CAFC Affirms TTAB Dismissal of IVOTERS Opposition Due to Failure to Prove Acquired Distinctiveness (Priority) of Pleaded Marks

The CAFC affirmed the TTAB's dismissal of an opposition to registration of the marks IVOTERS and IVOTERS.COM for a website providing information on political issues, on the ground that Opposer Heritage failed to prove acquired distinctiveness of its pleaded marks IVOTERGUIDE and IVOTERGUIDE.COM for voters guides prior to Applicant APR’s constructive use date, and thus failed to prove priority. Heritage Alliance and AFA Action, Inc. v. The American Policy Roundtable, 2025 USPQ2d 613 (TTAB 2025) [precedential].

Heritage began using its marks well before APR's constructive first use date, i.e., its filing date of January 22, 2019. The Board, however, ruled that Heritage’s marks "could not support its challenge because the marks were not themselves protectable as trademarks (before APR’s first use date), so they lacked cognizable priority." Opposition No. 91249712, 2023 WL 6442587, at *13 (Sept. 29, 2023).

In assessing the distinctiveness of Heritage's marks, the Board proceeded in two steps: first it found that the marks were not just descriptive but "highly descriptive" because the marks "clearly described the entire service offered: providing a voter guide on the Internet." See id. at *7–9. Second, it found that Heritage's evidence failed to establish acquired distinctiveness. See id. at *10–12.

Heritage argued that the Board  relied on insufficient evidence in the analysis of the prefix “i,” and erred infocusing on the individual components of the asserted marks instead of the marks as a whole. The CAFC disagreed.

The CAFC concluded that substantial evidence supported the Board’s finding that Heritage's marks are not just descriptive but highly descriptive. As to the components of the marks, the Board cited substantial evidentiary to support its conclusion that the prefix “i” generally refers to something Internet-based. Heritage did not challenge the "facially reasonable findings" that “VoterGuide” and “.com” were not distinctive. Moreover, the Board did consider the marks as a whole in its descriptiveness analysis.

It determined that the proposed marks “on their face refer to online voter guides” and no evidence demonstrated that the combination of the individual components of the asserted marks conveyed “any distinctive source identifying impression contrary to the descriptiveness of the individual parts.” (quoting In re Fat Boy Water Sports LLC, 2016 WL 3915986, at *6 (T.T.A.B. 2016) (quoting Oppedahl & Larson, 373 F.3d at 1175)).

The appellate court saw "no reason to disturb the Board’s finding that the iVoterGuide marks are highly descriptive."

Beyond conveying a characteristic of the product or service, the “iVoterGuide” marks are such that the whole of the marks directly and immediately conveys the whole of the product—provision of a voter guide on the Internet. That property suffices for the marks to be highly descriptive.

With respect to its claim of acquired distinctiveness, Heritage pointed to two aspects of the record: (a) the undisputed evidence that it continuously used the iVoterGuide marks for more than five years before APR’s first use date, and (b) declarations from three of Heritage’s panelists (i.e., volunteers who helped make Heritage’s voter guides) from 2008 that they associated the marks with Heritage. The CAFC was unmoved.

Heritage argued that the Board should have accepted its five-plus years of prior continuous use as “prima facie evidence” that the marks had acquired distinctiveness” under 15 U.S.C. § 1052(f). The court pointed out that Section 1052(f) says that the USPTO “may accept” such proof “as prima facie evidence that the mark has become distinctive."

That language indicates that the Board has discretion not to accept such evidence as prima facie evidence, much less as ultimately persuasive evidence, on a case-by case basis. Our case law similarly recognizes the Board’s discretion to weigh the evidence, especially for a highly descriptive mark. In the circumstances of this case, we see no unreasonableness in the Board’s declining to rely on Heritage’s five-year-prior-use evidence given the highly descriptive nature of Heritage’s marks and the limited additional evidence of acquired distinctiveness.

As to the three panelist declarations, the court saw "no error in the Board’s giving little weight to that evidence." The declarations were identical in form and came from individuals who were not random customers, but were "volunteers used by [Heritage] to 'help evaluate candidates so they could be graded regarding their positions on the issues.'" And the declarations did not explain the basis for their asserted belief that the marks were distinctive. Finally, there was no evidence regarding "the size and nature of the customer base that would allow an inference that the declarations that would allow an inference that the declarations meaningfully reflect consumer perception of [Heritage’s] purported marks in the marketplace."

In sum, the Board's rejection of Heritage's Section 2(f) claim was supported by substantial evidence.

The CAFC noted that the Board's decision and the court's affirmance "raise an obvious issue:" Do those rulings provide a reason for the PTO now to reconsider whether it should refuse registration to APR’s iVoters marks—as to which the Board found APR “effectively concede[d] likelihood of confusion” with Heritage’s marks?"

The opposition provision of the Lanham Act says that registration generally follows when an opposition, if any, fails, but the stated precondition is that the mark at issue be a “mark entitled to registration,” 15 U.S.C. § 1063(b), which might allow the PTO, after an opposition fails, to reconsider the examiner’s pre-opposition allowance. Also, if a person believes it “will be damaged . . . by the registration of a mark,” it may seek cancellation of the registration. 15 U.S.C. § 1064. Neither a PTO reconsideration nor a cancellation is before us, so we do not decide any issues concerning such processes.

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TTABlogger comment: Heritage would presumably be barred by claim preclusion from seeking to cancel APR's registration once it issues. Mere descriptiveness is an issue that Heritage could have raised (in the alternative) in the opposition, and so it can't be raised in a new proceeding. Could the USPTO cancel the registration and return it to the examining attorney for re-examination? The Board's NURSECON decision suggests that the answer is yes: "[T]he USPTO possesses inherent authority to correct its errors." [TTABlogged here].

Text Copyright John L. Welch 2025.