Recently, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Heritage All. v. Am. Pol'y Roundtable, No. 2024-1155 (Apr. 9, 2025).
Heritage uses the marks "iVoterGuide" and "iVoterGuide.com" in connection with online voter guides. In 2019, the American Policy Roundtable (APR) sought to register the marks "iVoters" and "iVoters.com" related to websites that offer information on public policy and political issues. Heritage had prior use of its marks and opposed the marks’ registration pursuant to 15 U.S.C. § 1052(d) stating that APR’s proposed marks would likely be confused with Heritage’s marks.
The Trademark Trial and Appeal Board found that Heritage's marks were not protectable because they were highly descriptive. The Board also determined that the marks had not acquired distinctiveness. The Board dismissed the opposition. Heritage appealed.
The Federal Circuit affirmed, rejecting Heritage’s argument that the Board erred in finding its marks to be highly descriptive and in rejecting its evidence of acquired distinctiveness. Specifically, Heritage asserted that the Board erred by only analyzing the components of the marks individually instead of as a whole. The Court noted that considering the entirety of a mark does not prohibit considering its components. It held that the combination of the components of Heritage’s marks directly conveyed its product, which was providing a voter guide on the Internet.
The Court also affirmed the Board’s finding that Heritage failed to provide sufficient evidence of acquired distinctiveness. The Court explained that acquired distinctiveness determinations are fact specific and can be guided by the factors outlined in Converse, Inc. v. Int'l Trade Comm'n, 909 F.3d 1110, 1120 (Fed. Cir. 2018). It held that, under 15 U.S.C. § 1052(f), continuous use of a mark for over five years gives the Board the discretion, but does not require it, to accept the use as prima facie evidence of acquired distinctiveness. The Court held the Board had reasonable evidentiary grounds for declining to rely on Heritage's five-year prior-use evidence due to the marks’ highly descriptive nature. The Court also determined that the declarations provided by Heritage were of little weight, as they were conclusory and came from volunteers associated with Heritage.
