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Analysing the impact of survey evidence on acquired distinctiveness rulings

To be placed on the Principal Register, designations which have been alleged to be descriptive or generic must achieve significance in the minds of the public as identifying the applicant’s goods or services – a quality called “acquired distinctiveness or “secondary meaning.” The amount and character of evidence required to establish acquired distinctiveness depends on the facts of each case and on the nature of the mark for which registration is sought. In this connection, recent decisions such as United States Patent and Trademark Office v Booking.com B.V. and In re Guaranteed Rate, Inc. continue to highlight the impact of survey evidence (or the lack thereof).

In United States Patent and Trademark Office v Booking.com B.V., the United States Supreme Court found that the term “Booking.com” for online hotel reservation services had acquired distinctiveness andwas registrable. The USPTO’s Trademark Trial and Appeal Board (TTAB) had held that the term “Booking.com” was generic for the covered services, and, alternatively, that even if “Booking.com” was descriptive, the term was not registrable because it lacks secondary meaning. Following the TTAB’s ruling, Booking.com (Booking) sought review in a US district court. Relying in significant part on Booking’s survey evidence of consumer perception, the district court disagreed with the USPTO’s assessment, instead concluding that “Booking.com” is not generic, but descriptive, and had met the acquired distinctiveness requirement for registration on the Principal Register. In reaching its decision, the district court relied heavily on a Teflon survey conducted and produced by Booking which revealed that 74.8% of respondents identified “Booking.com” as a brand name.

The district court explained that a Teflon survey is the most widely used survey format to resolve a genericness challenge, provides survey respondents with a primer on the distinction between generic names and trademark or brand names, and then presents respondents with a series of names, which they are asked to identify as generic or brand names. The district court emphasised the probative value of Booking’s Teflon survey, stating that it “provides the only actual evidence of consumers’ understanding of Booking.Com” and that “numerous courts agree that direct consumer evidence, e.g., consumer surveys and testimony is preferable to indirect forms of evidence.” The USPTO appealed the district court’s determinations at the Court of Appeals for the Fourth Circuit and United States Supreme Court, each of which affirmed the lower court’s judgment.

InIn re Guaranteed Rate, Inc., applicant Guaranteed Rate (GR) did not fare as well as Booking. GR’s applied-for mark “Guaranteed Rate” covering various mortgage services was refused registration based on mere descriptiveness and lack of acquired distinctiveness. GR appealed the refusal to register, maintaining that its applied-for mark had, in fact, acquired distinctiveness. In support of its acquired distinctiveness contention, GR relied on, among other evidence, (i) its ownership of multiple registrations on the Principal Register for “Guaranteed Rate” formative marks, (ii) its more than $140,000 spent on advertising and promotion, and (iii) its over $3.5 million in sales to more than 500,000 customers over 11 years. GR also pointed out that its applied-for “Guaranteed Rate” mark is the name of a professional baseball team’s stadium. Unlike Booking, however, GR did not conduct a consumer survey or submit any other direct evidence. In affirming the refusal to register, the TTAB noted that GR’s sales and advertising figures were “impressive,” but ruled that GR’s evidence did not demonstrate consumer recognition of its applied-for mark as a source indicator.

These decisions provide some guidance to brand owners that consideration might be given to producing survey evidence when their brand identifiers are alleged to be descriptive or generic.

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