Articles Posted in Acquired Distinctiveness

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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d/b/a Club Ed Surf School and Camp v. The New Santa Cruz Surf School, LLC, Opposition No.912208843 (October 13, 2017) [not precedential].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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