In Spiritline Cruises LLC v. Tour Management Services, Inc., another precedential decision of 2020, the Trademark Trial and Appeal Board sustained Spiritline Cruises' opposition to TMS's application for CHARLESTON HARBOR TOURS, finding the mark primarily geographically descriptive of TMS's services, namely boat charter and other travel services offered in and around South Carolina's Charleston Harbor.
The test for whether a mark is primarily geographically descriptive is whether (1) the primary significance of the mark is the name of a place that is generally known; (2) the services originate in the place that identified the mark; and (3) the relevant purchasers would believe the services originate from the place named. Primarily geographically descriptive marks may not be registered unless they have acquired distinctiveness. That is, consumers must understand the mark to indicate the source of the services, and not merely as describing the place from which the services emanate.
In this decision, the Board formally recognized that the burden of showing acquired distinctiveness for a primarily geographically descriptive mark increases with the degree of descriptiveness of the mark. As an initial matter, the Board recognized that TMS admitted that the mark was not inherently distinctive when it claimed its mark had acquired distinctiveness during the application process. The Board then determined that the mark was not only descriptive, but highly descriptive, including because Charleston Harbor is the "name of a place generally known to the public," because it is a place that is widely recognized as associated with TMS's services, and because TMS's own services originate from Charleston, South Carolina and include tours of the harbor. Once it adjudged the CHARLESTON HARBOR TOURS mark highly descriptive, the Board examined the evidence that the mark had acquired distinctiveness, noting that TMS's burden for showing acquired distinctiveness was "commensurately high" with the degree of descriptiveness.
In support of its argument that the mark had acquired distinctiveness, TMS submitted evidence of continuous use of the mark, as well evidence of advertisements containing the mark and sales of products under the mark. For its part, Spiritline Cruises submitted extensive evidence of third-party use of the phrase "Charleston Harbor tours" and "Charleston Harbor tour".
Weighing the evidence, the Board found that TMS's use of the mark was substantially non-exclusive, such that the relevant public did not perceive the mark as an indicator of a single source. It also decided that because the mark was highly descriptive, TMS's continuous use for twelve years was long, but not enough to establish acquired distinctiveness. Finally, TMS's advertising and sales evidence was not sufficient to overcome the high degree of descriptiveness and substantial third-party use. In sum, TMS's evidence of acquired distinctiveness fell short in view of the high degree of descriptiveness of the mark and, thus, registration was refused.
This alert provides general coverage of its subject area. We provide it with the understanding that Frankfurt Kurnit Klein & Selz is not engaged herein in rendering legal advice, and shall not be liable for any damages resulting from any error, inaccuracy, or omission. Our attorneys practice law only in jurisdictions in which they are properly authorized to do so. We do not seek to represent clients in other jurisdictions.
