1212.05(a) Sufficiency of Claim Vis-à-Vis Nature of the Mark
For most surnames, the statement of five years’ use will be sufficient to establish acquired distinctiveness.
The amount of evidence necessary to establish secondary meaning varies – “the greater the degree of descriptiveness the term has, the heavier the burden to prove it has attained secondary meaning.” In re Bongrain Int’l Corp., 894 F.2d 1316, 1317 n.4, 13 USPQ2d 1727, 1728 n.4 (Fed. Cir. 1990) (citing Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1581, 6 USPQ2d 1001, 1008 (Fed. Cir. 1988)).
Accordingly, for marks refused under §2(e)(1) or §2(e)(2), whether the statement of five years’ use is sufficient in and of itself to establish acquired distinctiveness depends on the degree to which the mark is descriptive or misdescriptive. If the mark is highly descriptive or misdescriptive of the goods or services named in the application, the statement of five years’ use alone will be deemed insufficient to establish acquired distinctiveness. See In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262 (Fed. Cir. 2015) (holding that the Board was within its discretion not to accept applicant’s allegation of five years’ use given the highly descriptive nature of the mark); Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1766 (TTAB 2013) (“Given the highly descriptive nature of registrant’s mark [ANNAPOLIS TOURS], continuous use alone since 1992 would not be sufficient to establish acquired distinctiveness.”); In re Noon Hour Food Prods., Inc., 88 USPQ2d 1172 (TTAB 2008) (finding, despite applicant’s claim of use in commerce for almost one hundred years, as well as an “inadvertently cancelled” seventy-year old registration for the mark BOND-OST for cheese, current evidence clearly showed the mark was generic for the goods, and assuming arguendo that BOND-OST is not generic, that applicant had failed to establish acquired distinctiveness of the highly descriptive mark); In re Crystal Geyser Water Co., 85 USPQ2d 1374 (TTAB 2007) (holding applicant’s evidence of acquired distinctiveness, including a claim of use since 1990, sales of more than 7,650,000,000 units of its goods, and extensive display of its mark CRYSTAL GEYSER ALPINE SPRING WATER on advertising and delivery trucks and promotional paraphernalia, insufficient to establish that the highly descriptive phrase ALPINE SPRING WATER had acquired distinctiveness for applicant’s bottled spring water); In re Kalmbach Publ’g Co., 14 USPQ2d 1490 (TTAB 1989) (holding applicant’s sole evidence of acquired distinctiveness, a claim of use since 1975, insufficient to establish that the highly descriptive, if not generic, designation RADIO CONTROL BUYERS GUIDE had become distinctive of applicant’s magazines); 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.”); cf. In re Synergistics Research Corp., 218 USPQ 165 (TTAB 1983) (holding applicant’s declaration of five years’ use sufficient to support registrability under §2(f) of BALL DARTS for equipment sold as a unit for playing a target game, in view of lack of evidence that the term is highly descriptive (e.g., no dictionary evidence of any meaning of BALL DARTS and no evidence of use of the term by competitors or the public)).
For matter that is not inherently distinctive because of its nature (e.g., nondistinctive product design, 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/services/classes would be required to establish distinctiveness. See generally In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985) (color pink as uniformly applied to applicant’s fibrous glass residential insulation); In re R.M. Smith, Inc., 734 F.2d 1482, 222 USPQ 1 (Fed. Cir. 1984) (configuration of pistol grip water nozzle for water nozzles); Nextel Commc’ns, Inc. v. Motorola, Inc., 91 USPQ2d 1393, 1401 (TTAB 2009) (noting that “the evidence required is in proportion to the degree of nondistinctiveness of the mark at issue” in relation to a sound mark emitted by cellular telephones in their normal course of operation); In re ic! berlin brillen GmbH, 85 USPQ2d 2021 (TTAB 2008) (configuration of an earpiece for frames for sunglasses and spectacles comprised of three “fingers” near the hinge); In re The Black & Decker Corp., 81 USPQ2d 1841, 1844 (TTAB 2006) (finding applicant successfully established acquired distinctiveness for the design of a key head for key blanks and various metal door hardware, where evidence submitted in support thereof included twenty-four years of use in commerce and significant evidence regarding industry practice, such that the evidence showed that “it is common for manufacturers of door hardware to use key head designs as source indicators.”); Edward Weck Inc. v. IM Inc., 17 USPQ2d 1142 (TTAB 1990) (color green for medical instruments); In re Cabot Corp., 15 USPQ2d 1224 (TTAB 1990) (configuration of a pillow-pack container for ear plugs and configuration of a pillow-pack container with trade dress (white circle surrounded by blue border) for ear plugs); In re Star Pharm., Inc., 225 USPQ 209 (TTAB 1985) (color combination of drug capsule and seeds therein for methyltestosterone); In re Craigmyle, 224 USPQ 791 (TTAB 1984) (configuration of halter square for horse halters).