Wednesday, April 12, 2017

TTAB Finds Section 2(f) Evidence for "CERTIFIED CHIANINA BEEF" Inadequate

The Board affirmed a refusal to register the proposed mark CERTIFIED CHIANINA BEEF [with CHIANINA BEEF disclaimed], finding Applicant Klickitat's evidence of acquired distinctiveness to be inadequate in light of the highly descriptive nature of the mark. Klickitat Valley Chianina, LLC, Serial No. 76715490 (March 16, 2017) [not precedential] (opinion by Judge Shaw).

The Board observed that "more evidence is required where a mark is so highly descriptive that purchasers seeing the matter in relation to the named good would be less likely to believe that it indicates source in any one party."

Applicant oddly argued that Examining Attorney Emily Chuo's evidence of descriptiveness was irrelevant, but the Board pointed out that "the degree of descriptiveness of Applicant’s mark affects the amount and character of evidence required to establish acquired distinctiveness."

The examining attorney submitted web pages showing use of the terms "certified Chianina beef" and "certified Chianina" in connection with beef. ["Chianina" is defined as "any of a breed
of tall white cattle of Italian origin noted especially for producing lean meat."] She also provided three registrations on the Supplemental Register for "conceptually similar marks": CERTIFIED HEREFORD BEEF, CERTIFIED DEVON BEEF, and CERTIFIED PIEDMONTESE BEEF.

The foregoing dictionary definitions and Internet excerpts establish that the term CERTIFIED CHIANINA BEEF is widely used by restaurants and travel sites to describe a well-regarded type of beef as coming from a particular breed of cattle, the Chianina. The third-party registrations show that the Examining Attorney’s treatment of Applicant’s mark is consistent with the Office treatment of conceptually similar marks.

The Board therefore concluded that the applied-for mark is highly descriptive, and so applicant has the burden to show a "concomitantly high level of secondary meaning."

To prove acquired distinctiveness, applicant submitted two declarations, one from it manager and one from a customer. Applicant claimed use of the mark since 2006, but although that may indicate a degree of commercial success, it is "not conclusive or persuasive considering both the nature of the mark sought to be registered and the widespread use of CERTIFIED CHIANINA BEEF by others.

Moreover, Applicant states that it has spent “[a]t least $82,750.00” to promote its products and conducted a number of dinners for more than 100 “ranchers, cattlemen, restaurateurs, and beef product wholesalers.” But these efforts to advertise and promote Applicant’s products are extremely modest over the given time frames.

Only the single customer declaration provided any evidence of consumer protection of the proposed mark. Applicant did not provide information regarding its market share or the size of the marks, and so the assertion that its beef is expensive and sold to a limited market was not probative.

In sum, substantially more evidence bearing directly on the degree of public recognition of Applicant’s mark would be required to demonstrate that it has acquired public recognition as a source indicator.

And so the Board affirmed the Section 2(e)(1) refusal.

Read comments and post your comment here.

TTABlog comment: Got any beef with this ruling?

Text Copyright John L. Welch 2017.


At 8:22 AM, Anonymous Joe dreitler said...

No, but....we know that declarations are viewed as self serving. And only the 1/10 of 1% can afford or justify doing a survey, and those are the same large entities who have millions of dollars of advertising and sales. Not a lot of guidance for the average business that has been using a descriptive term for 10 years and no one else is using that term, but sales are modest although the product is known in its market

At 8:42 AM, Blogger Robert said...

While not relevant to the decision, I am surprised that an attorney would file the application on paper rather than electronically.


Post a Comment

<< Home