T.M.E.P. § 1212.01
General Evidentiary Matters
Executive summary:
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1212.01 General Evidentiary Matters
Whether acquired distinctiveness has been established is a question of fact. See In re Loew's Theatres, Inc., 769 F.2d 764, 769, 226 USPQ 865, 869 (Fed. Cir. 1985), and cases cited therein. The record must contain facts or evidence of acquired distinctiveness.
The burden of proving that a mark has acquired distinctiveness is on the applicant. See Yamaha Int'l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 1578-79, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988); In re Meyer & Wenthe, Inc., 267 F.2d 945, 122 USPQ 372 (C.C.P.A. 1959).
The applicant may present any competent evidence to establish that a mark has acquired distinctiveness. Actual evidence of acquired distinctiveness may be submitted regardless of the length of time the mark has been used. Ex parte Fox River Paper Corp., 99 USPQ 173 (Comm'r Pats. 1953).
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 (C.C.P.A. 1970); In re Hehr Mfg. Co., 279 F.2d 526, 126 USPQ 381 (C.C.P.A. 1960); In re Gammon Reel, Inc., 227 USPQ 729 (TTAB 1985).
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 less likely to believe that it indicates source in any one party. See, e.g., In re Bongrain International Corp., 894 F.2d 1316, 13 USPQ2d 1727 (Fed. Cir. 1990); In re Seaman & Associates, Inc., 1 USPQ2d 1657 (TTAB 1986); In re Packaging Specialists, Inc., 221 USPQ 917 (TTAB 1984).
Facts based on events that occurred subsequent to the filing date of the application may be considered. Whether acquired distinctiveness has been established is determined in view of the facts that exist at the time registrability is being considered. McCormick & Co., Inc. v. Summers, 354 F.2d 668, 148 USPQ 272 (C.C.P.A. 1966); General Foods Corp. v. MGD Partners, 224 USPQ 479 (TTAB 1984); Kaiser Aluminum & Chemical Corp. v. American Meter Co., 153 USPQ 419 (TTAB 1967); In re Hoffman House Sauce Co., 137 USPQ 486 (TTAB 1963).