Trademark Rule 2.41(a) provides that an applicant’s “ownership of one or more active prior registrations on the Principal Register . . . of the same mark may be accepted as prima facie evidence of distinctiveness if the goods or services are sufficiently similar to the goods and services in the application.” LG’s registration of DID DOOR-IN-DOOR, on the Principal Register, was in existence at the time the subject application was filed, but it included a disclaimer of DOOR-In-DOOR. The Board agreed with Examining Attorney Anthony Rinker that LG cannot rely on this cancelled registration since the disclaimer was an admission of mere descriptiveness at the time it was entered.
LG next contended that its Supplemental Registration for DOOR-IN-DOOR “confirms Applicant’s use of the mark at least as early as June 2012.” It further contended that the CAFC in Converse ruled that “‘five years’ substantially exclusive and continuous use [of a mark weighs] strongly in favor of a finding of secondary meaning,” The Board disagreed with LG’s reading of Converse, observing that the Board still follows the CAFC’s Louisiana Fish Fry decision:
Although Section 2(f) of the Lanham Act, 15 U.S.C. § 1052(f), provides that the PTO may accept five years of “substantially exclusive and continuous” use as prima facie evidence of acquired distinctiveness, the statute does not require the PTO to do so. Particularly for a mark that is as highly descriptive like FISH FRY PRODUCTS, the Board was within its discretion not to accept Louisiana Fish Fry’s alleged five years of substantially exclusive and continuous use as prima facie evidence of acquired distinctiveness.
Furthermore, LG’s Supplemental Registration cannot be relied on to show the length of use of the term because Supplemental Registrations do not receive the advantages and presumptions of Section 7(b) of the Trademark Act.
The Board agreed with the examining attorney that “given the highly descriptive nature of the proposed DOOR-IN-DOOR mark, Applicant’s unsubstantiated and unspecific claim of ‘extensive use of the mark . . . since at least as early as 2012,’ has little probative value” on the Section 2(f) issue.
LG did not offer declaration or affidavit evidence regarding its use of the term DOOR-IN-DOOR, but instead relied on assertions of its counsel. It did offer a two-page excerpt from a marketing study purporting to show consumer recognition of the term and association with LG, but it provided no explanation of the origin, purpose, nature, or methodology of the study, and therefore the Board had now way to assess its probative value. In any event, the study was conducted in 2012, and would have little value regarding LG’s current claim.
LG’s advertising figures did not support its”grandiose claim of “persistent and continuous use of a mark in various media for nearly a decade.” There was not information that would put the advertising figures in context for the industry. Moreover, its advertising makes frequent use of the “LG” mark adjacent the phrase DOOR-IN-DOOR, and so those expenditures prove little.
The Board concluded that LG “did not carry its heavy burden of showing that its highly-descriptive proposed mark DOOR-IN-DOOR for electric refrigerators has acquired distinctiveness.”
Read comments and post your comment here.
TTABlogger comment: I guess life’s not so good for LG at the TTAB.
Text Copyright John L. Welch 2020.