American Airlines applied to register the mark RENOAIR for “air transport of passengers, cargo and freight” under Section 2(f) of the Lanham Act, claiming that acquired distinctiveness transferred to this mark from AA’s registration of the same mark for “toys, namely model airplanes.” In view of the Section 2(f) claim, there was no issue as to geographical descriptiveness under Section 2(e)(2). The Board found that AA failed to carry the “heavy burden” to establish that acquired distinctiveness will transfer. In re American Airlines, Inc., Serial No. 88298380 (January 11, 2021) [not precedential] (Opinion by Judge Michael B. Adlin].

Even without the Section 2(f) claim, the record left the Board with no doubt that  (1) the primary significance of the RENOAIR is the name of a place known generally to the public; (2) the public would make a services/place association, i.e. it would believe that the services  originate in that place ; and (3) the source of the services is the geographic region named in the proposed mark. “The addition of AIR to the term RENO is of no consequence with respect to geographic descriptiveness, as it does not change the geographic meaning of Applicant’s proposed mark, being merely descriptive of or generic for Applicant’s identified ‘air transport’ services.”

Turning to the issue of acquired distinctiveness, the Board noted that a Section 2(f) claim is usually not made in an intent-to-use application until after an amendment to allege use or a statement of use is filed. However, acquired distinctiveness can be established if the applicant “can show that same mark acquired distinctiveness for sufficiently similar or related goods, and that this acquired distinctiveness will
transfer to the goods specified in the application when that mark is used in connection with them.” An applicant faces a “heavy burden;” in fact, “the required showing for acquired distinctiveness to ‘transfer’ to new products is a rigorous one.”

Thus, Applicant is required to do more than establish merely that there is some type of relationship between the goods and services . It must show the extent to which the goods and/or services in the intent to use application are related to the goods and/or services in connection with which the mark is distinctive, and that there is a strong likelihood that the mark’s established trademark function will transfer to the related goods and/or services when use in commerce occurs.” (Emphasis by the Board).

Trademark Rule 2.41(a)(1) states that a prior registration “may be accepted as prima facie evidence of distinctiveness in appropriate cases.” (Emphasis by the Board). Here the prior registration was not enough.

Applicant AA asserted that model airplanes and air transport services are related based on evidence that a number of airlines offer air transport services and model airplanes under the same mark. The Board, however, observed that airlines “sell model airplanes as ancillary products, on portions of their websites devoted not to air transport, but to general consumer products bearing the airline’s mark.”

While the Prior Registration issued almost 18 years ago, that is not enough without more to show that the mark has acquired distinctiveness for model airplanes, much less that there is a “strong likelihood” that any acquired distinctiveness will transfer.

AA pointed to a 2015 Board opinion finding a likelihood of confusion between TWA for airline services and model airplanes. [TTABlogged here]. The Board pointed out that not only was that decision nonprecedential, but it also addressed a different issue. Here, the Board was concerned with whether Applicant AA made a “rigorous” showing that RENOAIR has acquired distinctiveness for model airplanes and that model airplanes are “sufficiently similar or related” to air transport services that the acquired distinctiveness will transfer to air transport services.

The Board concluded that Applicant AA did not meet its heavy burden to show that “any distinctiveness its mark may have acquired for model airplanes will transfer to the air transport services in connection with which Applicant intends to use its proposed mark.” And so the Board affirmed the refusal to register.

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TTABlogger comment: I’m puzzled by the Board’s statement that AA has to prove that the mark acquired distinctiveness for model airplanes. It’s registered on the Principal Register, so isn’t the mark presumed to be distinctive?

Text Copyright John L. Welch 2021.