Posts Tagged: "acquired distinctiveness"

The International Trademark Association (INTA) last week filed amicus briefs before the European Union Intellectual Property Office (EUIPO) Grand Board of Appeal in three cases concerning applications to register EU trademarks (EUTMs) for the words GEORGE ORWELL, ANIMAL FARM and 1984. The  briefs concern the registration of trademarks for names of historical persons/famous authors (the GEORGE ORWELL case) and titles of literary or artistic works (the ANIMAL FARM and 1984 cases). All of the applications were filed in 2018 by The Estate of the Late Sonia Bronwell Orwell (George Orwell’s second wife, who survived him and died in 1980) without evidence of acquired distinctiveness through use.

Trademarks consisting solely of a color applied to products or their packaging have been protectable under U.S. law for decades—if they meet a heightened standard for protection. Since the U.S. Supreme Court decisions in Qualitex Co. v. Jacobson Products Co. and Wal-Mart Stores, Inc. v. Samara Brothers, Inc., an applicant for a color mark has been required to prove that the color actually serves as an indicator of source in the minds of consumers by showing that the mark has acquired distinctiveness (otherwise known as secondary meaning). Yet that longstanding requirement no longer applies to all color marks, after a new decision by the Federal Circuit in In re Forney, which opens the door for the first time to certain color marks gaining protection as inherently distinctive.

On February 28th, the Court of Appeals for the Federal Circuit (CAFC) affirmed the Trademark Trial and Appeal Board’s (TTAB) decision to refuse registration of two trademark applications belonging to JC Hospitality LLC (JC). Both applications sought to register the mark THE JOINT under different classes of services (Class 41 and Class 43). See In re JC Hospitality. The CAFC agreed with the TTAB that the marks were merely descriptive of JC’s services, and lacked any showing that the marks acquired distinctiveness as source identifiers.