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Claiming Acquired Distinctiveness Based On Use Requires Continuous Use

In a recent Trademark Trial and Appeal Board (“TTAB” or the “Board”) decision issued on October 13, 2017, the TTAB rejected the Applicant’s claim of acquired distinctiveness. See John Edward Guzman d/b/a Club Ed Surf School and Camp v. The New Santa Cruz Surf School, LLC, Opposition No.912208843 (October 13, 2017) [not precedential]. The New Santa Cruz Surf School, LLC (“Applicant”) filed an application with the United States Patent & Trademark Office (“USPTO”) for the mark SANTA CRUZ SURF SCHOOL in standard characters. Applicant sought to register the mark on the Principal Register under Section 2(f) of the Trademark Act (claiming acquired distinctiveness). Applicant was providing surfing lessons under the mark. In addition, the Applicant applied to use the mark for a website that provided information on surfing.

If a mark is not inherently distinctive, an applicant may be able to show that the mark has developed distinctiveness or secondary meaning through evidence submitted to the USPTO. See our web page entitled, What Is Acquired Distinctiveness & Secondary Meaning?, and review the three types of evidence that may be submitted to demonstrate acquired distinctiveness. In the case at bar, Applicant was claiming it used the mark in commerce for five years. Applicant was required to disclaim the term “Surf School” being that it was generic for its services. That being the case, the only remaining element of the mark is a geographically descriptive term. Santa Cruz is a city in California. The only option for registering this mark on the Principal Register would be to prove acquired distinctiveness. For the differences between the Principal and Supplemental Register, see our web page entitled, Filing Your Trademark On The Principal and Supplemental Register

A competitor of the Applicant, Club Ed Surf School, (“Opposer”) filed a Notice of Opposition. The Opposer claimed the mark SANTA CRUZ SURF SCHOOL was geographically descriptive and that the Applicant’s use was not substantially exclusive and continuous over the five year period. In addition, the Opposer claimed that the mark, SANTA CRUZ SURF SCHOOL was generic. The Board reviewed the evidence submitted on the generic claim first and concluded that the Opposer failed to meet its burden and dismissed the claim.

Next the Board reviewed the requirements for meeting the criteria for proving acquired distinctiveness based on five years of use in commerce. There must be evidence of substantially exclusive and continuous use of a mark in commerce for a five-year period before the date of the claim of distinctiveness. The Applicant must demonstrate that the relevant public understands the mark as identifying the source of the goods or services. Whether the “five-year” statement of use asserted in the application is acceptable without additional evidence, depends on the degree of descriptiveness. Here, there was no proof that the mark was highly descriptive. Therefore, the statement in the application could have been acceptable in and of itself. However, the Opposer challenged the accuracy of the statement and questioned whether the Applicant’s use was substantially exclusive and continuous for five years.

The Santa Cruz Surf School was sold to the Applicant in 2013. The predecessor in interest was imprisoned earlier that year. The Board concluded that the surf school was not in business during the time of the arrest of the prior owner. There was further interruption of use during the sale of the business to the Applicant. The evidence showed that the mark was not used from August 16, 2013 to November 5, 2014.

Moreover, there was evidence demonstrating that the identified services were provided to a limited number of customers and on an irregular basis. Viewing the record in a light most favorable to the Applicant, it was undeniable that there was an interruption of use of the mark for over a year during the five-year period. Therefore, the Board sustained the opposition on the ground that the mark was geographically descriptive and it had not acquired distinctiveness. Whether a trademark has acquired distinctiveness is one of the most debated topics in trademark law. If you have questions on this topic or other inquiries on trademark matters, please feel free to contact our office for a courtesy consultation.