Precedential No. 4: TTAB Finds That "NKJV" Has Acquired Distinctiveness for Bibles
Reversing a refusal to register the mark NKJV for bibles, the Board found that, in light of Applicant's long use, substantial sales and advertising, and ownership of two incontestable 2(f) registrations for marks that include the term NKJV, the mark had acquired distinctiveness. In re Thomas Nelson, Inc., 97 USPQ2d 1712 (TTAB 2011) [precedential].
Mere Descriptiveness: The Board observed that, for NKJV to be merely descriptive of bibles, the evidence must show that (1) NKJV is an abbreviation for “New King James Version”; (2) “New King James Version” is merely descriptive of bibles; and (3) a relevant consumer viewing NKJV in connection with bibles would recognize it as an abbreviation of the term “New King James Version.”
First, the Board concluded that NKJV is an abbreviation for New King James Version, based on Acronymfinder.com and other website evidence, on the use of various acronyms or initials for various version of the Bible, and on Applicant's own registered mark NKJV NEW KING JAMES VERSION, which suggests that NKJV is an acronym for NEW KING JAMES VERSION.
Next, based on dictionary definitions and website evidence, the Board found that NEW KING JAMES VERSION is descriptive of a particular version of the Bible.
Finally, the website evidence demonstrated that "consumers viewing the term NKJV used in connection with bibles would recognize that term as an abbreviation for 'New King James Version.'"
The Board suggested that Applicant and the Examining Attorney should have resolved this issue without the need for an appeal.
Acquired Distinctiveness: The Board was also not happy with the Examining Attorney's refusal to accept Applicant's 2(f) claim:
In view of the evidence of acquired distinctiveness submitted by applicant (i.e., substantially exclusive and continuous use over a long period of time, substantial sales and advertising expenditures) as well as applicant’s two previously registered marks, to hold that the initials NKJV has not acquired distinctiveness when the same term is the subject of two incontestable registrations under the provisions of Section 2(f) appears illogical on its face. Thus, under the facts before us, we find that the evidence of record is sufficient to support the finding that the mark NKJV mark used in connection with bibles has acquired distinctiveness.
And so the Board reversed the refusal, finding that the mark has acquired distinctiveness under Section 2(f).
Text Copyright John L. Welch 2011.