No Bull: Acquired Distinctiveness Is Not a Given

by BakerHostetler
Contact

The Trademark Trial & Appeal Board recently issued a nonprecedential decision that serves as a good reminder that distinctiveness is not automatically acquired simply by long-standing use. Klickitat Valley Chianina, LLC, Serial No. 76715490 (March 16, 2017). Nor are declarations attesting to exclusive use for five-plus years automatically sufficient to pass a trademark application through to registration under §2(f) of the Lanham Act. Where a mark is particularly descriptive, it is advisable to rustle up greater evidence when making a §2(f) claim rather than relying on a simple declaration by the applicant. Otherwise, the application may be on a path straight to the slaughterhouse.

The Klickitat decision involved an application for CERTIFIED CHIANINA BEEF, filed by Washington-state cattle ranch Klickitat Valley Chianina, LLC. Application s/n 76715490. Registration was refused on descriptiveness grounds, with the Examiner, and later the Board, observing that Chianina cattle are a breed of cow originating in Italy and known for high-quality beef. *4. Thus, “the term CERTIFIED CHIANINA BEEF merely describes beef certified as coming from Chianina cattle.” Id. Merely descriptive marks are, of course, refused registration under § 2(e) of the Lanham Act. Importantly, though, while a mark may not be distinctive when first adopted, marks in many cases may be registrable under §2(f) of the Lanham Act on the basis of their having acquired distinctiveness. 

“In general, to establish that a term has acquired distinctiveness, ‘an applicant must show that in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself.’” *7, quoting In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262, 1265 (Fed. Cir. 2015).  One way that acquired distinctiveness may be established is through an applicant’s verified declaration that it has exercised “substantially exclusive and continuous use of the mark in commerce for [] five years.” TMEP 1212; 37 C.F.R. §2.41(a)(2). Applicants will frequently file such declarations as the sole evidence for claiming acquired distinctiveness, and in many if not most instances, the Trademark Office will accept such a declaration as sufficient to allow a mark to register.

Practitioners and would-be trademark registrants should not, however, fall into a mindless routine of relying solely on such verifications once they have decided to claim acquired distinctiveness. As Klickitat illustrates, declarations are not always sufficient. For its CERTIFIED CHIANINA BEEF application, Klickitat provided a declaration claiming substantially exclusive use for nearly a decade, and attested to thousands of dollars of advertising under the mark. Klickitat also provided a declaration from a customer who declared she had “been purchasing ‘Certified Chianina Beef’ products from the Applicant since 1997” and that she only associated “[high] quality of product with the Applicant [] by virtue of its ‘Certified Chianina Beef’ trademark.”

The Board wasn’t moo-ved by this evidence, however, observing the well-established principle that “the greater the degree of descriptiveness the term has, the heavier the burden to prove it has attained secondary meaning.” *3, quoting Yamaha Int’l Corp. Hoshino Gakki Co., 840 F.2d 1572, 1181 (Fed. Cir. 1988). Here, because CERTIFIED CHIANINA BEEF was so highly descriptive, more was required to show that the mark had acquired secondary meaning and that consumers would associate CERTIFIED CHIANINA BEEF with Klickitat’s goods.

In short, Klickitat serves a useful reminder that §2(f) declarations – so often used (and so often successful) – are not by any means a sure bet. Where a mark is particularly descriptive and the “steaks” are high, applicants should offer as much evidence as possible to establish that the public has come to associate the mark with its goods or services. Otherwise, the application may be put out to pasture sooner rather than later.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© BakerHostetler | Attorney Advertising

Written by:

BakerHostetler
Contact
more
less

BakerHostetler on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.