The Votes Are In: Highly Descriptive Marks Are Difficult to Protect

Written by:Sashank Krothapally and Jacob R. Rosenbaum

HERITAGE ALLIANCE V. AMERICAN POLICY ROUNDTABLE

Before Prost, Taranto, and Stark.  Appeal from the Trademark Trial and Appeal Board.

Summary: Continuous-use evidence is not necessarily prima facie evidence of acquired distinctiveness for a highly descriptive mark.

Heritage offered voter guides under the names “iVoterGuide” and “iVoterGuide.com” since 2008.  American Policy Roundtable (APR) filed for registration of the marks “iVoters” and “iVoters.com” in 2019.  Heritage opposed APR’s registration on the grounds of likelihood of confusion with Heritage’s marks, for which Heritage claimed priority of use.  The Board held that Heritage’s marks were not protectable because they were highly descriptive and had not acquired distinctiveness (secondary meaning).  Heritage appealed.

The Federal Circuit affirmed. The Federal Circuit held that substantial evidence supported the conclusion that Heritage’s iVoterGuide marks directly and immediately convey the whole product and thus are highly descriptive.  Further, the Board was within its discretion to not accept continuous-use evidence as prima facie evidence of acquired distinctiveness, “especially for a highly descriptive mark.”  Additionally, the Board did not err in giving little weight to Heritage’s declarations, which were all essentially identical in form and were from Heritage’s volunteers.  Thus, substantial evidence supported the Board’s decision that Heritage’s marks were highly descriptive and had not acquired secondary meaning.

Editor: Sean Murray