Posts Tagged: "secondary meaning"

Brand owners frequently encounter significant challenges in obtaining federal trade dress registration. The recent ruling in the Eastern District of Virginia confirmed that TBL Licensing, LLC, the brand owner of Timberland boots, was not an exception to this struggle. Unlike a word mark, a product design can never be inherently distinctive as a matter of law because consumers are aware that such designs are intended to render the goods more useful or appealing rather than identifying their source. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 212-213 (2000). In order to obtain a federal trademark registration for a product design, the applicant must establish secondary meaning.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Friday, November 12, vacated and remanded a decision of the Trademark Trial and Appeal Board (TTAB) that had found Galperti S.r.l (Galperti-Italy) had not committed fraud on the U.S. Patent and Trademark Office (USPTO) in asserting that it had substantially exclusive use of the mark GALPERTI in the five years preceding its registration. The appeal to the CAFC stems from Galperti, Inc.’s (Galperti-USA’s) petition for cancellation based on its own prior use of the same mark, in which the TTAB found that Galperti-USA had demonstrated only insignificant use of the mark and therefore had not proven fraud or falsity on the part of Galperti-Italy. The CAFC cited two legal errors in the TTAB’s analysis that warranted vacatur and remand.

On May 14, the U.S. Court of Appeals for the Eleventh Circuit reversed a decision of the U. S. District Court for the Southern District of Florida in Engineered Tax Services, Inc., v. Scarpello Consulting, Inc. The district court granted summary judgment in favor of Scarpello, asserting that no reasonable jury could find ENGINEERED TAX SERVICES to be a valid trademark due to a lack of distinctiveness. Engineered Tax Services (ETS) appealed to the Eleventh Circuit, which found that a reasonable jury could have found the mark to be 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.