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Here’s What Happened:
In 2008, Heritage Alliance started publishing an online voter guide using the trademarks “iVoterGuide” and “iVoterGuide.com” (the “VoterGuide Marks”). Heritage Alliance did not seek federal registration of its VoterGuide Marks.
In 2010, American Policy Roundtable created an online publication for political campaign information using the trademarks “IVOTERS” and “IVOTERS.COM” (the “Voters Marks”). In 2019, American Policy filed applications to register the Voters Mark.
Heritage opposed the registration of the Voters Mark asserting that the marks would cause a likelihood of confusion with its VoterGuide Marks. Heritage claimed priority of use based on its common law usage. Trademark law permits a party to oppose registration of a trademark even if the party relies only on common law usage.
The Trademark Trial and Appeal Board dismissed the opposition. Heritage appealed to the Federal Circuit Court of Appeals.
The Fourth Circuit Court of Appeals affirmed the Board’s decision. The Court’s analysis followed the same lines as the Board’s findings.
The Court agreed that the VoterGuide Marks were highly descriptive. In analyzing the marks, the court looked at the components of the marks separately and together. The use of the letter “i” is generally accepted usage to denote an online publication. The rest of the marks merely describe services Heritage offers on its website.
Heritage tried to prove that the VoterGuide Marks had acquired distinctiveness. The evidence it presented was the longevity of use and three affidavits that were substantially the same except for the name of the person signing the affidavit. Use of a mark for five or more years can be prima facie evidence of acquired distinctiveness. However, the Board has the discretion to require more proof. This is where Heritage fell short.
Therefore, by bringing the opposition, Heritage has to live with a finding that its VoterGuide Marks are not trademarks at all.
The Court did not stop there. The Court suggested that the Trademark Office may want to reconsider whether Voters Marks are also too descriptive to be registered.
WHY YOU SHOULD KNOW THIS: This case illustrates that the attributes of a trademark cannot be assumed. Heritage may have used the marks for a long time, but the words merely described its services. So, the words did not function as trademarks. The decision also points out that the Trademark Office can reconsider approval to register a trademark.