When a trademark application is denied for lacking inherent distinctiveness or for being merely descriptive of the products or services it represents, the applicant has the opportunity to demonstrate that the mark has acquired distinctiveness, also known as secondary meaning. Proving acquired distinctiveness is a factual determination, and the burden of proof lies with the applicant. Successfully establishing that a trademark acquired distinctiveness allows it to be registered under Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f). This article will explore the use of ‘other evidence’ as a means of proving acquired distinctiveness.
Understanding Merely Descriptive Trademarks and Acquired Distinctiveness
A merely descriptive trademark is one that directly describes an aspect or characteristic of the goods or services it represents. For example, a term that describes the function, purpose, or quality of a product is considered merely descriptive and not inherently distinctive. However, if the applicant can show that the mark has gained distinctiveness in the minds of consumers, then it can be registered as a trademark. This acquired distinctiveness demonstrates that consumers recognize the mark as identifying a single source, rather than as a generic or descriptive term.
Proving Trademark Acquired Distinctiveness with Other Evidence
If the applicant cannot rely on five years of continuous use or a prior registration of the same mark for similar goods or services, they may submit other competent evidence to prove acquired distinctiveness. This type of evidence must establish that the mark has become distinctive to the public, indicating a single source of the products or services. Importantly, consumers do not need to know the identity of the manufacturer; they only need to associate the mark with a unique source.
The Degree of Descriptiveness and Its Impact on Evidence Required
The level of descriptiveness of a mark directly influences the amount of evidence needed to prove acquired distinctiveness. The more descriptive the mark, the more substantial the evidence required. For instance, a highly descriptive mark necessitates stronger evidence because consumers are less likely to perceive it as an indicator of a single source. If the mark is widely used by others in the same industry, the burden on the applicant increases.
Relevant Case Study: In re Yarnell Ice Cream, LLC
A significant case illustrating the use of other evidence to prove acquired distinctiveness is In re Yarnell Ice Cream, LLC. In this case, the applicant sought to register the mark SCOOP for ice cream and frozen confections promoted by a mascot named Scoop. The application was denied on the grounds of merely descriptiveness and failure to show acquired distinctiveness. The Trademark Trial and Appeal Board (TTAB) examined the degree of descriptiveness of the mark, noting that SCOOP was highly descriptive for ice cream since it described a common portion size. Consequently, the applicant was required to provide substantial evidence to prove that the trademark acquired distinctiveness.
Factors Considered in Establishing Acquired Distinctiveness
To evaluate whether a merely descriptive trademark has acquired distinctiveness, several factors are considered:
- Consumer Association: Evidence that consumers associate the mark with a particular source, which can be shown through consumer surveys or studies.
- Length and Exclusivity of Use: Demonstrating continuous and exclusive use of the mark over a significant period.
- Advertising Efforts: The amount, manner, and reach of advertising campaigns promoting the mark.
- Sales and Customer Base: Data showing successful sales and a broad customer base under the mark.
- Intentional Copying: Indications that competitors intentionally copied the mark.
- Media Coverage: Evidence of unsolicited media coverage highlighting the mark.
Lessons from the SCOOP Case
In the SCOOP case, the applicant presented evidence of five years of exclusive use, a declaration from an employee, media mentions, and an email requesting permission to use the mark. However, the TTAB found this evidence insufficient because it did not adequately show that the mark served as a source identifier. Additionally, there was no information on advertising strategies, sales figures, or consumer recognition. The Board ultimately ruled that SCOOP had not acquired distinctiveness, leading to the refusal of registration.
Guidance for Proving Trademark Acquired Distinctiveness
Applicants facing refusal for merely descriptive trademarks should carefully assess the strength of their evidence for acquired distinctiveness. If relying on other evidence, it is crucial to present comprehensive and persuasive documentation showing the mark’s significance to consumers. This includes robust advertising records, sales success, customer testimonials, and any proof of widespread consumer recognition.
Conclusion
Establishing acquired distinctiveness for a merely descriptive trademark requires strategic planning and substantial evidence. By understanding the legal requirements and effectively utilizing other evidence, applicants can overcome refusals and achieve trademark registration. If you need assistance with proving that your trademark acquired distinctiveness, consult with a Trademark Attorney to explore the best strategies for your case.