Best of 2012: That distinctive date

Columns, Tweed Courthouse

Originally posted October 3, 2012.

In a recent TTAB case my office faced a motion to compel answers to interrogatories requesting what would seem like a very relevant, and very critical, piece of litigation information:  The date on which our client’s trademark “acquired distinctiveness,” i.e., achieved secondary meaning in association with our client’s goods or services.  Its birthday as a trademark, in other words.

Our response to both the demand and the motion was that while we could — and wanted to – acknowledge that we must demonstrate that the mark acquired distinctiveness, that wasn’t really amenable to proof of a date certain.  Kind of interesting question, really — you know it has to be by a certain date, and certainly before the date you claimed priority over someone else.

But secondary meaning isn’t born.  It’s made.  As we wrote in our opposition to the motion to compel:

Opposer’s demand for a “specific date when secondary meaning was allegedly required” is meritless. As the Federal Circuit recently explained in Coach Services, Inc. v. Triumph Learning LLC, 668 F.3d 1356 (Fed. Cir. 2012), the acquisition of secondary meaning is a complicated fact question.

To establish secondary meaning, or acquired distinctiveness, an applicant must show that in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself. To determine whether a mark has acquired secondary meaning, courts consider: advertising expenditures and sales success; length and exclusivity of use; unsolicited media coverage; copying of the mark by the defendant; and consumer studies. Acquired distinctiveness is a question of fact which is reviewed under the clearly erroneous standard.

Id. at 1379 (internal citations and quotes omitted). Similarly, in Zobmondo Entm’t, LLC v. Falls Media, LLC, 602 F.3d 1108, 1114 (9th Cir. 2010), the Ninth Circuit acknowledged:

In distinguishing between suggestive and descriptive marks, we are aware that “[d]eciding whether a mark is distinctive or merely descriptive is far from an exact science and is a tricky business at best.” Lahoti[ v. VeriCheck, Inc., 586 F.3d 1190], 1197 (9th Cir.2009) (quotation marks omitted); 2 McCarthy § 11:66 (“The descriptive-suggestive borderline is hardly a clear one”), § 11:71 (observing that the descriptive-suggestive dichotomy is not “some kind of concrete and objective classification system”).

The “date” on which secondary meaning is acquired is not some precise moment in time which can be proved by a date-stamped receipt showing that from that instant, but not before then, a mark has acquired distinctiveness. Opposer would very much like Applicant to box itself in by asserting such a date, but cites no authority for the proposition that Applicant must do so, or that any applicant could.

The TTAB agreed, writing (along with a lot of other stuff) as follows in an order dated September 10, 2012:

Opposer seeks an order compelling Applicant to identify the date on which the designation [in question] acquired secondary meaning. In opposition, Applicant maintains that what Opposer seeks is beyond the scope of the interrogatory as it was posed, and that it need not assert a specific date on which its mark acquired  distinctiveness inasmuch as this is a question of fact for which there is no required bright line or date certain.

The Board generally recognizes that the scope of discovery is broad. See TBMP § 402.01. However, the response that Applicant served fairly and sufficiently provides the information which Opposer requested. To the extent that Opposer now seeks more specifics underlying Applicant’s theory of its case, and of its application of law to the alleged facts with respect to the issue of acquired distinctiveness, this is an issue about which Applicant will principally be left to its proofs and evidence at trial. As a practical matter, the nature of the issue of acquired distinctiveness is such that the Board will make a determination on the basis of the totality of relevant and proper evidence.

In view of these findings, the motion to compel is denied.

It was a good question. It may even turn out to be the question.  But it was a little too good for discovery.

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Author:Ron Coleman

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