The Board reversed a Section 2(e)(1) mere descriptiveness refusal of WATERCRAFT SUPERSTORE for “Online retail store services featuring personal watercraft parts and accessories” [SUPERSTORE disclaimed]. Applicant convinced the Board that the mark has acquired distinctiveness under Section 2(f) by pointing to many website postings recognizing WATERCRAFT SUPERSTORE as a source indicator for applicant’s services.In re Watercraft Superstore, Inc., Serial No. 86369831 (August 26, 2016) [not precedenital].
Applicant sought registration under Section 2(f), thereby conceding that its mark is not inherently distinctive. Applicant bore the burden of persuasion on the issue of acquired distinctiveness. The Board noted, once again, that more evidence is required when a mark is highly descriptive, and it found applicant’s mark to be “very highly descriptive.”
Applicant submitted evidence showing use of its mark since 2008, orders increasing from 15,000 in 2009 to 26,000 in 2014, advertising expenditures in the $200k to 300k range per annum, distribution of 477,376 copies of its catalogues over a four-year period, and about 100k visitors to its website from 2009 to 2014. Applicant also attended 12 trade shows.
The Examining Attorney pointed out that applicant did not offer any context for this data in relation to others who provide similar services. The Board agreed that such contextual information would “improve the nature of the evidence.” But it found that applicant “has meaningful, bona fide and ongoing operations, even though it would likely be characterized as a small business.” The Board recognized that the sales and advertising figures, even if greater, would not be direct evidence of source recognition by consumers. However, “Applicant has taken a different approach to demonstrating actual market recognition.”
Since 2009, Applicant has operated an online forum for the discussion of personal watercraft, called PWC Today. Applicant has made of record many pages of postings by users of that forum, many of which clearly recognize WATERCRAFT SUPERSTORE as the source indicator for Applicant’s online retail store. According to Applicant’s tabulation, users from 21 States have shown such recognition.
The record included more than 50 postings in which “it is clear from the context that the consumer recognizes WATERCRAFT SUPERSTORE as Applicant’s source indicator.”
The Examining Attorney contended that the online forum appears on applicant’s website, “so consumers who use the forum know on what site they are posting.” The Board, however, noted that the forum is separate from applicant’s retail website and that nothing clearly indicates that the forum is a website of applicant, “although some of the users of the website acknowledge that Applicant ‘sponsors’ the site or is ‘tied to’ the website.”
Applicant has demonstrated actual market recognition of its mark as a source-indicator with evidence of spontaneous comments of relevant customers and potential customers. We note that the large amount of public commentary offered by Applicant appears to be devoid of examples suggesting that customers would spontaneously refer to the stores of others as “watercraft superstores.” The evidence submitted by the Examining Attorney does not show such uses by the relevant public; nor does it show third-party merchants using “watercraft superstore” to identify or describe their services.
And so the Board reversed the refusal.