Protecting Unregistered Descriptive Trademarks in the Seventh Circuit: Acquired Distinctiveness

When attempting to enforce or assert an unregistered descriptive mark, a trademark owner generally needs to show acquired distinctiveness (a.k.a. secondary meaning). Why?

First, the default position is that merely descriptive terms are not likely to be seen as a source indicator (i.e. the function of a trademark) to consumers. Courts have described this in a number of ways including that descriptive terms “are a poor means of distinguishing one source of services from another.” M.B.H. Enters. v. Woky, Inc., 633 F.2d 50, 54 (7th Cir. 1980).

Second, when a merely descriptive term is not seen as a source indicator by customers, such terms should be available for use by competitors to describe their goods or services. Id.

However, a merely descriptive term can become protectable when the relevant purchasing public comes to recognize the term as a source indicator rather than merely descriptive. Therefore, a term has acquired distinctiveness (or secondary meaning) were consumers think of the term not as descriptive, but as the name of the product or service. Packman v. Chi. Tribune Co., 267 F.3d 628, 638 (7th Cir. 2001).

Stated another way, acquired distinctiveness is found where there is “a mental association in the buyers’ minds between the alleged mark and a single source of the product [or service].” Echo Travel, Inc. v. Travel Assocs., 870 F.2d 1264, 1266 (7th Cir. 1989).

How do we know when this mental association exists? Courts in the Seventh Circuit consider a number of acquired distinctiveness factors, including:

  • (a) direct consumer testimony;
  • (b) consumer surveys;
  • (c) exclusivity, length, and manner of use;
  • (d) amount and manner of advertising;
  • (e) amount of sales and number of customers;
  • (f) established place in the market; and,
  • (g) proof of intentional copying.

[Echo Travel, Inc. v. Travel Assocs., 870 F.2d 1264, 1267 (7th Cir. 1989); Baig v. Coca-Cola Co., 607 F. App’x 557, 560 (7th Cir. 2015).]

Factors (a) and (b) are considered direct evidence while the remaining factors are circumstantial evidence. Direct evidence involves asking customers whether they recognize the term at issue as a source of a product and recording the results.

The factors concerning circumstantial evidence consider facts that could indicate the customers recognize the term as a source indicator. For example, long, exclusive and consistent use of a mark, under factor (c), weighs in favor of finding recognition. Further, a lot of advertising, sales, customers, and a prominent place in the market leans, under factors (d), (e), and (f), weights in favor of finding recognition.

For example, in the Echo Travel case, the court found that the plaintiff Echo Travel did not show acquired distinctiveness in a picture-mark, comprising a beach scene. Echo provided no admissible direct consumer evidence and no survey. The length of use of the picture-mark was one season comprising the fall of 1985 to the winter 1986, which did not weigh in favor of Echo. Echo’s advertising of 25,000 posters at 200 campuses was some evidence, but not enough where the court characterized it as providing “little probative light.”

Regarding sales, Echo ran 10,000 trips in Daytona Beach in the spring of 1986 resulting in about $2 million in sales. But the court criticized Echo for not providing its sales volumes prior to and after the 1985-86 season, and thus, “there is no way to measure whether the beach scene poster [mark] impacted its sales volume.” The court also found there was a lack of evidence that Echo has an establish place in the market and there was no proof of intentional copying.

In contrast, in Int’l Kennel Club of Chi., Inc. v. Mighty Star, Inc., 846 F.2d 1079, 1086-87 (7th Cir. 1988) the court found the plaintiff had shown a better than negligible chance of establishing secondary meaning in “International Kennel Club” sufficient for a preliminary injunction. While the plaintiff did not provide a survey, the court found that the amount and manner of advertising and the length and manner of use of the mark was sufficient. The plaintiff advertised in publications of interest to dog fanciers. It advertised in Chicago newspapers and magazines where its dogs shows are held. It mailed out mailings to its mailing list of 15,000 prior to each of its shows.

The plaintiff spent $60,000 in advertising and public relations expenses in its most recent fiscal year, representing 42 percent of the club’s expenses. Further it gained extensive free publicity. Moreover, it received letters and phone calls asking about defendant’s accused product, indicating that when dog fanciers see the “International Kennel Club” name, they think of the plaintiff. Last the plaintiff operated and used the International Kennel Club mark for over 50 years.

The requirement to show secondary meaning (acquired distinctiveness) for an unregistered descriptive mark is an additional burden (and expense) for a trademark owner. Consider the effort required put on evidence for each of the acquired distinctiveness factors above.

If the trademark owner is heavily invested in proceeding with a unregistered descriptive mark, it may need to bear that burden. But when choosing a mark, consider choosing a stronger mark to avoid the need to show acquired distinctiveness.

Don’t Bother Speculating in Trademarks: COVID-19 VAX and CORONAVAX Trademark Apps Likely To Fail

A company named And Still, LLC filed trademark applications to register COVID-19 VAX and CORONAVAX for vaccines.

The Boston Business Journal reported that the trademark applicant planned to sell the the trademarks to a company that makes a coronavirus vaccine.

If this is true, it is very unlikely to work.

There is No Market For Speculating in Unused Trademarks

First, there is no market for unused trademarks. As I’ve written before, it is a common misconception that filing a trademark application grants rights in a trademark without actually using the trademark.

Trademark rights are acquired by using the trademark in conjunction with the sale/providing of goods or services. An intent-to-use trademark application can be filed before a trademark is used with products or services, but only if there is a demonstrated bona fide intent–at the time the application is filed–to use the trademark with the goods/services described in the application.  M.Z. Berger & Co., Inc. v. Swatch AG, No. 2014-1219 (Fed. Cir. June 4, 2015).

Here, if And Still, LLC didn’t have an intent sell vaccines itself (or in some cases through an affiliated/controlled company) under the marks at the time the trademark applications were filed, the trademark applications are likely subject attack on this basis. Intent to sell the marks, without use, won’t work.

Descriptive Marks Require Acquired Distinctiveness

Second, a mark that is merely descriptive of the goods/services and has not acquired distinctness in the marketplace will be refused registration the primary register.

In 2019, the TTAB affirmed the refusal to register ZIKAVAX and ZICAVAC for vaccine formulations because each mark was descriptive.

Bharat Biotech International Limited applied to register these marks in 2017 following the epidemic caused by the Zika virus.

The TTAB found that misspelling of zika as ZICA did nothing to make ZICA non-descriptive. It also found that evidence showed that the VAX and VAC were common abbreviations for vaccine.

The TTAB concluded that “the proposed marks immediately describe the goods as Zika vaccines, because [t]he question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods or services are will understand the mark to convey information about them.”

Here, the COVID-19 VAX and CORONAVAX is likely to meet the same fate at the ZIKAVAX trademark application, a refusal as descriptive.

Descriptiveness refusals can be overcome by showing the mark at issue has become associated with a single source in the market place. This market recognition is known as acquired distinctiveness or secondary meaning. But that is unlikely here at this stage because the applications are intent-to-use applications. Intent-to-use applications tend to indicate that applicant has not yet used the mark. And without use, there is unlikely to be a marketplace association.

There’s also the option to place a descriptive mark on the supplemental register. But that’s if the marks are not generic. Also, a registration on the supplemental register does not provide a presumption that the registrant owns the mark.

Further, even if the marks where registered on the supplemental register, the marks would still need acquired distinctness for enforcement, which appears unlikely at this time.

Cite: In re Bharat Biotech International Limited, Serial Nos. 87570858 and 87570862 (TTAB 2019) (Refusing ZIKAVAX and ZICAVAC as descriptive of vaccine formulations).

Trademark Due Diligence in Corporate Transactions

At least one trademark is often involved in a sale, merger, asset purchase, or similar corporate transaction of a business. Below are some of the steps that a buyer might undertake to investigate a seller’s rights in trademarks involved in corporate transactions.

1. Proper Original Owner

A trademark application, and the resulting trademark registration, filed in the name of the wrong owner may be void and invalid. See TMEP § 803.06. Some errors in the manner the applicant was listed in the original application can be corrected, but some cannot. See TMEP 1201.02(c). Therefore, it is important to check whether the original applicant of the trademark registration was correct and properly identified on the application.

For many applications, a copy of the original trademark application can be found in the USPTO’s Trademark Status & Document Retrieval (TSDR) system.

If the trademark registration is void for being filed in the name of an uncorrectably wrong entity, then the trademark registration’s value may be discounted, and consideration should be made of filing a new trademark application.

2. Proper Chain of Title

Once it is established that the trademark registration arose from an application naming the correct owner, then the next item to review is the chain of ownership from the original applicant to the current owner. Each assignment and transfer of the registration of the underlying trademark should be reviewed to ensure a proper chain of title to the current owner of the trademark registration.

Ideally all of the assignments and transfers should have been recorded (but sometimes they are not) at the USPTO so that a search of title can be made at the USPTO’s Electronic Trademark Assignment System (ETAS). If gaps, errors, or unreleased security interests in the chain of title exist, they can be remedied before closing.

3. Assignments Include Associated Goodwill of the Business

A trademark cannot be assigned/sold alone (known as a “naked assignment” or a “assignment in gross”) without the goodwill of the business associated with the mark. U.S. Trademark law provides, “A registered mark or a mark for which an application to register has been filed shall be assignable with the good will of the business in which the mark is used, or with that part of the good will of the business connected with the use of and symbolized by the mark.” 15 USC 1060.

A naked assignment is invalid. See Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 956 (7th Cir. 1992) (“the transfer of a trademark apart from the good will of the business which it represents is an invalid ‘naked’ or ‘in gross’ assignment, which passes no rights to the assignee”).

Therefore, each assignment in the chain of title from the original trademark registration owner should be reviewed to ensure that it contains a recitation that the goodwill of the business associated with the mark was transferred with the trademark to the assignee.

4. Currently Accurate Description of Goods/Services in Registration

Overtime businesses can add and/or drop products and services. It is ideal for the description of goods and services in a trademark registration to accurately and completely cover the goods and services that are now offered under the corresponding trademark. The older the trademark registration is, the more chance that change in conditions have arisen so that the description of goods and/or services in trademark registration(s) is out of alignment with the current goods and services.

If the registration(s) do not cover some of the currently offered goods or services, a new trademark application can be filed on the same mark covering the goods/services not covered by the current registration(s) (since a trademark registration cannot be amended to add goods or services).

If the current registration list goods/services not currently offered and not planned to be offered in the future, at the time for renewal of the registration, the description can be changed to remove goods/services no longer offered.

5. Unregistered Trademarks Specifically Listed

While the above points are directed to trademarks that are registered, unregistered trademarks should also be considered. Trademark rights can arise from use of a trademark in connection with goods/services, without any registration. For example, the Lanham Act protects unregistered distinctive trademarks used in commerce. 15 USC 1125(a).

Therefore, a trademark transfer document should identify unregistered trademarks that are being transferred, in addition to registered marks. Further, the goods and services corresponding to each unregistered mark should ideally also be identified in the transfer document.

These are some steps that a buyer can perform in a corporate transaction involving trademark registrations.

Note: reference to trademarks in this post also includes service marks.

Trademark Office Likelihood of Confusion Factors: The DuPont Factors

The trademark office (USPTO) will review a trademark application to determine whether the mark in that application is likely to cause confusion with another registered mark. And, if so, it will refuse registration of the application.

In particular, the relevant statute provides that an applied-for mark will be refused registration when it “consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office… as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. §1052(d).

The USPTO uses the factors provided in In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973) to evaluate whether there is a likelihood of confusion, which are:

(1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. 
(2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use. 
(3) The similarity or dissimilarity of established, likely-to-continue trade channels. 
(4) The conditions under which and buyers to whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing. 
(5) The fame of the prior mark (sales, advertising, length of use). 
(6) The number and nature of similar marks in use on similar goods. 
(7) The nature and extent of any actual confusion. 
(8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion. 
(9) The variety of goods on which a mark is or is not used (house mark, “family” mark, product mark). 
(10) The market interface between applicant and the owner of a prior mark: 
(a) a mere “consent” to register or use. 
(b) agreement provisions designed to preclude confusion, i.e. limitations on continued use of the marks by each party. 
(c) assignment of mark, application, registration and good will of the related business. 
(d) laches and estoppel attributable to owner of prior mark and indicative of lack of confusion.
(11) The extent to which applicant has a right to exclude others from use of its mark on its goods. 
(12) The extent of potential confusion, i.e., whether de minimis or substantial. 
(13) Any other established fact probative of the effect of use.”

The weight given to these factors may vary in individual cases and all factors may not be relevant in every case. The USPTO sees the first and second factors as key when evaluating a trademark application, i.e. the similarities between the marks and the similarities between the goods.

Citations: In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973); TMEP 1207.01; 15 U.S.C.S §1052(d); In re Thor Tech, Inc., 113 USPQ2d 1546 (TTAB 2015).

Seventh Circuit Likelihood of Confusion Factors in Trademark Cases

To determine whether there is infringement in trademark cases, the question is whether there is a likelihood of confusion arising from the defendant’s use of a mark. Courts consider various factors to determine whether there is a likelihood of confusion. In the Seventh Circuit covering Illinois, Indiana, Wisconsin, federal courts consider the following factors:

1. the similarity between the marks in appearance and suggestion;
2. the similarity of the products;
3. the area and manner of concurrent use;
4. the degree of care likely to be exercised by consumers;
5. the strength of the plaintiff’s mark;
6. any actual confusion; and
7. the intent of the defendant to “palm off” his product as that of another.

The Seventh Circuit has also said that “These [factors] are useful insofar as they operate as a checklist to ensure that we do not overlook relevant evidence, but they are a means to an end, not an end in themselves.”

It also said, “No single factor is dispositive.” And “Courts may assign varying weight to each of the factors depending on the facts presented, though usually the similarity of the marks, the defendant’s intent, and actual confusion are particularly important.”

Citations: Bd. of Regents of the Univ. of Wis. Sys. v. Phx. Int’l Software, Inc., 653 F.3d 448, 454 (7th Cir. 2011); Autozone, Inc. v. Strick, 543 F.3d 923, 929 (7th Cir. 2008); Packman v. Chicago Tribune Co., 267 F.3d 628, 642 (7th Cir. 2001); Helene Curtis Indus. v. Church & Dwight Co., 560 F.2d 1325, 1330 (7th Cir. 1977).

TTAB Admits Wayback Machine Pages to Show Third Party Use of Mark

Tour Management Services Inc. sought to register CHARLESTON HARBOR TOURS for arranging travel tours and cruises and providing boat transport, among other services. Spiritline Cruise Lines opposed the application asserting that the mark was primarily geographically descriptive.

Spiritline sought to introduce printouts from the Wayback Machine of the Internet Archive (Archive.org) to establish that third party websites displayed “Charleston Harbor Tours” on various dates in the past. Spiritline provided a declaration from the office manager of the Internet Archive that the printouts were authentic. The Trademark Trial and Appeal Board (TTAB) admitted the printouts from the Wayback Machine into evidence. The TTAB found that the declaration established that the printouts qualified under the business record exception for hearsay.

The TTAB ultimately refused registration of the mark on the basis that CHARLESTON HARBOR TOURS was primarily geographically descriptive and had not acquired distinctiveness.

Citation: Spiritline Cruises LLC v. Tour Management Services, Inc., Op. No. 91224000 (TTAB Feb. 7, 2020).



Transferring Goodwill to a New Trademark: Using the Old and New Trademarks Together

Trademark owners develop goodwill associated with their trademarks by using the trademarks in connection with goods/services. Therefore, a name change risks loosing all the goodwill associated with the prior name in the marketplace. One way to mitigate this risk of loss is to use the old and new name together for a time. This will inform the marketplace that the new name is associated with the old. Hopefully some of the goodwill and recognition will transfer to the new name.

Recently Hitachi Power Tool rebranded as Metabo HTP. You can see the rebranding notice that was previously used below a miter saw in this Amazon listing:

This notice is very direct, providing a narrow to the new name and including the words “New Name.” They didn’t have to use “New Name”, but they did to be even more direct beyond the arrow.

You don’t have to use the “New Name” words. You could say Trademark A is now Trademark B. There are a number of options for trying to transfer the goodwill to a new name by using the old and new names together.

Unless the old brand is trying to escape a negative reputation by rebranding, the use of both the new and old trademark together for a time is a good method to try to transfer the goodwill and brand recognition developed under the old trademark to the new trademark.



Adding a Descriptive Word to a Mark Unlikely to Avoid Confusion When Common Words Are Strong

I previously wrote about the trademark application for BEAST MODE SOCCER. In that case, evidence of third party use was not close enough to weaken the two registered marks for BEAST MODE owned by retired NFL football player Marshawn Lynch.

Another issue in that case was whether the addition of SOCCER in the applied-for mark was sufficient to distinguish it from the registered marks. It was not.

The court said, “When one incorporates the entire arbitrary mark of another into a composite mark, . . . inclusion of a merely suggestive or descriptive element, of course, is of much less significance in avoiding a likelihood of confusion.” 

How was SOCCER word was descriptive of the applicant’s T-shirt goods? The applicant Copeland-Smith was a soccer coach. And he had been training soccer players under his mark BEAST MODE SOCCER, which was registered under another applciation for “coaching services in the field of soccer; providing group coaching and learning forums in the field of soccer.” 

The overlapping elements, BEAST MODE, were strong and the SOCCER element was weak as descriptive. Therefore, the addition of SOCCER to BEAST MODE was not sufficient to distinguish it from BEAST MODE and avoid a likelihood of confusion.

Case: In Re: Copeland-Smith, No. 2018-1968 (Fed. Cir. 2019).

Inventing Play-Doh: Repurposing an Obsolete Product

History provides numerous examples of what could be called “accidental” inventions– inventions that were discovered or developed for one problem or purpose while the inventor was working on something else. Examples include penicillin and the slinky, among reported others.

An article at the Smithsonian explains the origins of Play-Doh. The creation of the Play-Doh material was not an accident. Instead the product owner found a new use for an existing product.

The existing product was a compound originally used for wiping and removing soot from wallpaper. Demand was falling for this product as fuel sources for heating moved from dirtier coal to cleaner oil, gas, and electricity. Joseph McVicker’s company selling the wallpaper cleaner was struggling when his sister-in-law Kay Zufall, a nursery school teacher, found children liked molding the pliable compound into various shapes. Play-Doh as a childern’s product was born.

Zufall reportedly coined the Play-Doh product name as well.

Zukfall, as a teacher, saw the world and the product differently from her perspective working with children. Something that was probably not obvious to McVicker. This is an example of an idea born not from solitude, but from a mix of perspectives.

Third Party Use Not Close Enough to Goods of Registrant to Sufficiently Weaken Rights

David Copeland-Smith filed a trademark application on BEAST MODE SOCCER for T-shirts, which the USPTO refused based on two registered marks for BEAST MODE owned by retired NFL football player Marshawn Lynch. The registered marks covered the goods of “Men’s, women’s and children’s clothing, namely, shirts, sweatshirts; [and] headwear, namely hats, caps.”

Copeland-Smith argued the BEAST MODE mark was weak due to third party trademark registrations, applications, and uses of Beast Mode. The appeals court disagreed.

The seven third party registrations did not identify articles of closing, but rather pertained to ““computer software, dietary and nutritional supplements, beer, advertising and marketing consultancy, and entertainment in the nature of competitions in the field of fitness…” In other words, the goods/services of the third party registrations were not close enough to clothing to narrow Lynch’s rights in BEAST MODE.

Regarding uses, the Foreign websites identified by Copeland-Smith where of no probative value in determining likelihood of confusion in the US.

Further, many of the US websites with uses of Beast Mode were directed to goods and services other than clothing. The appeals court noted its prior decision where it said “T]he present analysis only involves goods like those being offered by the parties to the ‘relevant public,’ while third-party use outside of that relevant market is meaningless.”

Therefore, third party use of marks should be in connection with goods/services like those offered by the parties to have a good chance a narrowing trademark rights.

Case: In Re: Copeland-Smith, No. 2018-1968 (Fed. Cir. 2019)