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Watercraft Mark Distinctive and Registrable for Online Retail Store Services

The USPTO Trademark Trial and Appeals Board (TTAB), reversing the Examining Attorney, finds that the mark WATERCRAFT SUPERSTORE is registrable for online retail stores services featuring personal watercraft parts and accessories because Watercraft used the mark for seven years, vigorously promoted its services and established a substantial business.  Therefore, Watercraft created an association between its mark and its services among customers and was held to be distinctive. In re Watercraft Superstore, Inc., serial no.  86369831 (USPTO Trademark Trial and Appeals Board, Aug.  26, 2016) (Available Here).

Watercraft Superstore, Inc. (“Watercraft”) filed an application for registration on the Principal Register of the mark WATERCRAFT SUPERSTORE in standard characters for “Online retail stores services featuring personal watercraft parts and accessories.” Watercraft requested
registration under Section 2(f) asserting that “The mark has become distinctive of the goods/services through the applicant’s substantially exclusive and continuous use in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.” Registration was refused by the Examining Attorney under Section 2(e)(1) on the ground that Watercraft’s mark was merely descriptive of it’s services and it had not shown that the mark had acquired distinctiveness. Watercraft appealed to the TTAB.

When registration is requested based on acquired distinctiveness under Section 2(f), the mark’s “lack of inherent distinctiveness [is] an established fact.” Yamaha International Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988). Generally speaking, acquired distinctiveness is understood to mean an acquired “mental association in buyers’ minds between the alleged mark and a single source of the product.” MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 15:5 (4th ed. June 2016 update). “It is only necessary that a ‘substantial part’ of the buying class make such an association.” Id. §15:45.

The Trademark Act is silent as to the quantum of evidence that is necessary to establish acquired distinctiveness, except for the provision of Section 2(f) that states, “The Director may accept as prima facie evidence that the mark has become distinctive … proof of substantially exclusive
and continuous use” of the mark in commerce for the immediately preceding five years. 15 U.S.C. § 1052(f). Accordingly, the question the Board faced was whether Watercraft’s mark had acquired distinctiveness based on the entire record, keeping in mind that Watercraft had the ”ultimate burden of persuasion” as to acquired distinctiveness. Yamaha v. Hoshino Gakki, 6 USPQ2d at 1004. More evidence is usually required when a mark is so highly descriptive that purchasers seeing the matter in relation to the offered services would be less likely to believe that it indicates source in any one party. See In re Bongrain Int’l Corp., 894 F.2d 1316, 1318, 13 USPQ2d 1727, 1729 (Fed. Cir. 1990).

The Examining Attorney proved that “superstore” is “a very large retail store offering a very wide selection of merchandise”, and that “watercraft” means “any vehicle ordinarily used for water transportation.” Additionally, Watercraft’s recitation of services demonstrated that its store featured parts and accessories for “personal watercraft.” Despite the fact that the evidence as a “whole” showed that the mark was highly descriptive, the Examining Attorney argued that due to this high degree of descriptiveness, Watercraft also had the burden to show a high level of secondary meaning.  On this point, the TTAB agreed with the Examining Attorney.

Watercraft showed that it had meaningful, ongoing operations. The evidence established that: (1) Watercraft had operated its online store for over seven year; (2) its orders increased steadily; (3) its advertising expenditures in 2011 through 2014 ranged between $200,000 – $400,000 per year; (4) it distributed nearly 500,000 catalogs (an average of nearly 120,000 per year); and (5) its website registered over 80,000 “unique user impressions”  in 2009 – 2012 and nearly 120,000 per year in 2013 – 2014.  Watercraft also attended 12 tradeshows and events and advertised its services and mark at the shows.

It also presented evidence that it had operated an online forum for personal watercraft for many years.  Online forum results showed that postings by forum users “clearly recognized” WATERCRAFT SUPERSTORE as a source indicator for online retail store services. According to it’s tabulation,14 users from 21 States recognized WATERCRAFT SUPERSTORE as a source indicator.  References to Black Friday promotions generated over 50 postings.

The context of the postings made clear that consumers recognized WATERCRAFT SUPERSTORE as Watercraft’s source indicator. Several users used the abbreviations WCSS, WCS, and Watercraft SS expecting that other readers would understand them as references to Watercraft.

To demonstrate weakness, the Examining Attorney introduced Google search results which included references to third parties using the terms “watercraft” and “superstore” together such as “Sea-Doo Watercraft from PARCS Superstore”, “Powersport Superstore WaterCraft Accessories” and “Aquamoto Watercraft Superstore.”   The TTAB indicated that a showing of third party use in applicant’s field use with the same or substantially the same wording as the mark usually indicates that the mark has not acquired distinctiveness, in the present case, the Google search results did not show such third-party use. In re White Jasmine LLC, 106 USPQ2d 1385, 1395 (TTAB 2013). Of all the search results introduced, only  “Aquamoto Watercraft Superstore” used the words “watercraft superstore” together. Accordingly, the TTAB held that this evidence did not demonstrate that Applicant’s use of WATERCRAFT SUPERSTORE had not been substantially exclusive.    

The TTAB found that Watercraft successfully proved that, over the course of seven years, it established a substantial business and has vigorously promoted its services under the mark WATERCRAFT SUPERSTORE in such a way as to have created, among its customers, an association between its mark and its services. Furthermore, Watercraft demonstrated actual market recognition of its mark as a source-indicator with evidence of spontaneous comments of relevant customers and potential customers. Additionally, Watercraft showed that it had developed the type of good will in its mark and business that, under appropriate circumstances, is protectable under the trademark laws.

Per the TTAB, the Examining Attorney failed to show that (i) the relevant public and/or (ii) third-party merchants used ”watercraft superstore” to identify or describe their services. Watercraft successfully demonstrated that it has developed the type of good will in its mark and business that is protectable under the trademark law due to acquired distinctiveness under Section 2(f).    

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