Last week the Trademark Trial and Appeal Board denied (in a precedential opinion) the trademark SCOOP on grounds of merely descriptiveness, failure to function as a trademark, and for inadequate specimen provided by the trademark owner. Since the TTAB opinion was issued as precedential, the details of the opinion provide significant learning and guidelines for all trademark owners and applicants.
Background of the Case
A Chicago-based ice cream company (“Applicant”) sought trademark registration for the mark SCOOP for “frozen confections and ice cream promoted and distributed by a mascot named SCOOP at product promotions and distributions of the frozen confections and ice cream.” To substantiate its use the Applicant submitted a photo of a man in a white uniform wearing a name tag that read “SCOOP” holding a package of Applicant’s ice cream. The USPTO refused Applicant’s trademark application on grounds that SCOOP is merely descriptive of the applied-for goods, that the mark fails to function as a trademark, and that the supplied specimen was insufficient to support the application. After submitting numerous arguments and appealing the case, Applicant’s mark was refused registration by the TTAB on July 9, 2019.
A mark is merely descriptive if it “describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services.” The reason descriptive marks should not be sought by trademark owners is that by definition a descriptive mark cannot function as a source identifier of a trademark owners’ goods and services. As a result, the trademark owner cannot enforce the mark against third parties. This is why every effort should be made to choose a mark that has a more distinctive quality. In this case, SCOOP refers to the unit of measurement for ice cream, and since frozen confections and ice cream is at the heart of the goods applied for, the relevant inquiry is not that the “mark … recite each feature of the relevant goods or services in detail to be descriptive, … [but that] it… describe a single feature or attribute.” To evaluate whether a mark is merely descriptive, the question is “whether someone who knows what the goods and services are will understand the mark to convey information about them.” The reason SCOOP is descriptive in this case is because of the reference to ice cream. The Applicant tried to argue that the term “scoop” had a double entendre meaning, but that argument was not persuasive especially with respect to ice cream and frozen confections. If the Applicant wanted to name a handbag line SCOOP, that argument would likely be persuasive, but not in this instance.
When submitting evidence of acquired distinctiveness, remember that there is no automatic presumption of acquired distinctiveness with five years use. In this case, the amount of evidence the Applicant was required to submit was high because the mark was deemed highly descriptive. Proof of acquired distinctiveness is usually accomplished by demonstrating high advertising and sales over a prolonged period of time, but in this case, it was not accomplished by the submission of one declaration, especially by someone who works for the Applicant. Moreover, the evidence of the media coverage the Applicant submitted appeared to be solicited by the Applicant itself and one email from a consumer requesting the mascot was not enough to establish acquired distinctiveness.
Failure to Function
While a trademark is a combination of words, symbols and logos, not all words are registrable. A trademark must function as an identifier of the applicant’s goods or services and such words must be used as a trademark to qualify for protection. There are number of reasons why a trademark may fail to function as a trademark, including when terms and expressions merely convey an information message. In this case, the term SCOOP is used to convey information matter about a serving of ice cream and consumers would not perceive it to identify the goods of the Applicant and distinguish it from the goods of others. Many of the USPTO’s failure to function cases have dealt with phrases that are in the American vernacular, for instance: ONCE A MARINE, ALWAYS A MARINE for clothing; DRIVE SAFELY for automobiles; I LOVE YOU for jewelry. It is difficult, if not impossible, for these marks to be exclusive source identifiers for the goods and services they seek to protect. For these reasons, they fail to function as trademarks.
Applicant’s specimen was also refused. In recent months, more and more specimens have been refused and it seems that applicants are more confused about how to properly support their trademarks with evidence of use in commerce. “The USPTO requires an applicant to submit a specimen ‘showing the mark as used on or connection with the goods’” or services. To support an application for goods, this generally means you must show use of the mark on tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods. For services, you must show a direct association between the mark and the services on advertising and marketing materials, which can be accomplished by submitting brochures, photographs of business signage and/or billboards, or webpages that show the mark used in the actual sale, rendering, or advertising of the services. When submitting specimens for services, remember the services must be provided to third parties.
In this case, the Applicant provided a photograph of a man in a white uniform wearing a nametag that read “SCOOP” holding a package of Applicant’s ice cream and Applicant argued this was a “display associated with the actual goods.” This argument was rejected by the USPTO since no live person has ever been found to be a “display associated with the goods” and the Board opined that “displays are typically point of sale materials such as banners, shelf-talkers, window displays, menus or similar devices.” The point of the display is to “catch the attention of the purchaser as an inducement to consummate a sale.” There was no indication that this specimen was ever used at point of sale and for this reason among others, the specimen must fail.
Best practices to own a strong and enforceable trademark:
- Choose a mark that is distinctive and ownable within your industry or space
- Search the mark to be sure you can protect it – the search will help you understand if it is descriptive
- Be open to changing names/course correcting before adopting a mark to ensure your mark is associated only with your goods and services
- If you need to submit evidence of acquired distinctiveness, make sure you have significant sales and advertising figures to support your claim for at least 5 years. While there are other bases to secure acquired distinctiveness, this is the most common basis.
- Do not adopt commonly used catch phrases like OKURR – they will not be registrable
- When submitting specimens, do not get creative as you have only one chance to submit your specimen of use.
- For goods: You must show use of the mark on tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods.
- For services: You must show a direct association between the mark and the services on advertising and marketing materials, brochures, photographs of business signage and/or billboards, or webpages that show the mark used in the actual sale, rendering, or advertising of the services. When submitting specimens for services, remember the services must be provided to third parties.
In summary, trademark law is incredibly nuanced and navigating the system can prove challenging. If you have any questions or need assistance with your trademark application, please contact us.
Stacey C. Kalamaras is the founding partner of Kalamaras Law Office, LLC. She has extensive intellectual property experience with a particular focus on trademark prosecution and enforcement. She has protected some the world’s largest brands in more than 150 countries and specializes in helping small and medium sized businesses grow and protect their brands. Contact her at firstname.lastname@example.org.
Stacey is also the founder and lead instructor of Trademarkabilities®, an online trademark academy for lawyers, whose mission it is to prepare lawyers to be confident and effective practitioners before the USPTO. To learn more, please visit https://www.trademarkabilities.com/.