No Bull: Acquired Distinctiveness Is Not a Given

by BakerHostetler

The Trademark Trial & Appeal Board recently issued a nonprecedential decision that serves as a good reminder that distinctiveness is not automatically acquired simply by long-standing use.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.

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