1212.06 Establishing Distinctiveness by Actual Evidence
Under Trademark Rule 2.41(a)(3), 37 C.F.R. §2.41(a)(3), an applicant may submit affidavits, declarations under 37 C.F.R. §2.20, depositions, or other appropriate evidence showing the duration, extent, and nature of the applicant’s use of a mark in commerce that may lawfully be regulated by the U.S. Congress, advertising expenditures in connection with such use, letters, or statements from the trade and/or public, or other appropriate evidence tending to show that the mark distinguishes the goods or services.
Establishing acquired distinctiveness by actual evidence was explained as follows in In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1125, 227 USPQ 417, 422 (Fed. Cir. 1985):
An evidentiary showing of secondary meaning, adequate to show that a mark has acquired distinctiveness indicating the origin of the goods, includes evidence of the trademark owner’s method of using the mark, supplemented by evidence of the effectiveness of such use to cause the purchasing public to identify the mark with the source of the product.
The kind and amount of evidence necessary to establish that a mark has acquired distinctiveness in relation to goods or services depends on the nature of the mark and the circumstances surrounding the use of the mark in each case. Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1581, 6 USPQ2d 1001, 1008 (Fed. Cir. 1988); 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 Capital Formation Counselors, Inc., 219 USPQ 916, 918 (TTAB 1983) .
Evidence that only shows a mark used in conjunction with other wording may be insufficient to show that the mark has acquired distinctiveness. See In re Mogen David Wine Corp., 372 F.2d 539, 542, 152 USPQ 593, 595-96 (C.C.P.A. 1967) (finding evidence of a bottle design failed to prove secondary meaning where advertising depicting the bottle design always featured applicant’s word mark); In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1093 (TTAB 2012) (noting none of applicant’s evidence showed use of the proposed mark "CENTER OF SCIENCE AND INDUSTRY" without the acronym "COSI," while other evidence only used the acronym to refer to applicant’s services).
In considering a claim of acquired distinctiveness, the issue is whether acquired distinctiveness of the mark in relation to the goods or services has in fact been established in the minds of the purchasing public, not whether the mark is capable of becoming distinctive. In re Redken Labs., Inc., 170 USPQ 526, 528 (TTAB 1971) ; In re Fleet-Wing Corp., 122 USPQ 335, 335 (TTAB 1959) .
The following sections provide examples of different types of evidence that have been used, alone or in combination, to establish acquired distinctiveness. No single evidentiary factor is determinative. The value of a specific type of evidence and the amount necessary to establish acquired distinctiveness will vary according to the facts of the specific case.
1212.06(a) Long Use of the Mark in Commerce
Long-term use of the mark in commerce is one relevant factor to consider in determining whether a mark has acquired distinctiveness. See In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262 (Fed. Cir. 2015) (finding evidence of long use insufficient to establish acquired distinctiveness of FISH FRY PRODUCTS where evidence involved uses of LOUISIANA FISH FRY PRODUCTS); In re Uncle Sam Chem. Co., 229 USPQ 233, 235 (TTAB 1986) (finding §2(f) claim of acquired distinctiveness of SPRAYZON for "cleaning preparations and degreasers for industrial and institutional use" persuasive where applicant had submitted declaration of its president supporting sales figures and attesting to over eighteen years of substantially exclusive and continuous use); In re Packaging Specialists, Inc., 221 USPQ 917, 920 (TTAB 1984) (finding evidence submitted by applicant insufficient to establish acquired distinctiveness of PACKAGING SPECIALISTS, INC., for contract packaging services, notwithstanding, inter alia, continuous and substantially exclusive use for sixteen years, deemed "a substantial period but not necessarily conclusive or persuasive").
To support a §2(f) claim, use of the mark must be use in commerce, as defined in 15 U.S.C. §1127. See TMEP §§901–901.04 as to what constitutes use in commerce.
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.
1212.06(c) Affidavits or Declarations Asserting Recognition of Mark as Source Indicator
Affidavits or declarations that assert recognition of the mark as a source indicator are relevant in establishing acquired distinctiveness. However, the value of the affidavits or declarations depends on the statements made and the identity of the affiant or declarant. See In re Chem. Dynamics Inc., 839 F.2d 1569, 1571, 5 USPQ2d 1828, 1830 (Fed. Cir. 1988) (finding conclusionary declaration from applicant’s vice-president insufficient without the factual basis for the declarant’s belief that the design had become distinctive). Proof of distinctiveness also requires more than proof of the existence of a relatively small number of people who associate a mark with the applicant. See In re The Paint Prods. Co., 8 USPQ2d 1863, 1866 (TTAB 1988) ("Because these affidavits were sought and collected by applicant from ten customers who have dealt with applicant for many years, the evidence is not altogether persuasive on the issue of how the average customer for paints perceives the words ‘PAINT PRODUCTS CO.’ in conjunction with paints and coatings."); see also Mag Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1723 (TTAB 2010) (finding sixteen declarations of little persuasive value, as they were nearly identical in wording and only one of the declarants was described as an end consumer); In re Gray Inc., 3 USPQ2d 1558, 1560 (TTAB 1987) (finding affidavit of applicant’s counsel expressing his belief that the mark has acquired secondary meaning of "no probative value whatsoever" because, among other reasons, the statement is subject to bias); In re Petersen Mfg. Co., 2 USPQ2d 2032, 2035 (TTAB 1987) (finding declarations from customers which stated that designs used by applicant indicate to the declarant that the applicant is the source of the goods, but which did not refer to or identify the designs with any specificity, not persuasive); In re Bose Corp., 216 USPQ 1001, 1005 (TTAB 1983), aff’d, 772 F.2d 866, 227 USPQ 1 (Fed. Cir. 1985) (deeming retailer’s statement that he has been in contact with many purchasers of loudspeaker systems of whom a substantial number would recognize the depicted design as originating with applicant competent evidence of secondary meaning); In re Flex-O-Glass, Inc., 194 USPQ 203, 206 (TTAB 1977) ("[T]he fact that the affidavits may be similar in format and expression is of no particular significance . . . since the affiants have sworn to the statements contained therein.").
1212.06(d) Survey Evidence, Market Research and Consumer Reaction Studies
Survey evidence, market research, and consumer reaction studies are relevant in establishing acquired distinctiveness and secondary meaning. See Yankee Candle Co. v. Bridgewater Candle Co., 259 F.3d 25, 43, 59 USPQ2d 1720, 1730 (1st Cir. 2001) ("Although survey evidence is not required, ‘it is a valuable method of showing secondary meaning.’" (quoting I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 42, 49 USPQ2d 1225, 1235 (1st Cir. 1998))).
To show secondary meaning, the survey must show that the consuming public views the proposed mark as an indication of the source of the product or service. See Nextel Commc’ns, Inc. v. Motorola, Inc., 91 USPQ2d 1393, 1402-03 (TTAB 2009) (finding survey did not provide evidence of acquired distinctiveness as it was unclear if respondents associated the sound mark with applicant’s goods or opposer’s services); Boston Beer Co. L.P. v. Slesar Bros. Brewing Co., 9 F.3d 175, 183, 28 USPQ2d 1778, 1784 (1st Cir. 1993) (finding survey insufficient to establish acquired distinctiveness where survey demonstrated product-place association rather than product-source association). Moreover, the survey should reveal that the consuming public associates the proposed mark with a single source, and not that the applicant is the first among many parties associated with the designation. See J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §15.42 (4th ed. 2013) (citing Am. Flange & Mfg. Co. v. Rieke Corp., 80 USPQ2d 1397, 1415 (TTAB 2006) , withdrawn on other grounds, 90 USPQ2d 1127 (TTAB 2009)); see also British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197, 1202 (TTAB 1993) , aff’d, 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994) (finding survey does not provide convincing proof that respondents believe all black engines come from the same source).
The applicant must document the procedural and statistical accuracy of this type of evidence and carefully frame the questions contained therein. In re Van Valkenburgh, 97 USPQ2d 1757, 1767 (TTAB 2011) (finding "no basis on which to conclude that the survey is based on scientifically valid principles" where the survey consisted of questionnaires distributed to an unknown number of people who filled them out and mailed them back to applicant’s counsel); see In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005) (deeming applicant’s Internet poll on name recognition unreliable, where the poll did not attempt to prevent visitors from voting more than once or to prevent interested parties such as friends or associates or employees of the applicant from voting multiple times, and the poll results did not indicate the number of actual participants); In re Hotels.com, L.P., 87 USPQ2d 1100, 1109–10 (TTAB 2008), aff’d, 573 F.3d 1300, 91 USPQ2d 1532 (Fed. Cir. 2009) (finding applicant’s survey entitled to no probative weight as to the public’s perception of HOTELS.COM due to flaws including the order of the questions and an assumption that consumers understand the difference between a brand name and domain name); In re E.I. Kane, Inc., 221 USPQ 1203, 1206 (TTAB 1984) ("[T]he survey asked the wrong question. The issue is not whether the term ‘Office Movers’ identifies a specific company. Rather, it is whether the term ‘OFFICE MOVERS, INC.’ identifies services which emanate from a single source."); Gen. Foods Corp. v. Ralston Purina Co., 220 USPQ 990, 994 n.7 (TTAB 1984) ("[W]here . . . [reports of market research and consumer reaction studies] have been conducted for marketing reasons rather than directly to assist in resolving the issues in proceedings before us, their value will almost always depend upon interpretations of their significance by witnesses or other evidence."); Specialty Brands, Inc. v. Spiceseas, Inc., 220 USPQ 73, 74 n.4 (TTAB 1983) (finding testimony concerning survey results, unsupported by documentation, to be unreliable hearsay). Therefore, information regarding how a survey was conducted, the number of participants surveyed, and the geographic scope of the survey may assist the examining attorney in determining the probative weight of such evidence.
Evidence of secondary meaning may be sufficient if it shows that a substantial portion of the consuming public associates the proposed mark with a single source. See Perini Corp. v. Perini Constr., Inc., 915 F.2d 121, 125, 16 USPQ2d 1289, 1292 (4th Cir. 1990) (quoting Food Fair Stores, Inc. v. Lakeland Grocery Corp., 301 F.2d 156, 161, 133 USPQ 127, 131 (4th Cir. 1962)); J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §§15.45, 32.190 (4th ed. 2013); see also In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1127, 227 USPQ 417, 424 (Fed. Cir. 1985) (noting "the results show a syndetic relationship between the color ‘pink’ and Owens-Corning Fiberglas in the minds of a significant part of the purchasing public"). As noted by the Court of Customs and Patent Appeals (the predecessor to the Court of Appeals for the Federal Circuit), "proof of distinctiveness requires more than proof of the existence of a relatively small number of people" who associate the proposed mark with the applicant. Roselux Chem. Co. v. Parsons Ammonia Co., 299 F.2d 855, 862, 132 USPQ 627, 633 (C.C.P.A. 1962) . Although all evidence must be reviewed on a case-by-case basis, generally, survey results showing less than 10% consumer recognition are insufficient to establish secondary meaning, and results over 50% are sufficient to establish secondary meaning. See id. (finding 10% insufficient to establish secondary meaning); In re Owens-Corning Fiberglas Corp., 774 F.2d at 1127–28, 227 USPQ at 424–25 (finding 50% probative in establishing secondary meaning given the totality of the evidence); Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §§15.45, 32.190 (4th ed. 2013). However, the probative value of a survey is significantly weakened, despite consumer recognition rates greater than 50%, if there are flaws in the way the survey is conducted. See Stuart Spector Designs Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, 1569–71 (TTAB 2009) .
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.