A recent ruling by the United States Court of Appeals for the Federal Circuit has shed light on issues surrounding descriptive trademarks, with valuable lessons for organizations as they consider names of their products and services, develop and invest resources in their brands and their protection.
As their name implies, descriptive marks describe a product or service, with well-known examples including Cartoon Network, American Airlines and International Business Machines. Although these brands are now iconic, more often than not a descriptive mark does not reach such a level of notoriety. This was in fact one of the issues in the recent ruling.
A Dispute Over a Descriptive Trademark: Heritage Alliance v. The American Policy Roundtable
The case was an appeal of a ruling by the Trademark Trial and Appeal Board of the United States Patent and Trademark Office ("TTAB"), concerning two organizations both claiming rights to marks containing "iVoter": The Heritage Alliance, an advocacy organization, uses the names "iVoterGuide" and "iVoterGuide.com" for its online voter guides, which it has published since 2008. The American Policy Roundtable (APR), also an advocacy organization, filed for federal registration of the trademarks "iVoters" and "iVoters.com" with the USPTO in 2019.
Heritage Alliance did not hold any federal registrations for its marks, and had only common law rights based on its continued use of the mark in connection with its website. Heritage Alliance opposed APR's application to register iVoters, claiming it could easily be confused with Heritage Alliance's prior-used mark. In this initial challenge, the TTAB ruled that Heritage Alliance's marks were not protectable, as they were "highly descriptive and had not acquired distinctiveness." An April ruling by the U.S. Court of Appeals for the Federal Circuit (the "Court") affirmed that decision.
For brands and anyone who names products or services, this case exposes a tricky issue: Descriptive names are often appealing in product naming or brand creation, as they help quickly convey the purpose of a product or service and eliminate confusion. But as this appeal illustrates, even a decade-plus of use is no guarantee that an organization can obtain secondary meaning in its mark, and successfully assert complete rights to a descriptive mark.
Length of Use In Itself Does Not Confer Distinctiveness
The Court, expanding on the TTAB's ruling, discussed the two issues of a mark being both 1) highly descriptive and 2) not having acquired distinctiveness. It noted that "the 'iVoterGuide' marks are such that the whole of the marks directly and immediately conveys the whole of the product... That property suffices for the marks to be highly descriptive."
To assess whether Heritage Alliance had acquired distinctiveness in the marks, the Court weighed the six factors for considering distinctiveness as established in Converse v ITC:
- Association of the trade dress with a particular source by actual purchasers (typically measured by consumer surveys)
- Length, degree, and exclusivity of use
- Amount and manner of advertising
- Amount of sales and number of customers
- Intentional copying
- Unsolicited media coverage of the product embodying the mark
Revisiting the well-known descriptive marks cited at the beginning of this article, one can see how they've acquired distinctiveness in each of the factors on this list. In contrast, Heritage Alliance was not able to provide sufficient evidence that its iVoter mark met the same standards; the ruling noted that "the Board viewed Heritage Alliance as invoking only the first two factors."
Larkin Hoffman's Strategies for Trademark Success
When Larkin Hoffman counsels clients on trademarks, we echo the advice of the United States Patent and Trademark Office, which recommends "fanciful" or "arbitrary" trademarks that are creative and unique. While it is possible in some instances to register a descriptive mark, it is often challenging. More importantly from a brand strategy perspective, such a mark is often a weak identifier of brand source, and it is typically much harder to protect and enforce.
At the USPTO, trademark owners may be eligible to register their descriptive trademarks on the Supplemental Register. The Supplemental Register is a secondary trademark register where descriptive trademarks can be registered, that may over time, become an indicator of source, and eligible for the Principal Register. Marks registered on the Supplemental Register are protected against conflicting marks in later-filed USPTO applications. Registrations on the Supplemental Register, however, do not receive the same legal advantages and presumptions of Principal Register registrations.
For brands that wish to pursue federal registration for a descriptive mark on the Principal Register, this ruling highlights the importance of intentional, sustained work toward acquiring distinctiveness. Brand leaders should document their history of promoting the mark, consumers' understanding of it, media coverage and other factors that can help prove when a descriptive name has grown into one that is registerable.
Finally, brands might consider pursuing registration for visual elements of a brand name, e.g., stylized wording and images. While registration in this case would only be granted for the mark as a whole and not the wording itself, the simple existence of the mark on the register may deter others from pursuing their own competing registrations.
As these issues show, thoughtful branding requires conveying more than just a description. If your organization is looking for strong brand protection, intentional and unique naming is a vital first step.
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.
