A High Level Of Proof Is Required To Demonstrate Acquired Distinctiveness

A recent decision from the U.S. Court of Appeals from the Federal Circuit (“CAFC”) reminds trademark owners that adopting marks that are merely descriptive may require a high level of proof to register on the Principal Register. See In re JC Hospitality LLC, Appeal Nos, 2018-2048 and 2018-2049 (Fed. Cir. February 28, 2020) [nonprecedential], where the CAFC agreed with the Trademark Trial and Appeal Board’s (the “Board”) decision finding the mark THE JOINT (in standard character format) merely descriptive of “restaurant, bar, and catering services” and “entertainment services, namely live musical performances, shows and concerts, and nightclub services.” The CAFC determined that substantial evidence supported the Board’s conclusions, on the grounds of merely descriptiveness and not acquiring distinctiveness, but did not address the Board’s finding of genericness.

The Board relied on several dictionary definitions and news articles, and determined that the mark immediately conveys the concept of a business establishment offering restaurant, bar, and entertainment services. The applicant raised the argument that the mark should register since it is a double entendre. Applicant insisted that THE JOINT was a reference to prison. However, there wasn’t enough evidence to show a relationship between a prison and bar and restaurant services.

The amount of evidence required to prove acquired distinctiveness (secondary meaning) is directly correlated with the degree of descriptiveness. To determine how much evidence is required for showing acquired distinctiveness, the Court or Board must assess the degree of descriptiveness in relationship to the goods or services. Here, the Board held THE JOINT in relationship to the services (bar and restaurant services) was highly descriptive. See our web page entitled, What Is Acquired Distinctiveness & Secondary Meaning, for general information on this topic. Many factors will be considered when evaluating if secondary meaning exists. Some of these factors include: (1) the market share held by the applicant; (2) consumer surveys or studies; (3) the length, degree and exclusivity of use; (4) the amount of applicant’s sales compared to competitors’ sales in the same industry; (5) the amount the applicant spent on advertising compared to its competitors’ advertising expenditures in the same industry; (6) intentional copying; and (7) unsolicited media coverage and the extent the press information was circulated to the general public.

The Applicant strongly argued that its merely descriptive mark acquired secondary meaning. It produced evidence of two declarations from the Vice President of Entertainment. The evidence demonstrated that $12 million was spent on marketing for THE JOINT and that there was total gross revenue of more than $104 million. In addition, there was evidence of third party websites referencing THE JOINT and its services for restaurants and entertainment. The Court held that the sales and marketing figures were unpersuasive because the figures were not put into context or compared to similar businesses. As an aside, THE JOINT often appeared with other trademarks, and it was difficult to determine which marks attracted the public’s attention.

Consumer surveys and consumer studies are helpful in proving acquired distinctiveness, since the applicant must prove that the relevant public understands that the mark’s primary significance is the source of the product or service. Consumers must comprehend that the mark identifies the company that produces the goods or services. The more you can demonstrate that you have educated the public to associate the trademark with a single source the more likely you will be able to prevail in showing acquired distinctiveness. See Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464 (TTAB 2016) [precedential]. Also, evidence of the amount of market share is useful in this determination. The Court and the Board are interested in how much the Applicant is selling in comparison to its competitors. Additional evidence that could tip the scales in favor of finding acquired distinctiveness is unsolicited media coverage. If this type of evidence exists, it is important to detail how widely circulated the media coverage or press coverage was to the general public.

Since proving acquired distinctiveness can be costly for the trademark owner, and if unsuccessful, your application may be refused in its entirety, a trademark owner should think twice before adopting a merely descriptive mark. If you have questions regarding merely descriptive trademarks or proving acquired distinctiveness (secondary meaning), please do not hesitate to contact the firm for a courtesy consultation.