Friday, March 21, 2014

Eighth Circuit Reverses District Court's Cancellation of Two Section 2(f) Registrations

The United States Court of Appeals reversed a district court ruling that ordered cancellation of registrations for the marks LOVELYSKIN and LOVELYSKIN.COM for skin care products and online retail services. The registrations issued under Section 2(f) based on declarations of 5 years of continuous and substantially exclusive use. Defendant Ishtar claimed that the use of the marks had not been substantially exclusive during the 5-year period, but its proofs fell short. Lovely Skin, Inc. v. Ishtar Skin Care Products, LLC, 110 USPQ2d 1071 (8th Cir. 2014).

The appellate court observed that Ishtar, "as the party seeking cancellation, had both the initial burden to establish a prima facie case that Lovely Skin's trademarks had not acquired distinctiveness at the time of the registrations and the ultimate burden of persuasion to prove that Lovely Skin's trademarks were invalid by a preponderance of the evidence."

In attempting to prove that Lovely Skin's trademarks had not acquired distinctiveness because they had not been in substantially exclusive use during the five years claimed, the only evidence it provided consisted of several federal trademark registrations and state business entity registrations for marks or business names that contained the terms "love" or "lovely" in combination with "skin," along with testimony from three individuals who were involved in the application process for Lovely Skin's trademarks. That evidence had led the court to conclude that Ishtar had met both its initial and ultimate burden of proof.

The appellate court pointed out that the probative value of evidence of third-party marks and names "depends wholly on their usage." It these other marks or names "were not used in a meaningful way," they do not undermine Lovely Skin's claim of acquired distinctiveness.

Ishtar did not provide evidence as to whether or how these third-parties had used their marks and names, whether or how they had promoted them, and whether they had achieved any public recognition. These mere registrations of marks and business names "cannot overcome the strong presumption of validity" enjoyed by Lovely Skin's registrations.

As to the testimony offered by Ishtar, it showed only that Lovely Skin no longer has evidence to prove acquired distinctiveness as of the date of registration. However, the burden of proof was on Ishtar to establish a prima facie case that the trademarks had not acquired distinctiveness, and it failed to meet that burden.

Moreover, even if Ishtar had made out a prima facie case, it did not meet its ultimate burden, because Lovely Skin presented evidence of significant advertising expenditures and sales growth during the five years preceding registration. Ishtar then did not counter with any additional evidence.

Therefore the appellate court reversed the distinct court's judgment canceling the two registrations.

The court, however, affirmed the district's court's ruling dismissing Lovely Skin's claim of trademark infringement, finding no likelihood of confusion between Lovely Skin's marks and Ishtar's website at

Read comments and post your comment here.

TTABlog note:  In the recent ANNAPOLIS TOURS decision [TTABlogged here], also involving a registration issued under Section 2(f) based only upon a 5-year use declaration, the Board ruled that the challenged mark was "highly descriptive" and therefore that additional evidence was required from respondent to establish acquired distinctiveness. [Apparently, in the Board's view that presumption of validity is not so strong after all]. The Board found respondent's additional proof inadequate to overcome the prima facie case established by the petitioner. That decision is now on appeal to the CAFC.

By the way, why should the presumption of validity be "strong" if the registrant has relied only upon a 5-year declaration to establish acquired distinctiveness? The Examining Attorney makes no investigation of third party uses. All he or she has is the registrant's statement.

Text Copyright John L. Welch 2014.


At 10:37 AM, Blogger Ron Coleman said...

"By the way, why should the presumption of validity be 'strong' if the registrant has relied only upon a 5-year declaration to establish acquired distinctiveness?"

Because if it weren't, what else would incontestability mean?

At 10:55 AM, Blogger John L. Welch said...

We're not talking about a five-year old registration. We're talking about a 5-year declaration that got the registration in the first place.


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