Articles Posted in Acquired Distinctiveness

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 See Comptime, Inc. DBA Comptime Digital Printing v. E. Francis Paper, Inc., Cancellation No. 92073884 (May 10, 2023) [not precedential], where the Petitioner sought to cancel the Respondent’s mark LITTLE NOTES registered on the Supplemental Register.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.

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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.

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The Trademark Trial and Appeal Board (the “Board or the “TTAB”) issued this precedential decision at the end of March 2018, and it was a partial win for the Applicant. The Applicant, Serial Podcast LLC, filed three applications at the United States Patent & Trademark Office {“USPTO”), one word mark (standard characters) for SERIAL, and two similar special format marks containing the word “SERIAL” with each letter being placed in a black rectangle with rounded corners. The design marks were identical except one did not claim color as a feature of the mark, while the other featured yellow letters outlined in red. The services were identified as “entertainment in the nature of an ongoing audio program featuring investigative reporting, interviews, and documentary storytelling”, in all three applications. The Examining Attorney refused all three marks on the grounds that each mark is generic for the services identified, and if not generic, then merely descriptive and that applicant’s acquired distinctiveness claim was insufficient to overcome the refusal. See In re Serial Podcast, LLC, Serial Nos. 86454420, 86454424, 86464485 (March 26, 2018) [precedential].

To support the generic refusal the Examining Attorney submitted definitions for the term SERIAL. The meanings for the term SERIAL can be summarized as a story or other subject matter that is published or broadcasted in a series in separate parts. Applicant’s services include producing an ongoing audio program (a podcast) appearing in regular weekly installments. The first season of the podcast included 12 episodes, and ran for approximately two months. Examples of use of the term SERIAL were submitted into the record.

Applicant argued that there were numerous examples where SERIAL is used as an adjective, and therefore the use cannot be generic. However, the Board found this argument not to be persuasive. The Board held that use of a mark as an adjective can be generic as well. See Sheetz of Delaware, Inc. v. Doctor’s Associates Inc., 108 USPQ2d 1341 (TTAB 2013) [precedential]. In fact, the TMEP specifically states: “The expression ‘generic name for the goods or services’ is not limited to noun forms but also includes ‘generic adjectives,’ that is, adjectives that refer to a genus, species, category, or class of goods or services.”

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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.

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In a recent case at the Trademark Trial and Appeal Board (the “Board” or “TTAB”), Watercraft Superstore, Inc. (the “Applicant”) took a different approach in convincing the Board that the subject trademark had acquired distinctiveness. See In re Watercraft Superstore, Inc., Serial No. 86369831 (August 26, 2016) [not precedential], where the Applicant filed an application for the mark WATERCRAFT SUPERSTORE in standard characters for online retail store services featuring personal watercraft parts and accessories. The Applicant requested registration on the basis that the mark, although descriptive had acquired distinctiveness under Section 2(f) of the Trademark Act (15 U.S.C. §1052(f)), but the Examiner refused the application on the ground that the trademark was merely descriptive of the Applicant’s services and secondary meaning had not been proven (acquired distinctiveness). The Applicant appealed to the Board.

Since the Applicant requested registration under Section 2(f), this is an admission of the fact that the mark is merely descriptive of the services and the only remaining issue is if the mark has acquired distinctiveness (secondary meaning). See our web page entitled: Factors To Be Considered When Determining If A Mark Is Descriptive  before submitting your trademark application to the USPTO. The Applicant must prove that consumers have associated the mark with a single source when attempting to prove acquired distinctiveness. The Trademark Act does not set forth specific types of evidence that should be produced in order to meet the burden of proof.

However, it is clear that more evidence will be required if the mark is highly descriptive of the goods or services because consumers in that case will be less likely to believe the mark functions as a source indicator. In this case, it is patently clear that the mark is highly descriptive. The term “superstore” is disclaimed from the mark because it refers to a large retail store offering a variety of merchandise and that is the nature of the Applicant’s store. “Watercraft” by definition means a vehicle used for water transportation. Applicant’s identification of services state that he offers an online store featuring watercraft.

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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.

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At the end of 2014, the Trademark Trial and Appeal Board (the “Board” or “TTAB”) issued a surprising decision (albeit non-precedential), finally questioning the rule that bars all titles of single creative works from receiving federal trademark registration. See In re King Productions, Inc. Serial No. 76703458 (November 19, 2014) [not precedential]. King Productions, Inc. (“Applicant”) was seeking registration of the phrase, ROCK YOUR BODY on the principal register for DVDS and books in the fields of dance, exercise and fitness. The Examining Attorney refused registration on the basis that the term did not function as a trademark under Sections 1, 2, & 45 of the Trademark Act. The Examiner stated that the specimens of record showed that the proposed mark was merely the title of a single creative work (the title of a book and a DVD). When the refusal was made final the Applicant appealed to the TTAB.

For decades, the USPTO has held that the title of a single work such as a book, DVD, movie or play is not considered a trademark and is not capable of registration. See Herbko Int’l Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375 (Fed. Cir. 2002). Although, titles of a series of works can be registered. The reasoning for this is because a series provides a trademark function in that the series indicates that each work comes from the same source. Keep in mind that each work in the series may have its own title separate from the trademark for the series. The name of the series is not descriptive of any one work.

The Board noted that titles of single works have been refused under sections 1, 2, & 45 of the Trademark Act for some time now. However, the Board declared that the proper basis for refusal of titles of single works should be based on Section 2(e)(1) of the Trademark Act. This basis is appropriate because the title describes the work. The Board’s assertion and change of the basis for refusal of a title of a single work is significant because an applicant can now overcome the refusal by showing the mark has acquired distinctiveness under Section 2(f) of the Trademark Act. An applicant would have to show that the relevant public understands that the primary significance of the mark is to indicate or identify the source of the product or service rather than the product itself. If the public views the mark merely as a title of a single work, then it has not acquired distinctiveness or secondary meaning. Although, the Board opened the door to overcome a potential refusal under Section 2(e)(1), the applicant will have a difficult challenge to produce evidence of secondary meaning.

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This recent Trademark Trial and Appeal Board (TTAB) precedential decision offers guidance to companies determining whether to seek trademark protection for flavor or scent trademarks.  On February 25, 2013, in In re Pohl-Boskamp GmbH & Co., 106 USPQ2d. 1042 (TTAB 2013) [precedential], the TTAB affirmed the USPTO’s refusal to register the flavor and scent of peppermint for pharmaceutical formulations of nytroglycerin.  The Trademark Act does not preclude registration of scents and flavors as trademarks. See In re Clarke, 17 U.S.P.Q.2d 1238 (TTAB 1990), where the TTAB held that the scent of Plumeria blossoms for thread and yarn was registrable.  The key issues in In re Pohl-Boskamp GmbH & Co., centered around whether the mark functioned as a trademark and whether peppermint affected the quality of the product.

Under the Supreme Court’s decision in Inwood Labs, Inc. v. Ives Labs, Inc., 456 U.S. 844 (1982), a product feature is functional if it is essential to the use or the purpose of the goods or if it affects the cost or quality of the goods. With respect to functionality, the applicant argued that peppermint flavor had no therapeutic properties and that the peppermint did not function to mask the product’s flavor, because nitroglycerin is generally odorless and tasteless. Conversely, the Examining Attorney introduced U.S. Patent No. 6,559,180 to demonstrate that even though peppermint oil is inactive in the spray, peppermint oil used in nitroglycerin spray could enhance the spray’s effectiveness. The TTAB held that this evidence was enough to prove that the proposed mark was functional.  It showed that adding peppermint oil may be a means to improve the spray’s effectiveness. That being the case, then competitors may also want to take advantage of this enhancement. If the applicant has the exclusive right to use the peppermint flavor, a competitor would be at a disadvantage, having to forego using the peppermint oil to improve the spray’s effectiveness.

mint-1218137-mThe second ground for refusal was failure to function as a trademark. Flavor and scent marks can never be inherently distinctive. In order to prove acquired distinctiveness, there must be a substantial showing to demonstrate that a flavor or a scent is registrable. To prove acquired distinctiveness, the applicant here stated that the use of the peppermint flavor and scent was “substantially exclusive” since 1989. The applicant also submitted 23 declarations of physicians and pharmacists to show that the peppermint flavor and scent acquired recognition.  The Board did not give much weight to the declarations, because they were basically identical in form, and not created individually for each declarant.  Another factor, cutting against the applicant was the existence of a competing product in the pharmaceutical industry using a peppermint flavor and scent.  The Examiner explained that this would allow consumers to believe that the peppermint flavor and scent was a mere physical characteristic of the product, instead of a source indicator.

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