By Joseph Arshawsky, J.D.
The TTAB also found that the mark had not acquired distinctiveness.
Opposer Spiritline Cruises LLC’s opposition to Tour Management Services, Inc.’s application to register the mark CHARLESTON HARBOR TOURS, with TOURS disclaimed, was sustained by the Trademark Trial and Appeal Board in a precedential ruling. The TTAB found that the mark was primarily descriptive of a well-known geographic location, and the mark had not acquired secondary meaning (Spiritline Cruises LLC v. Tour Management Services, Inc., February 7, 2020, Lynch, C.).
Tour Management Services, Inc.’s ("TMS") sought registration on the Principal Register, with a claim of acquired distinctiveness under Trademark Act Section 2(f), 15 U.S.C. § 1052(f), of CHARLESTON HARBOR TOURS, in standard characters with TOURS disclaimed, for arranging travel tours and cruises and yacht and boat charter services in International Class 39. Spiritline Cruises LLC ("Spiritline") opposed registration of the proposed mark on grounds including that it was primarily geographically descriptive under Trademark Act Section 2(e)(2), 15 U.S.C. §1052(e)(2) and lacked acquired distinctiveness. The TTAB sustained the opposition on the ground of primary geographic descriptiveness and lack of acquired distinctiveness.
Geographic descriptiveness. This case involved a well-recognized location popularly associated with the tour services at issue, in part because many third parties used the same wording to describe their similar services. The TTAB first addressed the degree of geographic descriptiveness of the proposed mark because it bore on TMS’s evidentiary burden under Section 2(f). The record readily demonstrated that CHARLESTON HARBOR "is the name of a place known generally to the public." In fact, the place is quite well-known, and serves as a tourist destination. Testimony from numerous people in the Charleston, South Carolina, tourism industry reflected their regular use of "Charleston Harbor" to refer to the harbor in Charleston.
TMS’s own specimen supporting its application was a brochure that repeatedly used "Charleston Harbor" as an apparently recognizable geographic place name, encouraging potential customers to "enjoy the sights and sounds of Charleston Harbor while you listen to live, narrated commentary," and take "non-stop tours of Charleston Harbor on our smooth-sailing tour boat." The record was replete with examples of third-party promotional materials referring to Charleston Harbor in connection with tourism activities such as boat tours and paddle boarding.
Overall, the record reflected that CHARLESTON HARBOR describes the harbor in Charleston, South Carolina, a location that is well known, particularly for TMS’s actual and potential customers seeking tours or transportation in that place. It was also undisputed that TMS’s services emanated from Charleston, South Carolina, and included tours of Charleston Harbor. TMS’s promotional materials and those of other tour providers in the record, touted Charleston Harbor as the location of their services. In assessing the degree of descriptiveness, especially because Charleston Harbor is a widely recognized place associated with the particular services at issue, and because numerous third parties in the tour and charter industry refer to Charleston Harbor, the TTAB found CHARLESTON HARBOR highly geographically descriptive in this context. There was nothing resulting from the combination of CHARLESTON HARBOR and TOURS that altered the significance or detracted from the geographic significance of the designation as a whole. Considered in its entirety, CHARLESTON HARBOR TOURS was primarily geographically descriptive under Trademark Act Section 2(e)(2), and highly so.
Acquired distinctiveness. Given that CHARLESTON HARBOR TOURS was highly primarily geographically descriptive, the standard for establishing acquired distinctiveness was commensurately high. During prosecution of the subject application, TMS claimed acquired distinctiveness solely on the basis of a declaration of five years of "substantially exclusive and continuous use" immediately preceding the date of execution of the declaration. TMS submitted no consumer survey or other direct evidence of consumer perception of CHARLESTON HARBOR TOURS as a source indicator for TMS. Rather, TMS contends that it has established the necessary showing through substantially exclusive, continuous use from 2003 to 2015, as well as through its advertising and sales during the same timeframe.
Spiritline relied on the Wayback Machine evidence, much of which was corroborated by witnesses associated with the webpages, to show that from 2004 to 2015, encompassing almost all of TMS’s claimed period of substantially exclusive use, third-party webpages reflected use of the wording "Charleston Harbor Tours" in connection with the same types of services identified in the subject application. Considering the record in its entirety, the TTAB found that consumers would not recognize "Charleston Harbor tours" as indicating a single source for the recited services.
First, the substantially non-exclusive use of CHARLESTON HARBOR TOURS presented a serious problem for TMS, because it interfered with the relevant public’s perception of the designation as an indicator of a single source. The TTAB rejected TMS’s claim that the third-party use was inconsequential. Instead, the TTAB found that the Wayback Machine evidence and testimony and the third-party testimony and corroborating documentary evidence showed fairly pervasive use of the same wording in the proposed mark by others in the industry during the relevant timeframe.
Second, while the lack of substantial exclusivity alone undermined TMS’s acquired distinctiveness claim, even without that fact the Board said it would have had discretion to find TMS’s use since 2003 insufficient where, as here, the proposed mark was highly primarily geographically descriptive. Given the TTAB’s similar determination on the highly descriptive nature of CHARLESTON HARBOR TOURS, the TTAB found that TMS’s use, though long, did not show secondary meaning.
Third, the TTAB noted that while under other circumstances, the amount and manner of TMS’s advertising might have more impact, the TTAB did not find it persuasive here given the high degree to which the proposed mark was primarily geographically descriptive and the substantial evidence of comparable third-party advertising using the same wording during the same timeframe. Ultimately, the TTAB found that the evidence demonstrated that consumers would perceive CHARLESTON HARBOR TOURS not primarily as a source-indicator for TMS, but rather as a common geographic place name accompanied by a generic term, used by different entities in the industry to refer to the origin and location of services such as those recited by TMS.
This case is Opposition No. 9122400.
Attorneys: Philip Summa (Summa PLLC) for Spiritline Cruises LLC. Edward T. Fenno (Fenno Law Firm, LLC) for Tour Management Services, Inc.
Companies: Spiritline Cruises LLC; Tour Management Services, Inc.
MainStory: TopStory Trademark USPTO
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