Owners Of Common Law Rights Must Prove Priority Via Proof of 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 See Comptime, Inc. DBA Comptime Digital Printing v. E. Francis Paper, Inc., Cancellation No. 92073884 (May 10, 2023) [not precedential], where the Petitioner sought to cancel the Respondent’s mark LITTLE NOTES registered on the Supplemental Register.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.

Through testimony it was revealed that the Petitioner spends approximately $13,000 a year on advertising via pay per click campaigns on Amazon and Etsy. The Board found these amounts to be modest expenditures. Petitioner did not provide any evidence of comparative spending by competitors in the industry. Nor did the Petitioner submit any other evidence of media exposure, paid or unpaid. Regarding sales, the Petitioner proved there were approximately $1,825,000 in gross sales. However, Petitioner failed to produce evidence to properly place the gross sales figure in a relative context. The Board would have wanted to have evidence of the number of customers, the market share the Petitioner possessed, or sales figures of competitors in the industry. Therefore, the gross sales amount of $1,825,000 was not as probative as it could have been if a better context was provided for the industry.

Lastly, there was no evidence of intentional copying or unsolicited media coverage for the subject goods. In light of this evidentiary showing the Board concluded that the Petitioner failed to prove that LITTLE NOTES for note cards, greeting cards, post cards, etc. had acquired secondary meaning as a source identifier. The Petition for cancellation was dismissed. This case is a cautionary tale for Opposers or Petitioners who wish to rely on common law rights in a likelihood of confusion claim. It is imperative, that the party initiating the proceeding is confident that its evidence will demonstrate that the trademark is distinctive. See our web page entitled, The Importance of Selecting a Distinctive and an Inventive Mark before filing a trademark application at the USPTO. Please feel free to contact the firm for a courtesy consultation regarding acquired distinctiveness or for another trademark matter.