In a recent Board Decision, the Petition for Cancellation was dismissed because Petitioner relied on its common law rights while alleging likelihood of confusion and priority, and was unable to prove acquired distinctiveness (secondary meaning) for its mark LITTLE NOTES for announcement cards; greeting cards; note cards; postcards and greeting cards; printed invitations. See Comptime, Inc. DBA Comptime Digital Printing v. E. Francis Paper, Inc., Cancellation No. 92073884 (May 10, 2023) [not precedential], where the Petitioner sought to cancel the Respondent’s mark LITTLE NOTES registered on the Supplemental Register. Both parties used its mark for postcards, greeting cards and note cards, among other goods in class 016.
There was no dispute that the parties were using the identical term, LITTLE NOTES for goods that were in part identical. Therefore, the primary issue in this cancellation proceeding was priority. The Petitioner is required to prove it owned proprietary rights in a mark similar to a registered mark. West Fla. Seafood, Inc. v. Jet Rests., Inc., 31 F.3d 1122, 31 USPQ2d 1660 (Fed. Cir. 1994). Proprietary rights may arise from a variety of scenarios such as a prior registration, prior trademark or service mark use, prior use as a trade name, prior use analogous to trademark or service mark use, or any other use sufficient to establish proprietary rights.” Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002). Petitioner’s mark must be distinctive to prevail. See our web page entitled, What is Acquired Distinctiveness & Secondary meaning for more on the topic. Distinctiveness can be inherent or proven through evidence of acquired distinctiveness (secondary meaning). If the term is not distinctive, no trademark rights exist. See Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981). Since the Board determined that Petitioner’s mark was highly descriptive of the identified goods, its burden of establishing secondary meaning is comparably high.
Acquired distinctiveness may be proven through consumer surveys, testimony, declarations, or though circumstantial evidence such as length, degree and exclusivity of use, amount and type of advertising, the amount of sales, the number of customers, intentional copying, and unsolicited media coverage. Converse, Inc. v. Int’l Trade Comm’n, 909 F.3d 1110, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018). The Petitioner submitted evidence of customer reviews, but the reviews did not prove that consumers recognize the trademark LITTLE NOTES as a source identifier. In addition, there was a declaration submitted attesting to use in commerce since September 4, 2013. If the mark was not determined to be highly descriptive, perhaps this type of evidence could have been accepted as prima facie evidence of acquired distinctiveness. But, the Board pointed out that almost ten years of substantially exclusive use here is not particularly persuasive given the degree of descriptiveness.