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Sales Figures And Advertising Dollars Alone Do Not Prove Acquired Distinctiveness

There are many reasons to encourage applicants to select inherently distinctive trademarks. Adopting a mark that is merely descriptive will not allow an applicant to acquire the majority of benefits granted by federal trademark registration. In addition, an applicant selecting a descriptive mark must demonstrate that the mark has acquired distinctiveness if the trademark is to be registered on the Principal Register.

In a recent precedential decision from the Trademark Trial and Appeal Board (the”Board”), the applicant’s mark was refused because the Board held that the mark was merely descriptive of the goods and the applicant failed to show there was acquired distinctiveness. Reckitt Benckiser LLC (the “Applicant”) filed applications to register two marks, MINIMELTS and MINI-MELTS for pharmaceutical preparations for use as an expectorant in international class 5. Mini Melts, Inc. (the “Opposer”) objected on the grounds that the Applicant’s marks would cause confusion with his mark MINI MELT for ice cream and that it is merely descriptive of Applicant’s goods. See Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464 (TTAB 2016) [precedential].

Opposer was able to establish standing for its likelihood of confusion claim, by proving that it had a “real interest” in the opposition proceeding, a “direct personal stake”, and a “reasonable basis” for its belief that it would be damaged if the Applicant’s trademark was registered. This burden was met because the Opposer demonstrated his use and registration for the mark MINI MELTS for ice cream. Since the standing criteria was met for likelihood of confusion, Opposer may assert any other ground that may demonstrate the Applicant is not entitled to register its mark.

Regarding the likelihood of confusion claim, the Board held that the marks were essentially identical. Where the marks are virtually or legally identical the degree of similarity required to be shown between the goods declines. The Board typically looks for evidence that a single source produces both the Applicant’s and the Opposer’s products. Here, the products are ice cream and pharmaceutical preparations, specifically an expectorant sold in a granular form, and there was no evidence introduced to show one source produced both types of goods.

The Board did not find a commercial relationship between the products. In other words, consumers would not find confusion between the sources of the goods. The trade channels were also quite different. The Board considered several other du Pont factors and on balance, the evidence weighed in favor of finding no likelihood of confusion among the sources. The Board dismissed the Opposer’s 2(d) claim.

Regarding the merely descriptiveness claim, Applicant initially alleged the mark was inherently distinctive. At a later date, Applicant amended the application to allege the mark had acquired distinctiveness (secondary meaning), essentially an admission that the mark is merely descriptive of the goods. A trademark will be found to be merely descriptive if it immediately conveys information about a feature, function, quality, or characteristic of the goods or services. To demonstrate that the mark developed secondary meaning, the Applicant submitted evidence to show use of the mark since 2006, sales revenues of $779 million, and over $20 million spent on advertising in a four-year period.

How much evidence you need to demonstrate acquired distinctiveness depends on how descriptive the mark is in relationship to the goods or services. What must be shown is that the public understands that the primary significance of the mark is a source identifier of the product or service. One problem was that the advertising numbers did not relate to the most recent five years. The critical inquiry is whether the Applicant was successful in educating the public to associate the trademark with a single source. In other words, there must be consumer recognition of the trademark as a source indicator.

Even though the expenditures for marketing and sales revenue appear to be significant, the Applicant failed to show how the numbers are relevant to competitors in his industry. Applicant also failed to provide the Board with a context for evaluating the data. Numbers standing alone are not sufficient for proving secondary meaning. The Board was looking for direct evidence from the purchasing public, but did not receive this type of evidence.

In the end, the Board refused the registration based on the mark being merely descriptive of the goods, and the Applicant was unsuccessful in demonstrating acquired distinctiveness. To avoid having to prove a mark has developed secondary meaning (acquired distinctiveness), we recommend applicants adopt inherently distinctive marks. If you have any questions regarding adoption of a trademark, kindly contact our office for a courtesy consultation.