Overcoming A Descriptiveness Refusal Under Section 2(e)(1)

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 See In re Watercraft Superstore, Inc., Serial No. 86369831 (August 26, 2016) [not precedential], where the Applicant filed an application for the mark WATERCRAFT SUPERSTORE in standard characters for online retail store services featuring personal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.

The following evidence was introduced to support Applicant’s argument that the mark has acquired distinctiveness: (1) there has been continuous and exclusive use of the mark since 2008; (2) over a five year period, its orders increased from 15,000 to 26,000; (3) over the course of the last four years, the advertising budget increased from $201,000 to $376,000 per year; (4) about 119,000 copies of the company catalogue was distributed annually; (5) its website had over 80,000 unique user impressions per year in 2009 and in 2014 that number grew to 119,000; and (6) Applicant’s services were marketed at 12 trade shows. The Examiner refuted this evidence by stating that although this evidence shows that over the years, the Applicant built a successful small business, this evidence does not show its success in educating the public on associating the trademark with a single source.

Based on the evidence in the record, the Board disagreed and reviewed not only the evidence listed above, but placed emphasis on other evidence presented by the Applicant in the form of posts and commentary submitted by Applicant’s customers from an online forum used to discuss personal watercraft. This evidence clearly demonstrates that the users of the forum recognize WATERCRAFT SUPERSTORE as Applicant’s source indicator for the online retail store. Applicant submitted over 50 postings from individual users of the forum demonstrating that the public has been educated on associating Applicant’s mark, WATERCRAFT SUPERSTORE with a single source.

The Examiner submitted evidence that there was third-party use of the terms WATERCRAFT and SUPERSTORE. However, the Board found that such use wasn’t close enough to the Applicant’s mark. Some examples include: Sea-Doo Watercraft from PARCS Superstore, Personal Watercraft Products – Got Gear Superstore, Personal Watercraft Covers at Tarp & Cover Superstore, Watercraft parts – TDR and Banshee Superstore, and Personal Watercraft and Jetski Superstore. The Board held that this did not show that third parties were using similar marks, but instead using different marks for similar services.

The Board concluded that over the course of seven years, the Applicant has continuously used the mark to promote its business in such a manner as to create an association between the trademark and Applicant’s services. This case is instructive on the point that mark holders can create a strong association between their respective mark and a single source by encouraging online discussion and dialogue wherein the services or goods will be referenced and this could go a long way to show the mark as a source indicator without having to spend large sums to achieve the desired objective. If you have questions concerning your trademark and want to discuss whether your mark has acquired distinctiveness, please contact our office for a courtesy consultation.