Articles Tagged with Failing To Prove Secondary Meaning

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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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