TMEP 1212.01: General Evidentiary Matters

October 2017 Edition of the TMEP

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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, 769-70, 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. In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1335, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015) (citing In re, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005)).

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. See Ex parte Fox River Paper Corp., 99 USPQ 173, 174 (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 Labs., Inc. v. Clairol Inc., 427 F.2d 823, 829, 166 USPQ 34, 39 (C.C.P.A. 1970); In re Hehr Mfg. Co., 279 F.2d 526, 528, 126 USPQ 381, 383 (C.C.P.A. 1960); In re Gammon Reel, Inc., 227 USPQ 729, 730 (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 Int’l Corp., 894 F.2d 1316, 1318, 13 USPQ2d 1727, 1729 (Fed. Cir. 1990); Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1767 (TTAB 2013); In re Seaman & Assocs., Inc., 1 USPQ2d 1657, 1659 (TTAB 1986); In re Packaging Specialists, Inc., 221 USPQ 917, 919 (TTAB 1984). Research showing that third parties in applicant’s field or closely related fields use the same or substantially the same wording as the mark, or very similar wording as the mark, tends to indicate the mark is at least highly descriptive.

If the applicant has one or more prior federal registrations under §2(f) for a different depiction of the same mark (e.g., stylized vs. standard character) or a portion of the proposed mark, for the same goods/services, the examining attorney’s review of the records to assess the probative value of the prior registrations may assist in resolving whether the mark in question has acquired distinctiveness, and thereby obviate the necessity of determining the issue on appeal. In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1713 (TTAB 2011).

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. v. Summers, 354 F.2d 668, 674, 148 USPQ 272, 276 (C.C.P.A. 1966); Gen. Foods Corp. v. MGD Partners, 224 USPQ 479, 486 (TTAB 1984).