Westchester Women's Bar Association

Using 'Other Evidence' to Show Acquired Distinctiveness

If your mark is refused for failing to be inherently distinctive or more commonly stated as merely descriptive of the goods or services, an applicant may attempt to prove that the trademark has acquired distinctiveness (secondary meaning). Whether acquired distinctiveness is demonstrated is a question of fact. The burden will be on the applicant to show acquired distinctiveness or secondary meaning. If the applicant can demonstrate its trademark has acquired distinctiveness, then it will register under Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f). See our firm page entitled, What Is Acquired Distinctiveness And Secondary Meaning, for the three types of evidence that can be submitted to show acquired distinctiveness. This page will focus on the third type of evidence, referred to as "other evidence".

If the applicant does not have five years of use of the mark in commerce, or own an active prior registration on the Principal Register for the same mark for similar goods and services, then the applicant can submit other competent evidence. This "other evidence" must show the mark has significance to the public, that upon encountering the mark, the public knows it is produced by one particular manufacturer or has one source. The relevant consumers do not need to know whom the one source or one manufacturer is, it can be an anonymous source.

The burden on the applicant may be greater based on certain facts. For example, the burden will be heavier if use has not been exclusive. In addition, more evidence will be required where a trademark is so highly descriptive that consumers will be less likely to believe that it indicates a single source in only one party. If there is evidence showing that third parties in the applicant's field or in a related field use the same wording as the mark or substantially the same wording, this will show the mark to be highly descriptive.

To better understand this concept, we can turn to a recent Trademark Trial and Appeal Board case. See In re Yarnell Ice Cream, LLC, Serial No. 868242279 (July 9, 2019) [precedential], where the applicant was seeking to register the mark SCOOP for ice cream and frozen confections that are promoted and distributed by a mascot named Scoop. The mark was refused on several grounds, one of which was merely descriptiveness and for failing to acquire distinctiveness. To determine how much evidence is required for proving acquired distinctiveness, the Board must make a finding regarding the degree of descriptiveness in relationship to the goods or services. The degree of descriptiveness will vary from merely descriptive to generic. The mark in this case was held to be highly descriptive for ice cream because "SCOOP" is a common portion size and measuring unit for ice cream. The Board determined that "SCOOP" would have little if any source identifying capacity. Therefore, more evidence of secondary meaning would be required to prove secondary meaning.

The Board will consider a variety of factors to evaluate whether there is secondary meaning. However, the six most important factors are: (1) association of the mark with a particular source by the relevant consumers (measured by consumer surveys or consumer studies); (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. See Converse Inc. v. Int'l Trade Comm'n, 907 F.3d 1361, 128 USPQ2s 1538 (Fed. Cir. 2018). Similar to the du Pont factors, all of the factors will be considered if there is evidence in the record. In certain cases, a declaration by the applicant that there has been five years of continuous and exclusive use of the mark may be sufficient to demonstrate acquired distinctiveness, but this is not the case with highly descriptive marks.

The applicant for the mark SCOOP introduced evidence of exclusive and continuous use of the mark for five years, a declaration from one employee, media coverage, and an email indicating that one individual requested to use the mark. However, there was no evidence of advertising (showing the type, the volume, or amount spent), sales success, or consumer studies. In addition, a good portion of the evidence failed to show the mark functioning as a source identifier. The evidence seemed to indicate that the mark identified the mascot, but not the source of the goods. There was no evidence of how many times the mascot appeared at live events with the branding or whether the media coverage was unsolicited. In the end, the Board held that the mark SCOOP did not acquire distinctiveness and affirmed refusal of the mark. If you have questions regarding your mark's strength, and whether it can register at the USPTO, please feel free to contact the firm for a courtesy consultation.

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