1212.06(b) Advertising Expenditures
Large-scale expenditures in promoting and advertising goods and services under a particular mark are significant to indicate the extent to which a mark has been used. However, proof of an expensive and successful advertising campaign is not in itself enough to prove secondary meaning. Mattel, Inc. v. Azrak-Hamway Int’l, Inc., 724 F.2d 357, 361 n.2, 221 USPQ 302, 305 n.2 (2d Cir. 1983). See In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262 (Fed. Cir. 2015) (finding evidence of sales and advertising expenditures insufficient to establish acquired distinctiveness of FISH FRY PRODUCTS where evidence involved uses of LOUISIANA FISH FRY PRODUCTS); In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (finding claim based on annual sales under the mark of approximately eighty-five million dollars, and annual advertising expenditures in excess of ten million dollars – two million of which were spent on promotions and promotional items which included the phrase THE BEST BEER IN AMERICA – insufficient to establish distinctiveness, in view of the highly descriptive nature of the proposed mark).
The ultimate test in determining whether a designation has acquired distinctiveness is applicant’s success, rather than its efforts, in educating the public to associate the proposed mark with a single source. The examining attorney must examine the advertising material to determine how the term is being used, the commercial impression created by such use, and what the use would mean to purchasers. In re Redken Labs., Inc., 170 USPQ 526, 529 (TTAB 1971) (holding evidence adduced by applicant pursuant to §2(f) insufficient to establish acquired distinctiveness of THE SCIENTIFIC APPROACH, for lectures concerning hair and skin treatment, notwithstanding ten years of use, over $500,000 in promotion and sponsorship expenses, and the staging of over 300 shows per year). See In re Chevron Intellectual Prop. Group LLC, 96 USPQ2d 2026, 2031 (TTAB 2010) (finding evidence of acquired distinctiveness deficient in part because of the lack of advertisements promoting recognition of pole spanner design as a service mark); Mag Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1723 (TTAB 2010) (finding absence of “look for” advertisements damaging to attempt to demonstrate acquired distinctiveness of proposed configuration mark); Nextel Commc’ns, Inc. v. Motorola, Inc., 91 USPQ2d 1393, 1408 (TTAB 2009) (sustaining opposition on the ground that sound mark had not acquired distinctiveness in part because applicant failed to provide evidence corroborating that the mark was used in advertisements in such a way that it would be recognized as a source identifier for cellular telephones); In re ic! berlin brillen GmbH, 85 USPQ2d 2021, 2023 (TTAB 2008) (affirming refusal to register product configuration for spectacles and sunglasses, as the applicant had failed to prove acquired distinctiveness chiefly because of the “absence of evidence of the advertising and/or promotion by the applicant of the earpiece design as a trademark”); In re E.I. Kane, Inc., 221 USPQ 1203, 1206 (TTAB 1984) (affirming refusal to register OFFICE MOVERS, INC., for moving services, notwithstanding §2(f) claim based on, inter alia, evidence of substantial advertising expenditures. “There is no evidence that any of the advertising activity was directed to creating secondary meaning in applicant’s highly descriptive trade name.”); In re Kwik Lok Corp., 217 USPQ 1245, 1247-48 (TTAB 1983) (holding evidence insufficient to establish acquired distinctiveness for configuration of bag closures made of plastic, notwithstanding applicant’s statement that advertising of the closures involved several hundred thousands of dollars, where there was no evidence that the advertising had any impact on purchasers in perceiving the configuration as a mark); cf. In re Haggar Co., 217 USPQ 81, 84 (TTAB 1982) (holding background design of a black swatch registrable pursuant to §2(f) for clothing where applicant had submitted, inter alia, evidence of “very substantial advertising and sales,” the Board finding the design to be, “because of its serrated left edge, something more than a common geometric shape or design”).
If the applicant prefers not to specify the extent of its expenditures in promoting and advertising goods and services under the mark because this information is confidential, the applicant may indicate the types of media through which the goods and services have been advertised (e.g., national television) and how frequently the advertisements have appeared.