1212.06(e) Miscellaneous Considerations Regarding Evidence Submitted to Establish Distinctiveness
1212.06(e)(i) First or Only User
When the applicant is the only source of the goods or services, use alone does not automatically represent trademark recognition and acquired distinctiveness. See, e.g., J. Kohnstam, Ltd. v. Louis Marx & Co., 280 F.2d 437, 440, 126 USPQ 362, 364 (C.C.P.A. 1960) ; In re Mortg. Bankers Ass’n of Am., 226 USPQ 954, 956 (TTAB 1985) ; In re Nat'l Shooting Sports Found., Inc., 219 USPQ 1018, 1020 (TTAB 1983); In re Meier’s Wine Cellars, Inc., 150 USPQ 475, 475 (TTAB 1966) ; In re G. D. Searle & Co., 143 USPQ 220, 223 (TTAB 1964) , aff’d,360 F.2d 650, 149 USPQ 619 (C.C.P.A. 1966).
Similarly, evidence of intentional copying of a product design is not probative of acquired distinctiveness. "Where the proposed mark is a product design, the copier may be attempting to exploit a desirable product feature, rather than seeking to confuse customers as to the source of the product." In re Van Valkenburgh, 97 USPQ2d 1757, 1768 (TTAB 2011) .
1212.06(e)(ii) State Trademark Registrations
State trademark registrations are of relatively little probative value. See, e.g., In re Vico Prods. Mfg. Co., 229 USPQ 364, 370 (TTAB 1985), recon. denied, 229 USPQ 716 (TTAB 1986) ("While applicant’s design may be registrable under the provisions of California trademark law, it is the federal trademark statute and the cases interpreting it by which we must evaluate the registrability of applicant’s asserted mark."); In re Craigmyle, 224 USPQ 791, 794 (TTAB 1984) (finding California trademark registration not controlling with respect to federal registrability).
1212.06(e)(iii) Design Patent
The fact that a device is the subject of a design patent does not, without more, mean that it functions as a mark or has acquired distinctiveness. In re Vico Prods. Mfg. Co., 229 USPQ 364, 370 (TTAB 1985), recon. denied, 229 USPQ 716 (TTAB 1986) (citing In re R.M. Smith, Inc., 734 F.2d 1482, 1485, 222 USPQ 1, 3 (Fed. Cir. 1984).
1212.06(e)(iv) Acquiescence to Demands of Competitors
Acquiescence to demands of competitors to cease use of a term can be equally viewed as simply a desire to avoid litigation. See, e.g., In re Wella Corp., 565 F.2d 143, 144 n.2, 196 USPQ 7, 8 n.2 (C.C.P.A. 1977) ; In re Consol. Cigar Corp., 13 USPQ2d 1481, 1483 (TTAB 1989) .
1212.06(e)(v) Family of Marks
An applicant may present evidence that an applied-for mark has acquired distinctiveness because it is a new member of a recognized family of marks. See In re LC Trademarks, Inc., 121 USPQ2d 1197, 1202-04 (TTAB 2016). To establish acquired distinctiveness, the evidence must show (1) that a family of marks exists in that the claimed collection of marks shares a recognizable common characteristic that is distinctive and has been promoted in such a way as to create recognition among the purchasing public as a source indicator for the goods/services and (2) that the purchasing public would perceive the applied-for mark as part of that family of marks and thus as a source indicator. See id.; cf. TPI Holdings, Inc. v. TrailerTrader.com, LLC, 126 USPQ2d 1409, 1428 (TTAB 2018) (finding that the shared element in petitioner’s marks was so commonly used by others that it does not constitute a distinguishing feature upon which a family-of-marks claim could be based).
1212.06(e)(vi) Parodies and Copies
In rare cases, evidence of the creation of intentional parodies and copies of an otherwise nondistinctive mark may be significant in assessing whether the mark has successfully achieved public recognition as a source indicator. In In re Serial Podcast, LLC, 126 USPQ2d 1061 (TTAB 2018), the Board found that parodies of applicant’s service on a national weekly television show, using an almost identical graphical display of applicant’s composite marks, constituted "highly unusual and highly significant evidence" that was "highly probative of acquired distinctiveness." Id. at 1076. The record also included evidence of unauthorized copying of the marks. Based on the totality of this unique evidence, the Board found that, when all the elements of the composites were taken together, the marks had acquired distinctiveness. Id. at 1078. The Board noted, however, that the finding of acquired distinctiveness was limited to the particular display of the composite marks as a whole, and did not extend to the individual components taken separately, or to anything less than the whole. Id.