Toy retailer denied trademark registration for red oval. MELISSA & DOUG

The value and strength of a trademark is measured by the the association consumer make between products branded with the trademark and the company which produced the products. Trademark law only offers protection to distinctive trademarks, that is, trademarks that serve the purpose of identifying the source of the goods or services. Arbitrary or fantastical trademarks that have nothing to do with the products are the most distinctive, like Apple for computers or Kodak for cameras. Suggestive trademarks may refer to a characteristic of a product, but require some imagination to make the connection between the trademark and the product, like Penguin for a refrigerator. Generic trademarks are trademarks that have become synonymous with a product and cannot be protected by trademark law.

A fifth class of trademarks are descriptive trademarks. A descriptive trademark identifies a characteristic or quality of the service or product. A descriptive trademark may be registered, on the Principal Trademark Register of the United States Patent and Trademark Office, only if it has acquired secondary meaning. If the United States Patent and Trademark Office refuses to register a trademark because it is merely descriptive, than the trademark applicant can request registration on the Supplemental Trademark Register.

How can a trademark applicant overcome a refusal to register a trademark the United States Patent and Trademark Office deems merely descriptive? With evidence of secondary meaning which demonstrates the trademark has acquired distinctiveness.

In determining whether a trademark has acquired distinctiveness, a court will consider the following factors: (1) association of the proposed mark with a particular source by actual purchasers (typically measured by customer surveys); (2) length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage of the product embodying the mark. All six factors are to be weighed together in determining the existence of secondary meaning

Under Trademark Rule 2.41(a)(3), 37 C.F.R. §2.41(a)(3), a trademark applicant may submit affidavits, declarations under 37 C.F.R. §2.20, depositions, or other appropriate evidence showing the duration, extent, and nature of the applicant’s use of a mark in commerce, advertising expenditures in connection with such use, letters, or statements from the trade and public, or other appropriate evidence tending to show that the mark distinguishes the products of the applicant.

MELISSA & DOUG, LLC Serial No. 87915069 (C.A.F.C. 2021) is an example of a trademark application which was denied because the trademark did not have acquired distinctiveness.

Applicant in this case is a toy retailer who filed Application Serial No. 87915069 in May 10, 2018. Applicant wished to register a red oval with white border as its trademark, with no text. The red oval is the background used along with applicant’s trademarked name, MELISSA & DOUG. An example of applicant’s trademark along with the red oval is reproduced above on the top.

The Trademark Examining Attorney refused registration under Sections 1, 2, and 45 of the Trademark Act,2 U.S.C. §§ 1051-52 and 1127, on the ground that the Proposed Mark fails to function as a trademark because the Proposed Mark is nondistinctive for Applicant’s goods and services and has not acquired distinctiveness. The applicant then appealed the refusal to the Trademark Trial and Appeal Board (TTAB).

On appeal the applicant submitted a substantial amount of evidence including, consumer declarations that the red oval made them think of applicant’s products, advertising material, examples of applicant’s retail displays and products which all featured the applicant’s red oval design. To rebut the evidence that the red oval was associated with the applicant’s products, the examining attorney submitted evidence of the red oval being used by companies other than the applicant, and several other uses of the red oval logo that had nothing to do with applicant. Examples of the evidence submitted by the examining attorney are reproduced above on the bottom.

The TTAB found that the consumer declarations gave some weight to the the idea that consumers associated the red oval with applicants goods, however the evidence did not show that consumers associated a red oval by itself with products from the applicant. The TTAB reviewed the six acquired distinctiveness factors and concluded that applicant failed to show that a red oval by itself, without applicant’s name, had acquired distinctiveness. Based on this finding the TTAB affirmed the refusal.

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