Registration Under Section 2(f) Acquired Disctinctiveness



As stated in section 1212 Acquired Distinctiveness or Secondary Meaning of the Trademark Manual of Examination Procedure:

15 U.S.C. §1052(f). Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing herein shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant's goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant's goods in commerce before the date of the enactment of the North American Free Trade Agreement Implementation Act.

If a proposed mark is not inherently distinctive, it may be registered on the Principal Register only upon proof of acquired distinctiveness, or "secondary meaning," that is, proof that it has become distinctive as applied to the applicant's goods or services in commerce. If the applicant establishes, to the satisfaction of the examining attorney, that the matter in question has acquired distinctiveness as a mark in relation to the named goods or services, then the mark is registrable on the Principal Register under §2(f) of the Trademark Act, 15 U.S.C. §1052(f).

Within the context of the Trademark Act, §2(f) may be described as follows:

[U]nlike the first five sections of 15 U.S.C. §1052 which define the grounds upon which a trademark registration is to be refused, Section 2(f) serves as an exception to a rejection under the provisions of one of the other sections, Section 2(e) (citation omitted). Section 2(f) permits registration of marks that, despite not qualifying for registration in light of Section 2(e), have nevertheless "become distinctive of the applicant's goods in commerce." Thus, "Section 2(f) is not a provision on which registration can be refused," ... but is a provision under which an applicant has a chance to prove that he is entitled to a federal trademark registration which would otherwise be refused.

Yamaha Int'l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 1580, 6 USPQ2d 1001, 1007 (Fed. Cir. 1988), quoting In re Capital Formation Counselors, Inc., 219 USPQ 916, 917 n.2 (TTAB 1983).

The purpose and significance of secondary meaning may be described as follows:

A term which is descriptive ... may, through usage by one producer with reference to his product, acquire a special significance so that to the consuming public the word has come to mean that the product is produced by that particular manufacturer. 1 Nims, Unfair Competition and Trademarks at §37 (1947). This is what is known as secondary meaning.

The crux of the secondary meaning doctrine is that the mark comes to identify not only the goods but the source of those goods. To establish secondary meaning, it must be shown that the primary significance of the term in the minds of the consuming public is not the product but the producer (citations omitted). This may be an anonymous producer, since consumers often buy goods without knowing the personal identity or actual name of the manufacturer.

Ralston Purina Co. v. Thomas J. Lipton, Inc., 341 F. Supp. 129, 133, 173 USPQ 820, 823 (S.D.N.Y. 1972).

There are three basic types of evidence that may be used to establish acquired distinctiveness under §2(f):

(1) A claim of ownership of one or more prior registrations on the Principal Register of the same mark for goods or services that are the same as or related to those named in the pending application (see 37 C.F.R. §2.41(b); TMEP §§1212.04 et seq.);
(2) A statement verified by the applicant that the mark has become distinctive of the applicant's goods or services by reason of substantially exclusive and continuous use in commerce by the applicant for the five years before the date when the claim of distinctiveness is made (see 37 C.F.R. §2.41(b); TMEP §§1212.05 et seq.); and
(3) Actual evidence of acquired distinctiveness (see 37 C.F.R. §2.41(a); TMEP §§1212.06 et seq.).

The applicant may submit one or any combination of these types of evidence, which are discussed below. Depending on the nature of the mark and the facts in the record, the examining attorney may determine that a claim of ownership of a prior registration(s) or a claim of five years' substantially exclusive and continuous use in commerce is insufficient to establish a prima facie case of acquired distinctiveness. The applicant may then submit actual evidence of acquired distinctiveness.

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  • Applicant has burden to establish prima facie case of distinctiveness.
    • In re The Council on Certification of Nurse Anesthetists, Serial No. 75722091, (TTAB 2007).
      • We turn next to the issue of the sufficiency of applicant's claim of acquired distinctiveness. Applicant has the burden of proof to establish a prima facie case of acquired distinctiveness. Yamaha International Corp. v. Hoshino Gakki Co., Ltd. 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988).
  • The greater the degree of descriptiveness, the greater the evidentiary burden on the user to establish acquired distinctiveness.
    • In re The Council on Certification of Nurse Anesthetists, Serial No. 75722091, (TTAB 2007).
      • More evidence than that which has been offered here would be necessary to establish acquired distinctiveness of the designation. We find this to be especially the case where, as here, the designation is highly descriptive. That is to say, the greater the degree of descriptiveness, the greater the evidentiary burden on the user to establish acquired distinctiveness. Yamaha International Corp. v. Hoshino Gakki Co., supra; and In re Merrill Lynch, Pierce, Fenner & Smith, Inc., supra.
  • First Dial-a-Mattress Factor: Grounds for acquired distinctiveness in an intent-to-use application.
    • Kellogg Company v. General Mills, Inc., Opposition No. 91125884, (TTAB 2007).
      • Before considering opposer's arguments, we review the elements necessary for applicant to establish that a mark in an intent-to-use application has acquired distinctiveness in connection with the identified goods. In In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001), the Court made the following statement:
        "[A]n applicant can establish acquired distinctiveness in an intent-to-use application where it can show that [the] "same mark" acquired distinctiveness for related goods or services, and that this acquired distinctiveness will transfer to the goods or services specified in the application when the mark is used in connection with them. See TMEP § 1219.09(a) (1997) (listing cases)."
  • Second Dial-a-Mattress Factor: Relationship between mark and the goods/services should be established by "relevant evience rather than mere conjecture."
    • Kellogg Company v. General Mills, Inc., Opposition No. 91125884, (TTAB 2007).
      • As to the second factor enunciated in Dial-A-Mattress, supra, opposer contends that applicant is required to, but did not, present evidence establishing a relationship between the respective goods... In In re Rogers, 53 USPQ2d 1741, 1744 (TTAB 1999), the Board stated that a relationship between the goods or services involved should be established by "relevant evidence rather than mere conjecture."
  • Second Dial-a-Mattress Factor: Submission of extrinsic evidence not necessary where the identification of goods alone reveal sufficient facts about the goods/services.
    • Kellogg Company v. General Mills, Inc., Opposition No. 91125884, (TTAB 2007).
      • However, this statement does not require submission of extrinsic evidence in cases where the identifications of goods alone reveal sufficient facts about the respective goods from which a conclusion, not based on mere conjecture, as to the relationship between the goods may be made. An example of such a case is In re Dial-A-Mattress, supra, where, without reference to any evidence, the Court found a "close relationship" between "retail outlet services and retail store services featuring mattresses" and "telephone shop-at-home retail services in the field of mattresses," noting that "the latter can be considered a subset of the former." See also, In re Best Products Co., Inc., 231 USPQ 988, 989 n.6 (TTAB 1986), wherein the Board stated "[W]e infer in the instant case that the differences between the marks BEST & Des. and BEST JEWELRY & Des., and between the identifications of services in their respective registrations ['mail order and catalog showroom services' and 'retail jewelry store services'], were deemed to be immaterial differences." Cf. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002) (although addressing the issue of likelihood of confusion, the court held that the respective identifications of goods were, themselves, evidence as to the relatedness of the parties' goods and extrinsic evidence of relatedness was not per se required).
  • Second Dial-a-Mattress Factor: The level of evidence needed for showing of relatedness varies from case to case.
    • Kellogg Company v. General Mills, Inc., Opposition No. 91125884, (TTAB 2007).
      • Thus, there is no absolute rule that applicant must submit extrinsic evidence to support its contention that the goods are related. The showing necessary to establish relatedness will vary from case to case and depend on the nature of the goods or services involved and the language used to identify them.
  • Case Finding: Application's identification of goods as food bars derived from cereal makes the close relation between the goods self-evidence and no extrinsic evidence is necessary.
    • Kellogg Company v. General Mills, Inc., Opposition No. 91125884, (TTAB 2007).
      • Applicant's goods are identified in the instant application as food bars derived from cereal and, as such, are simply a different and convenient way for purchasers to consume cereal, i.e., other than as loose cereal in a bowl or directly from the original box. We find that the close relationship between the goods is self evident from the respective identifications of goods and there is no requirement for the submission of extrinsic evidence to establish that the goods are related in this case.
  • No error where examining attorney considered two prior registrations with disclaimed words as well as an affidavit of use for the length of time a mark as a whole has been registered.
    • Kellogg Company v. General Mills, Inc., Opposition No. 91125884, (TTAB 2007).
      • We find no error in the examining attorney's consideration of the two prior registrations for CINNAMON TOAST CRUNCH, which contain disclaimers of CINNAMON TOAST, solely as evidence of the length of time the mark as a whole has been registered.4 Applicant also submitted an affidavit attesting to sales, advertising and use for more than 16 years of its CINNAMON TOAST CRUNCH mark for breakfast cereal. Presumably, the examining attorney considered the registrations and this affidavit together in determining that the mark as a whole had acquired distinctiveness for breakfast cereal. Clearly, because the examining attorney accepted the partial claim of acquired distinctiveness as to CINNAMON TOAST for the goods herein, the examining attorney found the evidence in its entirety supported such a conclusion, and we agree.5

        FOOTNOTE 5 "Certainly, applicant could not rely only on the two registrations for CINNAMON TOAST CRUNCH for breakfast cereal with disclaimers of the term CINNAMON TOAST. As is the case herein, a further showing was necessary to establish that the term CINNAMON TOAST has acquired distinctiveness in the context of the mark as a whole for breakfast cereal. Depending on the degree of descriptiveness of the terms involved, this could be established by an affidavit of more than five years substantially exclusive use of the mark in connection with breakfast cereal."

  • The Board does not generally consider whether the examining attorney made an error.
    • Kellogg Company v. General Mills, Inc., Opposition No. 91125884, (TTAB 2007).
      • FOOTNOTE 4 "In a proceeding before the Board, we do not generally consider whether the examining attorney made an error. However, in this case, we are considering whether the examining attorney erred to determine whether we will consider the case on its merits."
  • Case Finding: Two previous trademark registrations and substantial length of use, sales, and advertising are sufficient to establish that the disclaimed phrase has acquired distinctiveness.
    • Kellogg Company v. General Mills, Inc., Opposition No. 91125884, (TTAB 2007).
      • Both of the registrations upon which applicant relies include disclaimers of the phrase CINNAMON TOAST. We find that the substantial length of use and registration of the marks for breakfast cereal, and the substantial sales and advertising over the past five years alone, as attested to by applicant's trademark counsel, are sufficient, in the absence of any countervailing evidence, to establish that applicant's mark as a whole, including the disclaimed phrase CINNAMON TOAST, has acquired distinctiveness in connection with breakfast cereal.
  • Failed Argument: Section 2(f) claim is contrary to public policy because it permits a business to obtain exclusive rights to a descriptive term.
    • Kellogg Company v. General Mills, Inc., Opposition No. 91125884, (TTAB 2007).
      • Opposer has made several additional arguments that are not well taken and do not meet opposer's burden of going forward. In particular, opposer's argument that applicant's Section 2(f) claim is contrary to public policy because it permits a business to obtain exclusive rights to a descriptive term is without merit. This argument completely disregards the language of Section 2(f), which, as a matter of public policy, permits a trademark owner to establish trademark rights in a merely descriptive, as opposed to generic, term upon a showing that the matter has acquired distinctiveness as a mark for particular goods and/or services to the relevant consumers.
  • Evidence: Attorney Declaration in support of Section 2(f) claim.
    • Kellogg Company v. General Mills, Inc., Opposition No. 91125884, (TTAB 2007).
      • Opposer's argument that applicant's declaration submitted in support of its Section 2(f) claim is unpersuasive because applicant's trademark counsel is without first-hand knowledge of the public's perception and is biased is, likewise, without merit. The relevant portions of the declaration pertain to facts regarding length of use and sales and advertising figures and it is these facts that properly form the basis for trademark counsel's opinion that the mark has acquired distinctiveness. Opposer has provided no evidence or argument indicating that these facts are not based on applicant's records kept in the ordinary course of business or that applicant's trademark counsel is not entitled to rely on those records. Nor has opposer demonstrated how any bias by trademark counsel is manifest in the declaration or may have affected the examining attorney's decision.
  • Evidence: Affidavit does not need to slavishly adhere to section 2(f).
    • Kellogg Company v. General Mills, Inc., Opposition No. 91125884, (TTAB 2007).
      • Similarly, we find no merit in opposer's contention that "applicant's Section 2(f) claim is further defective because its 'partial 2(f) declaration' fails to indicate that the use referred to occurred immediately before the date of the declaration" (brief, p. 10). Section 2(f) of the Act follows:
        "(f) . nothing herein shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant's goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. ."
        Applicant's affidavit includes the following statement:
        "In view of applicant's extensive sales and advertising of this mark, its long ownership of incontestable registrations, and its continuous and substantially exclusive use over a long period of time, including the past five years, General Mills believes that this mark has acquired secondary meaning."
        On its face, applicant's statement complies with the requirements of the statute and pertains to the period of time before the date of the declaration; and opposer has provided no probative evidence or argument to the contrary. Applicant is not required to slavishly adhere to the exact wording of the statute.
  • Rarely can plaintiff satisfy its initial burdern through argument alone.
    • Kellogg Company v. General Mills, Inc., Opposition No. 91125884, (TTAB 2007).
      • We add that it will be the rare case, indeed, where a plaintiff can satisfy its initial burden in this type of proceeding based on argument alone.
  • It is applicant's burden to prove acquired distinctiveness.
    • In re Crystal Geyser Water Company, Serial No. 76201270, (TTAB 2007)
      • It is applicant's burden to prove acquired distinctiveness. Yamaha, supra, 6 USPQ2d at 1006; In re Hollywood Brands, Inc., 214 F.2d 139, 102 USPQ 294, 295 (CCPA 1954) ("[T]here is no doubt that Congress intended that the burden of proof [under Section 2(f)] should rest upon the applicant").
  • Proving acquired distinctiveness becomes more difficult as the mark's descriptiveness increases.
    • In re Crystal Geyser Water Company, Serial No. 76201270, (TTAB 2007)
      • "[L]ogically that standard becomes more difficult as the mark's descriptiveness increases." Yamaha, supra, 6 USPQ2d at 1008.
  • A claim that applicant has been using the subject matter for a long period of substantially exclusive use may not be sufficient to demonstrate that the mark has acquired distinctiveness.
    • In re Crystal Geyser Water Company, Serial No. 76201270, (TTAB 2007)
      • A claim that applicant has been using the subject matter for a long period of substantially exclusive use may not be sufficient to demonstrate that the mark has acquired distinctiveness. See In re Gibson Guitar Corp., 61 USPQ2d 1948, 1952 (TTAB 2001) (66 years of use).
  • Evidence: The nature and extent of evidence depends on the facts of each case and the mark's descriptiveness.
    • In re Crystal Geyser Water Company, Serial No. 76201270, (TTAB 2007)
      • The amount and character of evidence required to establish acquired distinctiveness depends on the facts of each case, Roux Laboratories, Inc. v. Clairol Inc., 427 F.2d 823, 166 USPQ 34 (CCPA 1970), and more evidence is required where a mark is so highly descriptive that purchasers seeing the matter in relation to the goods or services would be less likely to believe that it indicates source in any one party. See In re Bongrain International Corp., 894 F.2d 1316, 13 USPQ2d 1727 (Fed. Cir. 1990).
  • Evidence: can include the length of use of the mark, advertising expenditures, sales, survey evidence, and affidavits asserting source-indicating recognition; but typically not a successful advertising campaign.
    • In re Crystal Geyser Water Company, Serial No. 76201270, (TTAB 2007)
      • Evidence of acquired distinctiveness can include the length of use of the mark, advertising expenditures, sales, survey evidence, and affidavits asserting source-indicating recognition. However, a successful advertising campaign is not in itself necessarily enough to prove secondary meaning. In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (claim based on annual sales under the mark of approximately eighty-five million dollars, and annual advertising expenditures in excess of ten million dollars, not sufficient to establish acquired distinctiveness in view of highly descriptive nature of mark).
  • The opposer need not demonstrate descriptiveness of the term, Section 2(f) already accepts lack of distinctiveness as fact.
    • Target Brands, Inc. v. Shaun N.G. Hughes, Opposition No. 91163556, (TTAB 2007)
      • "Where, as here, an applicant seeks a registration based on acquired distinctiveness under Section 2(f), the statute accepts a lack of distinctiveness as an established fact." Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d 1571, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988). Thus, opposer, not needing to demonstrate the descriptiveness of the term ULTIMATE POLO, concentrated its case on the question of acquired distinctiveness.
  • Presumptions and burdens in a Section 2(f) case.
    • Target Brands, Inc. v. Shaun N.G. Hughes, Opposition No. 91163556, (TTAB 2007)
      • As Yamaha explains, when matter proposed for registration under Section 2(f) is approved by the United States Patent and Trademark Office for publication, there is a presumption that the examining attorney found a prima facie case of acquired distinctiveness by the applicant for registration. Id., 6 USPQ2d at 1004. In an opposition, "the opposer has the initial burden to establish prima facie that the applicant did not satisfy the acquired distinctiveness requirement of Section 2(f)." Id., 6 USPQ2d at 1005. "If the opposer does present its prima facie case challenging the sufficiency of applicant's proof of acquired distinctiveness, the applicant may then find it necessary to present additional evidence and argument to rebut or overcome the opposer's showing..." Id.
  • Distinctiveness is acquired by 'substantially exclusive and continuous use' of the mark in commerce.
    • Saint-Gobain Corporation v. 3M Company, Opposition No. 91119166, (TTAB 2007).
      • Applicant, in this case where it seeks registration of its purple color applied to coated abrasives, requests registration under the provision of Section 2(f) on the ground that it has acquired distinctiveness. Therefore, applicant's mark is only registrable on the Principal Register if applicant has submitted sufficient evidence that its mark has acquired distinctiveness. "Distinctiveness is acquired by 'substantially exclusive and continuous use' of the mark in commerce." In re Owens-Corning Fiberglas Corporation, 774 F.2d 1116, 227 USPQ 417, 424 n.11 (Fed. Cir. 1985).
  • Burden of establishing acquired distinctiveness of the mark rests with applicant.
    • Saint-Gobain Corporation v. 3M Company, Opposition No. 91119166, (TTAB 2007).
      • Inasmuch as the trial is complete and opposer has submitted evidence challenging applicant's claim of distinctiveness, the burden of establishing that the mark has acquired distinctiveness rests with applicant.
  • Evidence: Sales and Advertising evidence not typically sufficient to demonstrate acquired distinctiveness of color in a field where color is common.
    • Saint-Gobain Corporation v. 3M Company, Opposition No. 91119166, (TTAB 2007).
      • While some of applicant's advertising supports applicant's claim of acquired distinctiveness, inasmuch as applicant is seeking registration of a color in a field where color is common, sales and advertising evidence would ordinarily not be sufficient by itself to demonstrate that its color has acquired distinctiveness.
  • When the record shows that purchasers are confronted with more than one (let alone numerous) independent users of a term or device, an application for registration under Section 2(f) cannot be successful, for distinctiveness on which purchasers may rely is lacking under such circumstances
    • Saint-Gobain Corporation v. 3M Company, Opposition No. 91119166, (TTAB 2007).
      • Another factor that weighs against applicant is the number of third-party users of purple-colored abrasives. In respect of registration, there must be a trademark, i.e., purchasers in the marketplace must be able to recognize that a term or device has or has acquired such distinctiveness that it may be relied on as indicating one source of quality control and thus one quality standard. When the record shows that purchasers are confronted with more than one (let alone numerous) independent users of a term or device, an application for registration under Section 2(f) cannot be successful, for distinctiveness on which purchasers may rely is lacking under such circumstances. Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 222 USPQ 939, 940-41 (Fed. Cir. 1984). See also In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999) ("The examples of use of the phrase by others in its descriptive form support the board's conclusion that the mark had not acquired distinctiveness").
  • Long, continuous use alone is insufficient to demonstrate secondary meaning where the use is not substantially exclusive.
    • Saint-Gobain Corporation v. 3M Company, Opposition No. 91119166, (TTAB 2007).
      • "In this regard, we fully agree with opposer's contention that long and continuous use alone is insufficient to show secondary meaning where the use is not substantially exclusive." Flowers Industries Inc. v. Interstate Brands Corp., 5 USPQ2d 1580, 1588-89 (TTAB 1987).
  • Evidence: Third-party examples do not need to be identical to applicant's mark to be relevant to the question of acquired distinctiveness.
    • Saint-Gobain Corporation v. 3M Company, Opposition No. 91119166, (TTAB 2007).
      • In order to be relevant to the question of whether applicant's mark has acquired distinctiveness, the third party uses do not have to be identical to applicant's mark. Goodyear Tire and Rubber Co. v. Interco Tire Corp., 49 USPQ2d 1705, 1720 (TTAB 1998):
        "Here, given the high degree of descriptiveness inherent in tire tread designs, together with the fact that many third parties have used designs similar to that of applicant -- including a significant number of substantially similar, but not identical, tire tread designs for mud and other all terrain tires, we are not convinced that the purchasing public has come to view applicant's three-stage lug configuration as a trademark for its tires."
  • Case Finding: Third-party use of a mark in other fields is relevant and also suggests that applicant's mark has not acquired distinctiveness.
    • Saint-Gobain Corporation v. 3M Company, Opposition No. 91119166, (TTAB 2007).
      • As an analogy, a party seeking registration for its mark for "footwear" and alleging that it has acquired distinctiveness cannot dismiss evidence that others commonly use the same term to describe shoes by claiming that it is using the mark on sandals only. Applicant seeks registration of its mark for coated abrasives made of paper and cloth and it is not entitled to a registration for this mark unless the evidence shows that its mark has become distinctive for those goods. As a result, the uses by third parties of purple-colored paper and cloth abrasives in all fields is not only relevant, but it clearly supports the position that applicant's mark has not acquired distinctiveness.
  • Use of the same or similar marks on related goods is relevant in determining whether applicant's mark has acquired distinctiveness.
    • Saint-Gobain Corporation v. 3M Company, Opposition No. 91119166, (TTAB 2007).
      • Furthermore, we reject applicant's argument that coated abrasives that are not made of paper or cloth are irrelevant in determining whether applicant's mark has acquired distinctiveness. Use of the same or similar marks on related goods is relevant in determining whether applicant's mark has acquired distinctiveness. Edward Weck Inc. v. IM Inc., 17 USPQ2d 1142, 1145 (TTAB 1990) (parenthetical omitted) ("[O]ther factors also weigh in our conclusion that applicant has failed to establish acquired distinctiveness. First, opposer has demonstrated that others have used and are using the color green for related products. Applicant's use has therefore not been exclusive"). See also Spraying Systems Co. v. Delavan Inc., 975 F.2d 387, 24 USPQ2d 1181, 1186 (7th Cir. 1992) ("[E]vidence of third-party use of the 'JET' formative casts further doubt on Spraying Systems' assertion of secondary meaning. While it is true that the probative value of this evidence is somewhat diminished by Spraying Systems' contrary evidence of lack of use and the only distant relatedness of several third-party products, there is enough relevant third-party use that the point retains its vitality").
    • Saint-Gobain Corporation v. 3M Company, Opposition No. 91119166, (TTAB 2007).
      • However, the fact that other shades of purple are not the same as applicant's shade does not mean that these products are irrelevant. Edward Weck Inc., 17 USPQ2d at 1145 ("Since others have used this same color, albeit a different shade of the color green, the relevant public is less likely to view the color as an indicator of origin than as mere ornamentation lacking in trademark function"). See also Brunswick I, 28 USPQ2d at 1203 ("When the party which claims that matter has become distinctive of its goods is faced with use by others of the same or similar matter on the same goods, that party has a difficult burden to meet").
  • Where use of color is common in a field, the applicant has a difficult burden to demonstrate acquired distinctiveness of the claimed color.
    • Saint-Gobain Corporation v. 3M Company, Opposition No. 91119166, (TTAB 2007).
      • We note that where "the use of colors is common in a field, an applicant has a difficult burden in demonstrating distinctiveness of its claimed color." In re Howard S. Leight and Associates Inc., 39 USPQ2d 1058, 1060 (TTAB 1996). This is not a case such as Owens-Corning where color is an unusual feature for paper and cloth abrasives. Rather, it is a case where color is used by others in the field for a variety of reasons.
  • Applicant cannot establish acquired distinctiveness of the functional portion of a mark.
    • Saint-Gobain Corporation v. 3M Company, Opposition No. 91119166, (TTAB 2007).
      • Furthermore, "[f]unctionality having been established, whether [applicant's design] has acquired secondary meaning need not be considered." TrafFix Devices Inc. v. Marketing Displays Inc., 532 U.S. 23, 58 USPQ2d 1001, 1007 (2001). See also M-5 Steel Mfg. Inc. v. O'Hagin's Inc., 61 USPQ2d 1086, 1097 (TTAB 2001) (If "applicant's designs are functional, any evidence of distinctiveness is of no avail to applicant in support of registration").
  • A product feature is functional, and cannot serve as a trademark, if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.
    • Saint-Gobain Corporation v. 3M Company, Opposition No. 91119166, (TTAB 2007).
      • On the subject of functionality, the Supreme Court has held:
        "Discussing trademarks, we have said "'[i]n general terms, a product feature is functional,' and cannot serve as a trademark, 'if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.'" [Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 165, 34 USPQ2d 1161 (1995)] (quoting Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850, n. 10 [214 USPQ 1] (1982)). TrafFix Devices, 58 USPQ2d at 1006.
  • Definition: Functionality.
    • Saint-Gobain Corporation v. 3M Company, Opposition No. 91119166, (TTAB 2007).
      • "Congress explicitly recognized the functionality doctrine in a 1998 amendment to the Lanham Act by making "functionality" a ground for ex parte rejection of a mark. 15 U.S.C. §1052(e)(5) (2000). Under this provision, a mark that comprises "any matter that, as a whole, is functional" is not entitled to trademark protection. Id. (emphasis added). Although the new statutory basis for refusal of registration does not apply in this case, we note that the 1998 amendment was intended to "make explicit some of the current practices of the Patent and Trademark Office with respect to the trademark protection of matter that is wholly functional," and referred to the amendment as a "mostly technical," "housekeeping" amendment." Valu Engineering Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422, 1425 (Fed. Cir. 2002) (footnotes omitted).
  • Functionality doctrine does not apply retroactively.
    • Saint-Gobain Corporation v. 3M Company, Opposition No. 91119166, (TTAB 2007).
      • Because the application at issue here was filed on May 18, 1998, the statutory functionality section does not apply. Valu Engineering, 61 USPQ2d at 1425 n.3 ("The statute applies only to applications filed after October 30, 1998").
  • A (color) portion of a mark can be deemed function even if it does not cause the product to perform better.
    • Saint-Gobain Corporation v. 3M Company, Opposition No. 91119166, (TTAB 2007).
      • We start by noting that the color of an item can be a functional feature of the goods even if it does not make the product perform better. See Brunswick II, 32 USPQ2d at 1122-23:
        "The color black, as the Board noted, does not make the engines function better as engines. The paint on the external surface of an engine does not affect its mechanical purpose. Rather, the color black exhibits both color compatibility with a wide variety of boat colors and ability to make objects appear smaller. With these advantages for potential customers, the Board found a competitive need for engine manufacturers to use black on outboard engines. Based on this competitive need, the Board determined that the color was de jure functional. This court discerns no error in the Board's legal reasoning and no clear error in its factual findings.
  • Choosing to color a product which is not normally colored can serve as a trademark and is not functional.
    • Saint-Gobain Corporation v. 3M Company, Opposition No. 91119166, (TTAB 2007).
      • This case is different from most color functionality cases. In the typical color case, the final color of the product is normally dictated by aesthetic considerations. In Owens-Corning, the Court found that a "pink color mark registered for fibrous glass insulation does not confer a 'monopoly' or act as a barrier to entry in the market. It has no relationship to production of fibrous glass insulation. It serves the classical trademark function of indicating the origin of the goods." 227 USPQ at 421. Furthermore, the record revealed that Owens-Corning was the only manufacturer to color insulation, which was ordinarily a light yellow-white coloring. 227 USPQ at 420. Similarly, in Brunswick II, the basic color of the engines after the manufacturing process was not an issue . What is unusual about this case is that the manufacturing process of coated abrasives, unlike insulation, results in products with numerous colors.
  • The functionality doctrine can serve to deny a trademark which would otherwise result in anticompetitive consequences.
    • Saint-Gobain Corporation v. 3M Company, Opposition No. 91119166, (TTAB 2007).
      • "In contrast to the many shades of color available for fiberglass insulation, the evidence shows that the color palette available for the manufacture of fly rods is extremely limited. One limiting factor is the method by which the color is applied to the rod. The rod is made in part of graphite, which is a carbon and so is naturally black, and the color is applied as a dye, not a paint. Only a few dark shades successfully mask the black base and colors applied to it darken deeply. Under these circumstances, granting exclusive use of a color to one manufacturer would severely restrict competition; there would be little left for the rest of the world." R.L. Winston Rod Co. v. Sage Manufacturing Co., 838 F. Supp. 1396, 29 USPQ2d 1779, 1781 (D. Mont. 1993). See also Qualitex, 34 USPQ2d at 1165 ("[If] a 'color depletion' or "color scarcity' problem does arise -- the trademark doctrine of 'functionality' normally would seem available to prevent the anticompetitive consequences").
  • Applicant has the burden to establish a prima facie case of acquired distinctiveness.
    • In re Lens.com, Inc., Serial No. 78076812, (TTAB 2007)
      • As to acquired distinctiveness, applicant has the burden to establish a prima facie case of acquired distinctiveness. See Yamaha International Corp. v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988).
  • Evidence: Long use and revenues only indicate a degree of business success and not that customers associate a mark with the applicant.
    • In re Lens.com, Inc., Serial No. 78076812, (TTAB 2007)
      • Applicant's long use and revenues suggest that applicant has enjoyed a degree of business success. Nonetheless, this evidence demonstrates only the popularity of applicant's services, not that the relevant customers of such services have come to view the designation LENS as applicant's source-identifying service mark. See In re Bongrain International Corp., 894 F.2d 1316, 13 USPQ2d 1727 (Fed. Cir. 1990); and In re Recorded Books Inc., 42 USPQ2d 1275 (TTAB 1997).
  • Applicant must establish the achievement of distinctiveness through direct evidence of such.
    • In re Lens.com, Inc., Serial No. 78076812, (TTAB 2007)
      • The issue here is the achievement of distinctiveness, and the evidence falls far short of establishing this. Notably, applicant's evidence fails to indicate whether its advertising and sales figures are related to its LENS designation, or other designations such as its name, LENS.COM. Of equal significance, the record is completely devoid of direct evidence that the relevant classes of purchasers of applicant's services view LENS as a distinctive source indicator for applicant's services.
  • The greater the degree of descriptiveness, the greater the evidentiary burden on the user to establish acquired distinctiveness.
    • In re Lens.com, Inc., Serial No. 78076812, (TTAB 2007)
      • That is to say, the greater the degree of descriptiveness, the greater the evidentiary burden on the user to establish acquired distinctiveness. See Yamaha Int'l. Corp. v. Hoshino Gakki Co., supra; and In re Merrill Lynch, Pierce, Fenner & Smith, Inc., supra.
  • The amount of substantial evidence of secondary meaning is directly proportional to the descriptiveness of the trademark's terms.
    • In re Lens.com, Inc., Serial No. 78076812, (TTAB 2007)
      • The sufficiency of the evidence offered to prove secondary meaning should be evaluated in light of the nature of the designation. Highly descriptive terms, for example, are less likely to be perceived as trademarks and more likely to be useful to competing sellers than are less descriptive terms. More substantial evidence of secondary meaning thus will ordinarily be required to establish their distinctiveness.
  • Evidence: Evidence concerning a different mark and non-final adjudications have little bearing to a mark at issue.
    • In re Sunburst Products, Inc., Serial No. 74/300,843, (TTAB 1999).
      • We turn then to the only real issue before us---acquired distinctiveness. With respect to applicant's evidence of acquired distinctiveness, much of this evidence, including declarations and the preliminary injunction orders and consent decrees, involves applicant's claim to a different "mark" (that is, the six elements originally claimed in this application). Accordingly, and aside from the fact that those orders were not final adjudications entitled to preclusive effect, we believe that much of applicant's evidence has little bearing upon applicant's claim of trademark rights to the matching and contrasting colors in this application.
  • Mere trade dress in the nature of product packaging can be inherently distinctive, trade dress in the nature of a product configuration cannot be and is registrable, if at all, only on a showing of acquired distinctiveness
    • In re MGA Entertainment, Inc., Serial No. 76603323, (TTAB 2007)
      • At the outset, we note that there is no issue that the box design is not distinctive, for two reasons. First, while mere trade dress in the nature of product packaging can be inherently distinctive, trade dress in the nature of a product configuration cannot be, and because applicant claims the box is a good in trade, i.e., a product, rather than mere packaging, its design is registrable, if at all, only on a showing of acquired distinctiveness. See Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000).
    • In re MGA Entertainment, Inc., Serial No. 76603323, (TTAB 2007)
      • After careful review of the evidence of record, we agree with the examining attorney that applicant's evidence of acquired distinctiveness is not sufficient to permit registration of the box design as a mark for trapezoidal cardboard boxes for toys, games and playthings. The examining attorney is correct that the applicant's burden is heavier in this case because applicant seeks registration of the box design as a product configuration. In re Ennco Displays Systems Inc., 56 USPQ2d 1279 (TTAB 2000) [product configurations face a heavy burden to establish acquired distinctiveness]. See also Yamaha, supra, 6 USPQ2d at 1008 [evidence required to show acquired distinctiveness is directly proportional to the degree of non-distinctiveness of the mark at issue].
  • Seeking registration under Section 2(f) concedes lack of inherent distinctiveness.
    • In re MGA Entertainment, Inc., Serial No. 76603323, (TTAB 2007)
      • Second, by seeking registration under Section 2(f), applicant has conceded lack of inherent distinctiveness and must prove acquired distinctiveness.
  • Evidence: Evidentiary burdens in cases of acquired distinctiveness.
    • In re MGA Entertainment, Inc., Serial No. 76603323, (TTAB 2007)
      • The burden of proving a prima facie case of acquired distinctiveness in an ex parte proceeding rests with applicant. Yamaha Int'l Corp. v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988). To establish acquired distinctiveness, applicant must show that the primary significance of the product configuration in the minds of consumers is not the product but the producer. Acquired distinctiveness may be shown by direct and/or circumstantial evidence. Direct evidence includes actual testimony, declarations or surveys of consumers as to their state of mind. Circumstantial evidence, on the other hand, is evidence from which consumer association might be inferred, such as years of use, extensive amount of sales and advertising, and any similar evidence showing wide exposure of the mark to consumers. See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, Sections 15:30, 15:61, 15:66 and 15:70 (4th ed. 2006).
  • The TTAB is not bound by decisions made by examining attorneys in previous cases.
    • In re MGA Entertainment, Inc., Serial No. 76603323, (TTAB 2007)
      • Further, with respect to applicant's contention that the Office has allowed other registrations to issue for marks that consist of product configurations, as we have indicated, it is settled that we are not bound by the decisions made by examining attorneys in previous cases. See Nett Designs, supra.
  • Evidence: Declarations which do not relate to how the mark relates to the identified goods are not probative of acquired distinctiveness.
    • In re MGA Entertainment, Inc., Serial No. 76603323, (TTAB 2007)
      • The central problem, however, with applicant's evidence is that both declarants describe the box design as product packaging rather than as a product configuration and speak of the acquired distinctiveness of the box design as it relates to applicant's primary goods, i.e., toys, games and playthings, rather than the acquired distinctiveness of the box design as it relates to the identified goods, i.e., trapezoidal cardboard boxes for toys, games and playthings.
    • In re MGA Entertainment, Inc., Serial No. 76603323, (TTAB 2007)
      • Neither declarant speaks of consumers/retailers associating the box design with the identified goods, namely, trapezoidal boxes for toys, games and playthings. Thus, the declarations are not probative of whether the box design has come to be associated with trapezoidal boxes for toys, games and playthings.
    • In re MGA Entertainment, Inc., Serial No. 76603323, (TTAB 2007)
      • Finally, while we acknowledge that applicant's sales of BRATZ dolls are impressive, this evidence speaks to the success of the dolls themselves (or at most to the acquired distinctiveness of the box design as it relates to the dolls themselves). Again, such evidence is not probative of whether the box design has acquired distinctiveness with respect to the trapezoidal boxes in which the dolls are packaged.
  • If a mark is generic and incapable of functioning as a service mark, no amount of evidence of acquired distinctiveness would be sufficient to warrant its registration as a mark.
    • In re Dial A Mattress Operating Corporation, Serial No. 75/131,355, (TTAB 1999).
      • Because we have found applicant's 1-888-M-A-T-R-E-S-S designation to be generic as applied to the services recited in the application, applicant's alternative request for registration pursuant to Section 2(f) is unavailing. That is, because the designation is generic and incapable of functioning as a service mark, no amount of evidence of acquired distinctiveness would be sufficient to warrant its registration as a mark. See, e.g., H. Marvin Ginn Corp., supra, 782 F.2d at 989, 228 USPQ at 530.
  • Generally, the higher the degree of descriptiveness of the mark involved, the greater the amount and quality of evidence of acquired distinctiveness that is required to warrant registration under Section 2(f).
    • In re Dial A Mattress Operating Corporation, Serial No. 75/131,355, (TTAB 1999).
      • Generally, the higher the degree of descriptiveness of the mark involved, the greater the amount and quality of evidence of acquired distinctiveness that is required to warrant registration under Section 2(f). See Yamaha International v. Hoshino Gakki, 840 F.2d 1572, 6 USPQ2d 1001, 1008 (Fed. Cir. 1988).
  • An intent-to-use application would be entitled to registration under Section 2(f) only if applicant establishes that, as a result of applicant's use of the mark on related goods or services, the mark has become distinctive as to those other goods or services and that this previously created distinctiveness will transfer to the services recited in the present application when the mark is used in connection with those services.
    • In re Dial A Mattress Operating Corporation, Serial No. 75/131,355, (TTAB 1999).
      • Furthermore, because applicant's application is an intent-to-use application, applicant would be entitled to registration under Section 2(f) only if applicant establishes that, as a result of applicant's use of the mark on related goods or services, the mark has become distinctive as to those other goods or services and that this previously created distinctiveness will transfer to the services recited in the present application when the mark is used in connection with those services. See TMEP section 1212.09(a).
  • Under Trademark Rule 2.41(b), the Trademark Examining Attorney has discretion whether to accept prior registrations as prima facie evidence of acquired distinctiveness, especially where the mark and/or the goods and services of the existing registrations are not the same as the mark and/or the goods and services in the application.
    • In re Dial A Mattress Operating Corporation, Serial No. 75/131,355, (TTAB 1999).
      • We turn first to applicant's prior registrations. Trademark Rule 2.41(b) provides, in relevant part, that "in appropriate cases, ownership of one or more prior registrations on the Principal Register or under the Act of 1905 of the same mark may be accepted as prima facie evidence of distinctiveness." However, the rule also provides that the Office may require further evidence of acquired distinctiveness. The Trademark Examining Attorney has discretion whether to accept prior registrations as prima facie evidence of acquired distinctiveness under the rule, especially where the mark and/or the goods and services of the existing registrations are not the same as the mark and/or the goods and services in the application. See In re Best Products Co., Inc., 231 USPQ 988, 989 fn. 6 (TTAB 1986); TMEP section 1212.04.
  • The analysis for purposes of whether a mark is the same mark as a previously registered mark is similar to the analysis used in "tacking" cases and cases of impermissible material alteration.
    • In re Dial A Mattress Operating Corporation, Serial No. 75/131,355, (TTAB 1999).
      • The analysis used to determine whether applicant's present mark is "the same mark" as its previously registered marks, for purposes of Trademark Rule 2.41(b), is similar to the analysis used in "tacking" cases to determine whether a party may rely, for purposes of establishing priority, on its prior use of a mark which is not identical to its present mark, and also to the analysis used to determine whether a proposed amendment to a mark would constitute an impermissible material alteration. See TMEP section 1212.04.
  • Marks are considered "legal equivalents" or the "same mark" where they create the same, continuing commercial impression such that the consumer would consider both as the same mark.
    • In re Dial A Mattress Operating Corporation, Serial No. 75/131,355, (TTAB 1999).
      • In all of these situations, the issue is whether the present mark and the previous mark are "legal equivalents," i.e., whether they create the same, continuing commercial impression such that the consumer would consider both as the same mark. See Van Dyne-Crotty Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17 USPQ2d 1866 (Fed. Cir. 1991).
  • Marks are not "legal equivalents" or the "same mark" if they are perceived as distinct marks or even if they are similar such that consumers assume them to be from the same source.
    • In re Dial A Mattress Operating Corporation, Serial No. 75/131,355, (TTAB 1999).
      • If the marks would be perceived as two distinct marks, then they are not legal equivalents or "the same mark," even if they are so similar that purchasers would assume them to be owned and used by a single source. See Compania Insular Tabacalera v. Camacho Cigars, Inc., 167 USPQ 299, 303 (TTAB 1970).
  • Evidence: The probative value of a phantom mark registration as evidence of acquired distinctiveness of a particular mark has not been enhanced by the Federal Circuit's holding that phantom marks are not registrable.
    • In re Dial A Mattress Operating Corporation, Serial No. 75/131,355, (TTAB 1999).
      • FOOTNOTE 17 "Additionally, we note that the mark (AREA CODE) M-A-T-T-R-E-S is a "phantom" mark in which the "(AREA CODE)" designation in the mark is said to represent the use of any and all area codes. The probative value of this registration as evidence of the acquired distinctiveness of the particular mark at issue in this case certainly has not been enhanced by the Federal Circuit's recent holding that such "phantom" marks are not registrable. See In re International Flavors & Fragrances Inc., ___ F.3d ___, 51 USPQ2d 1513 (Fed. Cir. 1999), aff'g 47 USPQ2d 1314 (TTAB 1998)."
  • Evidence regarding use and advertising of different/similar marks is not transferable to establish acquired distinctiveness of the disputed mark.
    • In re Dial A Mattress Operating Corporation, Serial No. 75/131,355, (TTAB 1999).
      • To the extent that applicant is relying on Mr. Isler's averments regarding applicant's use and advertising of its other marks as evidence of the acquired distinctiveness of the present mark, applicant's reliance is misplaced. As discussed above, because the mark involved herein is not the same mark as those other marks, any acquired distinctiveness which may have been attained by those other marks is not transferable to the present mark.
  • A higher quantum and quality of evidence is required for a finding that a highly descriptive mark has acquired distinctiveness.
    • In re Dial A Mattress Operating Corporation, Serial No. 75/131,355, (TTAB 1999).
      • In short, if we assume, contrary to our finding in this case, that 1-888-M-A-T-R-E-S-S is not generic as applied to applicant's services, it nonetheless clearly is highly descriptive of the services. Accordingly, a higher quantum and quality of evidence is required in order to find that the mark has acquired distinctiveness. See Yamaha International v. Hoshino Gakki, supra.
  • An expired registration merely constitutes evidence that the registration issued and any benefits conferred by the registration, including the evidentiary presumptions were lost when the registration expired.
    • In re Phillips-Van Heusen Corp., Serial No. 75/664,835, (TTAB 2002).
      • FOOTENOTE 2 "...This is especially so, applicant insists, in light of the fact that such mark "was in use for more than five years, as evidenced by the accepted and acknowledged Section[s] 8 and 15 [affidavit] filed in connection with ... [the] prior registration[,] and, thus, had acquired distinctiveness." However, as the Examining Attorney correctly states in his brief, Trademark Rule 2.41(b) "applies only to live registrations, not expired ones," and "the prior registration [has] expired ...." See TMEP §1212.04(d). Thus, applicant's expired registration merely constitutes evidence that the registration issued, see, e.g., Sunnen Products Co. v. Sunex Int'l Inc., 1 USPQ2d 1744, 1747 (TTAB 1987), but any benefits conferred by the registration, including the evidentiary presumptions afforded by Section 7(b) of the Trademark Act, 15 U.S.C. §1057(b), were lost when the registration expired, see, e.g., Anderson, Clayton & Co. v. Krier, 478 F.2d 1246, 178 USPQ 46, 47 (CCPA 1973). Moreover, insofar as the affidavit previously filed by applicant under Sections 8 and 15 of the Trademark Act, 15 U.S.C. §§1058 and 1065, is concerned, such affidavit cannot serve as evidence of acquired distinctiveness for the term applicant presently seeks to register inasmuch as Trademark Rule 2.41(b) requires that a claim of acquired distinctiveness which is based upon substantially exclusive and continuous use of a mark in commerce be "for the five years before the date on which the claim of distinctiveness is made," which in this case is the date of applicant's response to the initial Office Action. TMEP §1212.05."
  • A claim of acquired distinctiveness is not available to permit registration of a deceptive, as opposed to a deceptively misdescriptive, mark.
    • In re Phillips-Van Heusen Corp., Serial No. 75/664,835, (TTAB 2002).
      • FOOTENOTE 2 "...Furthermore, and in any event, a claim of acquired distinctiveness is not available to permit registration of a deceptive, as opposed to a deceptively misdescriptive, mark. Section 2(f) of the Trademark Act and TMEP §1212.02(a)."
  • Applicant has the burden of proof to establish a prima facie case that the term has acquired distinctiveness.
    • In re Mine Safety Appliances Company, Serial No. 75/501,608, (TTAB 2002).
      • Turning, therefore, to the remaining issue in this appeal, it is settled that applicant has the burden of proof with respect to establishing a prima facie case that the term "WORKMASK" has acquired distinctiveness. See Yamaha International Corp. v. Hoshino Gakki Co. Ltd., supra at 1006.
  • The amount and character of evidence needed to demonstrate that a term has acquired distinctiveness, however, necessarily varies, depending upon the degree of descriptiveness involved, and becomes progressively greater as the descriptiveness of the term increases.
    • In re Mine Safety Appliances Company, Serial No. 75/501,608, (TTAB 2002).
      • The amount and character of evidence needed to demonstrate that a term has acquired distinctiveness, however, necessarily varies, depending upon the degree of descriptiveness involved, and becomes progressively greater as the descriptiveness of the term increases.6 Id. at 1008; and In re Leatherman Tool Group Inc., 32 USPQ2d 1443, 1451 (TTAB 1994).
  • Mere intent that a term identify and distinguish the source of a product, and hence serve as a trademark therefor, is alone insufficient.
    • In re Mine Safety Appliances Company, Serial No. 75/501,608, (TTAB 2002).
      • Moreover, while mere intent that a term identify and distinguish the source of a product, and hence serve as a trademark therefor, is alone insufficient,9 the record herein demonstrates that applicant, for over six years, has consistently utilized the term "WORKMASK," on its specimens of use and in its advertising and promotional materials and activities, in a manner calculated to project a single source or origin for its goods to customers and members of the trade therefor and has not misused such term descriptively.

        FOOTNOTE 9 "See, e.g. In re Remington Products, Inc., 3 USPQ2d 1714, 1715 (TTAB 1987)."

  • Finding: Evidence of extensive use, sales, and public perception results in finding of acquired distinctiveness.
    • In re Mine Safety Appliances Company, Serial No. 75/501,608, (TTAB 2002).
      • In light of the length and manner of such use, including sales of over 10,000 units representing revenue of $10,000,000, the distribution of tens of thousands of data sheets and bulletins, and the circulation of hundreds of thousands of catalogs, all of which involve what clearly is a relatively small audience of consumers, we conclude that, given the level of sophistication and discrimination inherent in buying applicant's safety equipment, purchasers of and those in the market for self-contained breathing apparatus have come to regard or perceive the term "WORKMASK" as identifying and distinguishing a source for such goods. This is especially so in view of the absence, in this record, of any evidence that the term "WORKMASK" has ever been used (either descriptively or as a mark) by third parties or been mentioned (either generically or otherwise descriptively) in the Thomas Register or any articles in trade journals or other periodicals referenced in the "LEXIS/NEXIS" database. We accordingly find that on this record applicant has presented a sufficient showing of acquired distinctiveness and thus that the term "WORKMASK" is registrable pursuant to the provisions of Section 2(f) of the statute.
  • A claim of acquired distinctiveness in the trademark application is a concession that the mark is not inherently distinctive and thus not registrable on the Principal Register absent a sufficient showing of acquired distinctiveness.
    • In re A La Vieille Russie, Inc., Serial No. 75/609,153, (TTAB 2001).
      • Applicant's Section 2(f) claim of acquired distinctiveness, which applicant made in the original application, is a concession that the mark is not inherently distinctive and that it therefore is not registrable on the Principal Register absent a sufficient showing of acquired distinctiveness. See Yamaha International Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988); In re Cabot Corp., 15 USPQ2d 1224 (TTAB 1990); see also TMEP §1212.02(b). Thus, although both applicant and the Trademark Examining Attorney have presented arguments on the issue, mere descriptiveness is not an issue in this appeal.
    • In re A La Vieille Russie, Inc., Serial No. 75/609,153, (TTAB 2001).
      • FOOTNOTE 2 "Applicant's Section 2(f) claim in the application was not made provisionally or in the alternative. Therefore, under the authorities cited above, applicant has conceded that its mark is merely descriptive and is not entitled to argue, as it does in its briefs, that the mark is inherently distinctive."
  • It is applicant's burden to prove acquired distinctiveness.
    • In re Gibson Guitar Corp., Serial No. 75/513,342, (TTAB 2001).
      • It is applicant's burden to prove acquired distinctiveness. Yamaha International Corporation v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988); In re Meyer & Wenthe, Inc., 267 F.2d 945, 122 USPQ 372 (CCPA 1959).
  • The more descriptive the term, the greater the evidence necessary to demonstrate acquired distinctiveness.
    • In re Gibson Guitar Corp., Serial No. 75/513,342, (TTAB 2001).
      • In general, the more descriptive the term, the greater the evidence necessary to demonstrate acquired distinctiveness. See Yamaha International Corporation v. Hoshino Gakki Co., Ltd., supra. The same is true when the proposed mark is a configuration. Id.
  • A determination of acquired distinctiveness must be made on the basis of both experts and casual consumers.
    • In re Gibson Guitar Corp., Serial No. 75/513,342, (TTAB 2001).
      • Although guitar collectors and aficionados may well be aware of these differences, the determination of acquired distinctiveness must be made on the basis of casual guitar purchasers as well. Applicant's identification of goods is for guitars per se. These would include inexpensive guitars which might be purchased by people who wish to learn guitar as a hobby, or by parents for their young children. Such casual purchasers are not likely to note the differences between applicant's guitar configuration and those of others, let alone recognize the overall configuration as a trademark without significant education on the part of applicant.
  • Finding: The similarity of applicant's guitar configuration to that of other guitars, means the applicant has a heavy burden to demonstrate acquired distinctiveness. We find that applicant has failed to meet this burden.
    • In re Gibson Guitar Corp., Serial No. 75/513,342, (TTAB 2001).
      • As noted previously, given the similarity of applicant's configuration to that of other guitars, applicant has a heavy burden to demonstrate acquired distinctiveness. We find that applicant has failed to meet this burden, and that the evidence submitted by applicant is insufficient to demonstrate that the configuration has acquired distinctiveness, such that consumers would regard it to be a trademark. Thus, even if the configuration were not functional, applicant would not be entitled to registration.
  • The burden of establishing acquired distinctiveness is on the applicant, who must establish acquired distinctiveness by a preponderance of the evidence.
    • In re Howard Leight Industries, LLC, Serial No. 76439661, (TTAB 2006).
      • The burden of establishing acquired distinctiveness is on the applicant, who must establish acquired distinctiveness by a preponderance of the evidence. Yamaha International Corporation v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988).
  • Evidence: Sales evidence may not prove acquired distinctiveness absent a showing of market share and a showing that customers associate the mark with the product.
    • In re Howard Leight Industries, LLC, Serial No. 76439661, (TTAB 2006).
      • We find that the evidence of record fails to establish, prima facie, that applicant's earplug configuration has acquired distinctiveness as a trademark. Applicant's claim of substantially exclusive and continuous use for over fifteen years does not suffice, in this case, to demonstrate acquired distinctiveness. See In re Gibson Guitar Corp., 61 USPQ2d 1948 (TTAB 2001)(sixty-six years of use insufficient to establish acquired distinctiveness). Applicant's asserted U.S. sales12 of over one billion units in the years 2000-2002 is not particularly probative evidence of acquired distinctiveness, because although this seems like a large number, we cannot determine on this record what percentage of the market this number makes up. See id. ("As for the sales of 10,000 in a two-year period, again there is no evidence to show whether this is a large number of sales of guitars vis--vis the sales of other companies"). Moreover, although the sales figures might demonstrate that applicant has been successful in marketing its earplugs and that customers find applicant's earplugs to be quality merchandise worth purchasing, we cannot determine, from the sales figures, that purchasers view the shape of the earplug as a mark.

        FOOTNOTE 12 "Applicant's sales of earplugs outside the United States are not probative evidence on the question of acquired distinctiveness in the United States."

  • Secondary meaning occurs when in the minds of the public, the primary significance of the configuration is to identify the source of the product rather than the product itself.
    • In re Howard Leight Industries, LLC, Serial No. 76439661, (TTAB 2006).
      • Secondary meaning occurs when "in the minds of the public, the primary significance of [the configuration] is to identify the source of the product rather than the product itself". Wal-Mart Stores, Inc., supra, 54 USPQ2d at 1068.
  • Sales figures may be insufficient to demonstrate that a highly descriptive term has acquired distinctiveness.
    • In re Log Cabin Homes, Ltd., Serial No. 74/682,845, (TTAB 1998).
      • However, even assuming for the sake of argument that the sales and advertising figures all relate to services for which applicant seeks registration, we find that given the very highly descriptive nature of the term "log cabin homes" (assuming said term is not generic, which it is), that said figures are simply insufficient to demonstrate that the term "log cabin homes" has come to be associated with services emanating from applicant.
  • As a mark's descriptiveness increases, the amount of proof required to demonstrate acquired distinctiveness likewise increases.
    • In re Log Cabin Homes, Ltd., Serial No. 74/682,845, (TTAB 1998).
      • It must be remembered that as a "mark's descriptiveness increases," the amount of proof required to demonstrate acquired distinctiveness likewise increases. Yamaha International v. Hoshino Gakki, 840 F.2d 1572, 6 USPQ2d 1001, 1008 (Fed. Cir. 1988).
  • Finding: A concession of mere descriptiveness in seeking registration and in a response is a concession that the mark is not inherently distinctive and that it therefore is not registrable on the Principal Register absent a sufficient showing of acquired distinctiveness.
    • In re Candy Bouquet International, Inc., Serial No. 78058216, (TTAB 2004).
      • As indicated earlier, applicant has conceded the mere descriptiveness of the term sought to be registered, both in its response (filed January 31, 2003)3 and by its seeking registration pursuant to Section 2(f) in the original application. In essence, applicant's Section 2(f) claim of acquired distinctiveness is a concession that the mark is not inherently distinctive and that it therefore is not registrable on the Principal Register absent a sufficient showing of acquired distinctiveness. See Yamaha International Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988) ["Where, as here, an applicant seeks a registration based on acquired distinctiveness under Section 2(f), the statute accepts a lack of inherent distinctiveness as an established fact."] (emphasis in original); and In re Leatherman Tool Group, Inc., 32 USPQ2d 1443 (TTAB 1994). Thus, the issue of mere descriptiveness is not an issue in this appeal.
        FOOTNOTE 3 "Applicant stated the following: "Applicant agrees that the Mark is descriptive under Section 2(e)(1). However, the applicant submits herewith proof that the Mark has become distinctive of the applicant's goods [sic--services] in commerce as set forth in Section 2(f)."
  • General burden of proof.
    • In re Candy Bouquet International, Inc., Serial No. 78058216, (TTAB 2004).
      • On this issue, applicant has the burden of proving that its mark has acquired distinctiveness. In re Hollywood Brands, Inc., 214 F.2d 139, 102 USPQ 294, 295 (CCPA 1954)("[T]here is no doubt that Congress intended that the burden of proof [under Section 2(f)] should rest upon the applicant"). "[L]ogically that standard becomes more difficult as the mark's descriptiveness increases." Yamaha International Corp., supra at 1008. In this case that standard is extremely difficult to meet since, if CANDY BOUQUET is not generic for applicant's services, it must be considered highly descriptive of them.
  • Evidence: Advertising only shows efforts to acquire distinctiveness, not that it has been achieved.
    • In re Candy Bouquet International, Inc., Serial No. 78058216, (TTAB 2004).
      • This evidence shows only the popularity of applicant's services, not that the relevant customers of such services (namely, ordinary consumers) have come to view the term CANDY BOUQUET as applicant's source-identifying mark. In re Bongrain International Corp., 894 F.2d 1316, 13 USPQ2d 1727 (Fed. Cir. 1990); and In re Recorded Books Inc., 42 USPQ2d 1275 (TTAB 1997). The issue here is the achievement of distinctiveness, and the evidence falls short of establishing this. While applicant has fairly substantial advertising expenditures, these figures only suggest the efforts made to acquire distinctiveness, and do not demonstrate that the efforts have borne fruit. In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991).
  • The widespread use of applicant's term by third parties suggests a lack of acquired distinctiveness.
    • In re Candy Bouquet International, Inc., Serial No. 78058216, (TTAB 2004).
      • In view of the widespread use of the term "candy bouquet" in connection with the activities of third parties, the sales and advertising by applicant are not sufficient to show that the public associates the term "candy bouquet" with applicant, or recognizes the term as a mark identifying services emanating from applicant.
  • Ownership of existing registrations to establish acquired distinctiveness may be considered prima facie evidence of distinctiveness in appropriate cases, but the USPTO may, at its option, require additional evidence of distinctiveness.
    • In re Candy Bouquet International, Inc., Serial No. 78058216, (TTAB 2004).
      • Applicant is correct in stating that ownership of a prior registration on the Principal Register may be accepted as prima facie evidence of distinctiveness. Trademark Rule 2.41(b) provides that the examining attorney may accept, as prima facie evidence of acquired distinctiveness, ownership by the applicant of one or more prior registrations of the "same mark" on the Principal Register. The rule states that ownership of existing registrations to establish acquired distinctiveness "may" be considered acceptable in "appropriate cases," but that the USPTO may, at its option, require additional evidence of distinctiveness.
  • If the disputed term was disclaimed in prior registrations, said registrations are not evidence that the USPTO considers the disputed term distinctive.
    • In re Candy Bouquet International, Inc., Serial No. 78058216, (TTAB 2004).
      • Because "Candy Bouquet" was disclaimed in applicant's prior registration, that registration is not evidence that the USPTO considered this term to be distinctive. Simply put, the prior registration is of no consequence in determining whether CANDY BOUQUET has acquired distinctiveness as a mark.
  • Applicant's mere ownership of an Internet domain name is not persuasive evidence of distinctiveness.
    • In re Candy Bouquet International, Inc., Serial No. 78058216, (TTAB 2004).
      • Applicant also claims that it is the owner of several Internet domain names which incorporate the term "candybouquet." We find that an applicant's mere ownership of an Internet domain name is not persuasive evidence of distinctiveness. See In re CyberFinancial.Net, Inc., supra; and In re Martin Container, Inc., 65 USPQ2d 1058 (TTAB 2002) [CONTAINER.COM is generic for retail services offered on the Internet featuring metal shipping containers.]. See also In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004) [PATENTS.COM is merely descriptive when applied to computer software]. Thus, applicant's ownership of domain names such as candybouquet.com and candybouquetfranchise.com is of no help in establishing distinctiveness of the term CANDY BOUQUET for applicant's identified services.
  • Evidence of widespread use of the disputed term in the trade and the public at large as a generic term weighs against a finding of acquired distinctiveness.
    • In re Candy Bouquet International, Inc., Serial No. 78058216, (TTAB 2004).
      • In sum, the issue here is the achievement of distinctiveness, and the evidence falls short of establishing this. Applicant's evidence is outweighed by the NEXIS and Internet evidence showing widespread use of the term "candy bouquet" in the trade and among the public at large as a generic name. To be clear on this significant point, we emphasize that the record is completely devoid of direct evidence that ordinary consumers view CANDY BOUQUET as a distinctive source indicator for applicant's services.
  • Applicant needs to provide direct evidence that ordinary consumers view the disputed term as a distinctive source indicator for applicant's services.
    • In re Candy Bouquet International, Inc., Serial No. 78058216, (TTAB 2004).
      • In sum, the issue here is the achievement of distinctiveness, and the evidence falls short of establishing this. Applicant's evidence is outweighed by the NEXIS and Internet evidence showing widespread use of the term "candy bouquet" in the trade and among the public at large as a generic name. To be clear on this significant point, we emphasize that the record is completely devoid of direct evidence that ordinary consumers view CANDY BOUQUET as a distinctive source indicator for applicant's services.
  • The greater the degree of descriptiveness, the greater the evidentiary burden on the applicant to establish acquired distinctiveness.
    • In re Candy Bouquet International, Inc., Serial No. 78058216, (TTAB 2004).
      • That is to say, the greater the degree of descriptiveness, the greater the evidentiary burden on the applicant to establish acquired distinctiveness. Yamaha International Corp. v. Hoshino Gakki Co., supra; and In re Merrill Lynch, Pierce, Fenner & Smith, Inc., supra.
  • The term sought to be registered should not be subject to exclusive appropriation, but rather should remain free for others in the industry to use in connection with their similar services and goods.
    • In re Candy Bouquet International, Inc., Serial No. 78058216, (TTAB 2004).
      • The term sought to be registered should not be subject to exclusive appropriation, but rather should remain free for others in the industry to use in connection with their similar services and goods. In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999).
  • Applicant has the burden to establish a prima facie case of acquired distinctiveness.
    • In re The Outdoor Recreation Group, Serial No. 76570321, (TTAB 2006).
      • As to acquired distinctiveness, applicant has the burden to establish a prima facie case of acquired distinctiveness. See Yamaha International Corp. v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988).
  • Evidence of a long period of use and prior registrations indicate a degree of business success but not that customers have come to view the term as applicant's source-identifying trademark.
    • In re The Outdoor Recreation Group, Serial No. 76570321, (TTAB 2006).
      • As indicated above, applicant relied upon its dates of use of the mark since September 1974 and ownership of its prior registrations, but submitted no additional evidence of acquired distinctiveness. Applicant's long use suggests that applicant has enjoyed a degree of business success. Nonetheless, this evidence does not demonstrate that its customers have come to view the designation OUTDOOR PRODUCTS as applicant's source-identifying trademark. See In re Bongrain International Corp., 894 F.2d 1316, 13 USPQ2d 1727 (Fed. Cir. 1990); and In re Recorded Books Inc., 42 USPQ2d 1275 (TTAB 1997).
  • The greater the degree of descriptiveness, the greater the evidentiary burden on the user to establish acquired distinctiveness.
    • In re The Outdoor Recreation Group, Serial No. 76570321, (TTAB 2006).
      • That is to say, the greater the degree of descriptiveness, the greater the evidentiary burden on the user to establish acquired distinctiveness. See Yamaha Int'l. Corp. v. Hoshino Gakki Co., supra; and In re Merrill Lynch, Pierce, Fenner & Smith, Inc., supra. See also: Restatement (Third) of Unfair Competition (1993), Section 13, comment e: "The sufficiency of the evidence offered to prove secondary meaning should be evaluated in light of the nature of the designation. Highly descriptive terms, for example, are less likely to be perceived as trademarks and more likely to be useful to competing sellers than are less descriptive terms. More substantial evidence of secondary meaning thus will ordinarily be required to establish their distinctiveness. Indeed, some designations may be incapable of acquiring distinctiveness."
  • Buren of Proof.
    • In re America Online, Inc., Serial No. 75460305, (TTAB 2006).
      • Here, applicant has the burden of proving that its mark has acquired distinctiveness. In re Hollywood Brands, Inc., 214 F.2d 139, 102 USPQ 294, 295 (CCPA 1954)("[T]here is no doubt that Congress intended that the burden of proof [under Section 2(f)] should rest upon the applicant"). "[L]ogically that standard becomes more difficult as the mark's descriptiveness increases." Yamaha Int'l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1008 (Fed. Cir. 1988).
  • Evidence: Proof of widespread use by the public, licensing, extensive advertising, and affidavits from customers who recognize the term as a mark for applicant's services satisfy the burden to demonstrate acquired distinctiveness.
    • In re America Online, Inc., Serial No. 75460305, (TTAB 2006).
      • To summarize, applicant has 80 million users who send approximately one billion messages each day on applicant's identified services. There are millions of visitors to its website each day where the mark is displayed. It has licensed many corporations to use its services identified by the term INSTANT MESSENGER. Its advertising has reached a significant percentage of people in the United States and it has provided some affidavits from customers who recognize its term as a mark for applicant's services. Therefore, applicant has met its burden of showing that its term INSTANT MESSENGER has acquired distinctiveness and the examining attorney's refusal to register under Section 2(e)(1) is reversed.
  • Finding: The evidence was insufficient to establish that consumers would perceive the mere presence of a hologram, and not in connection with the design, location, content or other characteristics of any particular hologram, as a trademark.
    • In re The Upper Deck Company, Serial No. 75/064,130, (TTAB 2001).
      • As previously noted, the evidence submitted by applicant under a claim of acquired distinctiveness is relevant to the refusal of the failure of applicant's unspecified "hologram device" to function as a mark and thus has been considered. Upon consideration, however, we find the evidence insufficient to establish that consumers would perceive the mere presence of a hologram on a trading card, and not in connection with the design, location, content or other characteristics of any particular hologram, as a trademark.
    • In re The Upper Deck Company, Serial No. 75/064,130, (TTAB 2001).
      • Although applicant has submitted a large amount of advertising copy in which the presence of a hologram on the cards is touted, this promotion is directed for the most part to the presence of a hologram as a desirable feature of the cards, not as a trademark.
    • In re The Upper Deck Company, Serial No. 75/064,130, (TTAB 2001).
      • Even in those instances in which reference is made to the "trademark hologram," such as "the Upper Deck trademark hologram means it's the real thing," the inference is that the presence of a hologram per se insures a genuine (non-counterfeit) product, not that it serves as a source indicator for the cards.
  • Evidence: Sales figures may suggest commercial success of a product, but do not suggest that a mark has acquired distinctiveness as an indication of the source.
    • In re The Upper Deck Company, Serial No. 75/064,130, (TTAB 2001).
      • The sales and advertising figures for applicant's trading cards per se are equally unconvincing. While sales figures may be indicative of the commercial success of applicant's products, they do not demonstrate that the holograms used thereon have acquired distinctiveness as an indication of the source of the cards. See In Pingel Enterprise Inc., 46 USPQ2d 1811 (TTAB 1998). Promotional and advertising expenditures for the cards per se are similarly unconvincing without concurrent evidence of promotion of the hologram device as a trademark.
  • Findings: Previous cases finding a lack of evidence to support public recognition of the designation and the mark sought to be registered.
    • In re The Upper Deck Company, Serial No. 75/064,130, (TTAB 2001).
      • We find the circumstances here similar to prior cases which have found an absence of evidence of the promotion and consequent recognition by the public of the designation sought to be registered as a trademark. See In re Edward Ski Products, Inc., 49 USPQ2d 2001 (TTAB 1999)(no evidence that configuration of ski mask either promoted or recognized by purchasers as an indication of origin); In re Bennetton Group S.p.A., 48 USPQ2d 1214 (TTAB 1998)(evidence insufficient to show that green rectangle background design promoted in and of itself or recognized by purchasers as trademark for clothing items to which it is applied); In re Pingel Enterprise Inc., supra, (absence of advertising or promotion of trademark significance of product configuration makes consumer recognition as trademark unlikely). Here, not only is there minimal evidence that applicant has promoted the presence of a hologram per se on its trading cards, regardless of design or content, as an indication of origin, but, even more significantly, there is no competent evidence of consumer recognition of the hologram as a trademark.
  • Use by others of the disputed product design means consumers would be less likely to perceive applicant's use of the product design as a trademark.
    • In re The Upper Deck Company, Serial No. 75/064,130, (TTAB 2001).
      • As pointed out earlier, evidence has been made of record showing the use by others of comparable hologram devices on trading cards. While applicant may argue that these are not trademark uses, the common use of holograms for nontrademark purposes means that consumers would be less likely to perceive applicant's uses of holograms as trademarks. Holograms in general have an anticounterfeiting function; applicant has admitted that even its hologram serves this purpose. Furthermore, while applicant may argue that every trademark has an anticounterfeiting function, the opposite is not true. Not every anti-counterfeiting device functions as a trademark.
  • Applicant carries the burden of proving a prima facie case of acquired distinctiveness.
    • In re The Black & Decker Corporation, Serial No. 76570453, (TTAB 2006).
      • Applicant carries the burden of proving a prima facie case of acquired distinctiveness. Yamaha Int'l. Corporation v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988).
  • There is no set amount of proof necessary to demonstrate acquired distinctiveness.
    • In re The Black & Decker Corporation, Serial No. 76570453, (TTAB 2006).
      • There is no set amount of proof necessary to demonstrate acquired distinctiveness.
  • The Board has been critical of a claim of acquired distinctiveness when the product design sought to be registered merely appears in advertising materials and there is no evidence of the promotion of the product design in such materials (such as by saying "look for.").
    • In re The Black & Decker Corporation, Serial No. 76570453, (TTAB 2006).
      • After reviewing applicant's evidence of record, we recognize that there is no "look for" advertising or promotion of the octagonal key head design. In certain cases, the Board has been critical of an applicant's claim of acquired distinctiveness when the product design sought to be registered merely appears in advertising materials and there is no evidence of the promotion of the product design in such materials. See e.g., In re Edward Ski Products, Inc., 49 USPQ2d 201 (TTAB 1999) [no evidence that the configuration of a ski mask promoted as an indication of origin]; and In re Pingel Enterprises Inc., 46 USPQ2d 1811 (TTAB 1988) [no advertising or promotion of trademark significance of the product configuration].
  • However, the absence of "look for" advertising does not mean consumers do not recognize the design as applicant's trademark.
    • In re The Black & Decker Corporation, Serial No. 76570453, (TTAB 2006).
      • In this case, however, the absence of "look for" advertising or promotion does not mean that consumers do not recognize the design as applicant's trademark.
  • Finding: Board has previously considered industry practices in relation to disputed marks.
    • In re The Black & Decker Corporation, Serial No. 76570453, (TTAB 2006).
      • Here, applicant's marketing manager, Ms. Drey, has stated that it is an industry practice for manufacturers of door locksets to use different and identifiable key head designs for their locksets and keys. We note that this Board has previously considered industry practices in acknowledging that colors operate as source indicators for wire rope. See e.g., Amsted Industries Inc. v. West Coast Rope & Rigging Inc., 2 USPQ2d 1755, 1757 (TTAB 1987) ["A rather unusual aspect of how color is generally applied to one or more strands of wire rope as an industry practice was the subject of considerable testimony and evidence. Even though the third-party registrations attached to applicant's brief are not in evidence, supra, note 4, there is no doubt, on opposer's record, that a number of suppliers of wire rope utilize one or more distinctively colored wire rope strands to serve as indicators of origin and have registered these indicia as trademarks") and Wire Rope Corporation of America, Inc. v. Secalt S.A., 196 USPQ 312, 315 (TTAB 1977) ["Insofar as the nature of the use of colored strands in the wire products field is concerned, it is not disputed that it is the custom, as previously indicated, for manufacturers to use different colors for application to their wire rope or cable for identification purposes and that purchasers do recognize the individual colors as source indicia").
  • Evidence of other entities in the same industry using different variations on a product as a source indictor makes it more likely that consumers would perceive applicant's applied-for mark as a trademark.
    • In re The Black & Decker Corporation, Serial No. 76570453, (TTAB 2006).
      • Here, applicant has submitted photographs of ten key heads from other manufacturers of door locksets that are different from applicant's key head design and five third-party registrations for marks consisting of key head designs for door hardware. In other words, the evidence in this case shows that it is common for manufacturers of door hardware to use key head designs as source indicators. This makes it all the more likely that consumers would perceive applicant's applied-for mark as a trademark. Cf. In re Upper Deck Co., 59 USPQ2d 1688, 1693 (TTAB 2001) ["[T]he common use of holograms for nontrademark purposes means that consumers would be less likely to perceive applicant's use of holograms as trademarks"].
    • In re The Black & Decker Corporation, Serial No. 76570453, (TTAB 2006).
      • The record also shows that applicant's octagonal key head design is unlike the key head designs used by other manufacturers of door locksets. Compare In re Gibson Guitar Corp., 61 USPQ2d 1948 (TTAB 2001) [Applicant failed to meet its high evidentiary burden where its guitar configuration was extremely similar to those used by other guitar manufacturers].
    • In re The Black & Decker Corporation, Serial No. 76570453, (TTAB 2006).
      • In short, the absence of "look for" advertising or promotion of applicant's key head design is not a critical factor in this case.
  • Where an applicant seeks a registration based on acquired distinctiveness under Section 2(f), the statute accepts a lack of distinctiveness as an established fact.
    • Duramax Marine, LLC v. R.W. Fernstrum & Company, Opposition No. 91119899, (TTAB 2005).
      • "Where, as here, an applicant seeks a registration based on acquired distinctiveness under Section 2(f), the statute accepts a lack of distinctiveness as an established fact." Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d 1571, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988) (emphasis in original).
  • This means that opposer is not required to advance evidence of descriptiveness and may concentrate its case on the question of acquired distinctiveness.21
    • Duramax Marine, LLC v. R.W. Fernstrum & Company, Opposition No. 91119899, (TTAB 2005).
      • FOOTNOTE 21 "Notwithstanding that an opposer challenging an application seeking registration under Section 2(f) need not prove descriptiveness or lack of inherent distinctiveness, the kind and amount of evidence of acquired distinctiveness required to secure a registration will necessarily vary with the subject matter for which registration is sought, Yamaha, 6 USPQ2d at 1008, and an opposer's submission of evidence that matter is highly descriptive therefore may benefit its attempt to ratchet up the kind and quantity of evidence of acquired distinctiveness required in a particular case."
  • When a proposed mark under Section 2(f) is approved for publication, a presumption exists that the examiner found a prima facie case of acquired distinctiveness.
    • Duramax Marine, LLC v. R.W. Fernstrum & Company, Opposition No. 91119899, (TTAB 2005).
      • As Yamaha explains, when matter proposed for registration under Section 2(f) is approved by the USPTO for publication, there is a presumption that the examiner found a prima facie case of acquired distinctiveness by the applicant for registration. Id., 6 USPQ2d at 1004.
  • The opposer has the initial burden to establish that applicant did not satisfy the acquired distinctiveness requirement of Section 2(f).
    • Duramax Marine, LLC v. R.W. Fernstrum & Company, Opposition No. 91119899, (TTAB 2005).
      • In an opposition, "the opposer has the initial burden to establish prima facie that the applicant did not satisfy the acquired distinctiveness requirement of Section 2(f)." Id., 6 USPQ2d at 1005.
  • After opposer establishes a prima facie case of lack of acquired distinctiveness, the applicant should present additional evidence to overcome opposer's showing.
    • Duramax Marine, LLC v. R.W. Fernstrum & Company, Opposition No. 91119899, (TTAB 2005).
      • "If the opposer does present its prima facie case challenging the sufficiency of applicant's proof of acquired distinctiveness, the applicant may then find it necessary to present additional evidence and argument to rebut or overcome the opposer's showing.." Id.
  • The ultimate burden of persuasion is on the applicant.
    • Duramax Marine, LLC v. R.W. Fernstrum & Company, Opposition No. 91119899, (TTAB 2005).
      • The case at hand having been completely tried, "the only relevant issue . is which party should prevail on the entire record" regarding acquired distinctiveness, and it is therefore unnecessary to discuss the shifting of burdens or whether prima facie cases have been made out by either party. Id., 6 USPQ2d at 1006. However, under this analysis, the "ultimate burden of persuasion" is on the applicant. Id.
  • Applicant's standard to me is preponderance of the evidence.
    • Duramax Marine, LLC v. R.W. Fernstrum & Company, Opposition No. 91119899, (TTAB 2005).
      • Finally, the standard for applicant to meet is preponderance of the evidence, "although logically that standard becomes more difficult to meet as the mark's descriptiveness increases." Id., 6 USPQ2d at 1008.
  • Evidence: Surveys
    • Duramax Marine, LLC v. R.W. Fernstrum & Company, Opposition No. 91119899, (TTAB 2005).
      • In securing the examining attorney's approval of the involved mark for publication, applicant based its claim of acquired distinctiveness solely on a survey. Applicant did not, however, directly introduce the survey into evidence in the opposition; and though opposer referenced it in a notice of reliance, opposer essentially assumed that, because the survey was filed in the application, and the application is automatically part of the record in this opposition, opposer did not have to attach the survey documents to its notice of reliance and mere reference to them was sufficient. Neither the submission of the survey to the examining attorney nor opposer's mere reference to it in a notice of reliance makes it a part of the record. See British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197, 1200 (TTAB 1993), aff'd, 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994), cert. denied, 514 U.S. 1050 (1995).
  • To establish lack of acquired distinctiveness, the opposer often presents evidence that others are using the proposed or similar marks.
    • Duramax Marine, LLC v. R.W. Fernstrum & Company, Opposition No. 91119899, (TTAB 2005).
      • "In most oppositions to registrations under Section 2(f), prevailing opposers have presented some evidence that the mark has not acquired distinctiveness, such as others' use of the proposed mark or similar marks." Yamaha, 6 USPQ2d at 1008-07.
  • In reviewing similar marks, the issue is whether the proposed mark or depictions similar in kind are used in the field, because that is to be considered with respect to how highly descriptive the images are for consumers and, as a result, how much evidence of acquired distinctiveness is necessary to find applicant's proposed mark registrable.
    • Duramax Marine, LLC v. R.W. Fernstrum & Company, Opposition No. 91119899, (TTAB 2005).
      • As for evidence of use of a similar keel cooler depiction, there is only the referenced evidence showing use by opposer of depictions of the DuraCooler design.24
        FOOTNOTE 24 "We note that Yamaha discusses the value of evidence of use of the proposed mark "or similar marks." In stating that we view the use of the DuraCooler depictions to be "similar" to applicant's proposed mark, we do not use that term in the sense that we would if we were discussing likelihood of confusion, and we are, at this point, unconcerned with whether prospective purchasers of a keel cooler or custom manufactured keel cooler could tell them apart. Rather, the issue is whether the proposed mark or depictions similar in kind are used in the field, because that is to be considered in the calculus of how highly descriptive the images are for consumers and, as a result, how much evidence of acquired distinctiveness is necessary to find applicant's proposed mark registrable."
  • Evidence: General statements of how many promotions items were distributed was not compelling because the numbers seem to be vague estimates.
    • Duramax Marine, LLC v. R.W. Fernstrum & Company, Opposition No. 91119899, (TTAB 2005).
      • Another difficulty we have weighing the Sean Fernstrum testimony and exhibits is that the extent of distribution of promotional items, brochures and the like is uncertain. Sean Fernstrum used one word - "thousands" - to indicate how many of various exhibits were produced or distributed....There were said to be "hundreds" of a banker's bag distributed, and "over 10,000" of exhibits 16, 17 and 18. We simply do not find the testimony very compelling, for it appears that the numbers are mere vague estimates.
  • The TTAB strictly construes what constitutes the "same mark" for purposes of establishing acquired distinctiveness based on applicant's prior registrations.
    • Duramax Marine, LLC v. R.W. Fernstrum & Company, Opposition No. 91119899, (TTAB 2005).
      • The final piece of evidence of acquired distinctiveness that we consider is applicant's reliance on its prior registration of the composite globe and keel cooler design, itself registered under Section 2(f). Applicant relies on Trademark Rule 2.41(b), 37 C.F.R. § 2.41(b), but that rule allows that a prior registration of "the same mark" may be accepted as evidence of acquired distinctiveness. What constitutes "the same mark" is rather strictly construed. See Section 1212.04(b) of the Trademark Manual of Examining Procedure (4th ed., April 2005).
  • Finding: Prior registrations were not the "same mark" and only evidence to establish acquired distinctiveness was a survey.
    • Duramax Marine, LLC v. R.W. Fernstrum & Company, Opposition No. 91119899, (TTAB 2005).
      • We do not find applicant's composite globe and keel cooler design mark to constitute the same mark as that which it now seeks to register. We also note that the only evidence of acquired distinctiveness provided to the examining attorney to secure registration of the composite mark was the survey already referenced herein.
  • To register a product design as a mark an applicant must show that the mark has acquired distinctiveness; such marks are not inherently distinctive.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • To register a product design as a mark an applicant must show that the mark has acquired distinctiveness; such marks are not inherently distinctive. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 54 USPQ2d at 1055 et. seq.; Qualitex, 34 USPQ2d 1161 at 1163.
  • Opposer has initial burden to present prima facie evidence or argument from which the TTAB could reasonably conclude that applicant's mark has not acquired distinctiveness.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • In an opposition proceeding, opposer has the initial burden to present prima facie evidence or argument upon which we could reasonably conclude that applicant's mark has not acquired distinctiveness. Yamaha Intl. Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1004-1008 (Fed. Cir. 1988).
  • Applicant's burden of proof is a preponderance of the evidence.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • If opposer does so, the burden of proof shifts to applicant to prove by at least a preponderance of the evidence that the mark has acquired distinctiveness. Id.
  • Evidence: sales volume, advertising expenditures, long use, declarations indicating recognition of the mark, and a survey.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • Applicant relies principally upon the following to establish that its mark has acquired distinctiveness: sales volume, advertising expenditures, long use, declarations indicating recognition of the mark, and a survey.
  • The application file forms part of the record in an opposition, but not the evidence submitted during ex part examination.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • FOOTNOTE 13 "Applicant submitted affidavits and other evidence during the ex parte examination of the applications. Although the application files for the opposed applications become a part of the record in these proceedings, the evidence submitted during ex parte examination is not; we can only consider evidence which has been properly made of record in this proceeding. Kellogg Co. v. Pack'em Enterprises Inc., 14 USPQ2d 1545 (TTAB 1990), aff'd, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1992)."
  • High sales do not necessarily translate into recognition of a product-design mark.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • More importantly, high sales alone are of little probative value in a case such as this; high sales do not necessarily translate into recognition of a product-design mark. Braun Inc. v. Dynamics Corp. of America, 975 F.2d 815, 24 USPQ2d 1121, 1133 (Fed. Cir. 1992); Pingel Enterprise Inc., 46 USPQ2d at 1822.
  • Evidence: Applicant' provided no evidence that it promoted the product's features as applicant's mark; only that the advertising touted the functional advantages of the features.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • Furthermore, applicant has neither alleged nor shown through evidence that applicant has promoted applicant's mark, either the hexagonal base or the butterfly-shaped grip, as a mark in its advertising or otherwise. In fact, the only record evidence of advertising directed to a feature of applicant's mark touts the functional advantages of the hexagonal base, not its trademark significance. In re Caterpillar Inc., 43 USPQ2d at 1341.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • In the absence of any evidence that applicant promoted either its hexagonal base or butterfly-shaped grip as a source indicator for the product, both the sales and advertising evidence have little probative value with regard to acquired distinctiveness. Id.
  • The Trademark Act permits an applicant to rely on a claim of five years of continuous use, however the Patent and Trademark Office has discretion to decline to accept hat prima facie showing in appropriate cases.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • Although the Trademark Act permits an applicant to rely on a claim of "substantially exclusive and continuous use for at least five years" under Trademark Act § 2(f), 15 U.S.C. 1052(f), the Patent and Trademark Office has the discretion to decline to accept that prima facie showing in appropriate types of applications. In re Garcia, 175 USPQ 732 (TTAB 1972).
  • Given the heavy burden in trade dress cases, a mere statement of at least five years use is not generally accepted in applications to register trade dress.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • In fact, a mere statement of at least five years use is not generally accepted in applications to register trade dress; applicants face a heavy burden in such cases. See In re Ennco Display Systems Inc., 56 USPQ2d 1279, 1284 (TTAB 2000) and cases cited therein.
  • Even ten years of substantially exclusive use may not be sufficient to show that a mark has acquired distinctiveness.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • Furthermore, in this instance, applicant claims exclusive use only for the past ten years, a short period relative to the nearly sixty years of use it claims in these applications. All else being equal, even ten years of substantially exclusive use may not be sufficient to show that a mark has acquired distinctiveness. Id. at 1286.
  • Evidence: Consumer surveys are one of the few forms of direct evidence of acquired distinctiveness.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • In its brief applicant acknowledges that consumer surveys are one of the few forms of direct evidence of acquired distinctiveness, citing Yankee Candle Co. v. Bridgewater Candle Co., 259 F.3d 25, 59 USPQ2d 1720, 1730 (1st Cir. 2001) and other cases.
  • Evidence: Survey.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • The survey here is highly similar in many important respects to the survey the Board discussed in British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d at 1201-3...In British Seagull the Board concluded, "The problem we have with the survey is that while the survey does establish that a large portion of interviewees are aware that applicant makes black outboard marine engines, the survey does not provide convincing proof that these people believe that all black engines come from the same source. The interviewees in the survey were presumably not well versed in the legal significance trademark lawyers would attach to the phrase "associate with one particular source." We think it likely that when these consumers responded affirmatively that they associated the color black with one particular company, what they were communicating was that they could recall only one company that made black engines, rather than that they were able to name more than one such company. . . . [T]he affirmative responses would at best support the conclusion that a majority of those surveyed knew that applicant makes black engines. That interviewees could recall that applicant makes black engines is not surprising in light of applicant's sales and advertising, its market share and the length of time that it has sold black engines." Id.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • Applicant's survey here has some of the same and perhaps even more serious defects. Furthermore, even apart from the design defects, the reported results which are most defensible, in fact, show that applicant's mark has not acquired distinctiveness, as opposer alleges.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • The statement of the purpose and the conclusion in applicant's survey report exhibits a conceptual flaw which permeates the survey. To show acquired distinctiveness, it is not sufficient to show that the applicant is the party "most commonly associated with" the product design. Rather, the applicant must show that the product design identifies a single source, that is, that the public has come to expect that every plug having the appearance of applicant's plug to be from applicant, even though it does not bear the RIEKE mark. Petersen Mfg. Co. v. Central Purchasing, Inc., 222 USPQ at 568.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • In this regard, applicant's first question is most relevant, though imperfect, as the Board noted in British Seagull. A question asking "how many different companies make" a product of a particular design does not begin to address whether relevant consumers view the product design as a source indicator.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • Here, 19% is far short of the level necessary to show applicant's mark has acquired distinctiveness, even if the result was otherwise reliable. In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417, 424 (Fed. Cir. 1985)(surveys showing 41% and 50% recognition, submitted together, found sufficient to establish acquired distinctiveness for trade dress); In re Jockey Intl., Inc., 192 USPQ 579, 581 (TTAB 1976)(survey showing 51.6% recognition found sufficient to establish acquired distinctiveness for trade dress).
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • Furthermore, applicant's survey design did not include a control or comparison to evaluate "noise." Cf. Ava Enterprises Inc. v. Audio Boss USA Inc., 77 USPQ2d 1783, 1787 (TTAB 2006).
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • The fact that respondents may have listed applicant first among many companies they believed made the plugs is not meaningful for the purpose of showing acquired distinctiveness.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • Nor are the results from Question 3 relevant to the question at hand. The question itself is defective because it asks respondents to indicate the company they "most associate" with the plug they were shown. The question does not address acquired distinctiveness. Like the survey in British Seagull, the only information these responses are likely to provide is a measure of the general awareness of applicant's product, not any information as to whether respondents view the appearance as indicating a single source. Also, the fact that respondents were aided in this question by being presented with a list of companies, including applicant, taints the results still further. Cf. In re Jockey Intl., Inc., 192 USPQ at 581.
    • American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005).
      • Accordingly, we conclude that applicant's survey is not probative of acquired distinctiveness, and furthermore that the results indicate the absence of acquired distinctiveness, if they indicate anything at all.
  • Case Finding: BOLLYWOOD is not the same as HOLLYWOOD.
    • In re Nielsen Business Media, Inc. Serial No. 77223725 and 77223738 (TTAB 2010)
      • In this case, however, the substitution of the letter "B" for the letter "H" is not an immaterial misspelling or pluralization of previously registered mark, nor is it the addition of a generic term to the previously registered mark. Although Bollywood and Hollywood both connote movie industries, they identify different movie industries that specialize in different types of movies. Consumers will not equate "Bollywood" with "Hollywood."
    • In re Nielsen Business Media, Inc. Serial No. 77223725 and 77223738 (TTAB 2010)
      • The marks at issue are not legal equivalents because they have different meanings and engender different commercial impressions. "Bollywood" is "the extravagantly theatrical Indian motion picture industry." "Hollywood" is "the center of the American motion picture industry located in Hollywood, California."
  • An inconsequential difference does not change the meaning or commercial impression engendered by the marks.
    • In re Nielsen Business Media, Inc. Serial No. 77223725 and 77223738 (TTAB 2010)
      • The substitution of the letter "B" for the letter "H" is not an inconsequential difference between the marks. An inconsequential difference does not change the meaning or commercial impression engendered by the marks as applicant's letter substitution does. See e.g., In re Dial-A-Matress Operating Corp., 57 USPQ2d at 1813 ("1-888-M-A-T-R-E-S-S" is the legal equivalent of "(212) M-A-T-R-E-S" because the difference in spelling between M-A-T-R-E-S-S and M-A-T-R-E-S is immaterial and different area codes are limited by the telephone companies); American Security Bank v. American Security and Trust Company, 571 F.2d 564, 197 USPQ 65, 67 (CCPA 1978) (AMERICAN SECURITY is legally equivalent to AMERICAN SECURITY BANK); Hollowform, Inc. v. Delma AEH, 515 F.2d 1174, 185 USPQ 790, 790 (CCPA 1975) (TOPKAT and TOP KAT are legally identical marks); In re Loew's Theaters, Inc., 223 USPQ 513, 514 n.5 (TTAB 1984), aff'd, 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985) ("We do not, however, agree with the Examining Attorney that a minor difference in the marks (i.e., here, merely that the mark of the existing registration is in plural form) is a proper basis for excluding any consideration of this evidence under the rule [2.41(b)]").
  • An intent-to-use applicant that has used the same mark on related goods or services may file a claim of acquired distinctiveness under Section 2(f) before filing an amendment to allege use or statement of use, if the applicant can establish that, as a result of the applicant's use of the previously registered mark on other goods or services, the mark has become distinctive of the goods or services in the intent-to-use application, and that this previously created distinctiveness will transfer to the goods and services in the intent-to-use application when use in commerce begins.
    • In re Nielsen Business Media, Inc. Serial No. 77223725 and 77223738 (TTAB 2010)
      • However, an intent-to-use applicant that has used the same mark on related goods or services may file a claim of acquired distinctiveness under Section 2(f) before filing an amendment to allege use or statement of use, if the applicant can establish that, as a result of the applicant's use of the previously registered mark on other goods or services, the mark has become distinctive of the goods or services in the intent-to-use application, and that this previously created distinctiveness will transfer to the goods and services in the intent-to-use application when use in commerce begins. In re Dial-A-Matress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001); In re Jack B. Binion, ___ USPQ2d ___ (TTAB December 23, 2009, Serial Nos. 76590702 and 76590729).
  • By seeking registration under Section 2(f), applicant has conceded lack of inherent distinctiveness and must prove acquired distinctiveness.
    • In re Tires, Tires, Tires, Inc., Serial No. 77091459 (TTAB 2009)
      • FOOTNOTE 3 ""[B]y seeking registration under Section 2(f), applicant has conceded lack of inherent distinctiveness and must prove acquired distinctiveness." In re MGA Entertainment, Inc., 84 USPQ2d 1743, 1747 (TTAB 2007)."
  • EVIDENCE: Subtantial evidence, especially in the form of direct evidence from customers, helpful to establish that a highly descriptive mark has become distinctive.
    • In re Tires, Tires, Tires, Inc., Serial No. 77091459 (TTAB 2009)
      • Thus, even if the designation TIRES TIRES TIRES were found to be not generic, but only merely descriptive, given the highly descriptive nature of the designation TIRES TIRES TIRES, we would need substantially more evidence (especially in the form of direct evidence from customers) than what applicant has submitted in order to find that the designation has become distinctive of applicant's services. In re Lens.com Inc., 83 USPQ2d 1444 (TTAB 2007).
  • Evidence: Where applicant provides services other than those identified in the application, the TTAB cannot to determine from general declaration statements how much applicant has spent in advertising the specific services identified in the identification of services.
    • In re Tires, Tires, Tires, Inc., Serial No. 77091459 (TTAB 2009)
      • Fourth, because applicant provides services other than retail tire store services, we are not able to determine from Mr. Bullock's and Ms. Johnson's general statements how much applicant has spent in advertising the specific services identified in the identification of services. (According to applicant's original specimen, applicant provides other services in addition to the retail sales of tires.)
  • Evidence: Declaration statements regarding customer recognition of the designation as the source of applicant's services are not particularly probative because they do not indicate how they know that the public associates the designation as identifying applicant's services.
    • In re Tires, Tires, Tires, Inc., Serial No. 77091459 (TTAB 2009)
      • Fifth, Mr. Bullock's and Ms. Johnson's statements regarding customer recognition of the designation as the source of applicant's services are not particularly probative because they do not indicate how they know that the public associates the designation as identifying applicant's services.
  • Evidence: Deposition unpersuasive where it did not provide any specifics regarding applicant's advertising "through print, outdoor, electronic and direct mail," such as the quantity, frequency and scope of such advertising.
    • In re Tires, Tires, Tires, Inc., Serial No. 77091459 (TTAB 2009)
      • Third, Mr. Bullock does not provide any specifics regarding applicant's advertising "through print, outdoor, electronic and direct mail," such as the quantity, frequency and scope of such advertising.
  • Evidence: Evidence of applicant's advertising and the fact that it now has three service centers in two different cities are not persuasive because we cannot determine from the record whether the advertising and the increase in the number of service centers have had any impact on the recognition of the mark as a source indicator by an appreciable number of purchasers.
    • In re Tires, Tires, Tires, Inc., Serial No. 77091459 (TTAB 2009)
      • Even applicant's supplemental showing, combined with its original showing, does not establish the acquired distinctiveness of applicant's proposed mark. First, applicant's advertising and the fact that it now has three service centers in two different cities are not persuasive because we cannot determine from the record whether the advertising and the increase in the number of service centers have had any impact on the recognition of TIRES TIRES TIRES as a source indicator by an appreciable number of purchasers. See In re Kwik Lok Corp., 217 USPQ 1245 (TTAB 1983).
  • Evidence: The fact that applicant has multiple stores, without any context in the trade, is not so impressive as to elevate applicant's designation to the status of a distinctive mark.
    • In re Tires, Tires, Tires, Inc., Serial No. 77091459 (TTAB 2009)
      • Second, the fact that applicant has three service centers, without any context in the trade, is not so impressive as to elevate applicant's designation to the status of a distinctive mark. See Target Brands Inc. v. Hughes, 85 USPQ2d 1676 (TTAB 2007).
  • In determining whether secondary meaning has been acquired, the TTAB may examine copying, advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, and consumer studies linking the name to a source.
    • In re Tires, Tires, Tires, Inc., Serial No. 77091459 (TTAB 2009)
      • In determining whether secondary meaning has been acquired, the Board may examine copying, advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, and consumer studies (linking the name to a source). Cicena Ltd. v. Columbia Telecomms Group, 900 F.2d 1546, 14 USPQ2d 1401 (Fed. Cir. 1990).
  • Erroneous to infer that copying of product means the trademark has acquired secondary meaning.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • ("[I]t was clearly erroneous to infer from [defendant's] copying of [plaintiff's] product that the mark at issue here [trade dress in packaging] had acquired secondary meaning"); see also Cicena Ltd. v. Columbia Telecommunications Group, 900 F.2d 1546, 14 USPQ2d 1401, 1406 (Fed.Cir. 1990) (defendant's product design was an effort to capitalize on a desirable product feature than to trade on any trademark rights acquired by plaintiff in that design).
  • In relying on Trademark Rule 2.41(b) an applicant is essentially seeking to "tack" the use of the registered mark to its use, or intended use, of the present mark for purposes of transferring distinctiveness to the new mark.
    • In re Nielsen Business Media, Inc. Serial No. 77223725 and 77223738 (TTAB 2010)
      • In relying on this rule, an applicant is essentially seeking to "tack" the use of the registered mark to its use, or intended use, of the present mark for purposes of transferring distinctiveness to the new mark. In re Flex-O-Glass, Inc., 194 USPQ 203, 205-206 (TTAB 1977).
  • It is applicant's burden to establish a prima facie case of acquired distinctiveness.
    • In re Tires, Tires, Tires, Inc., Serial No. 77091459 (TTAB 2009)
      • It is applicant's burden to establish a prima facie case of acquired distinctiveness. See Yamaha International Corp. v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988).
  • More evidence is required where a mark is so highly descriptive that purchasers seeing the matter in relation to the named goods or services would be unlikely to believe that it indicates source in any one entity.
    • In re Tires, Tires, Tires, Inc., Serial No. 77091459 (TTAB 2009)
      • Typically, more evidence is required where a mark is so highly descriptive that purchasers seeing the matter in relation to the named goods or services would be unlikely to believe that it indicates source in any one entity. See, e.g., In re Bongrain Int'l Corp., 894 F.2d 1316, 13 USPQ2d 1727, 1727 n. 4 (Fed. Cir. 1990), citing Yamaha Int'l, 6 USPQ2d at 1008 ("the greater the degree of descriptiveness the term has, the heavier the burden to prove it has attained secondary meaning").
  • No single factor is determinative for establishing acquired distinctiveness.
    • In re Tires, Tires, Tires, Inc., Serial No. 77091459 (TTAB 2009)
      • On this list, no single factor is determinative.
  • Section 2(f) is limited by its terms to "a mark used by the applicant." A claim of distinctiveness under Section 2(f) is normally not filed in a Section 1(b) application before the applicant files an amendment to allege use or a statement of use, because a claim of acquired distinctiveness, by definition, requires prior use.
    • In re Nielsen Business Media, Inc. Serial No. 77223725 and 77223738 (TTAB 2010)
      • Section 2(f) is limited by its terms to "a mark used by the applicant." A claim of distinctiveness under Section 2(f) is normally not filed in a Section 1(b) application before the applicant files an amendment to allege use or a statement of use, because a claim of acquired distinctiveness, by definition, requires prior use.
  • The amount and character of evidence required to establish acquired distinctiveness depends on the facts of each case and particularly on the nature of the mark sought to be registered.
    • In re Tires, Tires, Tires, Inc., Serial No. 77091459 (TTAB 2009)
      • The amount and character of evidence required to establish acquired distinctiveness depends on the facts of each case and particularly on the nature of the mark sought to be registered. See Roux Laboratories, Inc. v. Clairol Inc., 427 F.2d 823, 166 USPQ 34 (CCPA 1970); In re Hehr Mfg. Co., 279 F.2d 526, 126 USPQ 381 (CCPA 1960); and In re Gammon Reel, Inc., 227 USPQ 729 (TTAB 1985).
  • The analysis used to determine whether the mark at issue is "the same mark" as its previously registered mark, for purposes of this rule, is the analysis used in tacking cases (i.e., whether the marks are legal equivalents).
    • In re Nielsen Business Media, Inc. Serial No. 77223725 and 77223738 (TTAB 2010)
      • Thus, the analysis used to determine whether the mark at issue is "the same mark" as its previously registered mark, for purposes of this rule, is the analysis used in tacking cases (i.e., whether the marks are legal equivalents). In re Dial-A-Matress Operating Corp., 57 USPQ2d at 1812; Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17 USPQ2d 1866, 1868 (Fed. Cir. 1991).
  • The fact that an applicant has used its mark for a long time does not necessarily establish that the mark has acquired distinctiveness.
    • In re Tires, Tires, Tires, Inc., Serial No. 77091459 (TTAB 2009)
      • It has long been held that the fact that an applicant has used its mark for a long time does not necessarily establish that the mark has acquired distinctiveness. In re The Interstate Folding Box Co., 167 USPQ 241, 245 (TTAB 1970) ("We are not persuaded by this record that the term 'INNER-LINED' has become distinctive of applicant's goods and does in fact serve as an indication of origin for such goods. It may well be that applicant, by reason of its long and continuous use, has acquired a de facto secondary meaning in the term 'INNER-LINED' in the sense that some or even many people have come to associate 'INNER-LINED' with applicant; but this falls far short of establishing a propriety or a legal or dejure right therein necessary to support registration").
  • The standard of legal equivalence used in reviewing efforts to 'tack' the prior use of one mark onto that of another is higher than that used in evaluating two competing marks; even if the two marks are confusingly similar, they still may not be legal equivalents. The later mark should not materially differ from or alter the character of the mark attempted to be tacked.
    • In re Nielsen Business Media, Inc. Serial No. 77223725 and 77223738 (TTAB 2010)
      • "[T]he standard of legal equivalence used in reviewing efforts to 'tack' the prior use of one mark onto that of another is higher than that used in evaluating two competing marks. . [E]ven if the two marks are confusingly similar, they still may not be legal equivalents. . [T]he later mark should not materially differ from or alter the character of the mark attempted to be 'tacked.'" Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 17 USPQ2d at 1868.
  • Through long use, large sales and advertising, it may be assumed that some persons might recognize a mark as designating origin, but that alone is not enough.
    • In re Tires, Tires, Tires, Inc., Serial No. 77091459 (TTAB 2009)
      • As the court said in In re Andes Candies Inc., 478 F.2d 1264, 178 USPQ 156, 158 (CCPA 1973), "[b]ecause of long use, large sales and advertising, it may be assumed that some persons might recognize a mark as designating origin, but that alone is not enough."
  • To meet the legal equivalents test, the marks must be indistinguishable from one another or create the same, continuing commercial impression such that the consumer would consider both marks as the same mark.
    • In re Nielsen Business Media, Inc. Serial No. 77223725 and 77223738 (TTAB 2010)
      • To meet the legal equivalents test, the marks must be indistinguishable from one another or create the same, continuing commercial impression such that the consumer would consider both marks as the same mark. In re Dial-AMatress Operating Corp., 57 USPQ2d at 1812; Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 17 USPQ2d at 1868.
  • To support registration of a highly descriptive mark on the Principal Register a showing considerably stronger than a prima facie statement of five years' substantially exclusive use is required.
    • In re Tires, Tires, Tires, Inc., Serial No. 77091459 (TTAB 2009)
      • "Applicant initially claimed acquired distinctiveness based on the declaration of Daniel J. Northdurft, applicant's President, who stated that TIRES TIRES TIRES had become distinctive of the services through applicant's substantially exclusive and continuous use in commerce for at least five years; that applicant has been using "TIRES, TIRES, TIRES" in commerce for a period of over twenty years; and that consumers associate "TIRES, TIRES, TIRES" with applicant.... Because at best applicant's mark is highly descriptive, the facts asserted in Mr. Northdurft's original declaration are not persuasive. In re Gray Inc., 3 USPQ2d 1558, 1559 (TTAB 1987) ("[T]o support registration of PROTECTIVE EQUIPMENT [for burglar and fire alarms and burglar and fire alarm surveillance services] on the Principal Register a showing considerably stronger than a prima facie statement of five years' substantially exclusive use is required")."
  • Trademark Rule 2.41(b) provides that ownership of a registration of "the same mark" on the Principal Register may be accepted as prima facie evidence of acquired distinctiveness.
    • In re Nielsen Business Media, Inc. Serial No. 77223725 and 77223738 (TTAB 2010)
      • Trademark Rule 2.41(b) provides that ownership of a registration of "the same mark" on the Principal Register may be accepted as prima facie evidence of acquired distinctiveness.
  • Whether applicant's mark has acquired distinctiveness is not controlling on the issue of likelihood of confusion.
    • In re SL&E Training Stable, Inc., Serial No. 78806669 (TTAB 2008)
      • FOOTNOTE 7 "Whether applicant's mark has acquired distinctiveness is not controlling on the issue of likelihood of confusion. In re Bissett-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973)."
  • Evidence that only applicant misspells a term merely demonstrates that they are the only company misspelling the term, not that consumers view the misspelling as applicant's source-identifying trademark.
    • In re Greenliant Systems, Ltd., Serial No. 78724139 (TTAB 2010)
      • "Applicant asserts that NANDRIVE has acquired distinctiveness on the basis of [applicant's] sole use of the mark on its goods and that consumers identify Applicant as the sole source of the goods on which the mark is used."18 This evidence merely demonstrates that applicant is the only company that misspells the term NAND drive, not that the relevant consumers of such products have come to view the designation NANDRIVE as applicant's source-identifying trademark. The issue here is the achievement of distinctiveness, and the evidence falls far short of establishing this.
  • A mark is the legal equivalent of another if it creates the same, continuing commercial impression such that the consumer would consider them both the same mark.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • A proposed mark is the "same mark as a previously registered mark for the purpose of 37 C.F.R. §2.41(b)" if it is the "legal equivalent" of such a mark. A mark is the legal equivalent of another if it creates the same, continuing commercial impression such that the consumer would consider them both the same mark. In re Dial-A-Mattress Operating Corp., 57 USPQ2d at 1812.
  • Evidence: Where a mark is highly descriptive, significant evidence, especially direct evidence from customers, may be needed to show that the term has become distinctive of applicant's goods.
    • In re Greenliant Systems, Ltd., Serial No. 78724139 (TTAB 2010)
      • Accordingly, even if the designation NANDRIVE were found to be not generic, but merely descriptive, given the highly descriptive nature of the designation NANDRIVE, we would need to see a great deal more evidence (especially in the form of direct evidence from customers) than what applicant has submitted in order to find that the designation has become distinctive of applicant's goods.
  • Evidence: Examples of acceptable direct and circumstantial evidence.
    • In re Brouwerij Bosteels, Serial No. 77357895 (TTAB 2010)
      • Acquired distinctiveness may be shown by direct evidence and/or circumstantial evidence. Direct evidence, which includes actual testimony, declarations or surveys of consumers as to their state of mind, is not of record in this case. Circumstantial evidence is evidence from which consumer association might be inferred, such as years of use, extensive sales and advertising, and any similar evidence showing wide exposure of the mark to consumers. In re Ennco Display Systems Inc., 56 USPQ2d 1279, 1283 (TTAB 1983). See also J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, Sections 15:30; 15:62 (4th ed. updated 2010).
  • Case Finding: Insufficient evidence to show acquired distinctiveness of the family name "Binion."
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • All of the evidence submitted by applicant shows that purchasers would regard "Binion" or "Binion's" as a surname; it is the surname of Jack, as well as Benny, Jack's father, and Becky, Jack's sister. The record is devoid of any use of the term "Binion" or "Binion's" as a trademark or service mark, let alone use to an extent sufficient to show acquired distinctiveness. Simply put, the renown of Jack Binion and the Binion family name in the gaming industry does not establish that "Binion" is no longer perceived as a surname by purchasers, but rather as a service mark for services emanating from applicant.
  • TTAB may consider may evidence of distinctiveness after the filing date of the trademark application.
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008 (TTAB 2008)
      • Also, contrary to opposer's suggestion, we may consider evidence of distinctiveness after the filing date of the application through the course of this proceeding. See McCormick & Co. v. Summers, 354 F.2d 668, 148 USPQ 272 (CCPA 1966); Harsco Corp. v. Electrical Sciences, Inc., 9 USPQ2d 1570 (TTAB 1988); and Kaiser Aluminum & Chemical Corp. v. American Meter Co., 153 USPQ 419 (TTAB 1967).
  • The TTAB may consider the issue of acquired distinctiveness raised in the alternative where the examining attorney did not treat, nor did applicant intend his claim of acquired distinctiveness as a concession that the matter sought to be registered is not inherently distinctive.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • Although applicant did not originally couch his Section 2(f) claim in the alternative when he continued to argue against the surname refusal, the examination history reveals that applicant and the examining attorney essentially treated the claim as an alternative one. That is, the examining attorney did not treat, nor did applicant intend his claim of acquired distinctiveness as a concession that the matter sought to be registered is not inherently distinctive. See TMEP §1212.02(c) (6th ed. rev. October 2009). Because of the way the issue was handled by applicant and the examining attorney, we will consider the claim of acquired distinctiveness to be one made in the alternative. Cf. TMEP §1212.02(b) (6th ed. rev. October 2009).
  • An applicant can avoid the admission that its mark is not inherently distinctive if it makes the claim of acquired distinctiveness in the alternative and files an appeal of the refusal on the basis that the mark is not inherently distinctive.
    • In re Thomas Nelson, Inc., Serial No. 76681269 (TTAB 2011)
      • An applicant can avoid the admission that its mark is not inherently distinctive if it makes the claim of acquired distinctiveness in the alternative and files an appeal of the refusal on the basis that the mark is not inherently distinctive (e.g., the mark is merely descriptive).
  • A product design, which is not inherently distinctive, is only registerable upon a showing of acquired distinctiveness.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • As indicated above, because the subject matter sought to be registered is a product design, it is not inherently distinctive, and it is registrable only with a showing of acquired distinctiveness. Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 54 USPQ2d at 1067.
  • Applicant faces a heavy burden to establish the distinctiveness of a product design.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • An applicant faces a heavy burden in establishing the distinctiveness of a product design. Yamaha Int'l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 1581, 6 USPQ2d 1001, 1008 (Fed. Cir. 1988); In re Ennco Display Systems Inc., 56 USPQ2d 1279, 1284 (TTAB 2000).
  • Where the proposed mark is a product design, evidence of copying of copying of the design may not mean the mark has acquired distinctiveness.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • Applicant asserts that because its motorcycle stand is the target of intentional copying, we may draw an inference that his product design has acquired distinctiveness.33 However, we decline to draw such an inference because the proposed mark is a product design. Where the proposed mark is a product design, the copier may be attempting to exploit a desirable product feature, rather than seeking to confuse customers as to the source of the product. evidence of acquired distinctiveness, the TTAB analyzes the degree of descriptiveness of the mark because it has a bearing on the amount of evidence required to show acquired distinctiveness.
  • As an initial matter, before considering the sufficiency of the evidence of acquired distinctiveness, the TTAB analyzes the degree of descriptiveness of the mark because it has a bearing on the amount of evidence required to show acquired distinctiveness.
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008 (TTAB 2008)
      • As an initial matter, before considering the sufficiency of applicant's evidence of acquired distinctiveness, we analyze the degree of descriptiveness of GRAND CANYON WEST because that fact will have a bearing on the amount of evidence required to show acquired distinctiveness. Yamaha Intl. Corp. v. Hoshino Gakki Co. Ltd., 6 USPQ2d at 1008 (the greater the degree of descriptiveness, the heavier the burden in proving that the mark has acquired distinctiveness). See also Target Brands Inc. v. Hughes, 85 USPQ2d 1676 (TTAB 2007).
  • Burden of Proof: Applicant has the burden to establish a prima facie case of acquired distinctiveness.
    • In re Greenliant Systems, Ltd., Serial No. 78724139 (TTAB 2010)
      • As to acquired distinctiveness, applicant has the burden to establish a prima facie case of acquired distinctiveness. See Yamaha International Corp. v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988). claim to substantially exclusive use or otherwise impairs applicant's claim of acquired distinctiveness.
  • The opposer's own use of a mark does not negate applicant's claim to substantially exclusive use or otherwise impairs applicant's claim of acquired distinctiveness.
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008 (TTAB 2008)
      • At the outset, we reject opposer's argument that opposer's own use either negates applicant's claim to substantially exclusive use or otherwise impairs applicant's claim of acquired distinctiveness. See L.D. Kichler Co. v. Davoil Inc., 52 USPQ2d 1307 (Fed. Cir. 1999).
  • It may be the better practice for the Examiner to review applicant's prior registrations to determine whether applicant had previously conceded, or that the mark was found to be, merely descriptive or had acquired distinctiveness.
    • In re Thomas Nelson, Inc., Serial No. 76681269 (TTAB 2011)
      • During the prosecution of this application, the better practice would have been for the examining attorney to have reviewed the files for applicant's prior registrations to determine whether applicant had previously conceded that NKJV is merely descriptive or, perhaps had its mark found descriptive on appeal. At that point, the descriptiveness refusal might have been obviated because applicant could not have in good faith continued to maintain its position that NKJV was not merely descriptive. Furthermore, the examining attorney would have known the particulars of the Section 2(f) claims in the prior registrations. In this regard, because the USPTO has already recognized that the letters NKJV when used in connection with bibles had acquired distinctiveness, that question, too, might have been resolved.
  • Discussion of previous cases regarding various lengths of time where a mark was, or was not, found to have acquired distinctiveness.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • First, applicant's 16 years of use is substantial but not necessarily conclusive or persuasive considering that its mark is a product configuration. See In re R.M. Smith, Inc., 734 F.2d 1482, 222 USPQ 1, 3 (Fed. Cir. 1984) (eight years use was not sufficient evidence of acquired distinctiveness for the configuration of pistol grip water nozzle for water nozzles); In re ic! berlin brillen GmbH, 85 USPQ2d 2021, 2023-2024 (TTAB 2008)(five years of use is not sufficient to establish acquired distinctiveness for a configuration of an earpiece for frames for sunglasses and spectacles); In re Ennco Display Systems Inc., 56 USPQ2d 1279, 1286 (TTAB 2000)(applicant's use of the product designs ranging from seven to 17 years is insufficient to bestow acquired distinctiveness); TMEP §1212.05(a) (7th ed. 2010) ("For matter that is not inherently distinctive because of its nature (e.g., nondistinctive product container shapes, overall color of a product, mere ornamentation, and sounds for goods that make the sound in their normal course of operation), evidence of five years' use is not sufficient to show acquired distinctiveness. In such a case, actual evidence that the mark is perceived as a mark for the relevant goods or services would be required to establish distinctiveness").
  • Evidence: Statements from retailers, without regard to the perceptions of the ultimate consumers, have very little persuasive value because, while retailers know the source of the products they are buying, that knowledge is not transferable to end customers.
    • In re Thomas Nelson, Inc., Serial No. 76681269 (TTAB 2011)
      • FOOTNOTE 19 "Statements from retailers, without regard to the perceptions of the ultimate consumers, have very little persuasive value because, while retailers know the source of the products they are buying, that knowledge is not transferable to end customers. In re Semel, 189 USPQ 285, 288 (TTAB 1975); compare In re ic! Berlin GmbH, 85 USPQ2d 2021, 2024 (TTAB 2008) (with respect to acquired distinctiveness for an earpiece for eyeglass frames, the Board gave some weight to declarations by opticians who stated that their customers "ask for applicant's eyewear by the earpiece design")."
  • A party's offer to provide "additional evidence if necessary" is insufficient in that it is the responsibility of the party, not the examiner, to provide a complete record of sufficient evidence for a claim of acquired distinctiveness.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • FOOTNOTE 32 "We note that throughout the prosecution of this application, applicant's counsel has made a continuing offer to provide additional "surveys" and declarations if required or necessary. However, "[t]he examining attorney should not specify the kind or the amount of evidence sufficient to establish that a mark has acquired distinctiveness. It is the responsibility of the applicant to submit evidence to establish that the mark has acquired distinctiveness." TMEP § 1212(g) (7th ed. 2010). Moreover, applicant has a responsibility to make sure that the record is complete prior to filing its notice of appeal. Trademark Rule 2.142(d)."
  • Evidence: Applicant's assertion that its product is an industry leader should be supported by evidence, such as substantial sales, from which the TTAB may infer the existence of acquired distinctiveness.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • Furthermore, applicant's assertion that his product is an industry leader is not supported by evidence of substantial sales from which we may infer the existence of acquired distinctiveness. In re Hollywood Brands, Inc., 214 F.2d 139, 102 USPQ 294, 295-296 (CCPA 1954) (36 years of use with substantial advertising and sales supported the finding of acquired distinctiveness); In re Crystal Geyser Water Co., 85 USPQ2d 1374, 1376 (TTAB 2007) ("Evidence of acquired distinctiveness can include the length of use of the mark, advertising expenditures, sales, survey evidence, and affidavits asserting source-indicating recognition"). In fact, applicant declined to provide sales figures or his number of customers on the ground that they are confidential business information. Applicant did not provide any information regarding his market share.
  • Where the alleged mark is not inherently distinctive, the mark should be evaluated as to whether it has acquired distinctiveness.
    • In re Brouwerij Bosteels, Serial No. 77357895 (TTAB 2010)
      • Having found that the alleged mark is not inherently distinctive, we next consider whether it has acquired distinctiveness as a source indicator for applicant's goods.
  • An intent-to-use applicant that has used the same mark on related goods or services may file a claim of acquired distinctiveness under Section 2(f) before filing an amendment to allege use or statement of use, if the applicant can establish that, as a result of the applicant's use of the mark on other goods or services, the mark has become distinctive of the goods or services in the intent-to-use application, and that this previously created distinctiveness will transfer to the goods and services in the intent-to-use application when use in commerce begins.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • However, an intent-to-use applicant that has used the same mark on related goods or services may file a claim of acquired distinctiveness under Section 2(f) before filing an amendment to allege use or statement of use, if the applicant can establish that, as a result of the applicant's use of the mark on other goods or services, the mark has become distinctive of the goods or services in the intent-to-use application, and that this previously created distinctiveness will transfer to the goods and services in the intent-to-use application when use in commerce begins. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001).
  • The lesser the degree of distinctiveness, the heavier the burden to prove trade dress in the nature of product packaging has acquired distinctiveness.
    • In re Brouwerij Bosteels, Serial No. 77357895 (TTAB 2010)
      • However, as is the case with highly descriptive terms which may nevertheless acquire distinctiveness, we note that the lesser the degree of distinctiveness, the heavier the burden to prove trade dress in the nature of product packaging has acquired distinctiveness. Cf. Yamaha International Corp. v. Hoshino Gakki Co., Ltd., 6 USPQ2d at 1008.
  • If an applicant initially seeks registration based on acquired distinctiveness or amends its application to seek registration based on acquired distinctiveness without expressly reserving its right to argue that its mark is inherently distinctive, registration under Section 2(f) is an admission that the mark is not inherently distinctive.
    • In re Thomas Nelson, Inc., Serial No. 76681269 (TTAB 2011)
      • If an applicant initially seeks registration based on acquired distinctiveness or amends its application to seek registration based on acquired distinctiveness without expressly reserving its right to argue that its mark is inherently distinctive, registration under Section 2(f) is an admission that the mark is not inherently distinctive. Yamaha International Corporation v. Hoshino Gakki Co. Ltd., 6 USPQ2d 1001, 1005 (Fed. Cir. 1988); Kasco Corp. v. Southern Saw Services, Inc., 27 USPQ2d 1501, 1506 n.7 (TTAB 1993) ("By amending (without) reservation its application to claim that its green wrapper had become distinctive of its saw blades, [defendant] conceded that the green wrapper was not inherently distinctive of its saw blades . when [defendant] amended its application to claim the benefits of Section 2(f), it did not reserve its right to argue in the alternative that its green wrapper was, from the outset, inherently distinctive"); see also TMEP §1212.02(c) (7th ed. 2010). based on a claim of acquired distinctiveness under Section 2(f), the TTAB could treat the lack of distinctiveness as an established fact and forgo any discussion on that point
  • Where applicant amended the application to seek registration based on a claim of acquired distinctiveness under Section 2(f), the TTAB could treat the lack of distinctiveness as an established fact and forgo any discussion on that point
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008 (TTAB 2008)
      • In a case such as this, where applicant amended the application to seek registration based on a claim of acquired distinctiveness under Section 2(f), we could treat the lack of distinctiveness as an established fact and forgo any discussion on that point. See, e.g., Target Brands Inc. v. Hughes, 85 USPQ2d 1676, 1679-80 (TTAB 2007).
  • It could be said that a party made an attempt to distinguish its product by conspicuously using its own mark.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • In both examples, the "copier" has identified its product with a word mark (i.e., HEINDEL and POWER STANDS) that is different than applicant's PIT BULL word mark. See Aromatique, Inc. v. Gold Seal, 28 F.3d 863, 31 USPQ2d 1481, 1486 (8th Cir. 1994) (because defendant conspicuously used its own word mark, it made an attempt to distinguish its product.)
  • A party may tack the use of the registered mark to its use of the contested mark for purposes of transferring distinctiveness to the new mark.
    • In re Brouwerij Bosteels, Serial No. 77357895 (TTAB 2010)
      • In relying on this rule, an applicant is essentially seeking to tack the use of the registered mark to its use of the present mark for purposes of transferring distinctiveness to the new mark. See In re Flex-O-Glass, Inc., 194 USPQ 203 (TTAB 1977).
  • Evidence: Discussion of the TTAB not considering "consumer surveys" as survey evidence.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • In this case, applicant's survey evidence consisted only of 23 survey questionnaires completed by the survey respondents themselves. Apparently, applicant and/or applicant's counsel distributed the survey questionnaires to an unknown number of people at motorsports events who filled them out at their leisure and subsequently mailed them back to applicant's counsel. Suffice it to say that there is no basis on which to conclude that the survey is based on scientifically valid principles. While we will not consider the "consumer surveys" as survey evidence, we will consider them as declarations purportedly asserting recognition of the proposed mark as a source indicator.
  • CASE FINDING: 25 years of use was insufficient to prove acquired distinctiveness of a glass and stand for serving beer.
    • In re Brouwerij Bosteels, Serial No. 77357895 (TTAB 2010)
      • In this case, the record shows that other entities market as goods in trade Yard, Half Yard, or Foot of Ale glasses and stands which are highly similar to applicant's alleged mark. Thus, consumers who order applicant's beer in a restaurant, bar, pub or the like would not view applicant's alleged mark as unique or particularly unusual. We agree with the examining attorney that given the nature of the alleged mark, i.e., it is highly similar to a specific type of glass and stand for serving and holding beer, a claim of twenty-five years of use is insufficient to prove acquired distinctiveness, especially without evidence of the extent of such use.
  • CASE FINDING:The mark NKJV mark used in connection with bibles has acquired distinctiveness.
    • In re Thomas Nelson, Inc., Serial No. 76681269 (TTAB 2011)
      • In view of the evidence of acquired distinctiveness submitted by applicant (i.e., substantially exclusive and continuous use over a long period of time, substantial sales and advertising expenditures) as well as applicant's two previously registered marks, to hold that the initials NKJV has not acquired distinctiveness when the same term is the subject of two incontestable registrations under the provisions of Section 2(f) appears illogical on its face. Thus, under the facts before us, we find that the evidence of record is sufficient to support the finding that the mark NKJV mark used in connection with bibles has acquired distinctiveness.
  • Evidence: Applicant's website may be insufficient to establish acquired distinctiveness where it cannot be determined that a significant number of people have viewed the mark at the website.
    • In re Brouwerij Bosteels, Serial No. 77357895 (TTAB 2010)
      • Insofar as applicant's website is concerned, although the alleged mark is displayed thereon, there is no information with respect to the number of visitors to the website. In the absence thereof, we are unable to determine whether a significant number of people in the United States have even viewed the alleged mark at the website.
  • Case Finding: The record contains little direct or circumstantial evidence that the relevant classes of purchasers of applicant's goods view NANDRIVE as a distinctive source indicator for applicant's goods.
    • In re Greenliant Systems, Ltd., Serial No. 78724139 (TTAB 2010)
      • Notably, the record contains little direct or circumstantial evidence that the relevant classes of purchasers of applicant's goods view NANDRIVE as a distinctive source indicator for applicant's goods. For example, applicant has used the mark for only a relatively short time (i.e., since February 27, 2007) and applicant has not submitted any evidence regarding the extent of its sales, advertising, market share, or renown in the field.
  • If an appeal in the alternative results in a finding of descriptiveness and also the presence of acquired distinctiveness, then descriptiveness, though not conceded by the applicant, would be present.
    • In re Thomas Nelson, Inc., Serial No. 76681269 (TTAB 2011)
      • Of course, if an appeal in the alternative results in a finding of descriptiveness and also the presence of acquired distinctiveness, then descriptiveness, though not conceded by the applicant, would be present.
  • Second, applicant must establish, through submission of relevant evidence rather than mere conjecture, a sufficient relationship between the goods and/or services in connection with which the mark has acquired distinctiveness and the goods and/or services recited in the intent-to-use application to warrant the conclusion that the previously created distinctiveness will transfer to the goods and/or services in the application upon use.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • Elements of acquired distinctiveness of an intent-to-use mark: Second, applicant must establish, through submission of relevant evidence rather than mere conjecture, a sufficient relationship between the goods and/or services in connection with which the mark has acquired distinctiveness and the goods and/or services recited in the intent-to-use application to warrant the conclusion that the previously created distinctiveness will transfer to the goods and/or services in the application upon use.
  • A claim of acquired distinctiveness is normally not made concerning an intent-to-use trademark application.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • Section 2(f) is limited by its terms to "a mark used by the applicant." A claim of distinctiveness under Section 2(f) is normally not filed in a Section 1(b) application before the applicant files an amendment to allege use or a statement of use, because a claim of acquired distinctiveness, by definition, requires prior use.
  • The greater the degree of descriptiveness, the greater the evidentiary burden on the user to establish acquired distinctiveness.
    • In re Greenliant Systems, Ltd., Serial No. 78724139 (TTAB 2010)
      • That is to say, the greater the degree of descriptiveness, the greater the evidentiary burden on the user to establish acquired distinctiveness. See In re Bongrain International Corp., 894 F.2d 1316, 1317 n.4, 13 USPQ2d 1727, 1728 n.4 (Fed. Cir. 1990); Yamaha Int'l. Corp. v. Hoshino Gakki Co., 6 USPQ2d at 1005.
  • Elements of acquired distinctiveness of an intent-to-use mark: First, applicant must establish, through the appropriate submission, the acquired distinctiveness of the same mark in connection with specified other goods and/or services in connection with which the mark is in use in commerce.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • The Board has set forth the following requirements for showing that a mark in an intent-to-use application has acquired distinctiveness: First, applicant must establish, through the appropriate submission, the acquired distinctiveness of the same mark in connection with specified other goods and/or services in connection with which the mark is in use in commerce.
  • Burden of Proof: The burden of proving acquired distinctiveness in an ex parte proceeding rests with applicant.
    • In re Brouwerij Bosteels, Serial No. 77357895 (TTAB 2010)
      • The burden of proving acquired distinctiveness in an ex parte proceeding rests with applicant. Yamaha Int'l. Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988).
  • The circumstances of the particular case dictate the type and amount of evidence which is sufficient to establish that the mark has acquired distinctiveness.
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008 (TTAB 2008)
      • The circumstances of the particular case dictate the type and amount of evidence which is sufficient to establish that the mark has acquired distinctiveness. Yamaha Intl. Corp. v. Hoshino Gakki Co. Ltd., 6 USPQ2d at 1008.
  • Applicant faces a heavy burden to establish that a highly descriptive mark has acquired distinctiveness.
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008 (TTAB 2008)
      • The fact that the GRAND CANYON is well known and the GRAND CANYON is the focus of the identified services is paramount here. As we noted, the addition of WEST does nothing to alter the essential character of the overall mark. Accordingly, we conclude that GRAND CANYON WEST is highly descriptive of the identified services. Consequently, applicant faces a heavy burden in establishing acquired distinctiveness for the mark.
  • Applicant cannot tack the use of the registered mark to its use of the alleged mark for purposes of transferring distinctiveness to such alleged mark where the two marks are not legal equivalents.
    • In re Brouwerij Bosteels, Serial No. 77357895 (TTAB 2010)
      • The previously registered mark is a two-dimensional design in the nature of a logo. Applicant itself describes the mark as "a representation of a uniquely shaped glass with a wide mouth, a thin neck and a bulbous bottom in a holder." (underlining added) In contrast, the alleged mark that is the subject of the present application consists of a three-dimensional beer glass and stand, and includes wording and scrollwork not found in the previously registered mark. Thus, applicant is not entitled to tack the use of the registered mark to its use of the alleged mark herein for purposes of transferring distinctiveness to such alleged mark. See e.g., In re Nielsen Business Media, Inc., 93 USPQ2d at 1547 [THE BOLLYWOOD REPORTER and THE HOLLYWOOD REPORTER "are not legal equivalents because they have different meanings and engender different commercial impressions."]
  • Evidence: Sales growth or status as an industry leader demonstrates popularity or commercial success, but not necessarily that the purchasing public recognizes the product design as a source indicator.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • The product's alleged position as an industry leader demonstrates the popularity or commercial success of the motorcycle stand, but it does not demonstrate that the purchasing public recognizes the product design as a source indicator. See In re Bongrain International (American) Corp., 894 F.2d 1316, 13 USPQ2d 1727, 1729 (Fed.Cir. 1990) (growth in sales may be indicative of the popularity of the product itself rather than recognition of a term or design as denoting origin); Goodyear Tire and Rubber Co. v. Interco Tire Corp. (US Pats), 49 USPQ2d 1705, 1720 (TTAB 1998).
  • The purpose behind Section 2(e)(4) is to keep surnames available for people who wish to use their own surnames in their businesses, in the same manner that merely descriptive terms are prohibited from registration because competitors should be able to use a descriptive term to describe their own goods or services.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • The purpose behind Section 2(e)(4) is to keep surnames available for people who wish to use their own surnames in their businesses, in the same manner that merely descriptive terms are prohibited from registration because competitors should be able to use a descriptive term to describe their own goods or services.
  • Case Finding: Applicant failed to establish acquired distinctiveness for intent-to-use mark BINION.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • The services involved herein are identical or closely related to the services recited in the previously issued registrations; thus, the applicant has met the second requirement for showing that a mark in an intent-to-use application has acquired distinctiveness. The problem for applicant, however, is that he has failed to meet the first requirement to show that his applied-for marks have acquired distinctiveness, namely that the involved marks BINION and BINION'S are the "same" marks as the previously registered marks JACK BINION and JACK BINION'S. See TMEP §1212.04(b) (6th ed., rev. 1, 2009).
  • The sufficiency of the evidence to prove acquired distinctiveness should be evaluated in light of the level of descriptiveness of the mark and the goods/services.
    • In re Greenliant Systems, Ltd., Serial No. 78724139 (TTAB 2010)
      • The sufficiency of the evidence offered to prove acquired distinctiveness should be evaluated in light of the nature of the designation. Highly descriptive terms, for example, are less likely to be perceived as trademarks and more likely to be useful to competing sellers than are less descriptive terms. More substantial evidence of acquired distinctiveness thus will ordinarily be required to establish that such terms truly function as source-indicators.
  • There is no requirement for a survey, or any other specific type of evidence, to show acquired distinctiveness.
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008 (TTAB 2008)
      • Evidence: There is no "requirement" for a survey, or any other specific type of evidence, to show acquired distinctiveness. Yamaha Intl. Corp. v. Hoshino Gakki Co. Ltd., 6 USPQ2d at 1008.
  • There is no fixed rule for the amount of proof necessary to demonstrate acquired distinctiveness.
    • In re Brouwerij Bosteels, Serial No. 77357895 (TTAB 2010)
      • There is no fixed rule for the amount of proof necessary to demonstrate acquired distinctiveness.
  • Generally, a statement of five years' use will be sufficient to establish acquired distinctiveness of a surname.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • This purpose is served until such time as the person has used his/her surname as a trademark or service mark to an extent sufficient to establish acquired distinctiveness. Generally, a statement of five years' use will be sufficient to establish acquired distinctiveness. TMEP §1212.05(a) (6th ed., rev. 1, 2009).
  • The analysis used to determine whether applicant's mark is the same mark as its previously registered mark, is the analysis used in tacking cases, i.e., whether the marks are legal equivalents.
    • In re Brouwerij Bosteels, Serial No. 77357895 (TTAB 2010)
      • Thus, the analysis used to determine whether applicant's present mark is "the same mark" as its previously registered mark, for purposes of the rule, is the analysis used in tacking cases, i.e., whether the marks are legal equivalents. See Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17 USPQ2d 1866, 1868 (Fed. Cir. 1991). See also In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001) and In re Nielsen Business Media Inc., 93 USPQ2d 1545 (TTAB 2010).
  • To meet the legal equivalents test, the marks must be indistinguishable from one another or create the same continuing commercial impression such that the consumer would consider both as the same mark.
    • In re Brouwerij Bosteels, Serial No. 77357895 (TTAB 2010)
      • To meet the legal equivalents test, the marks must be indistinguishable from one another or create the same continuing commercial impression such that the consumer would consider both as the same mark. See Van Dyne- Crotty, Inc. v. Wear-Guard Corp., 17 USPQ2d at 1868; and In re Dial-A-Mattress Operating Corp., 57 USPQ2d at 1812.
  • Case Finding: A product configuration was not found to have acquired distinctiveness where 16 people recognize the configuration as a trademark, after applicant's 16 years in business.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • To put the matter simply, that 16 people in the entire "Sportbike Motorcycle/Motorsports Industry" through applicant's 16 years of doing business, have come to recognize applicant's product configuration as a trademark for motorcycle stands is not persuasive.
  • Discussion of showing required to satisfy first element of establishing acquired distinctiveness of an intent-to-use mark.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • To satisfy the first element, the applicant must establish acquired distinctiveness as to the other goods and/or services by appropriate evidence, such as ownership of a prior registration for the same mark for related goods and/or services, a prima facie showing of acquired distinctiveness based on five years use of the same mark with related goods and/or services, or actual evidence of acquired distinctiveness for the same mark with respect to the other goods and/or services.
  • Discussion of showing required to satisfy second element of establishing acquired distinctiveness of an intent-to-use mark.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • To satisfy this element, applicant must show the extent to which the goods and/or services in the intent-touse application are related to the goods and/or services in connection with which the mark is distinctive, and that there is a strong likelihood that the mark's established trademark function will transfer to the related goods and/or services when use in commerce occurs. In re Rogers, 53 USPQ2d 1741, 1744 (TTAB 1999). See generally TMEP §1212.09(a) (6th ed. rev. October 2009).
  • Trademark Rule 2.41(b) provides that ownership of a registration of "the same mark" on the Principal Register may be accepted as prima facie evidence of acquired distinctiveness.
    • In re Brouwerij Bosteels, Serial No. 77357895 (TTAB 2010)
      • Turning first to applicant's prior registration, Trademark Rule 2.41(b) provides that ownership of a registration of "the same mark" on the Principal Register may be accepted as prima facie evidence of acquired distinctiveness.
  • Case Finding: TTAB's reasoning why GRAND CANYON WEST has become distinctive.
    • Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008 (TTAB 2008)
      • Under the circumstances of this case, we conclude that GRAND CANYON WEST has become distinctive of the services identified in the application. We conclude so principally based on: (1) the length of applicant's use, that is, for nearly twenty years; (2) the extent of applicant's use in advertising and promotion; (3) the increasing and now substantial levels of sales, that is, visitors to GRAND CANYON WEST; and (4) the level of awareness of applicant's services and the GRAND CANYON WEST mark as evidenced by the substantial level of media coverage. Applicant's evidence is more than sufficient to show that this highly descriptive mark, GRAND CANYON WEST, has acquired distinctiveness.
  • Evidence: Unsolicited publicity identifying the product design as a trademark may be probative evidence.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • We also note that applicant did not introduce any unsolicited publicity for its motorcycle stand that identified the product design as a trademark. Such publicity would have been probative that readers, authors, and others in the motorsports field identified the design of the motorcycle stand as a trademark.
  • Evidence: A declarant's ambiguous responses to a survey may limit the probative value of his declaration.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • We find the responses in the above-noted six survey responses to be ambiguous and, therefore, of limited probative value. The ambiguity of these "survey" questionnaires cast doubt on the credibility of the separate declarations submitted by Ms. Osborn and Messrs. Roberts and Bartz. Accordingly, we find that the declarations submitted by Ms. Osborn and Messrs. Roberts and Bartz have limited probative value.
  • Evidence: A few excerpts do not establish that a significant number of consumers recognize the alleged mark as an indication of source.
    • In re Brouwerij Bosteels, Serial No. 77357895 (TTAB 2010)
      • With respect to the remaining two excerpts, one characterizes the beer glass as "eye-catching" and another as "unique." However, these two excerpts hardly support a finding that a significant number of consumers have come to recognize the alleged mark as an indication of the source of applicant's beer sold at restaurants, bars, pubs and the like.
  • Evidence: Websites from outside the United States are not probative as to whether the alleged mark has acquired distinctiveness among purchasers in the United States.
    • In re Brouwerij Bosteels, Serial No. 77357895 (TTAB 2010)
      • With respect to the third-party website evidence, as noted previously, four of the excerpts refer to use of the alleged mark outside the United States and, thus, these excerpts are not probative of whether the alleged mark has acquired distinctiveness among purchasers in the United States.
  • Evidence: While survey evidence is relevant to establish acquired distinctiveness, the proponent of the survey must document the procedural and statistical accuracy of the evidence.
    • In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011)
      • With these marketing conditions in mind, we address the probative value of applicant's consumer surveys and declarations. While survey evidence is relevant to establish acquired distinctiveness, the proponent of the survey must document the procedural and statistical accuracy of the evidence.
In re Charles N. Van Valkenburgh, Serial No. 77025789 (TTAB 2011) In re Thomas Nelson, Inc., Serial No. 76681269 (TTAB 2011) In re Nielsen Business Media, Inc. Serial No. 77223725 and 77223738 (TTAB 2010) In re Brouwerij Bosteels, Serial No. 77357895 (TTAB 2010) In re Greenliant Systems, Ltd., Serial No. 78724139 (TTAB 2010) In re Tires, Tires, Tires, Inc., Serial No. 77091459 (TTAB 2009) In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009) In re SL&E Training Stable, Inc., Serial No. 78806669 (TTAB 2008) Grand Canyon West Ranch, LLC v. Hualapai Tribe, Opposition No. 91162008 (TTAB 2008) In re Crystal Geyser Water Company, Serial No. 76201270, (TTAB 2007) In re Lens.com, Inc., Serial No. 78076812, (TTAB 2007) In re MGA Entertainment, Inc., Serial No. 76603323, (TTAB 2007) In re The Council on Certification of Nurse Anesthetists, Serial No. 75722091, (TTAB 2007) Kellogg Company v. General Mills, Inc., Opposition No. 91125884, (TTAB 2007) Saint-Gobain Corporation v. 3M Company, Opposition No. 91119166, (TTAB 2007) Target Brands, Inc. v. Shaun N.G. Hughes, Opposition No. 91163556, (TTAB 2007) In re America Online, Inc., Serial No. 75460305, (TTAB 2006) In re Howard Leight Industries, LLC, Serial No. 76439661, (TTAB 2006) In re The Black & Decker Corporation, Serial No. 76570453, (TTAB 2006) In re The Outdoor Recreation Group, Serial No. 76570321, (TTAB 2006) American Flange & Manufacturing Co., Inc. v. Rieke Corporation, Opposition No. 91153479, (TTAB 2005) Duramax Marine, LLC v. R.W. Fernstrum & Company, Opposition No. 91119899, (TTAB 2005) In re Candy Bouquet International, Inc., Serial No. 78058216, (TTAB 2004) In re Mine Safety Appliances Company, Serial No. 75/501,608, (TTAB 2002) In re Phillips-Van Heusen Corp., Serial No. 75/664,835, (TTAB 2002) In re A La Vieille Russie, Inc., Serial No. 75/609,153, (TTAB 2001) In re Gibson Guitar Corp., Serial No. 75/513,342, (TTAB 2001) In re The Upper Deck Company, Serial No. 75/064,130, (TTAB 2001) In re Dial A Mattress Operating Corporation, Serial No. 75/131,355, (TTAB 1999) In re Log Cabin Homes, Ltd., Serial No. 74/682,845, (TTAB 1998) Grand Total
In re Nielsen Business Media Inc., 93 USPQ2d 1545 (TTAB 2010) 1
In re Jack B. Binion, ___ USPQ2d ___ (TTAB December 23, 2009, Serial Nos. 76590702 and 76590729) 1
In re ic! Berlin GmbH, 85 USPQ2d 2021 (TTAB 2008) 2
In re Lens.com Inc., 83 USPQ2d 1444 (TTAB 2007) 1
In re MGA Entertainment, Inc., 84 USPQ2d 1743 (TTAB 2007) 1
Target Brands Inc. v. Hughes, 85 USPQ2d 1676 (TTAB 2007) 2
In re Crystal Geyser Water Co., 85 USPQ2d 1374 (TTAB 2007) 1
Ava Enterprises Inc. v. Audio Boss USA Inc., 77 USPQ2d 1783 (TTAB 2006) 1
In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004) 1
Hewlett- Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002) 1
In re CyberFinancial.Net Inc., 65 USPQ2d 1789 (TTAB 2002) 1
In re Martin Container Inc., 65 USPQ2d 1058 (TTAB 2002) 1
Valu Engineering Inc. v. Rexnord Corp., 278 F.3d 1268, 61 USPQ2d 1422 (Fed. Cir. 2002) 1
In re Gibson Guitar Corp., 61 USPQ2d 1948 (TTAB 2001) 3
In re Upper Deck Co., 59 USPQ2d 1688 (TTAB 2001) 1
M-5 Steel Mfg. Inc. v. O'Hagin's Inc., 61 USPQ2d 1086 (TTAB 2001) 1
TrafFix Devices Inc. v. Marketing Displays Inc., 532 U.S. 23, 58 USPQ2d 1001 (2001) 1
Yankee Candle Co. v. Bridgewater Candle Co., 259 F.3d 25, 59 USPQ2d 1720 (1st Cir. 2001) 1
In re Dial A Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001) 4
In re Ennco Display Systems Inc., 56 USPQ2d 1279 (TTAB 2000) 3
Wal-Mart Stores Inc. v. Samara Bros. Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000) 4
In re Ennco Displays Systems Inc., 56 USPQ2d 1279 (TTAB 2000) 1
In re Boston Beer Co. L.P, 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) 3
In re Edward Ski Products Inc., 49 USPQ2d 2001 (TTAB 1999) 1
In re Rogers, 53 USPQ2d 1741 (TTAB 1999) 2
In re Edward Ski Products Inc., 49 USPQ2d 201 (TTAB 1999) 1
In re International Flavors & Fragrances Inc., 183 F.3d 1361, 51 USPQ2d 1513 (Fed. Cir. 1999) 1
L.D. Kichler Co. v. Davoil Inc., 52 USPQ2d 1307 (Fed. Cir. 1999) 1
Goodyear Tire and Rubber Co. v. Interco Tire Corp., 49 USPQ2d 1705 (TTAB 1998) 2
In Pingel Enterprise Inc., 46 USPQ2d 1811 (TTAB 1998) 1
In re Pingel Enterprise Inc., 46 USPQ2d 1811 (TTAB 1998) 1
In re Bennetton Group S.p.A., 48 USPQ2d 1214 (TTAB 1998) 1
In re Caterpillar Inc., 43 USPQ2d 1335 (TTAB 1997) 1
In re Recorded Books Inc., 42 USPQ2d 1275 (TTAB 1997) 3
In re Howard S. Leight and Associates Inc., 39 USPQ2d 1058 (TTAB 1996) 1
British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197 (TTAB 1993), aff'd, 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994), cert. denied, 514 U.S. 1050 (1995) 1
Brunswick Corp. v. British Seagull Ltd., 35 F.2d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994), cert. denied, 514 U.S. 1050 (1995) 1
Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161 (1995) 2
British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197 (TTAB 1993), aff'd, 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994), cert. denied, 514 U.S. 1050 (1995) 2
In re Leatherman Tool Group Inc., 32 USPQ2d 1443 (TTAB 1994) 2
Aromatique, Inc. v. Gold Seal, 28 F.3d 863, 31 USPQ2d 1481 (8th Cir. 1994) 1
R.L. Winston Rod Co. v. Sage Manufacturing Co., 838 F. Supp. 1396, 29 USPQ2d 1779 (D. Mont. 1993) 1
Kasco Corp. v. Southern Saw Services, Inc., 27 USPQ2d 1501 (TTAB 1993) 1
Braun Inc. v. Dynamics Corp. of America, 975 F.2d 815, 24 USPQ2d 1121 (Fed. Cir. 1992) 1
Spraying Systems Co. v. Delavan Inc., 975 F.2d 387, 24 USPQ2d 1181 (7th Cir. 1992) 1
Kellogg Co. v. Pack-Em Enterprises Inc., 14 USPQ2d 1545 (TTAB 1889), aff'd, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991) 1
Van Dyne-Crotty Inc. v. Wear-Guard Corp., 926 F.2d 1156, 17 USPQ2d 1866 (Fed. Cir. 1991) 3
Edward Weck Inc. v. IM Inc., 17 USPQ2d 1142 (TTAB 1990) 1
In re Bongrain International Corp., 894 F.2d 1316, 13 USPQ2d 1727 (Fed. Cir. 1990) 7
In re Cabot Corp., 15 USPQ2d 1224 (TTAB 1990) 1
Cicena Ltd. v. Columbia Telecomms Group, 900 F.2d 1546, 14 USPQ2d 1401 (Fed. Cir. 1990) 2
Harsco Corp. v. Electrical Sciences Inc., 9 USPQ2d 1570 (TTAB 1988) 1
In re Pingel Enterprise Inc., 46 USPQ2d 1811 (TTAB 1998) 1
Yamaha Int'l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988) 24
Amsted Industries Inc. v. West Coast Rope & Rigging Inc., 2 USPQ2d 1755 (TTAB 1987) 1
Flowers Industries Inc. v. Interstate Brands Corp., 5 USPQ2d 1580 (TTAB 1987) 1
In re Merrill Lynch, Pierce, Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987) 4
In re Remington Products Inc., 3 USPQ2d 1714 (TTAB 1987) 1
Sunnen Products Co. v. Sunex Int'l Inc., 1 USPQ2d 1744 (TTAB 1987) 1
In re Gray Inc., 3 USPQ2d 1558 (TTAB 1987) 1
H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986) 1
In re Best Products Co. Inc., 231 USPQ 988 (TTAB 1986) 2
In re Owens Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985) 2
In re Loew's Theaters, Inc., 223 USPQ 513 (TTAB 1984), aff'd, 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985) 1
In re Gammon Reel, Inc., 227 USPQ 729 (TTAB 1985) 1
Levi Strauss & Co. v. Genesco Inc., 742 F.2d 1401, 222 USPQ 939 (Fed. Cir. 1984) 1
Petersen Mfg. Co. v. Central Purchasing Inc., 740 F.2d 1541, 222 USPQ 562 (Fed. Cir. 1984) 1
In re R.M. Smith, Inc., 734 F.2d 1482, 222 USPQ 1 (Fed. Cir. 1984) 1
In re Kwik Lok Corp., 217 USPQ 1245 (TTAB 1983) 1
Inwood Laboratories Inc. v. Ives Laboratories Inc., 456 U.S. 844, 214 USPQ 1 (1982) 1
American Security Bank v. American Security and Trust Company, 571 F.2d 564, 197 USPQ 65 (CCPA 1978) 1
In re Flex-O-Glass Inc., 194 USPQ 203 (TTAB 1977) 2
Wire Rope Corporation of America Inc. v. Secalt S.A., 196 USPQ 312 (TTAB 1977) 1
In re Jockey Intl. Inc., 192 USPQ 579 (TTAB 1976) 1
In re Semel, 189 USPQ 285 (TTAB 1975) 1
Hollowform, Inc. v. Delma AEH, 515 F.2d 1174, 185 USPQ 790 (CCPA 1975) 1
Anderson, Clayton & Co. v. Krier, 478 F.2d 1246, 178 USPQ 46 (CCPA 1973) 1
In re Andes Candies Inc., 478 F.2d 1264, 178 USPQ 156 (CCPA 1973) 1
In re Bissett-Berman Corp., 476 F.2d 640, 177 USPQ 528 (CCPA 1973) 1
In re Garcia, 175 USPQ 732 (TTAB 1972) 1
Compania Insular Tabacalera v. Camacho Cigars Inc., 167 USPQ 299 (TTAB 1970) 1
Roux Laboratories Inc. v. Clairol Inc., 427 F.2d 823, 166 USPQ 34 (CCPA 1970) 2
In re The Interstate Folding Box Co., 167 USPQ 241 (TTAB 1970) 1
Kaiser Aluminum & Chemical Corp. v. American Meter Co., 153 USPQ 419 (TTAB 1967) 1
McCormick & Co. v. Summers, 354 F.2d 668, 148 USPQ 272 (CCPA 1966) 1
In re Hehr Mfg. Co., 279 F.2d 526, 126 USPQ 381 (CCPA 1960) 1
In re Meyer & Wenthe Inc., 267 F.2d 945, 122 USPQ 372 (CCPA 1959) 1
In re Hollywood Brands Inc., 214 F.2d 139, 102 USPQ 294 (CCPA 1954) 4
Grand Total 11 4 7 6 2 13 2 1 6 6 4 3 2 4 17 1 2 3 7 4 15 2 10 3 2 2 2 3 6 1 151

Sec. 1052. Trademarks registrable on principal register; concurrent registration

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it--
  1. (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.
  2. (b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.
  3. (c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.
  4. (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; (2) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Use prior to the filing date of any pending application or a registration shall not be required when the owner of such application or registration consents to the grant of a concurrent registration to the applicant. Concurrent registrations may also be issued by the Director when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Director shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons.
  5. (e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional.
  6. (f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant's goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant's goods in commerce before December 8, 1993.
A mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be refused registration only pursuant to a proceeding brought under section 1063 of this title. A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be canceled pursuant to a proceeding brought under either section 1064 of this title or section 1092 of this title.

 

 

C.F.R. Sec. 2.41. Proof of distinctiveness under section 2(f).

  1. (a) When registration is sought of a mark which would be unregistrable by reason of section 2(e) of the Act but which is said by applicant to have become distinctive in commerce of the goods or services set forth in the application, applicant may, in support of registrability, submit with the application, or in response to a request for evidence or to a refusal to register, affidavits, or declarations in accordance with §2.20, depositions, or other appropriate evidence showing duration, extent and nature of use in commerce and advertising expenditures in connection therewith (identifying types of media and attaching typical advertisements), and affidavits, or declarations in accordance with §2.20, letters or statements from the trade or public, or both, or other appropriate evidence tending to show that the mark distinguishes such goods or services.
  2. (b) In appropriate cases, ownership of one or more prior registrations on the Principal Register or under the Act of 1905 of the same mark may be accepted as prima facie evidence of distinctiveness. Also, if the mark is said to have become distinctive of applicant's goods by reason of substantially exclusive and continuous use in commerce thereof by applicant for the five years before the date on which the claim of distinctiveness is made, a showing by way of statements which are verified or which include declarations in accordance with §2.20, in the application may, in appropriate cases, be accepted as prima facie evidence of distinctiveness. In each of these situations, however, further evidence may be required.

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