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d/b/a Club Ed Surf School and Camp v. The New Santa Cruz Surf School, LLC, Opposition No.912208843 (October 13, 2017) [not precedential].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