Evidentiary issues: In connection with its 2(f) claim, applicant included in its brief a quotation from a law review article, and claimed that ‘social media followings and ‘likes’ are distinguishable from ordinary website visits as they require additional action on the part of a customer or potential customer.” The Board refused to consider the “evidence” because applicant provided only a hyperlink to the article, and furthermore because the “submission” was untimely.
The Board also refused to take judicial notice of the article, or of applicant’s assertion of a difference between social media sites and websites.
[A]lthough we may agree that “social media followings and likes” require affirmation action on the part of the viewer, we are not convinced that simply because someone follows or “likes” a social media platform, they are a potential consumer, or that such actions are inherently different from ordinary website visits where users take additional action to pursue their interest in the advertised goods or services. We also point out that the number of likes or followers should be put into context, and that user comments appearing on an applicant’s social media sites may provide insight into consumers’ perceptions of the mark.
Mere Descriptiveness: Applicant maintained that “couture” is not descriptive of its goods, since the term used as a noun is defined in Dictionary.com as “the occupation of a couturier; dressmaking and designing.” The examining attorney relied on the definition of “couture” as an adjective, meaning “being, having, or suggesting the style, quality, etc., of a fashion designer; very fashionable.” The Board found that, based on these definitions alone, “couture” would not be perceived as descriptive of baby, bed, and children’s blankets, since they are not clothing or related articles. The Board did not stop there, however.
The examining attorney submitted three third-party registrations for marks containing the term “couture,” registered for, inter alia, “bed blankets” wherein the term “couture” has been disclaimed. (JUICY COUTURE (Reg. No. 3941099); SUITE COUTURE (Reg. No. 4114112); and CUDDLE COUTURE (Reg. No. 4502516)). Furthermore, she also submitted excerpts from six websites where the word is used descriptively in connection with blankets, and six on-line retailers with “couture” in their company names, selling blankets. The term is used to describe the products as being of a fashionable quality and characteristic.
The Board concluded that “[t]he evidence supports a finding that Applicant’s mark MINKY COUTURE immediately informs the consumer that the goods are made from minky fabric and have a fashionable quality, and therefore is merely descriptive.”
Acquired Distinctiveness: The Board was first required to determine the degree of descriptiveness of the mark because the more descriptive the mark, the more evidence required to establish acquired distinctiveness. See, e.g., Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1048 (Fed. Cir. 2018) (“[H]igher levels of descriptiveness require a more substantial showing of acquired distinctiveness.”). The Board concluded, with little explanation, that MINKY COUTURE is not “highly descriptive” and so an elevated showing of acquired distinctiveness is not required.
Applicant’s evidence established use of the mark since June 2010, with sales increasing from $500k per year to $15M, with five retails stores in Utah, and with a retail website. Applicant’s goods are sold in third-party boutiques and it has partnered with other companies in promotional drives. Sales have exceeded one million units. Advertising included direct mail, radio broadcasting, television advertising (including 83 NFL games) and highway billboards. Applicant has more than 100,000 Facebook “likes” and more than 100,000 “followers.” Its Instagram account has more than 85,000 followers
The Board considered the Section 2(f) factors set forth in Virtual Indepenedent Paralegals, as follows:
- Factor One – There is no direct evidence of consumer recognition such as consumer surveys, customer declarations, or posts from Facebook or other social media expressing a potential or actual customer’s perception as to the source of “minky couture” blankets.
- Factor Two – Applicant has been in business for nearly a decade, selling blankets under the mark, and Applicant’s use is substantially exclusive. On the other hand, a number of third parties also use the term “couture” to describe their business as being one selling designer or highly fashionable blankets or bedding.
- Factor Three – Applicant’s advertising has been multi-leveled. Applicant utilizes social media as well as traditional forms such as print, radio and television broadcasting, but also more unusual avenues such as billboard advertising and partner promotions using Applicant’s blankets as sales incentives.
- Factor Four – Sales have been steadily increasing and reached approximately $15 million in 2018. Although the record does not contain specific customer numbers, the number of blankets sold averages 7,000 per year, with the average price of a blanket being about $100.
- Factor Five – There is no evidence of intentional copying.
- Factor Six – A modest amount of unsolicited media coverage has been produced. Applicant’s founder/owner was recognized as a regional “Entrepreneur of the Year” and she has been interviewed in the news, where Applicant’s product embodying the mark was publicized.
Conclusion: The Board concluded that applicant provided sufficient circumstantial evidence that, despite the absence of direct evidence of consumer recognition, established acquired distinctiveness. And so the Board reversed the refusal.
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TTABlog comment: Strangely, the Board cites Virtual Independent Paralegals for the six considerations under Section 2(f), but in that case the applicant relied only on its use of the proposed mark for five years and submitted no other evidence of acquired distinctiveness. That case did, however, recite the six factors, citing In re Snowizard, Inc., 129 USPQ2d 1001, 1005 (TTAB 2018) (quoting Converse, Inc. v. Int’l Trade Comm’n, 907 F.3d 1361, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018)).
Text Copyright John L. Welch 2020.