Even if the mark THE HOLLYWOOD REPORTER has acquired sufficient distinctiveness to be granted trademark registration by the US Trademark Office, that does not support an application to register THE BOLLYWOOD REPORTER, since the two are not legally equivalent. Normally, if an applicant files to protect a mark on an intent-to-use basis, the applicant doesn't have evidence that it has acquired wide public recognition, because it has not in fact been used. One exception is when a legally equivalent mark has been used on related goods or services, and the applicant can establish that this "secondary meaning" will transfer to the new, "legally equivalent" mark." This is, according to an opinion of the Trademark Trial and Appeal Board, a pretty high level of proof. In this case, the Board said, "the marks at issue are not legal equivalents because they have different meanings and engender different commercial impressions. While the substitution of B for H was minor, the Board said that was not a minor misspelling or pluralization of a previously registered mark, nor was it merely the addition of a generic term. Although both connote movie industries, they identify, in the Board's view, different movie industries, and so the Board refused registration of the descriptive mark, THE BOLLYWOOD REPORTER.

Practice Tip: When a trademark arguably is descriptive of the goods and/or services to which it is applied, you must show the Trademark Office that the mark has acquired wide public recognition as a trademark in its own right, unless it is virtually identical to an existing trademark that has acquired that high level of distinctiveness.