TTAB cancels mark for being highly descriptive

United States of America

In Alcatraz Media Inc v Chesapeake Marine Tours Inc dba Watermark Cruises (Cancellation No 92050879, July 2 2013), in a precedential decision, the US Patent and Trademark Office (USPTO) Trademark Trial and Appeal Board (TTAB) has granted a petition to cancel the federally registered mark ANNAPOLIS TOURS because it was highly descriptive of one of the registrant’s services - providing tours of Annapolis, the capital of the state of Maryland. Despite the presumption of validity accorded a federal registration, the TTAB found that the highly descriptive mark had not acquired distinctiveness, and must be cancelled.

In 2004 the registrant, Chesapeake Marine Tours, acquired the assets of a business that provided guided tours of Annapolis. That same month, it applied to register the mark ANNAPOLIS TOURS. The next year, while the application was still pending, it entered into a business arrangement with the petitioner, Alcatraz Media, an online booking agent and reseller of tours and travel activities provided by other entities. Alcatraz, as part of its business model, owns and operates over 2,000 Internet domain names containing names of destination cities for which it would resell tours. Consistent with this business plan, Alcatraz registered '', through which it resold tour tickets purchased from the registrant, Chesapeake. Chesapeake’s application for ANNAPOLIS TOURS matured into a registration the next year, 2006.

The parties’ business arrangement lasted until 2009, when Chesapeake terminated their relationship, turning the erstwhile business partners into competitors. Chesapeake claimed it only became aware of Alcatraz’s website after the agreement was terminated, and Alcatraz claimed it was unaware of Chesapeake’s trademark registration. But shortly after the parties parted ways, Chesapeake sent Alcatraz a cease and desist letter demanding that it discontinue use of its registered mark ANNAPOLIS TOURS.

Alcatraz, claiming a “competitive need” to use the term, petitioned to cancel the registration for ANNAPOLIS TOURS on the grounds that it was generic, descriptive and fraudulently obtained.

The TTAB rejected Alcatraz's argument that ANNAPOLIS TOURS should be found generic for tours of Annapolis. Rather, the TTAB defined the genus of services more broadly, as they were recited in the mark's registration: "conducting guided tours of historic districts and other areas of cities". Alcatraz adduced newspapers, magazines, and webpages describing Chesapeake’s business more narrowly, as an "Annapolis tour, charter and cruise company”. However, the TTAB concluded that this evidence was mixed at best, and that Alcatraz had not sufficiently demonstrated that the primary significance of the ANNAPOLIS TOURS mark in the minds of consumers was a generic reference to tours of Annapolis.

Sometimes, there is a fine line between genericness and descriptiveness. Here, the evidence that failed to establish genericness did establish, in the TTAB’s opinion, that the ANNAPOLIS TOURS mark was "highly descriptive". The primary issue was whether this high degree of descriptiveness was sufficient to overcome the presumption of distinctiveness accorded a federal registration.

When Chesapeake applied to register the ANNAPOLIS TOURS mark under Section 2(f) of the federal Lanham Act, it conceded that the mark was not inherently distinctive, but claimed that it had acquired distinctiveness in the minds of consumers (15 USC § 1052(f)). Its sole support for this claim was its declaration of use, filed with the USPTO, averring that it had made substantially exclusive use of the mark in commerce for five years.

Chesapeake argued that its registration of ANNAPOLIS TOURS established a presumption of acquired distinctiveness, which cast upon Alcatraz, the party seeking cancellation, the burden of establishing a prima facie case that the mark had not acquired distinctiveness. To meet this burden, Chesapeake argued, Alcatraz had to rebut the declaration of use; it had to demonstrate that Chesapeake’s use of the mark was not substantially exclusive and continuous during that time.

The TTAB rejected Chesapeake’s argument, holding that:

a petitioner may carry its initial burden of showing prima facie invalidity by introducing evidence at trial that the mark is so highly descriptive that a mere declaration of five years continuous and substantially exclusive use is insufficient to establish acquired distinctiveness, so that actual evidence of acquired distinctiveness in the form of sales and advertising information and the like is necessary.”

The burden thus shifted to Chesapeake, which failed to provide this additional evidence. The TTAB found its advertising and sales figures related to its use of the mark "quite low". Its evidence of “unsolicited media coverage” consisted of nothing more than its own promotional materials appearing on various websites. Chesapeake also contended that Alcatraz’s copying of the mark in '' evidenced the mark’s secondary meaning, but the TTAB found that the domain name registration was simply part of the Petitioner’s marketing strategy of using a city name combined with 'tour' to gain a competitive advantage.   Finally, conflicting testimony by the parties cast doubt on whether the ANNAPOLIS TOURS mark had satisfied the five-year use requirement; indeed, there was testimony that Chesapeake’s predecessor in interest used the phrase 'Annapolis Tours' not as a source identifier, but rather to identify the nature of its services: tours of Annapolis.  

Ultimately, the TTAB reasoned, “highly descriptive terms… are less likely to be perceived as trademarks and more likely to be useful to competing sellers”, such as Alcatraz. The TTAB therefore ordered that the ANNAPOLIS TOURS mark be cancelled.

Thus, if a petitioner’s grounds for cancelling a registration fall just short of establishing genericness, they may nonetheless suffice to establish the next best thing: that the challenged mark is highly descriptive. Showing that a mark is highly descriptive can make out a prima facie case for overcoming the registration’s presumption of validity where, as here, the Section 2(f) registration was based solely on a declaration of use.

James L Bikoff, David K Heasley, Judd Lauter and Justin Miller, Silverberg, Goldman & Bikoff, LLP, Washington DC

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