Rejecting Claim of Acquired Distinctiveness, TTAB Affirms Failure-to-Function Refusal of Melissa & Doug's "Red Oval" Background Design

The Board affirmed a refusal to register the proposed mark shown below, consisting of a red oval with a white border (acting as a carrier for the words “MELISSA & DOUG") for various toys, arts and crafts, and hobby kits, and for online retail store services, on the ground that the mark comprises a background design that fails to function as a mark. Applicant did not claim inherent distinctiveness but instead sought registration under Section 2(f). The Board found its proofs inadequate. In re Melissa & Doug, LLC, Serial No. 87915069 (January 8, 2021) [not precedential] (Opinion by Judge Christen M. English).

Because the proposed marks consists of a common geometric shape, it is "not the type of mark likely to be perceived as a source identifier." Therefore, applicant had a "heavy burden to show acquired distinctiveness." The Board applied the Converse factors in determining whether applicant's evidence, viewed as a whole, established acquired distinctiveness.

As to applicant's goods, the Board first considered 31 consumer declarations collected at a toy store in New York City. The declarations contained blanks for consumers to fill in by hand. The declarants stated that they recognized the red oval, by itself, as indicating a Melissa & Doug product. The Board found that "while 31 declarants is a small number of relevant consumers," the declarations were "clear, reliable and probative of consumer perception, albeit on a limited basis."

Applicant asserted that it has been using the proposed mark since 2003, and in each year from 2003 to 2008 it sold more than 100 million units with annual sales averaging $300M. The Board found that this constituted "some evidence" for applicant's Section 2(f) claim, but "[i]t is important to note ... that Applicant has shown no use of the Proposed Mark separate and apart from the Composite Mark." [i.e.,  without the words Melissa & Doug within the oval.

 

As to the exclusivity of use of a red oval, Examining Attorney Katherine M. DuBray submitted 17 third-party registrations for marks including a red oval, but the Board noted that there was no proof that the marks are in use, and so they were not probative on this particular point. However, these registrations "are relevant to the conceptual strength of the Proposed Mark and reinforce our conclusion that the Proposed Mark is not the type of mark likely to be perceived as a source indicator, and therefore, Applicant’s burden to establish acquired distinctiveness is quite high."

In sum, Applicant’s length, degree, and substantial exclusivity of use provides some support for Applicant’s claim of acquired distinctiveness, but the fact that the Proposed Mark is always displayed as part of the Composite Mark and never as a standalone mark, lessens the probative value of this evidence.

The number of applicant's social media followers was "not that impressive" and "disproportionately small compared to Applicant’s sales volume." Moreover, its social media promotions always include the wording “Melissa & Doug” as part of the logo. Applicant did not submit advertising figures, stating that it does not advertise "through traditional television or print media." The Board noted that [a]dvertising expenditures, particularly related to any 'look-for' advertising, would be important where, as here, Applicant seeks to register a mark that is so inherently non-distinctive."

Although applicant's sales figures were "substantial" and "impressive," their probative impact is "limited to some degree" by the fact that the red oval is always accompanied by MELISSA & DOUG within the oval.

Applicant's evidence of supposed copying by third parties was unpersuasive, since the third-party products also copied various trade dress elements in addition to the red oval.

On this record, we cannot find that consumers would view the Proposed Mark as an indication of origin separate and apart from the wording with which it appears. In sum, given the Proposed Mark is comprised of a common oval shape and the colors red and white, and Applicant uses the Proposed Mark exclusively as a carrier for the word mark MELISSA & DOUG, we find that more is needed to establish acquired distinctiveness.

As to applicant's services, applicant submitted very little evidence regarding sales under or use of the mark, and so the Board could not find that applicant had established acquired distinctiveness.

The Board therefore affirmed the refusal to register.

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TTABlogger comment: High burden of proof + no survey evidence + no look-for advertising = no trademark registration. 

Text Copyright John L. Welch 2021.