As the Senate hearings for Judge Amy Coney Barrett conclude, and as her confirmation looms nearly certain, I’ve been wondering where she falls on Intellectual Property (IP) issues. Turns out so have others.

An article posted on Bloomberg Law titled “Where Does Judge Barrett Fall on IP Issues” noted that Judge Barrett has only decided a small number of IP-related cases during her three years at the Seventh Circuit but has applied a textualist approach each time.  In reviewing her trademark and trade secret decisions where there was a clear result, the authors found that Judge Barrett has neither clearly favored intellectual property owners (siding with them three times) nor accused infringers (siding with them two times).  The takeaway from the authors is on textualism: “The U.S. Supreme Court has increasingly taken a textualist approach to intellectual property issues in recent years, and President Donald Trump’s nomination of Judge Amy Coney Barrett to the high court promises to continue that trend, if she is confirmed.”

34126235 - copyrightThe Copyright Alliance’s blog recently asked, “What Would Amy Coney Barrett’s Supreme Court Confirmation Mean for Copyright?”  The blog references two decisions the Supreme Court issued while Judge Barrett was clerking for the late Justice Antonin Scalia and also the judicial panels on which Judge Barrett has served that have decided cases involving copyright law.  The blog concludes that Judge Barrett has been exposed to “complex infringement disputes and important copyright doctrines that will influence her consideration of the critical copyright issues that come before the Supreme Court.”

IP issues do not appear to have been a focus of Judge Barrett’s confirmation hearings, though she did answer a few IP-related questions from Senator Thom Tillis, Chair of the Senate Intellectual Property Subcommittee, according to an IP Watchdog article summary.  When asked about patent eligibility decisions, Judge Barrett responded that “clarity in decision-making is always something that courts should strive for” and that “clarity is certainly a virtue in this context.”  The IP Watchdog, recognizing that patent law issues would not have come before Judge Barrett at the Seventh Circuit, concluded that these remarks “should sound a hopeful note to the ears of innovators.”  Later responding to Senator Tillis’ questions about copyright law and technology, Judge Barrett responded, “Most of the things you are identifying sound to me like matters of policy, so those seem like matters that are best addressed by the Legislature; the democratically elected body, not policy made by courts.” The IP Watchdog, noting that these comments likely do not provide insight into copyright activism from the bench, concluded that Judge Barrett believes “matters of policy are best addressed by Congress, as is intended by the Constitution.”

A change on the Supreme Court always yields questions about what direction the court will take on various issues.  Although not a focus to date, where the next Supreme Court justice lands on IP issues will inevitably matter in the years to come.

In the COVID-19 era, sports leagues have had to come up with creative ways to move forward with their seasons in a safe and stable environment. The solution for multiple leagues has been to create a “bubble,” in which athletes only interact with other athletes and approved team and league personnel. Essentially, how it works is upon entering the bubble—an area equipped to host multiple games and house multiple athletes—each athlete and participating team and league personnel are tested for COVID-19. Any athletes that test negative can enter the bubble, but continue to be tested regularly to be safe. Any athletes that test positive for COVID-19, however, must quarantine for at least two weeks after testing positive, and afterwards must receive two negative tests in a row to enter the bubble. To date, leagues that have taken this approach have experienced a fair amount of success, have avoided any COVID-19 outbreaks, and have been able to continue on with their seasons.

Of course, the introduction of sports bubbles in the COVID-19 era has gone hand in hand with entities and individuals attempting to trademark different terms and phrases that in some way relate to these bubbles. In late July, the Women’s National Basketball Association started its season in a bubble located in Orlando Florida. Quickly, WNBA players began using the term “Wubble” to refer to their league’s bubble. Shortly thereafter, the WNBA filed for a trademark for the term “Wubble.” Similarly, although it is not yet confirmed, the NCAA is considering hosting their yearly March Madness tournament in a bubble. Considering this a likely possibility, the NCAA recently applied to trademark the phrase “Battle in the Bubble.

Seeking trademarks related to COVID-19 isn’t referenced just for leagues, however. Individual athletes as well have sought to trademark terms or phrases related in some way to the events surrounding their league’s bubble. The NBA—which finished out the second half of their season and their playoffs in a bubble—has had multiple players file for bubble related trademarks. For instance, Miami Heat player Jimmy Butler has filed for three trademarks related to a grassroots coffee business he started from his own hotel room. Further, Los Angeles Clippers player Lou Williams filed for the trademark “Lemon Pepper Lou,” after he received criticism and was forced to quarantine after leaving the NBA bubble to purchase chicken wings.

Presumably, no matter what new situations present themselves in the world, there will always be those seeking to capitalize by connecting a trademark to those situations’ most unique aspects.

On September 25, 2020, the TTAB issued a non-precedential decision summarily rejecting an applicant’s attack against an examining attorney’s refusal to register the mark NATURAL LEAF CBD LIVE BETTER NATURALLY & Design for use on and in connection with dietary and nutritional supplements infused with CBD hemp oil extracts. The examining attorney had refused registration of the mark in view of the USPTO’s “Legal Use” requirement.

CBD is an abbreviation for “cannabidiol”—a chemical component of the cannabis plant that is regulated as a drug under the federal Food, Drug & Cosmetics Act (“FDCA”). The FDCA prohibits “[t]he introduction or delivery for introduction into interstate commerce of any food to which has been added … a drug or biological product for which substantial clinical investigations have been instituted and for which the existence of such investigations has been made public….” 21 U.S.C. § 331(ll). The FDCA deems a “dietary supplement” a “food.” Id. § 331(ff).

In view of these provisions, the examining attorney refused registration of NL’s mark for lack of lawful use in commerce, arguing that the goods, which contain CBD, are per se violations of the FDCA and the federal Controlled Substances Act (“CSA”).

In appealing the refusal of registration to the TTAB, Applicant NL LLC (“NL”) argued first that the Lanham Act’s use requirement does not require “lawful” use—it merely requires use in commerce. NL further argued that, because use of the NATURAL LEAF CBD mark is legal under Colorado law, the mark comports will all requirements for federal registration.

The TTAB quickly disposed of NL’s arguments noting that the TTAB “‘has consistently held that, to qualify for a federal … registration, the use of a mark in commerce must be lawful.’” [Decision, at p. 3 (quoting In re PharmaCann LLC, 123 USPQ2d 1122, 1123-24 (TTAB 2017)]. Accordingly, the goods for which the applicant uses the applied-for mark cannot be illegal under federal law. [Id., at p. 4]. In finding NL’s goods violative of the FDCA, the TTAB found:

[NL’s] goods are food to which has been added a drug (CBD); substantial clinical investigations of CBD have been instituted, and the existence of these investigations has been made public; and there is no evidence of record that CBD was marketed in food before the substantial clinical investigations of CBD were instituted.

[Decision, at pp. 4-5].

In rejecting NL’s argument that the Lanham Act does not require “lawful use,” the TTAB also noted that numerous federal courts have disagreed with Applicant, affirming the USPTO’s long-standing application of the lawful use requirement. [Id., at p. 5].

Additionally, the TTAB rejected NL’s argument that the USPTO cannot require lawful use where it conflicts with state law noting, “‘[T]he fact that the provision of a product or service may be lawful within a state is irrelevant to the question of federal registration when it is unlawful under federal law.’” [Id., at p. 9 (quoting In re Brown, 199 USPQ2d 1350, 1351, 1352 (TTAB 2016) (emphasis added)]. In reaching this conclusion, the TTAB noted that the Supremacy Clause clearly provides that, “‘if there is any conflict between federal and state law, federal law shall prevail.’” [Id., at p. 9 (quoting Gonzales v. Raich, 545 U.S. 1, 27, 29 (2005)].

The decision is In re NL LLC, Serial No. 87864999 (TTAB Sept. 25, 2018) (non-precedential).

The Federal Trade Commission (FTC) has a “Cooling-Off Rule” that gives consumers a three-day right to cancel a sale made at their home, workplace, or dormitory, or at a seller’s temporary location, like a hotel or motel room, convention center, fairground, or restaurant. Thus, the Rule applies both to in-home presentations and to in-person seminars and craft shows.  However, there are a number of exemptions, such as sales under $25, sales made online or over the phone, and goods not primarily intended for personal, family, or household purposes.

As explained by the FTC, a seller in these situations must, at the time of sale, provide the consumer specific information and documents alerting the consumer to his or her right to cancel using a cancellation form.  If the consumer cancels, the seller has 10 days to (1) cancel and return any check the consumer signed, (2) refund the consumer’s money and inform the consumer whether any goods in the consumer’s possession will be picked up, and (3) return any trade-in.  The seller also has 20 days to pick up the goods or reimburse for mailing expenses.  If the consumer is returning any goods, the goods should be in as good of condition as when the consumer received them.

If a consumer believes that a company has violated the Cooling-Off Rule, he or she can file a complaint with the FTC.  The FTC also recommends that consumers contact their state Attorney General or local consumer protection agency.  Consumers can also raise complaints with the Better Business Bureau.

As a reminder, the FTC accepts consumer complaints on a wide variety of topics, including these topics provided on the FTC’s website:

  • Identity theft
  • National Do Not Call Registry violations
  • Computers, the internet and online privacy
  • Telemarketing scams
  • Credit scams
  • Immigration services
  • Sweepstakes, lotteries, and prizes
  • Business opportunities and work-at-home schemes
  • Health and weight loss products
  • Debt collection, credit reports, and financial matters

For years, scam artists have targeted trademark owners with communications that mimic notices from the United States Patent and Trademark Office (USPTO) or other governmental entities.

Unfortunately, there is no end in sight for these fraudulent activities. The USPTO recently reported an uptick in these schemes, as well as a proliferation of new “tools” used to carry them out. Trademark owners should keep abreast of these ever-evolving schemes and pay particular attention to any communications they receive from any party (other than their attorney of record) regarding their registrations or applications.

Typically these scams are designed to instill fear in trademark owners and convince them to take some sort of immediate action. They warn (falsely) that the trademark owner has missed a filing or payment deadline or is at risk of losing trademark registration rights unless the owner executes a power of attorney or pays certain “official fees.”

To lull trademark owners into a false sense of security, these communications use official sounding names, such as the “Patent and Trademark Office,” the “Patent and Trademark Bureau” or the “Trademark Compliance Center.”

Victims of these schemes can find themselves out of pocket for significant sums or, in some cases, having authorized a third party to take action with respect to the owner’s registrations or pending trademark applications.

In the past, the scam artists focused primarily on hardcopy communications purporting to offer legal services, assistance with trademark filings and other services, such as recording trademarks in a “private registry.” Recently, however, efforts have shifted to email scams.

What to Watch Out For

Scam artists use a variety of tactics to make their emails appear to be official governmental communications. Owners of U.S. trademark registrations may receive emails that appear to originate from the USPTO’s domain, @uspto.gov.

In particular, the USPTO has warned owners to beware of messages that do the following:

  • Spoof the USPTO email address (e.g., noreply@uspto.gov);
  • State that the USPTO has implemented “a new policy” requiring separate registration of clients and that there is a penalty for not complying; and
  • Provide incorrect USPTO trademark filing information (e.g., incorrect fee information).

What to Do if You Receive a Communication

Do not respond directly to any communication about one of your trademark applications or registrations – even if the communication appears to originate from the USPTO – and never pay any fees or provide any information to sender of such a communication.

Read the fine print. Pay particular attention to the email domain of the author of the email.

If you have an attorney of record who filed your application and remains the attorney of record for your registration, contact the attorney and inform them of the communication. Your attorney will be able to determine if the communication is legitimate and if you need to take any action.

If you do not have an attorney of record and you have received a communication you believe is from the USPTO, you should confirm the validity of the communication by visiting the USPTO’s Trademark Status & Document Retrieval database. By entering the trademark application or registration number in the TSDR database, you can see all outgoing communications from the USPTO, except for the application filing receipt. If the letter or email you received does not appear in the TSDR file, it likely did not come from the USPTO.

Further, the USPTO also provides examples of solicitations from entities that are not affiliated with the USPTO, and a list of known scam artists.

By taking the above steps, you can significantly reduce the risk of falling prey to a scam.

If you have received one of these fraudulent emails or paid money in response to an email scam, you can file a complaint with the Federal Trade Commission.

In the recent decision In re Hop Daddy LLC (Serial No. 88175921), the TTAB reexamined the contours of the doctrine of foreign equivalents.

The USPTO refused Hop Daddy’s application to register the mark SALTY BULL BREWING & Design (with “BREWING” disclaimed) for “Restaurant and bar services; Taproom services; Taproom services featuring beer brewed on premises,” based on a perceived likelihood of confusion with U.S. Trademark Registration No. 5150833 (the “‘833 Registration”) for the plain work mark TORO SALAO. The ‘833 Registration recites Class 043 services in the nature of “Restaurant services, including sit-down service of food and take-out restaurant services.”

In refusing registration of Hop Daddy’s mark, the examining attorney argued that the services at issue overlapped and that the earlier, registered mark TORO SALAO is Spanish for “salty bull.” Hop Daddy appealed the refusal of registration.

On appeal, the TTAB acknowledged substantial differences between the two marks in terms of appearance and sound, but noted, “[E]quivalency in meaning or connotation can outweigh the differences in marks.” [Decision, at p. 8]. Thus, the TTAB undertook a review of the examining attorney’s application of the doctrine of foreign equivalents.

At the outset, the TTAB noted that the doctrine is “not absolute” and “should be viewed merely as a guideline.” [Id., at pp. 8-9]. Further, the TTAB cautioned that examining attorneys should apply the doctrine “only when: (1) the relevant English translation is direct and literal and there is no contradictory evidence establishing another relevant meaning … and (2) “it is likely that the ordinary American purchaser would ‘stop and translate [the word] into its English equivalent.’” [Id.]. That said, the TTAB stated that the “ordinary American purchaser” includes “all American purchasers, including those proficient in a non-English who would ordinarily be expected to translate words into English.” [Id., at p. 9].

In support of the refusal of registration, the examining attorney submitted a webpage from an online language dictionary showing that the word “toro”, in Spanish, translates to “bull”, in English. Further, she provided a second webpage from the same website purportedly showing that the adjective “salao”, in Spanish, translates to “salty”, in English.  [Id., at p. 10].  The examining attorney’s  evidence relating to the term “salao”, however, consisted solely of two blog posts providing differing opinions on the possible meaning of “salao”, depending on the context in which the speaker used the word. [Id., at pp. 10-11]. Accordingly, the TTAB ultimately found that “there is no clear single translation and connotation provided for the term SALAO.” [Id., at p. 11].

In ruling the doctrine foreign doctrine equivalents in applicable, the TTAB stated:

Although “we have routinely applied the doctrine of foreign equivalents to Spanish language marks,” … the absence of any actual dictionary translation from a recognized source for this common language raises some doubt as to whether “salty” is a direct and literal translation of SALAO. Moreover, according to the Cambridge and Collins dictionaries, the direct translation of “salty” from English to Spanish and vice-versa is “salado.”

[Id., at pp. 11-12 (internal citations omitted) (emphasis added)].

Having ruled the doctrine of foreign equivalents inapplicable, the TTAB reversed the examining attorney’s refusal registration, finding that significant differences in overall appearance, sound, connotation, and commercial impression strongly supported a finding of no likelihood of confusion between the marks. [Id., at p. 12].

Earlier this month, the Trademark Trial & Appeal Board (TTAB) issued a  precedential ruling that the term “Gruyere” for cheese is generic.  In 2015, Swiss and French industry groups sought a certification mark for the term, arguing that the mark certifies that the cheese is from the Gruyere region of Switzerland and France.  The U.S. Dairy Export Council and other American groups filed notices of opposition, arguing that Gruyere is a generic term.  In its ruling, although noting that the term Gruyere derives from a geographic region in Switzerland, has been made in France for hundreds of years, and had been given a protected designation recognized by the European Union, the Board sided against the Swiss and French industry groups.

The Board applied the following genericness test: (1) what is the genus of goods or services at issue, and (2) does the relevant public understand the designation primarily to refer to that genus of goods or services?  Utilizing that test, and relying on various pieces of evidence, the Board determined that the genus of goods is cheese and that consumers of cheese understand Gruyere to refer to a category of cheese that is not limited to a specific geographic region but rather can come from anywhere.  As such, the Board found the term generic and ineligible for protection as a trademark.

The Board’s ruling means that Swiss and French industry groups will not be able to police use of the term Gruyere by American companies, absent a reversal on appeal or different outcome in district court. It could also have future implications on other similar food or beverage names involving a geographic region where the name has become genericized.

On August 5, 2020, the United States Court of Appeals for the Federal Circuit affirmed the TTAB’s decision to cancel a trademark registration for the mark HOLLYWOOD BEER as a discovery sanction for the registrant’s repeated, frivolous filings and failure to comply with discovery orders.

In August 2015, Hollywood Vodka, LLC (“HVL”) filed a petition to cancel Kris Kaszuba’s registration for the mark HOLLYWOOD BEER. Following a lengthy and somewhat tortured pleading stage, the parties moved on to discovery. Due to repeated filings that continually delayed the case, the TTAB issued an Order directing Kaszuba to seek leave from the Interlocutory Attorney before filing any future submissions. The TTAB did not issue a similar warning to HVL because HVL had just retained new counsel.

In November 2017, the TTAB granted, in part, HVL’s motion to compel discovery based on Kaszuba’s failure to respond to interrogatories and document requests. The TTAB ordered Kaszuba to respond to the discovery requests, but denied HVL’s request for sanctions. The TTAB, however, cautioned Kaszuba that the failure to respond to the discovery requests could result in “a renewed motion for sanctions, including entry of judgment as appropriate.” The TTAB further directed both parties to seek leave before filing any new motions.

Without explanation, Kaszuba chose not to respond to the discovery requests, instead filing a request for permission to seeking reconsideration of the TTAB’s November 2017 decision on HVL’s motion to compel. The TTAB denied Kaszuba’s request.

Despite the TTAB’s ruling, Kaszuba again failed to respond to the discovery requests, leading to another motion for sanctions and another motion for reconsideration—both of which the parties filed without leave. The TTAB denied the motions, noting that Kaszuba had “deliberately sought to evade and frustrate” HVL’s efforts to take discovery. The TTAB granted Kaszuba an additional extension of time to serve discovery responses and cautioned Kaszuba that, if he again failed to comply with the discovery order, the TTAB would enter judgment against him following motion by HVL.

Kaszuba, again, failed to serve the requested discovery responses and continued to file numerous submissions with the TTAB seeking reconsideration of the TTAB’s Orders, claiming that the TTAB had treated him unfairly. HVL ultimately filed a renewed motion for sanctions seeking entry of judgment or an order precluding Kaszuba from introducing evidence at trial.

The TTAB granted HVL’s motion, entering judgment against Kaszuba. In its Order, the TTAB acknowledged that the sanction was harsh, but held “no less drastic remedy would be effective and there is a strong showing of willful evasion.”

On appeal, Kaszuba argued that the TTAB based the cancellation of his mark on “erroneous and inadequate filings.” In affirming the TTAB’s decision, the Federal Circuit noted: “Kaszuba [did] not offer any explanation for his refusal to comply with the Board’s orders compelling discovery, despite the multiple extensions afforded to him. Nor [did] he provide any basis for us to conclude that the Board abused its discretion in imposing the sanction of default judgment.” The Federal Circuit also pointed to the Board’s repeated warnings that his failure to comply with the TTAB’s discovery orders could result in entry of a default judgment against Kaszuba and that the TTAB had granted Kaszuba multiple extensions of time to produce the requested discovery.

The Federal Circuit’s decision underscores the need to timely comply with discovery obligations and the specifics of TTAB Orders. Failure to do so, can result in the loss of trademark rights—a result that all parties and trademark practitioners obviously want to avoid. Yet another reminder that parties and counsel’s conduct before the TTAB should be above reproach.

The case is Kris Kaszuba, d/b/a Hollywood Group v. Andrei Iancu, Docket No. 2019-1547 (Fed. Cir. Aug. 5, 2020).

On July 28, 2020, the TTAB issued a precedential decision regarding an underutilized method for responding to summary judgment motions filed before the non-moving party has had a reasonable opportunity to obtain relevant discovery.

In Anand K. Chavakula v. Praise Broadcasting AKA Praise FM (Cancellation No. 92071482), Chavakula filed a petition to cancel Praise FM’s registration for the mark PRAISELIVE & Design based on an alleged likelihood of confusion with Chavakula’s purportedly earlier, unregistered PRAISELIVE mark.

Despite having repeatedly failed to respond to Praise FM’s discovery requests, Chavakula filed a motion for summary judgment prior to the close of discovery.  Rather than file a brief in opposition, Praise FM invoked Federal Rule of Civil Procedure 56(d), an underutilized method for obtaining discovery necessary to adequately respond to a motion for summary judgment.

Pursuant to Rule 56(d), if a party served with a motion for summary judgment shows, by affidavit or declaration, that, for specified reasons, it cannot present facts essential to justify its opposition, the court (or in this case, the TTAB) may (1) defer considering the motion or deny it, (2) allow the non-moving party time to obtain affidavits or declarations or to take discovery, or (3) issue any other appropriate order.  Fed. R. Civ. P. 56(d).  To obtain the protections afforded by Rule 56(d), the party must state specific reasons why it is unable, without discovery, to present facts necessary to oppose the motion for summary judgment.  Further, the requested discovery must be reasonably directed to obtaining facts essential to the party’s opposition to the motion for summary judgment.

Praise FM argued that it required discovery regarding Chavakula’s asserted priority, as well as certain likelihood of confusion factors, to adequately respond to the motion for summary judgment.  In support of its position, Praise FM directed the TTAB to numerous of its outstanding discovery requests that were specifically directed to these issues—including numerous requests that covered certain “undisputed” facts set forth in Chavakula’s summary judgment motion.

The TTAB granted Praise FM’s Rule 56(d) motion, stating that Chavakula’s summary judgment motion “places in issue any matters that are probative of [Chavakula’s] asserted priority, and likelihood of confusion.”  Further, while acknowledging that a party invoking Rule 56(d) need not have previously sought discovery, the TTAB stated that Praise FM had, in fact, timely sought discovery regarding these issues.  In light of these facts, the TTAB found that Praise FM had adequately explained “why it is unable to prepare a response [to the summary judgment motion] without discovery and confirm[ed] that what it needs is largely within [Chavakula’s] possession, custody, or control.”

In granting Praise FM’s motion, the TTAB noted that the purpose of Rule 56(d) is to protect non-movants “from being ‘railroaded’ by premature summary judgment motions.”  Moreover, the TTAB stated that, although it rigorously applies the requirements of Rule 56(d), and denies such motions when they are unsupported, the TTAB “will not penalize a Rule 56(d) movant whose motion is less than ideally supported when the motion arises from the actions of an uncooperative or recalcitrant adversary who gridlocks discovery.”

The TTAB granted Chavakula 20 days to respond to the outstanding discovery requests identified by Praise FM, without objection, and to serve all requested documents, labeled with bates numbers.  The TTAB further granted Praise FM 40 days from the date of Chavakula response deadline to file an opposition to the motions for summary judgment.

Practitioners often consider filing an early summary judgment motion to gain a strategic advantage or to bring a quick close to an opposition or cancellation proceeding.  The Chavakula decision, however, serves as a stark reminder that such efforts may prove futile if the moving party has been unreasonable or failed to adequately comply with its own discovery obligations.

Conversely, the TTAB’s ruling reminds non-moving parties facing premature summary judgment motions that there is an avenue available for obtaining the discovery necessary to respond to such motions—if the non-moving party can satisfy the stringent requirements of Rule 56(d).

On July 30, 2020, the U.S. Trademark Trial and Appeal Board (TTAB) issued a precedential decision holding, in effect, that the mark GUARANTEED RATE is too common for registration in the absence of a consumer survey showing acquired distinctiveness.

Applicant, Guaranteed Rate Inc., sought registration on the USPTO’s Principal Register of the plain word mark GUARANTEED RATE and a GUARANTEED RATE design mark for use with various mortgage financing and banking services. The examining attorney refused registration of the applied-for marks deeming the marks descriptive and finding Applicant’s claim of acquired distinctiveness insufficient. The examining attorney also refused registration of the subject marks on the ground that the term GUARANTEED RATE, as used in the marks, is incapable of functioning as a mark because it is merely informational.

In appealing the examining attorney’s refusal of registration, Applicant conceded that the phrase GUARANTEED RATE is merely descriptive of its services.  However, Applicant argued that it had presented the examining attorney with sufficient evidence to carry its burden of proving acquired distinctiveness for the subject marks.

Despite Applicant’s arguments, the TTAB affirmed the examining attorney’s refusal of registration, finding the term GUARANTEED RATE to be highly descriptivei.e., a “key aspect”—of Applicant’s services and concluding that Applicant had failed to satisfy the substantial burden of establishing acquired distinctiveness for the marks.

In determining whether the term GUARANTEED RATE has acquired distinctiveness, the TTAB considered the 6 factors set forth in In re Snowizard, Inc., 129 USPQ2d 1001, 1005 (TTAB 2018) (quoting Converse, Inc. v. ITC, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018)):

[T]he considerations to be assessed in determining whether a mark has acquired secondary meaning can be described by the following six factors: (1) association of the [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.

Applicant submitted evidence regarding the second, third, fourth, and sixth factors, but did not submit a consumer survey or other direct evidence. Specifically, Applicant submitted evidence showing, among other things, that:

    1. Applicant has used the phrase GUARANTEED RATE in connection with the recited mortgage services since at least as early as 2000;
    2. Applicant owns two registrations for GUARANTEED RATE AFFINITY for the same services, both of which issued with a claim of acquired distinctiveness for GUARANTEED RATE;
    3. Applicant spent more than $140 million promoting its services under the subject marks (primarily under the design mark);
    4. Applicant has received favorable media coverage; and
    5. Applicant is the fifth largest mortgage company in the United States.

The TTAB found Applicant’s advertising and sales figures “impressive.” However, the TTAB was “not convinced that this evidence demonstrates consumer recognition of this highly descriptive wording as indicating a single source because of the extensive evidence of third party use” of the term “guaranteed rate.” (emphasis added).  The TTAB further held that, even if Applicant’s use of GUARANTEED RATE had been substantially exclusive since 2000, this factor, alone, would not be dispositive of the acquired distinctiveness question.

With respect to Applicant’s existing registrations, the TTAB acknowledged that, “inappropriate cases,” ownership of registrations of the “same mark” may be accepted as prima facie evidence of distinctiveness “if the goods or services are sufficiently similar to the goods or services in the application.” The TTAB, however, recognized that, under applicable Trademark Rules, the examining attorney can require further evidence from Applicant and, given the high degree of descriptiveness at issue with respect to the applied-for marks, Applicant faces a “proportionally higher burden” in showing acquired distinctiveness.

Here, the TTAB found Applicant’s existing registrations insufficient to support a finding of acquired distinctiveness for the subject marks because (1) the term GUARANTEED RATE is highly descriptive, (2) the prior registrations are less than 5 years old and still susceptible to a third party’s challenge on grounds of mere descriptiveness, and (3) the public understands and uses the phrase “guaranteed rate” to describe a feature of Applicant’s mortgage lending services. More specifically, the TTAB held: “Consumers are likely to perceive the term ‘Guaranteed Rate’ when used in connection with mortgage lending services not as a trademark for one company, but rather as a term commonly used by many entities in the industry.”

The TTAB specifically recognized that applicable law does not require survey evidence to establish acquired distinctiveness.  However, the TTAB went on to conclude that  Applicant’s sales and advertising figures, length of use, and prior registrations failed to establish acquired distinctiveness in the absence of survey evidence showing consumer recognition of the applied-for marks. In reaching this conclusion, the TTAB noted, “[O]ur society is better served if … highly descriptive or generic marks remain available for use among competitors.”

The TTAB affirmed the refusal of registration for the plain word mark and afforded Applicant 30 days in which to submit a disclaimer of the words “guaranteed rate” for the design mark.

The TTAB’s decision will likely raise some uncertainty among practitioners regarding what constitutes a “highly descriptive” mark and when evidence of extensive sales, advertising expenditures, and length of exclusive use are insufficient to prove acquired distinctiveness such that consumer survey becomes necessary to achieve registration.