cited "see"
Fed. Cir. · 1992 · confidence medium
Merrill Lynch, 828 F.2d at 1570 , 4 USPQ2d at 1143; Dan Robbins, 599 F.2d at 1014 , 202 USPQ at 105 .
discussed Cited as authority (rule) G. Heileman Brewing Co. v. Anheuser-Busch Inc. (2×) also: Cited "see"
E.D. Wis. · 1987 · confidence medium
Nevertheless, the law requires that generic or common descriptive usage be determined from the point of view of the relevant consumer. 43 See Kellogg Company v. National Biscuit Company, 305 U.S. 111, 118 , 59 S.Ct. 109, 113 , 83 L.Ed. 73 (1938); In re Merrill Lynch, Pierce, Fenner and Smith, 828 F.2d 1567, 1569 (Fed.Cir.1987).
Retrieving the full opinion text from the archive…
In Re MERRILL LYNCH, PIERCE, FENNER, AND SMITH, INC.
86-1080.
Court of Appeals for the Federal Circuit.
Sep 17, 1987.
828 F.2d 1567
Steven H. Hartman, Milgrim, Thomajan, Jacobs & Lee, New York City, for appellant., Joseph F. Nakamura, Solicitor, Fred E. McKelvey, Deputy Solicitor and Nancy C. Slutter, Asst. Solicitor, Office of the Solicitor, Arlington, Va., for appellees.
Smith, Cowen, Newman.
Cited by 67 opinions  |  Published
2 passages pin-cited by 2 cases
Pinpoint authority: bottom 74%
Citer courts: S.D. California (1) · D. Maryland (1)
PAULINE NEWMAN, Circuit Judge.

The Commissioner of Patents and Trademarks, acting through the Trademark Trial and Appeal Board (Board), refused registration of the term CASH MANAGEMENT ACCOUNT on the Principal Register as a service mark for “stock brokerage services, administration of money market fund services, and providing loans against securities services”, Application Serial No. 254,-808. In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 230 USPQ 128 (TTAB 1986).

The Board held that CASH MANAGEMENT ACCOUNT is a common descriptive or generic name for these financial services, such that acquired distinctiveness or secondary meaning can not provide a right to registration, as a matter of law. The Board thus refused registration under 15 U.S.C. § 1052(f). We reverse and remand.

Incontestability

Appellant already has a registration No. 1,118,929 on the Principal Register, granted May 22, 1979 for the term CASH MANAGEMENT ACCOUNT as a service mark for “financial services involving the use of plastic credit cards by the cardholders for loans to cardholders from their brokerage equity account.” This registration is incontestable, in accordance with 15 U.S.C. §§ 1065 and 1115(b). Taking the position that these services are substantially the same as the services for which registration is now sought, appellant argues that “the Board erred as a matter of law in refusing to order registration on the Principal Register of a service mark as to which Appellant owns incontestable rights”. Appellant argues that its incontestable right to use the term CASH MANAGEMENT ACCOUNT for the services for which it is registered “perforce includes the right to register that term for these same services in a subsequent application”. Appellant asserts that to hold otherwise would deny it title to the mark for the services for which the mark is already registered, citing Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 105 S.Ct. 658, 83 L.Ed.2d 582 (1985).

The benefits of incontestability are no more than that “the registration shall be conclusive evidence of the registrant’s exclusive right to use the registered mark in commerce”. 15 U.S.C. § 1115(b). The only thing that becomes incontestable is the right of the registrant to use the mark for the goods or services for which it is registered. Even that right is subject to the defenses enumerated in 15 U.S.C. § 1115(b) and to the grounds for cancellation set forth at 15 U.S.C. § 1064(c) and (e). Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312, 320, 189 USPQ 630, 636 (CCPA 1976).

In Park ‘N Fly, Inc. the Supreme Court held that an action for infringement of a registered mark that has become incontestable can not be defended on the ground that the mark is “merely descriptive”. 469 U.S. at 205, 105 S.Ct. at 667. This holding is not pertinent to appellant’s argument concerning registration of the same mark for a broadened class of goods. The appellant does not explain how its existing registration for services that require the use of plastic credit cards is substantially the same as the services for which registration is now sought, as those are set forth in the subject application for registration and as quoted by the Board in its opinion at page 130 of 230 USPQ.

While “ownership of one or more prior registrations on the Principal Register ... of the same mark may be accepted as prima facie evidence of distinctiveness,” 37 C.F.R. 2.41(b), ownership of a registration does not of itself authorize the grant of[*1569] another registration for different goods. Each application for registration must be considered on its own merits. In re Loew’s Theatres, Inc., 769 F.2d 764, 769, 226 USPQ 865, 869 (Fed.Cir.1985). Appellant’s argument that refusal of a broader registration is comparable to an attack on an existing registration is unsupported by law or precedent.

The Board correctly held that appellant’s incontestable registration for specific services involving credit cards does not automatically entitle appellant to a registration for broader financial services.

Descriptiveness

The Board affirmed the examiner’s determination that the term CASH MANAGEMENT ACCOUNT is generic for the services described in the application. The Board considered first whether the term is a common descriptive or generic name for the described services.

Appellant argues that its incontestable registration of the mark for similar services is persuasive evidence of distinctiveness, and also argues that there is no direct evidence that CASH MANAGEMENT ACCOUNT is generic for the services for which registration is sought. From the examiner’s evidence of usage in newspapers and financial publications, the Board concluded that “[wjhile there are references to applicant as a pioneer in this type of account”, as well as first user of the term to identify such an account, “it appears that said term has been adopted by a major segment of financial business as a name to designate services such as applicant offers.” In re Merrill Lynch, 230 USPQ at 130.

The four classic categories — generic (“common” descriptive), descriptive (“merely” descriptive), suggestive, or arbitrary-have been described as “central tones in a spectrum”, that “tend to merge at their edges and are frequently difficult to apply.” Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1183, 207 USPQ 278, 282 (5th Cir.1980), cert. denied, 450 U.S. 981, 101 S.Ct. 1516, 67 L.Ed.2d 816 (1981). Nonetheless, the distinctions are critical to the availability and the evidentiary requirements of registration.

Generic terms, by definition incapable of indicating source, are the antithesis of trademarks, and can never attain trademark status. Dan Robbins & Associates, Inc. v. Questor Corp., 599 F.2d 1009, 1014, 202 USPQ 100, 105 (CCPA 1979). The reason is plain:

To allow trademark protection for generic terms, i.e., names which describe the genus of goods being sold, even when these have become identified with a first user, would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are.

CES Publishing Corp. v. St. Regis Publications, Inc., 531 F.2d 11, 13, 188 USPQ 612, 615 (2d Cir.1975). In contrast, “merely descriptive” terms are capable of acquiring, in the view of the consuming public, an association with the source of the goods or services; that is, a secondary meaning in accord with 15 U.S.C. § 1052(f). See Roselux Chemical Co. v. Parsons Ammonia Co., 299 F.2d 855, 862, 132 USPQ 627, 633 (CCPA 1962) (“Distinctiveness means that the primary meaning of the word ... is as a designation of source rather than of a characteristic of the product.”) (emphasis in original).

Whether a term is classified as “generic” or as “merely descriptive” is not easy to discern when the term sits at the fuzzy boundary between these classifications. See Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 790, 217 USPQ 988, 993 (5th Cir.1983) (“[t]he labels are more advisory than definitional, more like guidelines than pigeonholes”). It is basic to the inquiry to determine whether members of the relevant public primarily use or understand the term to refer to the genus of goods or services. H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 989-90, 228 USPQ 528, 530 (Fed.Cir.1986). As the court said in In re Automatic Radio Manufacturing Co., 404 F.2d 1391, 1396, 160 USPQ 233, 237 (CCPA 1969):

It seems elementary that one must find out how people in the trade and the pur[*1570] chasers use the terms with respect to the involved goods in order to determine whether or not they are descriptive.

The Board found that the term CASH MANAGEMENT ACCOUNT is generic or commonly descriptive, not “merely descriptive”. This finding of fact is reviewed for clear error. See In re Bed & Breakfast Registry, 791 F.2d 157, 160, 229 USPQ 818, 819 (Fed.Cir.1986); In re Northland Aluminum Products, Inc., 777 F.2d 1556, 1559, 227 USPQ 961, 963 (Fed.Cir.1985).

Evidence of the public’s understanding of the term may be obtained from any competent source, such as purchaser testimony, consumer surveys, listings in dictionaries, trade journals, newspapers, and other publications. In re Northland Aluminum Products, 777 F.2d at 1559, 227 USPQ at 963; Dan Robbins & Associates, Inc. v. Questor Corp., 599 F.2d at 1014, 202 USPQ at 105; In re Thunderbird Products Corp., 406 F.2d 1389, 1390-91, 160 USPQ 730, 731-32 (CCPA 1969).

Before the Board was voluminous evidence of usage in financial publications of the term, following Merrill Lynch’s introduction of the financial system, from which the Board concluded “that said term has been adopted by a major segment of financial business as a name to designate services such as applicant offers.” In re Merrill Lynch, 230 USPQ at 130. The following is representative:

American Banker, November 9, 1983: “Banks have also stated that brokerage firms, through cash management accounts, have held an unfair advantage over the banking industry. Nonetheless, with the ability to offer discount brokerage services, banks can offer a cash management account that is every bit equal to that offered by the brokerage firms.”
The Christian Science Monitor, February 17, 1984: “It isn’t possible, for example, to talk simply about ‘savings’ and ‘checking’ as alternate forms of cash management when a wide variety of multipurpose accounts now exists. It’s almost impossible to differentiate between stockbrokers and bankers when they are equally willing to offer you a checking account____”
United Press International, July 21,1982: “Although it is a first step toward one-stop investment services, it differs from cash management accounts offered by Merrill Lynch and other brokerages in that Chemical will only execute orders.” The Bond Buyer, July 22, 1982: “[Ojther products ... serve the same full-financial services needs that led to this latest service. The bank is working on a cash management account-type of product which will enfold into it the parts already in motion from the discount broker operation.”
Newsweek, July 19, 1982: “The Cash-Management Account (CMA) pioneered by Merrill Lynch and offered by half a dozen brokers, isn’t yet particularly profitable.”
Business Week, December 26, 1983/January 2, 1984: “[D]rawing boards at Vanguard is a central asset management account, a program that— pioneered by Merrill Lynch’s Cash Management Account and copied throughout the industry — has become a linchpin of the ‘financial supermarket’ concept.”
American Banker, November 4, 1983: “The bank also offers customers an asset management account, dubbed Focus, that competes with the highly successful Cash Management Account pioneered by Merrill Lynch & Co.”

Appellant points out that no publication or usage of the term cited by the Board or the Examiner appeared before Merrill Lynch’s introduction of the term for use with specific brokerage services, and argues that those publications that appear to use the term in a descriptive sense do not describe the precise services for which registration is sought. The Board held that the absence of descriptive details was not controlling “since there is no question that they refer to financial services of the same general nature as [appellant’s].” In re Merrill Lynch, 230 USPQ at 130-31. The issue, however, is how the consuming public views the mark.

[*1571] The burden of showing that a proposed mark is generic remains with the Patent and Trademark Office. The Trademark Manual of Examining Procedure 1305.04 (1974, rev. 1983) requires that the “substantial showing by the Examining Attorney that the matter is in fact generic ... must be based on clear evidence of generic use”. The mixture of usages unearthed by the NEXIS computerized retrieval service [1] does not show, by clear evidence, that the financial community views and uses the term CASH MANAGEMENT ACCOUNT as a generic, common descriptive term for the brokerage services to which Merrill Lynch first applied the term.

The evidence before the Board showed recognition in a substantial number of publications that the source of the CASH MANAGEMENT ACCOUNT was the appellant. This evidence does not clearly place appellant’s mark in the category of a generic or common descriptive term. As Judge Rich explained in In re Abcor Development Corp., 588 F.2d 811, 816, 200 USPQ 215, 219 (CCPA 1978) (Rich, J., concurring) (emphasis in original), a term that immediately and unequivocally describes the purpose and function of appellant’s goods is a name for those goods, for “[t]hat is what names do. They tell you what the thing is.” The term CASH MANAGEMENT ACCOUNT was not shown to meet this standard. Accordingly, because the Patent and Trademark Office failed to sustain its burden of showing that appellant’s proposed trademark is generic, we hold that the factual determination by the Board, finding that the term CASH MANAGEMENT ACCOUNT as used by appellant is generic, is clearly erroneous.

The term thus must be considered in the category of “merely descriptive”. A “merely descriptive” term requires the Board to take cognizance of appellant’s evidence of secondary meaning. “[E]very mark sought to be registered by taking advantage of § 2(f) involves descriptiveness to some degree.” In re Ideal Industries, Inc., 508 F.2d 1336, 1339, 184 USPQ 487, 489 (CCPA 1975). It is incumbent on the Board to balance the evidence of public understanding of the mark against the degree of descriptiveness encumbering the mark, and to resolve reasonable doubt in favor of the applicant, in accordance with practice and precedent. See In re Aid Laboratories, Inc., 221 USPQ 1215, 1216 (TTAB 1983) (in deciding whether PEST PRUF for animal shampoo with insecticide is suggestive or merely descriptive, doubt is resolved in favor of applicant in holding the term merely suggestive of a possible end result of the use of applicant’s goods); In re Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1972) (any doubt in determining the registrability of THE LONG ONE for bread is resolved in favor of applicant “on the theory that any person who believes that he would be damaged by the registration will have an opportunity ... to oppose the registration of the mark and to present evidence, usually not present in the ex parte application, to that effect.”)

On this basis, we reverse the Board’s decision that the term CASH MANAGEMENT ACCOUNT is generic. Although the Board stated that “there is no question that applicant has gathered a substantial and comprehensive showing of evidence of distinctiveness”, In re Merrill Lynch, 230 USPQ at 131, the Board offered no conclusion on the adequacy of the showing under section 2(f). We remand for this purpose.

REVERSED AND REMANDED.

1

. As observed in In re Societe Generate Des Eaux Minerales De Vittel S.A., 824 F.2d 957, 958, 3 USPQ2d 1450, 1451, (Fed.Cir.1987), ‘‘[i]t is indeed remarkable to see the thoroughness with which NEXIS can regurgitate a [term] casually mentioned in the news.”