Trademark Office Error Saves One Application From Drowning, But Not Its Shipmate

In a rare case involving an admitted error by the U.S. Patent and Trademark Office, on February 20, 2025, the U.S. Court of Appeals for the Federal Circuit upheld the denial of Agadia Systems Inc.’s application for FORMULARYHUB based on mere descriptiveness. In re Agadia Systems Inc., No. 23-1993 (Fed. Cir. Feb. 20, 2025).

Agadia had filed two applications, one for FORMULARYHUB for “customizing computer software” and another for FORMULARYHUB.COM for “software design and development; computer software design; customizing computer software; and developing computer software.” The examiner refused them both on mere descriptiveness grounds, and Agadia Systems appealed to the Trademark Trial and Appeal Board (TTAB).

At the TTAB, the examiner essentially admitted that the evidence supporting the refusal of FORMULARYHUB.COM was not properly made of record due to a “technical error.” The TTAB therefore withdrew the refusal of the application and dismissed the appeal as moot. However, the TTAB found that the refusal of the application for FORMULARYHUB did not face the same infirmities and upheld it.

Agadia then appealed the denial of the FORMULARYHUB application to the Federal Circuit. The court first ruled that the Trademark Office’s “technical error” that had allowed the FORMULARYHUB.COM application to survive did not result in a waiver, judicial estoppel, or equitable estoppel preventing the TTAB from denying the FORMULARYHUB application. Citing long established precedent, the court ruled that each application must stand on its own and prior decisions are not binding.

The court then ruled that the descriptiveness refusal was supported by substantial evidence. The TTAB had adopted Agadia’s definition of “formulary” as a “list of prescription drugs covered by a prescription drug plan or another insurance plan offering prescription drug benefits.” The TTAB defined “hub” as “the effective center of an activity, region, or network.” Agadia argued that, when combined, FORMULARYHUB did not describe its services of “customizing computer software.” However, based on the specimen of use submitted by Agadia, the Office ruled that its customized software “functions for users as a centralized location for a collection of formularies.” Thus, the FORMULARYHUB mark in its entirety was merely descriptive.

Finally, in tossing an anchor to Agadia’s sinking efforts to save the FORMULARYHUB application, the court ordered Agadia to pay the Trademark Office’s costs for defending the appeal.