TTAB Finds TURNKEY STORAGE Merely Descriptive of Self-Storage Facilities, Noting that "Trademarking" is not a Verb

The Board affirmed a Section 2(e)(1) mere descriptiveness refusal of the proposed mark TURNKEY STORAGE for the service of providing self-storage facilities [STORAGE disclaimed], rejecting applicant's claim of acquired distinctiveness. The testimony of applicant's expert witness was given little weight, partly because he committed the cardinal sin [at least in my book] of using the term "trademarking" as a verb. In re Turnkey Storage, LLC, Serial No. 97796315 (December 8, 2025) [not precedential] (Opinion by Judge Lawrence T. Stanley, Jr.).

The Board first noted that '[i[t is the Examining Attorney’s burden to show, prima facie, that a mark is merely descriptive of an applicant’s goods or services.” Fat Boys, 2016 TTAB LEXIS 150, at *5.

“The major reasons for not protecting [merely descriptive] marks are: (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods [or services]; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products [or services].” Abcor Dev. Corp., 588 F.2d at 813 (citation omitted).

Examining Attorney Wade Speake relied on dictionary definitions of "turnkey" (ready for immediate use) and on numerous third‑party uses of "turnkey" and "turnkey storage" to describe ready‑to‑use storage services. Applicant's own website stated that it wants the customer’s "storage experience to be a valuable, turnkey experience."

As mentioned, the Board gave little weight to the testimony of applicant's expert witness "on factual or legal grounds beyond general statements about marketing or branding."

While Professor Bond may be an expert in marketing and branding, it is apparent from a review of his testimonial declaration that he is not an expert in trademark matters much less on the registrability of trademarks under the Trademark Act and the problems and considerations related thereto. This is readily apparent from his inability to appreciate the difference between the Examining Attorney’s refusal based on mere descriptiveness and his genericness advisory, and his reference to “trademarking” as a verb. [emphasis supplied].

Having no doubt as to the mere descritpiveness of the proposed mark, the Board next addressed applicant's Section 2(f) claim of acquired distinctiveness.

Deeming TURNKEY STORAGE to be "highly descriptive" of applicant's services, the Board observed that "[a]ccordingly, while secondary meaning is not impossible to prove, Applicant bears a heightened burden to establish acquired distinctiveness."

Reviewing the CAFC's Converse factors, the Board began by finding applicant's ten years' of use insufficient.

[T]he passage of time alone may not suffice to bestow on the applied-for mark the mantle of distinctiveness. See, e.g., In re Ennco Display Sys., Inc., No. 74439206, 2000 TTAB LEXIS 235, at *23 (“Applicant’s length of use ranging from approximately seven to seventeen years is simply insufficient, in itself, to bestow acquired distinctiveness.”). This is especially true for highly descriptive matter, for which even lengthy use may be inadequate.

Furthermore, the evidence of third-party use of “TURNKEY STORAGE” or variations thereof indicated that applicant's use of the mark had not been "substantially exclusive," as required by Section 2(f).

Applicant's evidence of $1.2 million spent in advertising and promoting the TURNKEY STORAGE mark, and its sales revenue of $38 million was not placed in industry context, diminishing its impact. "Without benchmarks − such as market share, relative ranking, or comparative spend − it is unclear whether the cited numbers are substantial, modest, or otherwise impactful within the industry."

The testimony of applicant's expert on this issue did not provide the basis for his opinion that applicant’s advertising and sales are "sufficient to prove acquired distinctiveness for a highly descriptive mark." Finally, a single media artice from nine years ago had minimal probative value.

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: WYHA? Understandable why the examining attorney issued a genericness advisory.

Text Copyright John L. Welch 2025.