1212.01    General Evidentiary Matters

Whether acquired distinctiveness has been established is a question of fact. Schlafly v. St. Louis Brewery, LLC, 909 F.3d 420, 423, 128 USPQ2d 1739, 1742 (Fed. Cir. 2018) (citing In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1335, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015); Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357, 1359, 57 USPQ2d 1720, 1722 (Fed. Cir. 2001)) 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 at, 1335, 116 USPQ2d at 1265 (citing In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005)); In re Guaranteed Rate, Inc., 2020 USPQ2d 10869, at *2 (TTAB 2020) (citing Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1578-79, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988)).

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 the nature of the mark sought to be registered." In re Gen. Mills IP Holdings II, LLC, 124 USPQ2d 1016, 1018 (TTAB 2017) (citing 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)).

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 Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1047 (Fed. Cir. 2018); In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424 (citing In re Bongrain Int’l (Am.) Corp., 894 F.2d 1316, 1318, 13 USPQ2d 1727, 1729 (Fed. Cir. 1990)); City of London Distillery, Ltd. v. Hayman Grp. Ltd., 2020 USPQ2d 11487, at *16 (TTAB 2020) (quoting In re Greenliant Sys. Ltd., 97 USPQ2d 1078, 1085 (TTAB 2010)); 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). See also Real Foods Pty. v. Frito-Lay N. Am., 128 USPQ2d 1370, 1378 (Fed. Cir. 2018) ("while evidence of substantially exclusive and continuous use may be sufficient to prove a prima facie case of acquired distinctiveness, this is not always the case. . . . ‘Particularly for a mark that is . . . highly descriptive like [Real Foods’ proposed marks], the [TTAB] was within its discretion not to accept [Real Foods’] alleged five years of substantially exclusive and continuous use as prima facie evidence of acquired distinctiveness.’") (internal citations omitted); In re La. Fish Fry Prods., 116 USPQ2d at 1265 (Board has discretion not to accept an applicant’s allegation of five years of substantially exclusive and continuous use as prima facie evidence of acquired distinctiveness when the proposed mark is "highly descriptive"). 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. See TMEP §1202.02(b)(i) regarding the heavy evidentiary burden for acquired distinctiveness of trade dress.

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 registration is being sought. In re Chippendales USA, Inc., 622 F.3d 1346, 1354, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (quoting In re Morton-Norwich Prods., Inc., 671 F.2d, 1332, 1344, 213 USPQ 9, 18 (C.C.P.A. 1982)); Gen. Foods Corp. v. MGD Partners, 224 USPQ 479, 486 (TTAB 1984) (citing In re Thunderbird Prods., Corp., 406 F.2d 1389, 1391-92, 160 USPQ 730, 732-33 (C.C.P.A. 1969); Hartford Fire Ins. Co. v. Structured Settlements Co., 215 USPQ 1145, 1150 (TTAB 1982)).

In determining whether a mark has acquired distinctiveness, the evidence is considered as a whole, guided by the following factors: (1) association of the applied-for mark with a particular source by actual purchasers (typically measured by customer surveys); (2) length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage of the product embodying the mark. Converse, Inc. v. ITC, 909 F.3d 1110, 1120, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018) (Converse factors); City of London Distillery, Ltd., 2020 USPQ2d 11487, at *16 (quoting In re Snowizard, Inc., 129 USPQ2d 1001, 1005 (TTAB 2018)); In re Guaranteed Rate, Inc., 2020 USPQ2d 10869, at *2-3. "[N]o single factor is determinative." In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424. Rather, all factors are weighed together in light of all the circumstances to determine whether the mark has acquired distinctiveness. Id.