Claiming Acquired Distinctiveness – Precision Converting

On February 15, 2024, the Trademark Trial & Appeal Board (TTAB) issued a non-precedential opinion regarding a claim of distinctiveness under Section 2(f) for the mark, PRECISION CONVERTING, in trademark classification 40 for “custom fabrication of parts and components to the order and specification of others, namely, flexible mission-critical bonding, gasketing, protecting, masking, adhesive, insulating, and shielding materials, films, foils, papers, fabrics, and foams.”

In the case of In re His Company, Inc. (Serial No. 88156779), the core issue revolved around whether the trademark “PRECISION CONVERTING” for custom fabrication services had acquired distinctiveness, also known as secondary meaning, under Section 2(f) of the Trademark Act. His Company, Inc. sought to register “PRECISION CONVERTING” for services involving the custom fabrication of parts and components to order, specifically for bonding, gasketing, masking, adhesive, insulating, and shielding materials.

The United States Patent and Trademark Office’s (USPTO) Trademark Examining Attorney refused registration on the grounds that the proposed mark was both generic and highly descriptive of the identified services. The applicant appealed the decision to the TTAB.

The primary issue in this case was whether “PRECISION CONVERTING” had acquired distinctiveness. Under Section 2(f) of the Trademark Act, a mark that is merely descriptive of the goods or services can be registered on the Principal Register if it has become distinctive of the applicant’s goods or services in commerce. Acquired distinctiveness, or secondary meaning, occurs when the primary significance of the term in the minds of the consuming public is not the product but the producer.

To support its claim of acquired distinctiveness, His Company, Inc. presented various pieces of evidence. This included a declaration from its Controller, Wade Brewer, stating that the mark had been in continuous and exclusive use since 1987 and had generated significant sales exceeding $60 million between 2016 and 2019. The applicant also submitted photographs of trade show booths and articles referring to “Precision Converting” to demonstrate recognition within the industry.

The Examining Attorney argued that “PRECISION CONVERTING” was generic, meaning it was a common term used to describe a type of custom fabrication service, and thus not eligible for trademark protection. To support this, the Examining Attorney provided dictionary definitions and examples of third-party use of the terms “precision” and “converting.” These examples showed that the terms were commonly used in the industry to describe services that accurately transform raw materials according to customer specifications.

The TTAB analyzed the evidence and arguments presented by both parties. It agreed with the Examining Attorney that “PRECISION CONVERTING” was highly descriptive of the services provided by His Company, Inc. The term directly conveyed the idea of precision in converting materials, which is a key aspect of the applicant’s services. Given the high degree of descriptiveness, the applicant faced a significant burden to prove that the mark had acquired distinctiveness.

The TTAB then assessed whether the applicant’s evidence was sufficient to establish that “PRECISION CONVERTING” had acquired distinctiveness. The Board acknowledged the long-term use of the trademark and the substantial sales figures presented by the applicant. However, it found that this evidence alone was insufficient to demonstrate that the consuming public primarily associated the term “PRECISION CONVERTING” with the applicant’s services. The widespread use of the term by competitors and in industry publications as a generic descriptor for similar services weakened the applicant’s claim of distinctiveness.

Furthermore, the TTAB considered the applicant’s argument that the trademark’s use in trade shows and industry articles showed recognition within the industry. The Board found that while these examples showed some recognition, they did not conclusively prove that the term had acquired secondary meaning. The evidence needed to show that consumers viewed “PRECISION CONVERTING” as a brand name rather than a descriptive term.

In its final decision, the TTAB upheld the Examining Attorney’s refusal to register the trademark on the Principal Register, concluding that the applicant had not met the burden of proving acquired distinctiveness. The TTAB also affirmed the refusal to register the trademark on the Supplemental Register, as it deemed the term generic.

The decision in In re His Company, Inc. provides several important lessons. It underscores the significant challenge of proving acquired distinctiveness for highly descriptive terms. Even with long-term use and substantial sales, applicants must provide compelling evidence that the public perceives the trademark as a source identifier rather than a descriptive term. This can include consumer surveys, market research, and extensive evidence of advertising and promotional efforts that have effectively educated the public about the trademark’s association with the applicant.

The ruling also highlights the difficulty of registering marks that combine generic or descriptive elements. When the components of a tradetmark are commonly used in the industry, demonstrating that the combined term has developed a unique association with the applicant’s services becomes particularly challenging. Applicants must present clear and convincing evidence that the mark functions as a trademark.

Additionally, the case illustrates the importance of the context in which a trademark is used and perceived. The TTAB’s emphasis on how the term “PRECISION CONVERTING” was used by competitors and in industry publications shows that widespread use of a term descriptively by others can significantly undermine a claim of acquired distinctiveness.

In conclusion, the TTAB’s decision in In re His Company, Inc. serves as a valuable lesson for businesses seeking to register descriptive marks. It emphasizes the need for substantial and persuasive evidence to support claims of acquired distinctiveness and highlights the rigorous analysis applied by the TTAB in evaluating such claims. This case reinforces the importance of selecting inherently distinctive marks where possible to avoid the challenges associated with proving secondary meaning.

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