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More Is More: Ensure Your Mark Is Protectable Before You Enforce

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Blog May 1, 2025

More Is More: Ensure Your Mark Is Protectable Before You Enforce Fish & Richardson Home Insights Thought Leadership More Is More: Ensure Your Mark Is Protectable... Authors Name Keith A. Barritt Person title Principal Name Nathan C. Ranns Person title Principal The Federal Circuit’s recent decision in Heritage Alliance v. American Policy Roundtable, Case No. 24-1155 (Fed. Cir. Apr. 9, 2025), provides a salient reminder to brand owners seeking to build value in descriptive trademarks — a protectable mark is a prerequisite to enforcement.

Since 2008, Heritage Alliance has provided voter guides under the names IVOTERGUIDE and IVOTERGUIDE.COM. Asserting these common law rights, Heritage Alliance opposed the registration of American Policy Roundtable’s (APR) applications to register IVOTERS and IVOTERS.COM in connection with similar information services. While the Trademark Trial and Appeal Board (TTAB) found that Heritage Alliance used its mark first and that APR effectively conceded the marks were confusingly similar, it held that Heritage Alliance’s asserted marks were not protectable. In dismissing the opposition, the TTAB found that Heritage Alliance’s asserted marks were highly descriptive and that Heritage Alliance failed to establish that the marks had acquired distinctiveness in the minds of consumers.

The Federal Circuit upheld the TTAB’s decision, rejecting Heritage Alliance’s arguments that the TTAB erroneously dissected its marks in determining their distinctiveness and did not properly consider its evidence of acquired distinctiveness. First, the Federal Circuit repeated the axiom that consideration of constituent parts of a mark is not per se impermissible dissection of the mark — rather, the TTAB may consider the individual parts of a mark so long as the determination rests on consideration of the overall commercial impression of the whole mark.

Second, the court also reiterated that descriptiveness is a matter of degree that impacts the amount and nature of evidence required to demonstrate acquired distinctiveness. Ultimately, whether a party has provided sufficient evidence of acquired distinctiveness is within the TTAB’s discretion. Here, the court found it was not unreasonable for the TTAB to require more than a declaration of five years’ use and three customer declarations. The TTAB flagged that the declarations were not persuasive because they were “conclusorily worded,” “all essentially identical in form,” failed to explain what makes Heritage Alliance’s products “distinctive from those of its competitors,” and signed by three Heritage Alliance volunteers who were not established as representative of the relevant consumer base.

Takeaways The Heritage Alliance decision shows that merely pointing to years of use and relying on a small number of self-serving declarations is not always enough, particularly when a mark is considered highly descriptive of the relevant goods or services. In such instances, mark owners should build a robust evidentiary record demonstrating the context that Heritage Alliance’s evidence lacked. The best time to do this is when seeking a registration at the U.S. Patent and Trademark Office, not when hard-earned rights are already under threat.

Both the TTAB and Federal Circuit provide non-exhaustive lists of evidence of acquired distinctiveness, including:

Consumer surveys demonstrating a connection in the consumer’s mind between the mark and the goods or services The length and degree of exclusivity of use The amount and nature of advertising, the volume of sales Unsolicited media coverage of the relevant goods or services bearing the mark Whether third parties intentionally copy the mark Perhaps submission of some or all these types of evidence would have changed the outcome for Heritage Alliance.

This is not a “less is more” situation. Instead, mark owners should provide the trademark office with any competent evidence to establish that a mark has acquired distinctiveness. The amount and nature of evidence required to satisfy the acquired distinctiveness threshold is highly specific to the facts of the case but must ultimately provide critical context for the TTAB.

Finally, while more evidence is generally better, Heritage Alliance spotlights the danger of repetitive or merely conclusory consumer declarations. Declarations should come from relevant and representative consumers, be in each consumer’s own words, and meaningfully demonstrate the distinguishing characteristics of the applicant’s goods and/or services.

The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.

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