Monday, June 18, 2018

TTAB Sustains Opposition to SCOTTSDALE TAXI: Geographically Descriptive and Lacks Acquired Distinctiveness

The Board sustained an opposition to registration of the mark SCOTTSDALE TAXI for "taxi transport" services [TAXI disclaimed], finding the mark to be "highly geographically descriptive" and lacking in acquired distinctiveness. Despite applicant's use of the alleged mark since 1994, its evidence of advertising and extent of use was inadequate and it failed to prove substantially exclusive use. Zero Transportation, LLC v. Scottsdale Taxi Sedan Service Co., Opposition No. 91218718 (June 14, 2018) [not precedential] (Opinion by Judge David Mermelstein).

Geographical Descriptiveness: In order to overcome the USPTO's refusal to register under Section 2(e)(2), applicant claimed acquired distinctiveness under Section 2(f), based solely on five years of consecutive and substantially exclusive use. Applicant thus conceded that its mark is primarily geographically descriptive and not inherently distinctive.

The Board found it readily apparent that Scottsdale, Arizona "is the name of a place known generally to the public." Applicant's customers would immediately make a goods/place association, because the customers and Applicant are located there, and because the services are provided there. The inclusion of the word TAXI "will not obviate a refusal under Trademark Act § 2(e)(2) if the mark as a whole retains its primarily geographic significance."

The Board concluded that the applied-for mark "is highly geographically descriptive, and that Applicant bears a commensurately high burden to prove that it has acquired distinctiveness."

Acquired Distinctiveness: Although applicant has used the term SCOTTSDALE TAXI since 1994, its evidence regarding the nature and extent of use was meager. Applicant established that it listed its business in telephone directories prior to 2008 but it failed to provide any other evidence of promotion of the term. After 2008, applicant established a website and created social media pages, but applicant provided no evidence as to how many potential customers were exposed to these efforts. Advertising expenditures were a paltry $3000 per year. Not enough, said the Board.

Moreover, opposer's evidence showed that others used the term "Scottsdale taxi" in advertising their taxi transport services. The Board concluded that applicant's use of the applied-for mark was not substantially exclusive, and that relevant consumers are not likely to view the term as a source indicator.

Applicant contended that opposer's use of the term was causing actual confusion, but the Board deemed such confusion irrelevant, observing that by choosing a highly descriptive phrase applicant ran the risk that confusion would result when competitors legitimately used the phrase to describe their own businesses. See, e.g., KP Permanent Make-Up Inc. v. Lasting Impression I Inc., 543 U.S. 111, 72 USPQ2d 1933, 1938 (2004).

Equitable Defense: Applicant argued that opposer's business behavior constituted unclean hands, but the Board declined to apply that defense (regardless of applicant's allegations) because the public interest is not served by allowing registration of primarily geographically descriptive terms.

Conclusion: The Board found that applicant failed to meet its burden to demonstrate that SCOTTSDALE TAXI has acquired distinctiveness for its services, and so the opposition was sustained.

Read comments and post your comment here.

TTABlog comment: Applicant improperly use the R-in-circle symbol in a cease-and-desist letter to opposer, but the Board found that to be an honest mistake that caused no harm to opposer.

Text Copyright John L. Welch 2018.


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