TTAB Sustains Opposition to PROGENEALOGISTS for Genealogical Services, Finding Acquired Distinctiveness Lacking

The Board sustained pro se opposer Jeanette K. Daniels's opposition to registration of the mark PROGENEALOGISTS under Section 2(f), finding that the mark lacked acquired distinctiveness. Because the mark is "highly descriptive," applicant's fifteen years of use and its advertising and sales efforts were insufficient to establish distinctiveness. Jeanette K. Daniels v. TGN Services, LLC Opposition No. 91204462 (October 11, 2016) [not precedential].

The Board had little doubt that PROGENEALOGISTS is "highly descriptive." The word "pro" implies that the services are rendered by professionals and a "genealogist" is a person who traces or studies the descent of persons or families. In fact, applicant acknowledged that it adopted the mark largely because of its descriptiveness.

Of course, highly descriptive terms are less likely to be perceived as trademarks and more likely to be useful to competitors in describing their services. More substantial evidence of acquired distinctiveness will typically be required to prove that such a term has source-identifying significance.

Applicant submitted evidence that its business has enjoyed strong growth since 1999. It expended substantial funds developing its website, and expends thousands of dollars each month for online advertising. Since 2010, sales have nearly quintupled. Sales, advertising, and website view figures are "significant." Applicant claims more than 15 years of substantially exclusive use. It did not submit consumers studies or surveys directly evidencing acquired distinctiveness.

The Board pointed out that applicant uses the proposed mark in a descriptive matter. For example, its website states: "ProGenealogists(R) is a consortium of professional genealogists who specialize in genealogical, forensic, and family history research."

The Board noted that, although applicant's growth in sales, advertising, and website views are impressive, raw numbers do not necessarily mean that consumers have come to recognize its proposed mark as a source indicator.

The Board concluded that, in view of the high degree of descriptiveness of applicant's proposed mark, its fifteen years of use and its advertising and sales figures are insufficient to establish distinctiveness.

Moreover, the evidence showed that the terms "pro" and "genealogist" are ubiquitous in applicant's field. An application for registration under Section 2(f) cannot success if the use of the term is not substantially exclusive.

Applicant's claim that others intentionally copied its mark was brushed aside by the Board, since copying is evidence of acquired distinctiveness only if the intent was to confuse consumers and pass off the services. Here, the alleged copyists were merely using common descriptive terms in their descriptive senses.

According to the Federal Circuit, “merchants act at their peril in attempting, by advertising, to convert common descriptive names, which belong to the public, to their own exclusive use.” In re Pennington Seed, Inc., 466 F.3d 1053, 80 USPQ2d 1758, 1762 (Fed. Cir. 2006) (generic use). To allow registration of Applicant’s proposed mark would inhibit legitimate competition by in effect granting a monopoly to what is essentially very common terminology in the genealogy trade, which Applicant’s competitors have an equal right to use. Cf. In re Mars, Inc., 105 USPQ2d 1859, 1866 (TTAB 2013).

And so the Board sustained the opposition.

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TTABlog comment: Once a mark is tagged with the "highly descriptive" label, the ballgame is over.

Text Copyright John L. Welch 2016.