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June 15, 2016 Vol. 71 No. 10 Back to Bulletin Main Page

UNITED STATES: TTAB Refuses Trademark Based on Non-Exclusive Use

On March 31, 2016, the Trademark Trial and Appeal Board (TTAB) issued a decision resolving an opposition proceeding based on whether a surname had acquired distinctiveness sufficient for federal registration on the U.S. Principal Register. In Ayoub, Inc. and Ayoub Supply, LLC v. ACS Ayoub Carpet Service, Opp. No. 91211014 [precedential], the TTAB held the surname Ayoub had not acquired sufficient distinctiveness for registration on the Principal Register under Section 2(f) of the Lanham Act, finding the applicant had not demonstrated substantially continuous and exclusive use of the mark AYOUB.

The applicant, ACS Ayoub Carpet Service, acquired rights to use the AYOUB mark and its associated goodwill through a purchase agreement with a carpet, rug cleaning, and repair business, which had been servicing the Washington, D.C., metropolitan area since the 1950s. Opposers, Ayoub, Inc. and Ayoub Supply, LLC, had also been providing goods and services related to carpets, rugs, and hardwood flooring in the same area since 1990 and 2007, respectively.

The Board noted that, under Trademark Rule 2.41(a)(2), the applicant bears the burden of persuasion on whether a surname has acquired distinctiveness. Judge Goodman noted that the standard for acquired distinctiveness is whether the applicant establishes substantially exclusive and continuous use for five years.

In determining whether the mark met the standard, the Board analyzed the applicant’s efforts to promote its business in connection with the mark, the growth in sales after acquiring rights to use the mark, and efforts to police third-party use of the mark. The Board found, however, this evidence was either of little probative value, or weighed against the applicant. Notably, the Board found the policing efforts demonstrated a lack of distinctiveness because they generally resulted in concurrent use agreements.

The Board also considered the concurrent use of the mark by seven businesses other than the applicant, which had been providing related services in the area for as long, or longer, than the applicant (or its predecessor). Additionally, the Board considered evidence that the public did not perceive the AYOUB mark as distinctively identifying the applicant’s businesses from the other users of the mark, shown by customer reviews and inquiries demonstrating a perceived affiliation. Finally, the Board viewed the applicant’s use of a disclaimer of affiliation on its website as an admission that its use of the AYOUB mark was not substantially exclusive.

The TTAB sustained the opposition and refused registration of AYOUB, finding that the applicant had not met the standard for acquired distinctiveness, as it could not show substantially exclusive use due to the widespread use of the surname Ayoub in the rug, carpet, and flooring business in the area. The applicant also requested, alternatively, to amend its application to request registration on the Supplemental Register. The Board dismissed the request as untimely, as it was made for the first time in the applicant’s brief and was not tried with the opposers’ consent.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.  

© 2016 International Trademark Association