The Trademark Trial and Appeal Board (TTAB) explained that an applicant’s evidence of a family of marks can be used to help prove acquired distinctiveness for a new member of that family, but held that the applicant failed to provide sufficient evidence to do so. In re LC Trademarks, Inc., Serial No. 85890412 (TTAB, Dec. 29, 2016) (Heasley, ATJ).
LC Trademarks, owner of Little Caesars’ trademarks, sought to register DEEP!DEEP! DISH PIZZA (in standard characters with “DEEP DISH PIZZA” disclaimed) for pizza based on acquired distinctiveness pursuant to § 2(f) of the Trademark Act. The examining attorney refused registration on the ground that the mark is merely descriptive under § 2(e)(1) and has not acquired distinctiveness under § 2(f). LC Trademarks appealed to the TTAB.
The TTAB first stated that LC Trademarks bore a heavy burden to show that the DEEP!DEEP! DISH PIZZA mark had acquired distinctiveness because the mark was highly descriptive. The more descriptive the term seeking registration, the greater the applicant’s burden to establish acquired distinctiveness. In this case, the TTAB stated that the “repetitive use of DEEP! does not reduce descriptiveness; it merely serves as an intensifier, underscoring the highly descriptive nature of the term.”
LC Trademarks contended that the applied-for mark was a member of its family of “double word” marks and thus had acquired distinctiveness. A family of marks is a group of marks that all share a common characteristic that consumers recognize as an indication of source; one famous example is McDonald’s family of “Mc” marks. LC Trademarks owns numerous registrations for marks with a repeated word followed by an exclamation point (e.g., PIZZA!PIZZA! and CHEESER!CHEESER!) The examining attorney argued that evidence of a family of marks is inappropriate for an ex parte proceeding or as evidence of acquired distinctiveness. The TTAB disagreed, explaining that “[i]f an applicant had a well-established family of marks characterized by a common characteristic, and applied to register a mark with the same family characteristic, it could credibly argue that its prior family of marks would expedite the public’s recognition of [the] applied-for mark as a member of the family.”
To prove ownership of a family of marks, the TTAB required that LC Trademarks show (1) that its family of marks has a recognizable common characteristic, (2) that the common characteristic is distinctive and (3) that the common characteristic has been marketed so that the public recognizes it as indicative of the source of the goods. The TTAB found that LC Trademarks failed to satisfy all three requirements.
Declining to completely “foreclose the theoretical possibility that a structure [as opposed to a prefix or suffix] may satisfy the first required element in proving the existence of a family marks,” the TTAB found that, in this case, the structure of a descriptive word plus an exclamation point (followed by a repetition of the same) was “too abstract.” The TTAB reasoned that, if allowed, it “would effectively grant Applicant an exclusive proprietary right to an unbounded variety of merely descriptive double word marks.”
As for distinctiveness, the TTAB stated that, unlike “Mc,” which is a common characteristic already recognized by consumers as indicating source, the repetition of descriptive words followed by exclamation points was more likely to be taken as emphasis than a source identifier.
LC Trademarks likewise failed on the third element. Despite evidence of 3,500 Little Caesars franchise locations with sales just shy of $1.5 billion a year, as well as examples of advertising featuring the double word marks, the TTAB stated that the applicant’s evidence “demonstrate[d] the popularity of its product, not necessarily consumers’ recognition of its double word marks as source identifiers.” Accordingly, the TTAB affirmed the decision to refuse registration.