TTAB Denies Petition for Cancellation of LITTLE NOTES Registration: Petitioner Failed to Prove Rights in the Mark Via Acquired Distinctiveness

The Board denied a petition for cancellation of a Supplemental Registration for the mark LITTLE NOTES for address books, greeting cards, calendars, note paper, and the like, rejecting Petitioner Comptime's claim of likelihood of confusion with its alleged common law rights in the same mark for overlapping goods. Comptime failed to prove that the mark LITTLE NOTES had acquired distinctiveness, and consequently it had no prior rights in the mark. Comptime, Inc. DBA Comptime Digital Printing v. E. Francis Paper, Inc., Cancellation No. 92073884 (May 10, 2023) [not precedential] (Opinion by Judge Peter W. Cataldo).

Because the registration at issue resides on the Supplemental Register, the respondent could not rely on the filing date of its underlying application. See Section 26 of the Trademark Act. Nonetheless, as plaintiff, Petitioner Comptime bore the burden of proof to establish its claim, including its priority, by a preponderance of the evidence. It had to show that its mark is distinctive, inherently or otherwise, and had to show priority of use. See Otto Roth.

Comptime argued that the registered mark is merely descriptive and has not acquired distinctiveness, yet it maintained that its common law mark is inherently distinctive. The Board, however, found LITTLE NOTES to be highly descriptive, and therefore Comptime's burden of proof is "commensurately high."

The Board applied the CAFC's Converse factors to assess whether Comptime's mark had achieved acquired distinctiveness. Comptime did not submit survey results or any other direct evidence of association of LITTLE NOTES with any particular source. Comptime claimed substantially exclusive use since 2013, but in light of the highly descriptive nature of the mark, the Board exercised its discretion to deem that evidence insufficient.

Comptime spent about $13,000 per year on advertising, but the Board was not impressed with these relatively modest expenditures. Its sales figures amounted to about $1,825,000, but Comptime did not disclose the number of customers, its market share, or its ranking among other providers of similar goods, and so the Board was unable "to accurately gauge" the level of its success. There was no evidence of intentional copying or of unsolicited media coverage.

And so, the Board concluded that Comptime failed to establish acquired distinctiveness in the LITTLE NOTES mark. Therefore, it failed to prove priority, and the Board denied the petition for cancellation.

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TTABlogger comment: Shouldn't the Board be asking whether Comptime established acquired distinctiveness before respondent's first use date, which apparently was in 2014? See, for example, the case TTABlogged here.

Text Copyright John L. Welch 2023.