United States: TTAB Rejects 5-Year Acquired Distinctiveness Claim Due To Lack Of Continuous Use

Last Updated: October 23 2017
Article by John L. Welch

In a rare opposition based on the ground of Section 2(e)(2) geographical descriptiveness, the Board rejected applicant's Section 2(f) claim of acquired distinctiveness based on five years of use, finding that applicant's use had not been continuous during that period. John Edward Guzman d/b/a Club Ed Surf School and Camp v. The New Santa Cruz Surf School, LLC, Opposition No. 91220843 (October 13, 2017) [not precedential] (Opinion by Judge Albert Zervas).

Applicant New Santa Cruz sought to register the mark SANTA CRUZ SURF SCHOOL for surfing instruction and related website services [SURF SCHOOL disclaimed]. Applicant overcame the Section 2(e)(2) refusal when the USPTO accepted its claim of acquired distinctiveness based solely on a statement of substantially exclusive and continuous use of the mark for at least the prior five years.

Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), provides that "proof of substantially exclusive and continuous use" of a designation "as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made" may be accepted as prima facie evidence that the mark has acquired distinctiveness as used in commerce with the applicant's goods or services. Applicant's declaration under Section 2(f) was dated November 25, 2014.

The Board pointed out that when the term at issue is "highly descriptive," a statement of five years' use alone will be deemed insufficient to establish acquired distinctiveness. Here there was no evidence that SANTA CRUZ SURF SCHOOL is highly descriptive of applicant' services, and so the Board found that "the designation has an ordinary level of descriptiveness and that a declaration attesting to substantially exclusive and continuous use of a designation as a mark in commerce for the five years before the date on which the claim of distinctiveness is made may establish acquired distinctiveness of Applicant's designation."

Exclusive Use: Dylan Greiner, owner of applicant's predecessor-in-interest testified that no other entity was using the applied-for mark after his company acquired the mark in 2000 or 2001. In December 2013, Applicant New Santa Cruz acquired the mark from Greiner's company. Opposer Guzman provided no probative evidence to show use of the phrase by others, and so opposer did not carry its burden on this point.

Continuous Use: Dylan Greiner owned and operated Santa Cruz Surf School, Inc. in Santa Cruz, California from 2009 to approximately August 16, 2013, when he was arrested and imprisoned. As to the acquisition of the business by applicant in December 2013, "the Business Sale Agreement provides insight into the condition of the business purchased by Mr. Meyberg:"

The business has not been operating for several months. The business currently does not have a physical business  location due to cancellation of the commercial lease. The insurance policy which is required to operate the business was cancelled. The website is not operating and has an outstanding bill. Numerous independent contract[or]s who taught lessons were never paid their last pay check. The business operating permit will expire at the end of December 2013 and the City of Santa Cruz's Parks and Recreation Department's Heads have expressed their intent to not renew the operating permit. The vehicle trailer is not registered. The business' reputation and good will has been substantially diminished.

The Board found this document admissible under an exception to the hearsay rule for "Statements in Documents That Affect an Interest in Property." Fed. R. Evid. § 803(15).

The Board concluded that the Santa Cruz Surf School was not in operation from at least the time of Mr. Greiner's arrest until the purchase of the surf school by Applicant, a period of four months in the fall of 2013. Moreover, there was no documentary evidence that applicant's predecessor and applicant offered surfing lessons or the rental of surfboards during a period of more than than one year after Mr. Greiner's arrest. The Board concluded that the mark was not used from approximately August 16, 2013 until after November 5, 2014 for the identified services.

As to the website services, the Business Sale Agreement states that the website was not operating and had an outstanding bill. The Board therefore concluded that the applied-for mark was not in continuous use for five years preceding the date of the Meyberg declaration.

Other Evidence:

Putting aside the Section 2(f) declaration, the Board looked to the evidence of record to see whether it supported a claim of acquired distinctiveness. "At best, Applicant's evidence reflects use of SANTA CRUZ SURF SCHOOL from approximately 1997 until trial, with an interruption of more than one year from late 2013 through 2014. The passages of time, by itself, may be insufficient to support the Section 2(f) claim.

The Board concluded that "Applicant and its predecessors-in-interest have provided the services identified in the involved application to only a limited number of customers on an irregular basis. We therefore conclude that Applicant has not satisfied its burden of demonstrating that SANTA CRUZ SURF SCHOOL has acquired distinctiveness."

And so the Board sustained the opposition on the ground that SANTA CRUZ SURF SCHOOL is primarily geographically descriptive under Section 2(e)(2) and has not acquired distinctiveness.

TTABlog comment: Note that the 15-month period of nonuse was not considered as abandonment abandonment of the mark, presumably because it was too short a time, and there was an intent to resume use.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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