Articles Tagged with A Different Approach To Proving Acquired Distinctiveness

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 See In re Watercraft Superstore, Inc., Serial No. 86369831 (August 26, 2016) [not precedential], where the Applicant filed an application for the mark WATERCRAFT SUPERSTORE in standard characters for online retail store services featuring personal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