Monday, June 10, 2019

Precedential No. 12: TTAB Finds NATIONAL MIDGET SERIES Merely Descriptive, Not Generic, for Auto Racing

The Board sustained an opposition to registration of the mark NATIONAL MIDGET SERIES, finding it merely descriptive of, but not generic for, "entertainment services, namely, arranging and conducting automobile racing events and sanctioning, supervising, and officiating of automobile races" [SERIES disclaimed]. Applicant USAC asserted a Morehouse defense based on its ownership of a registration for the mark NATIONAL MIDGET CHAMPIONSHIP for the same services, but the Board pointed out that this "prior registration" defense is unavailable on the issue of whether a descriptive mark has acquired distinctiveness "because of the overriding public interest in precluding the registration of a merely descriptive designation." Performance Open Wheel Racing, Inc. v. United States Auto Club Inc., 2019 USPQ2d 208901 (TTAB 2019) [precedential] (Opinion by Judge Marc A. Bergsman).

Genericness: The Board found the genus of services at issue to be defined by applicant's recitation of services, a genus that includes "the subcategory of automobile racing for midget cars." [Wikipedia: "Midget cars ... is a class of racing cars. The cars are typically very small with a very high power-to-weight ratio and typically use four cylinder engines."] The relevant public comprises automobile racing fans, racetrack owners and  promoters, professional drivers, midget car owners and builders, and automobile racing associations. The question, then, was how relevant consumers perceive the term NATIONAL MIDGET SERIES when used in connection with applicant's services.

The Board observed that the word "national" has been found to be descriptive, but it was not convinced by the evidence that the word is generic for the services. Although each of the three constituent words, when combined, retains its descriptive or generic meaning in connection with automobile racing services, "not each of the terms has been shown to be generic for the services and, accordingly, we cannot say that the meaning of the whole is generic based on the dictionary definitions alone."

The parties submitted conflicting testimony as to whether NATIONAL MIDGET SERIES is a phrase commonly used by other organizations to describe goods or services similar to those of applicant. Noting that the determination of genericness is a fact-intensive inquiry, the Board found that the record evidence failed to establish that NATIONAL MIDGET SERIES is "used or understood by the relevant purchasing public" to refer to the genus of services at issue.

In this case, Opposer’s witness testimony names only Opposer as another entity in the industry that uses this phrase, and that use is in conjunction with Applicant. Opposer’s witness testimony as to consumer perception is simply conclusory without basis. This unconvincing testimony is further undermined by Applicant’s witnesses who testify the phrase is not used by others. Finally, the use of NATIONAL MIDGET SERIES introduced by Opposer is inconclusive as it could be perceived as trademark use and not as the name of the genus.

The Board concluded that opposer had failed to meet its burden of showing by a preponderance of the evidence that the relevant public uses or perceive NATIONAL MIDGET SERIES to be generic for applicant's services.

Acquired Distinctiveness: Because Applicant USAC sought registration under Section 2(f) of the Trademark Act, applicant "has conceded that NATIONAL MIDGET SERIES is merely descriptive." [Actually, I think it conceded only that the term is not inherently distinctive - ed.]. The Board found the term to be "highly descriptive," concluding that the mark "as a whole is even more descriptive of Applicant's services than its individual components standing alone." Applicant USAC's burden to establish acquired distinctiveness was therefore "commensurately high."

USAC relied on evidence of use of the phrase since 1956, its sanctioning of events in nearly every state, recognition by major sports publications, television broadcasts with about 700 active subscribers and 15,000 views per month, more than two million Facebook views, fan support, and strategic partnerships with Oakley, Toyota, and AMSOIL. Not enough, said the Board.

USAC's long use of the phrase was not dispositive of the issue. Opposer has sanctioned NATIONAL MIDGET SERIES events since 2004, and has co-sanctioned events with USAC. Third-party witnesses confirmed that Opposer has used the phrase for the same services since 2004, weighing against a finding that USAC's use was substantially exclusive.

Moreover, USAC's evidence regarding the number of events it sanctioned was unclear, and the proof of the number of fans who attended the races was ambiguous. Its advertising expenditures were de minimis, and there was no evidence as to how it advertises. USAC provided no context for its social media advertising and its evidence of media recognition was unconvincing. Finally, the number of television subscribers was "relatively small," and there was no evidence regarding how many viewers watch the live (non-subscription) broadcasts of the events.

Weighing all the evidence, the Board found that Applicant USAC failed to meet its burden of proof to establish acquired distinctiveness.

Morehouse Defense: This "prior registration" defense is an equitable defense "analogous to laches or acquiescence," and it is not available in proceedings "predicated on whether a merely descriptive mark has acquired distinctiveness because of the overriding public interest in precluding the registration of a merely descriptive designation." End of story.

Read comments and post your comment here.

TTABlog comment: The Morehouse "defense" should be called the "Lesshouse defense." It is the toothless tiger of trademark law. I can attest to that from recent personal experience. The defense almost never applies, except when it is not needed: i.e., when the marks and goods/services are virtually identical, in which case the proponent would have little or no need for a second registration anyway.

Text Copyright John L. Welch 2019.


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