Wednesday, January 04, 2017

Precedential No. 36: DEEP! DEEP! DISH PIZZA Lacks Acquired Distinctiveness for Pizza, Says TTAB

The TTAB ruled that an applicant, when seeking registration based upon acquired descriptiveness under Section 2(f), may rely on a "family of marks" argument to support its claim. Nonetheless, the Board affirmed a Section 2(e)(1) mere descriptiveness refusal to register the mark DEEP! DEEP! DISH PIZZA, in standard characters form, for "pizza" [DEEP DISH PIZZA" disclaimed], finding that applicant's proofs fell short of establishing acquired distinctiveness. In re LC Trademarks, Inc., 121 USPQ2d 1197 (TTAB 2016) [precedential].

By seeking registration under Section 2(f) applicant conceded that the applied-for mark is not inherently distinctive for the goods. In re Tires, Tires, Tires Inc., 94 USPQ2d 1153, 1157n.3 (TTAB 2009) (quoting In re MGA Entertainment, Inc., 84 USPQ2d 1743, 1747 (TTAB 2007)). To establish acquired distinctiveness, a party must show that the relevant public understands the primary significance of the mark as identifying the source of a product or service rather than the product or service itself." In re, 75 USPQ2d 1420, 1422 (Fed.Cir. 2005) (emphasis added by the Board). The more descriptive the term at issue, the greater the applicant's burden to prove acquired distinctiveness. Id. at 1424.

Applicant argued that the repetition of the word DEEP! alters the meaning and impression that are ordinarily conveyed by the single word DEEP alone. The Board disagreed. "Considering the meaning of the word 'deep' in the common expression 'deep dish pizza,' members of the relevant public would likely view the repetition of DEEP! merely as an emphatic description of the bountiful quality of Applicant’s deep dish pizza." See In re Disc Jockeys, Inc., 23 USPQ2d 1715, 1716 (TTAB 1992), (repetitive use of the term “DJ” as “DJDJ” for disc jockey services did not diminish its descriptiveness). Applicant's repetitive use of "DEEP!" underscored the highly descriptive nature of the term. Applicant's burden to proved acquired distinctiveness was therefore proportionately higher.

Applicant LC claimed that its mark is a member of a family of "double word" marks (each mark having a repeated word with exclamation points after each word), which contributes to the acquired distinctiveness of the subject mark. [E.g., PIZZA! PIZZA!, PARTY! PARTY!, and THANK YOU! THANK YOU!]. LC contended that "consumers will easily connect the DEEP!DEEP! DISH PIZZA mark with Applicant because in the world of pizza restaurants, double word marks mean [Applicant's exclusive licensee] Little Caesars."

The examining attorney's maintained that, as in ex parte Section 2(d) determinations, Applicant LC should not be permitted to invoke the family of marks doctrine. See, e.g., In re Hitachi, 109 USPQ2d at 1772; In re Mobay, 166 USPQ at 219; In re Cynosure, Inc., 90 USPQ2d 1644, 1645 (TTAB 2009). TMEP § 1207.01(d)(xi). The Board disagreed.

[A]n applicant may, in the context of ex parte prosecution of an application that has been refused registration under Section 2(e)(1), present evidence of a family of marks to help prove acquired distinctiveness of a new member of that family under Section 2(f).

The Board observed that LC bore the "substantial burden" to prove "first, that its claimed family of 'double word' marks has acquired distinctiveness, and second, that the public recognition of that family helps the subject 'family member' mark, in turn, acquire distinctiveness."

Mere ownership of a series of similar marks does not suffice to establish a family of marks. Truescents LLC v. Ride Skin Care LLC, 81 USPQ2d 1334, 1337-38 (TTAB 2006); Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1800 (TTAB 2001). To prove the existence of a family of marks, LC was required to show that the purported family "(1) has a recognizable common characteristic, (2) that is distinctive, and (3) that has been promoted in such a way as to create 'recognition among the purchasing public that the common characteristic is indicative of a common origin of the goods or services.' Wise F & I, LLC v. Allstate Ins. Co., 120 USPQ2d 1103, 1109 (TTAB 2016) (citing Truescents, 81 USPQ2d at 1337-38). LC failed to satisfy any of those three elements.

First, the Board found that, although it is theoretically possible that a common structure could be the common element of a family of marks, here LC's structure consisting of a descriptive word and an exclamation point followed by the same word and another exclamation point "is too abstract to constitute a common characteristic that could give rise to a family of similarly-structured marks." Recognizing LC's double word structure would pave the way for LC to "enforce almost any descriptive word in the dictionary, so long as it repeats." This would create and unacceptable risk to competition, and would be analogous to a phantom mark.

Applicant LC's purported family also failed to satisfy the second required element, distinctiveness. Repetition of a word does not normally overcome its descriptive or generic nature. Double word marks like DEEP!DEEP!, punctuated by exclamation points, "are more likely to be taken as intensifiers than as source-identifiers."

Finally, Applicant failed to satisfy the third element: that the marks containing the family feature have been used and promoted together in a manner sufficient to create public recognition of the family. See In re 3Com Corp., 56 USPQ2d 1060, 1062n.4 (TTAB 2000).

We have reviewed all of the record evidence, including evidence not expressly mentioned above. In view of the broad and abstract nature of Applicant’s claimed family, as well as the degree of descriptiveness of its proposed mark, we find the evidence insufficient to support a finding of acquired distinctiveness of the putative family of marks.

Putting aside the "family of marks" argument, the Board also found insufficient the evidence that the applied-for mark by itself has acquired distinctiveness. The sales figures provided may show the popularity of the products but not necessarily consumer recognition of the mark as a source indicator. The sample advertising that applicant provided did not demonstrate its magnitude, geographic extent, duration, circulation or viewership. Moreover, the double-word marks are always displayed with other marks, including applicant's house mark, LITTLE CAESARS.

The Board concluded that Applicant LC failed to meet its burden of proving acquired distinctiveness, and so it affirmed the Section 2(e)(1) refusal.

Read comments and post your comment here.

TTABlog comment: Well well! Shouldn't LITTLE CAESARS have an apostrophe before the last "S"?

Text Copyright John L. Welch 2016.


At 10:29 AM, Anonymous Anonymous said...

John, shouldn't that be: "Well! Well!"?

At 11:06 AM, Anonymous Bob Klein said...

Survey! Survey!
Little Caesars isn't a big deal in the Boston area, so my personal recognition is based on the TV ads I have seen. That said, I think a simple secondary meaning survey among pizza consumers could be used to show that "Deep! Deep! Dish Pizza" is associated with a single source. It could also address the "family of marks" issue so that future incarnations would be easier to get through the trademark office.

At 11:56 AM, Anonymous Anonymous said...

Better Luck Next Time. Better Luck Next Time...

At 12:17 PM, Anonymous Miriam Richter, Ft. Lauderdale, FL said...

This reminds me of the Louboutin case when they lost. There is no doubt in my mind that this functions as a trademark - right now I can't rid of the "pizza pizza" earworm that started as soon as I saw the headline!

As far as the s at the end of Caesars is concerned, it seems like there should be two of the little guys running around - maybe if they had two it would have helped them with this case! Who says grammar isn't important;-).


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