online retail store services featuring jewelry boxes, jewelry findings, jewelry displays, jewelry repair kits, tools for making jewelry, beads, magnifiers, craft kits, crystals, and educational material, specifically books and various media, including instructional videos on the subject of jewelry (in International Class 35). In re Jewelry Supply, Inc., Serial No. 77475181 (May 4, 2011) [not precedential].
Applicant amended its application during prosecution to seek registration under Section 2(f) of the Trademark Act based on acquired descriptiveness. The Examining attorney, however, maintained the refusal because the evidence of acquired distinctiveness was insufficient. The sole issue on appeal was whether Applicant met its burden of establishing, by a preponderance of the evidence, that its trademark had acquired distinctiveness under Section 2(f).
First, the TTAB determined the degree of descriptiveness of jewelrysupply.com mark in relation to the recited services. Based on dictionary definitions and third party registrations, the Board found that Jewelry Supply was highly descriptive of Applicant’s online retail store services featuring jewelry and jewelry-related products.
The Board then turned to Applicant’s evidence in support of its Section 2(f) claim of acquired distinctiveness. When a mark is highly descriptive, more evidence is required to show acquired distinctiveness. “Evidence of acquired distinctiveness can include the length of use of the mark, advertising expenditures, sales, survey evidence, and affidavits asserting source-indicating recognition.”
The Board rejected Applicant’s attempt to tack the use of its registered design mark to its use of the present mark for purposes of transferring distinctiveness to the new mark because the marks were not legal equivalents, i.e. they were not the same mark. The Board also found that Applicant’s sales and advertising figures were provided without any context for the industry norms or market share and were insufficient to support a finding of acquired distinctiveness. Further, the web traffic to Applicant’s did not provide specifics for new visitors vs. returning traffic to allow the Board to determine the mark’s exposure to new customers.