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Rebeccah Gan is Of Counsel at Young & Thompson in Alexandria, Virginia. She previously represented Alcatraz Media in the Annapolis Tours cancellation proceeding and always declines mumbo sauce at the takeouts near her D.C. home.
The Trademark Trial and Appeal Board (TTAB) occupies a small cluster of hearing rooms on the ninth floor of Madison Building at the United States Patent and Trademark Office (USPTO) in Alexandria, Virginia. Many of their opinions tackle issues from far outside the confines of the Mid-Atlantic milieu in which the TTAB holds court. In 2013, for example, the TTAB opined on the geographic descriptiveness of the Belgian village of Achouffe in the context of beer;1 the distinctiveness of the University of Alabama’s houndstooth pattern;2 and the true French owner of Châteauneuf-du-Pape wine.3
However, two cancellation proceedings recently brought the TTAB much closer to home. In Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc. (Annapolis Tours), the TTAB considered the genericness and/or lack of acquired distinctiveness of the standard character mark ANNAPOLIS TOURS in the context of guided tours of Annapolis, Maryland.4 In Capital City, LLC v. Select Brands LLC (Mumbo), the TTAB declared that despite the ubiquity of the District of Columbia’s mumbo or mambo sauce condiment,5 the petitioner had not met the high bar for genericness with respect to barbeque sauce, and thus MUMBO was actually an enforceable trademark belonging to a Chicago barbecue outfit.6 These opinions were rendered within weeks of each other; both turned on distinctiveness, and yet had dramatically different results.
This article examines the TTAB’s recent survey on distinctiveness in the District of Columbia, Maryland, and Virginia (DMV) and underscores the importance of building a solid evidentiary record in order to demonstrate lack of distinctiveness to the TTAB.
Alcatraz Media holds itself out as the world’s largest online booking agent and reseller of tour and destination travel activities.7 Alcatraz’s business model involves operating websites in each of the 2,000+ cities in which it contracts with local entities to resell its tours and attractions in exchange for a percentage of profits. All of Alcatraz’s sites follow the same web address pattern: www.[cityname]tours.us. Alcatraz’s websites also include hyperlinks using the city name+tours construction, on which a consumer can click to find tour purchase options available in that city.8
Chesapeake Marine Tours (Watermark) is a large tour company based in Annapolis, Maryland, with whom Alcatraz contracted in 2005.9 Watermark has offered a variety of boat tours in and around Annapolis since 1972. In 2004, Watermark acquired the assets of Three Centuries Tours, a tour company that had provided walking tours of Annapolis complete with tour guides dressed like colonial townsfolk.10
Alcatraz’s reselling relationship with Watermark eventually soured, and Watermark served Alcatraz with a cease and desist letter in 2009, demanding that Alcatraz take down its www.annapolistours.us website and remove any usage of ANNAPOLIS TOURS from Alcatraz’s parent website.11 Watermark cited U.S. Registration No. 3,048,114, its standard character word mark registration for ANNAPOLIS TOURS, in connection with “conducting guided tours of historic districts and other areas of cities,” registered pursuant to § 2(f) of the Trademark Act, asserting a claim of acquired distinctiveness or secondary meaning.12 Alcatraz, instead, decided to petition to cancel the ANNAPOLIS TOURS registration, arguing genericness, lack of acquired distinctiveness, and fraud.13
Alcatraz submitted a substantial amount of documentary evidence to support its claim of genericness and/or lack of distinctiveness.14 As to genericness, Alcatraz submitted: (1) newspaper articles using the phrase “Annapolis Tours” generically; (2) newspaper articles using the phrase “Annapolis Tours” to describe the services provided by Watermark; (3) competitor use of “Annapolis Tours” and variations thereof; (4) Alcatraz’s generic use of “Annapolis Tours” in connection with its tour-related services; and (5) Watermark’s own use of “Annapolis Tours” in a generic manner.15
As to lack of acquired distinctiveness, Alcatraz introduced print advertising, name badges, tour tickets, tour handouts, tour guide training materials, internal and external publications, and public telephone listings from 1990s–2004 demonstrating that Watermark’s predecessor-in-interest had not continuously used ANNAPOLIS TOURS in connection with its guided tours of Annapolis as asserted in its application for federal registration, as well as newspaper articles from 2002–2005 and 2009 demonstrating that other parties had used Three Centuries Tours, Three Centuries Tours of Annapolis, and Watermark as the source indicators for Watermark and Watermark’s predecessor-in-interest.16 Additionally, as evidence of lack of substantially exclusive usage, Alcatraz introduced electronic and print media excerpts illustrating that competitors of Watermark and Watermark’s predecessor-in-interest had also used ANNAPOLIS TOURS or variations thereof to describe their services on promotional materials or used Annapolis Tour or Tours in their business names.17
Alcatraz also submitted expert and fact witness testimony as to genericness and/or lack of acquired distinctiveness of the registered mark.18 Alcatraz propounded the witness testimony of K.C. Summers, a former Washington Post travel editor, who testified that in her professional opinion travel editors and writers have an occupational need to use the wording “Annapolis Tours” in order to accurately reference the travel and tourism industry around Annapolis. She further testified that based on her experience as a travel writer and editor, her opinion was that “the words Annapolis Tours are generic . . . and I think the average traveler plus the average travel journalist would see those words and think they were describing tours of Annapolis.19 While the TTAB did not accept Summers as an expert “regarding actual consumer perception” of the term ANNAPOLIS TOURS, it did qualify her as an expert “as to how to convey travel information to readers and potential tourists, and how travel writers believe such information will be perceived and understood.”20
Alcatraz further proffered the testimony of Susan Denis, former owner of Capital City Colonials, a company that also provides guided tours of Annapolis complete with a tour guide in colonial garb, and former tour guide for Watermark’s predecessor-in-interest, Three Centuries Tours; Mike Carter, owner of Annapolis Ghost Tours; and George Palmer, owner of Annapolis Urban Adventures, all of whom testified that they viewed ANNAPOLIS TOURS to be generic wording that was necessary for them to use in order to accurately describe their businesses and compete in the Annapolis tourism marketplace. Finally, Alcatraz introduced the testimony of Ryan Windsor, its CEO, who testified regarding Alcatraz’s usage of ANNAPOLIS TOURS in a generic and/or informational manner.21
Watermark presented testimony from former friends and employees of Paula Fishback, the former owner of Three Centuries Tours, to provide what the TTAB deemed as “problematic” and “mixed” evidence usage of ANNAPOLIS TOURS.22 Watermark also proffered the testimony of Matthew Grubs, the owner of Discover Annapolis Tours, a trolley bus tour company that had a business relationship with Watermark. Finally, Watermark put forward the testimony of its owner, Debbie Gosselin, who testified that she had observed Three Centuries usage of ANNAPOLIS TOURS for years before she sought trademark protection, and that while other parties may use some configuration of ANNAPOLIS and TOUR or TOURS in their business name or on their company websites, they were not using this wording the manner that Watermark used ANNAPOLIS TOURS, which in her view was as a trademark.23
Watermark also introduced 24 exhibits consisting largely of raw financial information regarding general advertising expenses, i.e., not targeted to the then-registered ANNAPOLIS TOURS mark; Watermark’s own promotional materials, most of which were downloaded on a single day just before Watermark’s trial period; and a handful of undated promotional materials from Watermark’s predecessor-in-interest using ANNAPOLIS TOURS in an informational manner.24
Section 14 of the Trademark Act provides:
A petition to cancel a registration of a mark . . . may . . . be filed . . . [a]t any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered . . . . If the registered mark becomes the generic name for less than all of the goods or services for which it is registered, a petition to cancel the registration for only those goods or services may be filed. A registered mark shall not be deemed to be the generic name of goods or service solely because such mark is also used as a name of or to identify a unique product or service. The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.25
The test for determining whether a mark is generic is its primary significance to the relevant public.26 Making this determination “involves a two-step inquiry: First, what is the genus of goods or services at issue? Second, is the term sought to be registered . . . understood by the relevant public primarily to refer to that genus of goods or services?”27 The petitioner in a cancellation action based on genericness must prove its claim by a preponderance of the evidence.28
“A final factor in the genericness inquiry is the availability of other means to describe the product or service at issue.”29 As a matter of competitive policy, it is essential that common descriptors remain in the public domain.30
To demonstrate the relevant public’s (generic) understanding of the subject term, a petitioner may cull evidence from any competent source, including testimony, surveys, dictionaries, trade journals, newspapers, and other publications.31 In particular, “evidence of competitors’ use of particular words as the name of their goods or services” is held by the TTAB to be “persuasive evidence that those words would be perceived by purchasers as a generic designation for the goods and services.”32
In Annapolis Tours, the TTAB found that the genus of services at issue was defined by the recitation of services in the ANNAPOLIS TOURS registration: “conducting guided tours of historic districts and other areas of cities.”33 The TTAB defined the class of relevant consumers as leisure travelers, travel agencies, tour providers, and resellers.34
As the petitioner, Alcatraz was charged with showing by a preponderance of the evidence that ANNAPOLIS TOURS is understood by the relevant purchasing public as primarily referring to “conducting guided tours of historic districts and other areas of cities.”35 Alcatraz relied on dictionary definitions, newspaper and magazine articles, and third-party testimony, including several of Watermark’s competitors.36 Interestingly, the TTAB asserted that Alcatraz “submitted no evidence of use from a printed publication of the phrase ‘Annapolis tours’ per se as a generic designation for respondent’s services.”37 However, Alcatraz had submitted numerous articles and tour book excerpts that showed use of “Annapolis tour” or “Annapolis Tours” to describe a tour activity of the city of Annapolis. Alcatraz’s witnesses had also testified that they could not accurately describe their sale or provision of guided tours of Annapolis without using “Annapolis Tours.”
Ultimately, given the high bar for genericness, the TTAB found that Alcatraz’s “voluminous record” presented “at best a mixed record of use of the phrase both generically and as part of what appear to be trademarks or trade names.”38 Accordingly, the TTAB concluded that Alcatraz had failed to prove genericness by a preponderance of the evidence, and instead turned to Alcatraz’s alternative plea—lack of acquired distinctiveness.
The examining attorney assigned to the ANNAPOLIS TOURS application initially refused registration under § 2(e)(2) of the Trademark Act,39 finding the term ANNAPOLIS TOURS to be geographically descriptive of Watermark’s guided tour services.40 As with merely descriptive marks refused under § 2(e)(1) of the Act,41 an applicant can overcome a § 2(e)(2) refusal by submitting a claim of acquired distinctiveness pursuant to § 2(f) of the Trademark Act.42
In order to overcome this refusal, Watermark submitted a claim of acquired distinctiveness as to the wording ANNAPOLIS pursuant to § 2(f) of the Trademark Act, and expressly disclaimed the wording TOURS.43 Section 2(f) provides that substantially exclusive and continuous use of an applied-for mark for at least five years on or in connection with the applicant’s goods in commerce is prima facie evidence of distinctiveness.44
In Watermark’s 2005 application, it alleged qualification for § 2(f) status by swearing under penalty of perjury that it had been using ANNAPOLIS TOURS continuously and substantially exclusively since at least 1993. Entering a § 2(f) claim is an admission against interest that the subject mark is not inherently distinctive.45 Similarly, Watermark’s disclaimer of TOURS was an admission that the wording is generic.46
Accordingly, because Watermark had already conceded that ANNAPOLIS TOURS was geographically descriptive in the context of its services, Alcatraz was charged with proving that ANNAPOLIS TOURS was so highly descriptive that even if it had been using the mark continuously and substantially exclusively since 1993, it was not possible that secondary meaning had vested in the minds of the DMV consumer of guided tour services.47
As a registered mark on the principal trademark register, ANNAPOLIS TOURS enjoyed a presumption of acquired distinctiveness, and Alcatraz as the party seeking to cancel a registered mark was required to “produce sufficient evidence for the Board to conclude, in view of the entire record[,] that the party has rebutted the mark’s presumption of acquired distinctiveness by a preponderance of the evidence.”48 The ultimate burden of persuasion always remains with the petitioner.49
Alcatraz argued that ANNAPOLIS TOURS was “highly descriptive,” and therefore a heightened showing of acquired distinctiveness was required. Watermark maintained that because the examining attorney did not require additional evidence of acquired distinctiveness, the mark should not be considered “highly descriptive,” and further that Alcatraz was required to demonstrate that ANNAPOLIS TOURS was not in continuous and substantially exclusive use in order to meet its burden to overcome the presumption.50
Ultimately, the TTAB ruled against Watermark, holding that “[t]he fact that [Watermark’s] mark was registered pursuant to Section 2(f) based solely on a declaration of use does not preclude Alcatraz from introducing evidence that the mark is so highly descriptive as to require actual evidence of acquired distinctiveness in order to satisfy its initial burden of proof.”51 As the TTAB reasoned, “To hold otherwise would unduly restrict a plaintiff’s ability to challenge the validity of a mark . . . and fail to account for changes in the marketplace.”52 Essentially, “this would amount to substituting the examining attorney’s determination, based on the limited record adduced during ex parte examination, in lieu of a more expansive record that may be shown in an inter partes proceeding.”53 The TTAB noted that once a petitioner meets its initial burden, “the burden of proof then shifts to respondent to defend its registration.”54
Accordingly, the issue at bar was whether the phrase “Annapolis Tours” had acquired “secondary meaning” and was thus “distinctive” of Watermark’s services.55
Several factors may be considered in determining whether secondary meaning has been achieved, including (1) length and exclusivity of use, (2) advertising expenditures, (3) volume of sales under the mark, and (4) unsolicited media coverage of the services associated with the mark.56
The type and amount of evidence necessary to establish that a given mark has acquired distinctiveness depends on the mark at issue—e.g., the more descriptive a given mark, the greater the amount of evidence necessary to establish secondary meaning.57 “Highly descriptive terms . . . are less likely to be perceived as trademarks and more likely to be useful to competing sellers than are less descriptive terms. More substantial evidence of secondary meaning thus will ordinarily be required to establish their distinctiveness. Indeed, some designations may be incapable of acquiring distinctiveness.”58
Alcatraz amassed hundreds of documents evidencing Three Centuries Tours’ lack of continuous usage of ANNAPOLIS TOURS, by plumbing the unfinished Annapolis basements of former employees of Three Centuries Tours. For example, Alcatraz was able to locate over 100 issues of the Three Centuries Tours’ The Tattler newsletter from 1995–2004, which was provided to tour guides and other Three Centuries Tours employees on a monthly or semi-monthly basis. No reference to ANNAPOLIS TOURS could be found. Alcatraz also located and introduced consumer thank you letters, tour guide name badges, ticket stubs, tour handouts, stickers distributed to tour participants and worn during the tours, business cards, letterhead, photographs of exterior and interior signage for Watermark, and other tour paraphernalia, none of which contained any usage of ANNAPOLIS TOURS as a source indicator.59
The TTAB concluded that Alcatraz had “amply” demonstrated that the subject mark was “highly descriptive” as a result of the propounded documentary evidence and fact and expert witness testimony and the fact that the only evidence Watermark offered during prosecution of the applied-for mark was more than five years’ use.60 Having found that Alcatraz had satisfied its initial burden of making a prima facie showing of lack of acquired distinctiveness, the TTAB shifted the burden to Watermark to “prove acquired distinctiveness based on any ‘additional evidence or argument’ . . . keeping in mind that petitioner bears the ultimate burden of proof by a preponderance of the evidence.”61
Believing it was not required to do so, Watermark submitted no third-party media references, isolated sales figures deemed by the TTAB to be “quite low,” and a “problematic” and “mixed” testimonial record of continuous usage since 1992, which the TTAB held Alcatraz had successfully rebutted.62
Notably, Watermark’s witnesses actually made several admissions against interest that bolstered Alcatraz’s claim that ANNAPOLIS TOURS lacked the requisite acquired distinctiveness.
Hillary Gonzales, a former employer of both Watermark and Watermark’s predecessor-in-interest, testified that ANNAPOLIS TOURS clearly identified the nature of the walking tours, and that Three Centuries Tours had added the ANNAPOLIS TOURS wording to some of its advertising in the late 1990s to more clearly communicate Three Centuries Tours’ services. Gonzales also asserted that tour guides were informed about usage of ANNAPOLIS TOURS as a service mark in the employee manual. When Alcatraz managed to locate and introduce an employee manual during the trial, no reference to ANNAPOLIS TOURS could be found. Gonzalez similarly insisted that the Three Centuries Tours website had always included usage of ANNAPOLIS TOURS. Alcatraz later introduced Internet archives indicating that Three Centuries Tours did not reference ANNAPOLIS TOURS on its website until shortly before the Watermark acquisition.63
Matthew Grubs testified that he found ANNAPOLIS TOURS to identify the nature of both his and Watermark’s services.
Mary Jo McCulloch, former head of the Maryland Tourism Council and personal friend of Watermark’s predecessor-in interest, who has professional ties to Watermark’s owner, stated that when consumers came to her regarding guided tours of Annapolis, she would refer them to “Three Centuries” or “Watermark,” not Annapolis Tours, because that was how she thought of them.
Finally, Debbie Gosselin testified that Watermark’s predecessor-in-interest used ANNAPOLIS TOURS to communicate that Three Centuries Tours provided tours of Annapolis. She further testified that both she and the former owner of Three Centuries were well aware of third-party usage of ANNAPOLIS TOURS, but that prior to the Alcatraz cease and desist, there had been no effort to police the ANNAPOLIS TOURS mark.64
Ultimately, the TTAB concluded Watermark’s meager arsenal of sales figures and weak documentary and mixed witness testimony could not torpedo Alcatraz’s prima facie case of lack of acquired descriptiveness, and that Alcatraz had amply met its ultimate burden of proof. The TTAB therefore granted Alcatraz’s petition to cancel on the ground of lack of acquired distinctiveness.65 The TTAB’s opinion was designated precedential, as it clarified that while evidence showing a respondent’s use was not substantially exclusive or continuous could allow a petitioner to meet its initial burden of prima facie invalidity, there is no requirement to make this showing to succeed on a claim of lack of acquired distinctiveness.66
Arsha Jones, the founder of Capital City Mumbo Sauce, describes mumbo sauce as “like ketchup, but better. It’s like ketchup to the 10th power.”67 For Jones, the reddish-orange condiment is also emblematic of the African American majority that has called the District of Columbia home for decades. “It’s definitely a part of the subculture. . . . It’s the D.C. that isn’t the president and the politics.”68
Jones is a D.C. native of the Petworth neighborhood near historic Howard University, who later moved to the suburbs of Annapolis as an adult.69 Her company, Capital City Mumbo Sauce, was born out of Jones’s pregnancy cravings for chicken wings à la mumbo sauce. Six months pregnant, she couldn’t source her mumbo in Annapolis, and had to drive back to the District for some nostalgic cooking and, as luck would have it, a dash of inspiration. After tinkering with recipes in her home kitchen, Jones launched Capital City Mumbo Sauce in 2011 and quickly began bottling and distributing her mumbo sauce both in the DMV and nationwide via her website.70
Later that year, Jones, received a cease and desist letter from Select Brands LLC, the successor-in-interest to Mississippi-native Argia B. Collins Sr., who opened his first barbecue joint, Argia B’s Bar-B-Q, on the South Side of Chicago in 1957.71 Mr. Collins offered “Argia B.’s Mumbo Bar-B-Que Sauce” in his restaurants, and also sold his eponymous “MUMBO” sauce to restaurants and grocery stores in the Chicagoland area. Although Mr. Collins did obtain federal registration in 1958 for MUMBO in connection with barbecue sauce, he let the registration lapse, and it was cancelled in 1978.72
Argia’s daughter, Allison Collins, now the CEO of Select Brands, expanded distribution to more than 600 stores throughout the Midwest, and re-secured federal registration for MUMBO in 1999 in connection with barbeque sauce, alleging first use in commerce in 1950. Ms. Collins describes her father’s secret sauce as “more than just a product” and “the foundation of a family and entrepreneurial legacy.”73
For Arsha Jones, the personal is also political: “I don’t care how many laws, how many judges you try to appeal to, it will always be a sauce of D.C.”74 Faced with the threat of an infringement action, Jones petitioned for cancellation of the MUMBO registration in 2011.75
As grounds for cancellation, Jones alleged genericness,76 which for someone who grew up observing vats of mumbo sauce at the corner carryouts of her D.C. childhood perhaps seemed like a logical choice.77 Notably, Jones did not plead “descriptiveness” in the alternative in her petition to cancel. Given the lower bar for descriptiveness as described above in relation to Annapolis Tours, Jones very well may have succeeded in establishing that MUMBO is descriptive for condiments, e.g., barbeque sauce.
In support of her allegation of genericness, Jones successfully introduced only a handful of third-party websites evidencing purported generic usage of “mumbo” in connection with sauces; cease and desist correspondence with third-party users of mumbo other than Jones provided by Select Brands during discovery; and Select Brands’ answers to certain interrogatories.78 Unfortunately for Jones, she did not properly introduce the bulk of the evidence she proffered, namely, exhibits comprising: (1) printouts from third-party restaurant websites and a travel guide with the stated relevance of showing “generic use of the term MUMBO since 2007”; (2) copies of excerpts from books and magazines with the stated relevance of showing “generic use of the term MUMBO within the last 23 years”; (3) printouts from the Internet websites Wikipedia and Urban Dictionary, as well as copies of pages from the book Hip Hoptionary, with the stated relevance of showing “generic use of the term MUMBO in a dictionary”; (4) numerous printouts from third-party websites, including Twitter, Washington Post, Facebook, and food-related websites, with the stated relevance of showing “a relevant generic use of the term MUMBO . . . [or] in 2007 or earlier . . . [or] in the Washington, DC area [or] in the last 23 years”; and (5) Jones’s responses to Select Brands’ discovery requests. Accordingly, the TTAB struck out much of the evidence amassed by Jones to support the genericness of mumbo sauce in the DMV.79
Select Brands, for its part, did not introduce much more in the way of evidence: testimony from Ms. Collins regarding her father’s business; dictionary excerpts that contained no reference to MUMBO with respect to sauces; and testimony from Ms. Jones regarding Capital City’s usage of MUMBO.80
The TTAB identified the genus of goods as that identified in the registration, namely, “barbeque sauce,” and the relevant public for purposes of a genericness analysis as “consumers and potential consumers of barbeque sauce.”81 The TTAB next identified its query as whether Jones had met her burden and “shown by a preponderance of the evidence that consumers, or potential consumers, of barbeque sauce regard the term ‘mumbo’ as primarily a reference to a type of barbeque sauce.”82
The only actual evidence of record that the TTAB considered from Jones was a handful of third-party usages of the term “mumbo” as a possible generic reference to a sauce, consisting of Internet printouts from six different retail websites, one Facebook page website, and a website identified as “The Sauces.”83 These exhibits reflected usage of the term “mumbo” or “mumbo sauce” in connection with three different branded sauces: “Henry’s Mumbo Sauce,” a “Mumbo Sauce” offered by Chuck’s Wagon, and “Steve’s Own Special Sauce (S.O.S.S.) Mumbo Sauce.”84 One website proffered by Jones included the following description: “There is a very popular sauce in the DC area which they call Mumbo Sauce (some call it mambo). Local Lore says the Chinese restaurants originated this for use on wings, ribs, etc., but more accurately, the African-American restaurants in that area probably first developed it.”85 Another website excerpted by Jones referenced four different “Mumbo sauces” a California manufacturer blended to reflect “the aromatic flavors of California’s ethnic cultures into a distinctive International taste.”86
The TTAB grudging acknowledged that Jones’s evidence indicated “some generic use of the term ‘Mumbo’ in connection with sauces,” but found the evidence “of limited probative value” for multiple reasons.87 First, the TTAB asserted that the number of uses by third parties was “minimal” because the materials were “drawn from seven different websites and one Facebook page.”88 Second, the TTAB faulted Jones for not demonstrating the extent of exposure to these uses, e.g., the sales figures for the cited mumbo sauce producers, or evidence of web traffic to their respective websites, or the trade channels via which these alternative mumbo sauce producers sold their goods.89 Accordingly, the TTAB held that Jones had not met her burden of establishing that third-party use of the term “mumbo” is so extensive that the relevant consuming public recognizes “mumbo” primarily as a generic reference for a type of barbeque sauce.90
What if Jones had followed the Annapolis Tours model and tapped a food writer from the Washington Post as an expert witness to wax poetic about the storied mumbo sauce tradition in the District, and solicited owners of D.C. carryout eateries to testify about the mumbo sauce they sling with wings and fried whiting? Or perhaps called D.C.’s go-go soul band Mambo Sauce, rapper Rick Ross, and hip-hop artist Christylez Bacon, whose single Mambo Sauce dots the airwaves in D.C. clubs, as expert witnesses?91
Had Jones properly classified and introduced the swath of social media evidence she had culled, supplemented by additional old media articles and pop cultural references, and pleaded descriptiveness in the alternative,92 it is difficult to see how even the largely white, male, and middle-aged D.C. area transplants that comprise the TTAB could have failed to find in Jones’s favor and cancelled the MUMBO registration.93 Of course, Capital City Mumbo Sauce is not a multimillion dollar company like Alcatraz Media, and does not have the financial resources94 to mount extensive discovery like in Annapolis Tours, which perhaps speaks to the inequities at play in trademark disputes before the TTAB. Unfortunately, these inequities can allow one party to chill the commercial speech rights of a small business, and drain the public commons of the 5.7 million people in the DMV just looking for a side of mumbo with their fried dinner.95
Watermark filed an appeal with the Court of Appeals for the Federal Circuit on September 3, 2013.96 Jones has also indicated that she plans to appeal, stating, “This was never about me and my money and my pockets. . . . It was about doing what was best for the community of D.C.”97
It remains to be seen whether the Federal Circuit will maintain ANNAPOLIS TOURS in the lexicon for other providers of guided Annapolis tours or allow Jones redress for the TTAB’s mumbo jumbo in Mumbo.
However, as was made abundantly clear by the recent Annapolis Tours and Mumbo decisions, for the TTAB, the secret is not in the sauce: it’s in the evidence of record.
1. In re Brasserie D’Achouffe, Société Anonyme, Serial No. 79107741 (T.T.A.B. Sept. 26, 2013).
2. Bd. of Trs. of Univ. of Ala. v. Pitts, 107 U.S.P.Q.2d 2001 (T.T.A.B. 2013).
3. Syndicat Des Propriétaires Viticulteurs De Chateauneuf-du-Pape v. DesVignes, 107 U.S.P.Q.2d 1930 (T.T.A.B. 2013).
4. 107 U.S.P.Q.2d 1750 (T.T.A.B. 2013), available at http://ttabvue.uspto.gov/ttabvue/ttabvue-92050879-CAN-92.pdf.
5. “Mumbo” and “mambo” are treated as homonyms (the a is treated like a u and not prolonged like in the Cuban mambo).
6. Cancellation No. 92054587 (T.T.A.B. Aug. 26, 2013), available at http://ttabvue.uspto.gov/ttabvue/ttabvue-92054587-CAN-39.pdf; see Ken Molestina, DC Fights Chicago for Mumbo Sauce, WUSA 9 (Sept. 5, 2013), http://archive.wusa9.com/news/local/story.aspx?storyid=273549.
7. Alcatraz Media and Reserve123 Unveil New Travel and Tourism Channel Powered by YouTube, Alcatraz Media (Jan. 11, 2012), http://alcatrazmedia.com/alcatraz-media-and-reserve123-unveil-new-travel-and-tourism-channel-powered-by-youtube/; see Annapolis Tours, 107 U.S.P.Q.2d 1750, slip op. at 24.
8. Annapolis Tours, 107 U.S.P.Q.2d 1750, slip op. at 24–25.
10. About Watermark, Annapolis Tours, http://annapolistours.com/find-us/about-watermark/ (last visited Mar. 11, 2014).
11. Annapolis Tours, 107 U.S.P.Q.2d 1750, slip op. at 25–26.
12. Id., slip op. at 1–3.
13. This article will not address Alcatraz’s fraud claim, which centered around its contention that Watermark committed fraud on the USPTO in obtaining and maintaining a § 2(f) registration where the usage was neither continuous or exclusive as stated in the subject application. Id., slip op. at 3-4. Ultimately, like most fraud claims heard by the TTAB post-In re Bose Corp., it was unsuccessful. Id., slip op. at 56–58; In re Bose Corp., 580 F.3d 1240, 1245 (Fed. Cir. 2009) (holding that “a trademark is obtained fraudulently under the Lanham Act only if the applicant or registrant knowingly makes a false, material representation with the intent to deceive the [US]PTO”). Since Bose, the TTAB has not found any applicant or registrant to have committed fraud on the USPTO. John L. Welch, Fraud at the TTAB: Is “Willful Blindness” Enough?, TTABlog® (Sept. 24, 2012), http://thettablog.blogspot.com/2012/09/fraud-at-ttab-is-willful-blindness.html.
14. Annapolis Tours, 107 U.S.P.Q.2d 1750, slip op. at 7–9 (characterizing the evidentiary record as “voluminous”).
15. Id., slip op. at 29–37; Petitioner’s Notice of Reliance at Ex. H, J, Annapolis Tours, Cancellation No. 92050879 (T.T.A.B. Apr. 15, 2011), available at http://ttabvue.uspto.gov/ttabvue/ttabvue-92050879-CAN-47.pdf.
16. Petitioner’s Notice of Reliance, supra note 15, at Ex. B, F, G, I.
17. Id. at Ex. J.
18. Annapolis Tours, 107 U.S.P.Q.2d 1750, slip op. at 8.
19. Id., slip op. at 14.
20. Id., slip op. at 15.
21. Id., slip op. at 8.
22. Id., slip op. at 9, 44–45. Fishback was unable to testify herself for health reasons.
24. Id., slip op. at 43.
25. 15 U.S.C. § 1064(3).
26. In re Am. Fertility Soc’y, 188 F.3d 1341 (Fed. Cir. 1999); Magic Wand, Inc. v. RDB, Inc., 940 F.2d 638 (Fed. Cir. 1991); H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, 782 F.2d 987 (Fed. Cir. 1986); Annapolis Tours, 107 U.S.P.Q.2d 1750, slip op. at 28–29.
27. H. Marvin Ginn, 782 F.2d at 990; Annapolis Tours, 107 U.S.P.Q.2d 1750, slip op. at 28–29.
28. Magic Wand, 940 F.2d at 641–42; Annapolis Tours, 107 U.S.P.Q.2d 1750, slip op. at 37; Stocker v. Gen. Conference Corp. of Seventh-Day Adventists, 39 U.S.P.Q.2d 1385, 1392 (T.T.A.B. 1996).
29. Pilates, Inc. v. Current Concepts, Inc., 120 F. Supp. 2d 286, 305 (S.D.N.Y. 2000).
30. “[I]t should be close to impossible for one competitor to achieve exclusive rights” in common phrases or slogans. 1 J. McCarthy, McCarthy on Trademarks and Unfair Competition § 7:23 (4th ed. 2008); see also Mil-Mar Shoe Co. v. Shonac Corp., 75 F.3d 1153, 1157 (7th Cir. 1996) (“We have repeatedly recognized that ‘[t]o allow a producer of goods to usurp a generic term as a protectable trademark would prevent competitors from describing their own goods adequately.’”).
31. In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 1559 (Fed. Cir. 1985).
32. Continental Airlines, Inc. v. United Air Lines, Inc., 53 U.S.P.Q.2d 1385, 1395 (T.T.A.B. 1999).
33. Annapolis Tours, 107 U.S.P.Q.2d 1750, slip op. at 29–31.
34. Id., slip op. at 31.
35. Id., slip op. at 37.
36. Id., slip op. at 33; Petitioner’s Notice of Reliance, supra note 15, at Ex. H, J.
37. Id., slip op. at 35.
38. Id., slip op. at 36.
39. 15 U.S.C. § 1052(e)(2) (“No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it . . . [c]onsists of a mark which . . . when used on or in connection with the goods of the applicant is primarily geographically descriptive of them.”).
40. Annapolis Tours, 107 U.S.P.Q.2d 1750, slip op. at 37.
41. 15 U.S.C. § 1052(e)(1). Marks that are merely descriptive or misdescriptive cannot be registered on the principal register without a showing of acquired distinctiveness. A term is merely descriptive of goods if it conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose, or use of the goods. See, e.g., In re Gyulay, 820 F.2d 1216 (Fed. Cir. 1987); In re Abcor Dev. Corp., 588 F.2d 811 (C.C.P.A. 1978). Whether a particular term is merely descriptive is determined not in the abstract, but in relation to the goods for which registration is sought, the context in which it is being used or intended to be used on or in connection with those goods, and the possible significance the term would have to the average purchaser of the goods because of the manner of its use or intended use. In re Tower Tech Inc., 64 U.S.P.Q.2d 1314, 1316–17 (T.T.A.B. 2002) (“The question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods and services are will understand the mark to convey information about them.”).
42. 15 U.S.C. § 1052(f).
43. Annapolis Tours, 107 U.S.P.Q.2d 1750, slip op. at 32.
44. 15 U.S.C. § 1052(f).
45. Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 1358 (Fed. Cir. 2009) (“[A]n applicant’s reliance on Section 2(f) during prosecution presumes that the mark is descriptive.”).
46. 15 U.S.C. § 1056(a) (“The Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable.”); In re Creative Goldsmiths of Wash., Inc., 229 U.S.P.Q. 766, 768 (T.T.A.B. 1986) (noting that the USPTO requires a disclaimer of generic components of a composite mark sought to be registered on the principal register under the provisions of § 2(f)).
47. Alcatraz maintains that Chesapeake’s predecessor-in-interest did not use Annapolis Tours as a service mark continuously or substantially exclusively at any time. The TTAB acknowledged that the record of use was “problematic” and “mixed.” Annapolis Tours, 107 U.S.P.Q.2d 1750, slip op. at 40–44.
48. Cold War, 586 F.3d at 1356.
49. Id. at 1357.
50. Annapolis Tours, 107 U.S.P.Q.2d 1750, slip op. at 40.
52. Id., slip op. at 41.
54. Id., slip op. at 42.
55. Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357, 1360 (Fed. Cir. 2001).
56. In re Tires, Tires, Tires, Inc., 94 U.S.P.Q.2d 1153 (T.T.A.B. 2009).
57. Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572 (Fed. Cir. 1988); In re Recorded Books, Inc., 42 U.S.P.Q.2d 1275 (T.T.A.B. 1997).
58. Recorded Books, 42 U.S.P.Q.2d at 1275.
59. See Petitioner’s Notice of Reliance, supra note 15, at Ex. B, F, G.
60. Annapolis Tours, 107 U.S.P.Q.2d 1750, slip op. at 42 (T.T.A.B. 2013).
62. Id., slip op. at 43–48.
63. Id., slip op. at 45.
64. Id., slip op. at 49–50.
65. Id., slip op. at 48.
66. Id., slip op. at 41 & n.20.
67. Beth Parker, Small Wing Sauce Business, Capital City Mumbo, Takes Off, WTTG Fox 5 (July 26, 2011), http://www.myfoxdc.com/story/17966651/small-wing-sauce-business-capital-city-mumbo-takes-off#axzz2vkoJ5Gxu.
68. Theresa Vargas, Mumbo Sauce: The 2 Words on Everybody’s Lips, Wash. Post, July 16, 2011, http://www.washingtonpost.com/local/mumbo-sauce-the-flavor-of-washington-that-isnt-the-president- and-the-politics/2011/07/14/gIQAFOqQII_story.html; see Dan Steinberg, Kevin Durant’s New Shoe Inspired by Mumbo Sauce, Wash. Post, Dec. 12, 2012, http://www.washingtonpost.com/blogs/dc-sports-bog/wp/2012/12/12/kevin-durants-new-shoe-inspired-by-mumbo-sauce/?wprss=rss_dc-sports-bog (noting that D.C.-bred professional basketball player was inspired by “the popular DC Mumbo sauce”).
69. Theresa Vargas, What’s the Flavor of DC? Mumbo Sauce, Wash. Post, July 21, 2011.
70. Vargas, 2 Words, supra note 72.
71. Meathead, How to Make DC Mumbo Sauce (or Is It Really Chicago Mumbo Sauce?), HuffPost Taste (Mar. 26, 2012), http://www.huffingtonpost.com/craig-goldwyn/mumbo-sauce_b_1376194.html. Collins’s restaurant was “a frequent source of free nourishment for a young Rev. Jesse Jackson and other organizers of Operation Breadbasket, a predecessor of Operation PUSH.” Id.; see Mumbo, Cancellation No. 92054587, slip op. at 14 & n.8 (T.T.A.B. Aug. 26, 2013).
72. Mumbo, Cancellation No. 92054587, slip op. at 14.
73. Perry Stein, Local Mumbo Sauce Seller May Have to Call Its Condiment Something Else, Wash. City Paper, Aug. 30, 2013, http://www.washingtoncitypaper.com/blogs/citydesk/2013/08/30/local-mumbo-sauce-seller-may-have-to-call-its-condiment-something- else-following-trademark-dispute/; see Harry Porterfield, Family Business Based on BBQ Sauce, ABC7 News (Feb. 10, 2009) (“I think that my dad’s legacy is . . . you know, Mumbo Sauce is a vehicle and its [sic] a way to give back . . . people loved his product at the same time. Through that, he was able to give back to the community.”).
74. Perry Stein, Capital City Mumbo Sauce: We’re Keeping Our Name “Until Someone Beats Down Our Door,” Wash. City Paper, Sept. 25, 2013, http://www.washingtoncitypaper.com/blogs/citydesk/2013/09/25/capital-city-mumbo-sauce-were-keeping-our-name-until-someone-beats-down-our-door/.
75. Mumbo, Cancellation No. 92054587 (T.T.A.B. filed Sept. 30, 2011); Molestina, supra note 6 (statement of Arsha Jones: “I’m from the ’hood, we take chances.”).
76. Mumbo, Cancellation No. 92054587, slip op. at 1–2.
77. Some food historians assert that mumbo sauce was created in the 1960s at Wings-n-Things, a popular fried chicken stand near Howard University. Michele Kayal, Mumbo Sauce Is Washington, D.C. Signature, Am. Food Roots (July 11, 2013), http://www.americanfoodroots.com/my-american-roots/mumbo-sauce-is-washington-d-c-signature/.
78. Jones also tried to introduce printouts from social media and demographics information from the U.S. Census Bureau. Mumbo, Cancellation No. 92054587, slip op. at 3. Because Jones failed to list the reason she relied on the social media printouts or demographic information, the TTAB struck some of Jones’s exhibits. Id., slip op. at 6–7.
79. Id., slip op. at 6–9. Among the TTAB’s reasons for striking the exhibits were that Jones failed to state the purpose for which the exhibit was proffered in violation of Trademark Rule 2.122(e) and that the exhibits were “merely cumulative.”
80. Id., slip op. at 3.
81. Id., slip op. at 11.
83. Id., slip op. at 12.
88. Id. Given the vast expanse of evidence excluded by the TTAB, this characterization seems disingenuous.
89. Id. at 12–13.
90. Id. at 13.
91. Christylez Bacon, Mambo Sauce, on Advanced Artistry (Christylez Prod. 2008) (“We order chicken with the mambo sauce / fries with the mambo sauce / They never use enough, I got a side of it”); Maura Judkis, Mambo Sauce Gets Gentrified, Wash. Post, July 9, 2013, http://www.washingtonpost.com/lifestyle/food/mumbo-sauce-gets-gentrified/2013/07/08/b1011ade-cc67-11e2-9f1a-1a7cdee20287_story.html; Mambo Sauce, Welcome to D.C., on The Recipe (DMV Records 2009) (“D.C., the home of Chuck Brown / Oh you don’t know the sound? / Well let me break it down / The G-O the G-O / The M-A-M-B-O”); Chris Richards, Trying to Make a Go-Go of It: The Band Mambo Sauce Hopes Genre Will Cross the D.C. Line, Wash. Post, Jan. 4, 2009, http://www.washingtonpost.com/wp-dyn/content/article/2009/01/02/AR2009010200659.html (noting that “the band took its name from a local condiment—that translucent orange goop drizzled over french fries and chicken at neighborhood carryouts”); Rick Ross feat. Meek Mill & Wale, Pandemonium, on SelfMade Vol. 1 (Maybach Music Group 2011) (“Catch me at the carry out, mumbo sauce and half and half”).
92. In a cancellation proceeding alleging mere descriptiveness, a petitioner must show either that a mark was descriptive at the time of registration or merely descriptive and without acquired distinctiveness at the time of the cancellation proceeding. Neapco Inc. v. Dana Corp., 12 U.S.P.Q.2d 1746, 1747 (T.T.A.B. 1989). While the burden of persuasion is still a preponderance standard with respect to acquired distinctiveness, it is much easier to prove a given mark is an “ingredient, quality, characteristic or feature” of a good rather than the good itself. Presumably, Select Brands would have alleged acquired distinctiveness. Had Jones submitted all the evidence available, including witness testimony, the TTAB may very well have concluded that MUMBO is highly descriptive and lacking acquired distinctiveness.
93. Class distinctions between Jones and the Collinses may have influenced the TTAB’s decision. The TTAB devoted particular attention in its opinion to Mr. Collins’s relationship with Martin Luther King Jr. Mumbo, Cancellation No. 92054587, slip op. at 14. Allison Collins, a graduate of Notre Dame and the University of Texas at Austin School of Business, recounted her father’s success, and friendship with the Reverend Jesse Jackson Jr. In contrast, Arsha Jones referenced her connection to an inner-city African American subculture of go-go music and carryout restaurants featuring mumbo sauce. Molestina, supra note 6. Jones, in fact, is a graphic artist professional and graduate of the Virginia Commonwealth University in Richmond. It may be that the TTAB was subconsciously more inclined to put itself in the shoes of colonial tour participants in America’s sailing capital of Annapolis or upper-middle class African American entrepreneurs like Ms. Collins, rather than in the shoes of a go-go listening urban consumer.
94. Maura Judkis, Mumbo Sauce May Be the Taste of D.C., but in the Eyes of the Law Its Home Is Chicago, Wash. Post, Sept. 3, 2013, http://www.washingtonpost.com/goingoutguide/ mumbo-sauce-may-be-the-taste-of-dc-but-in-the-eyes-of-the- law-its-home-is-chicago/2013/09/03/c2ae07bc-14bd-11e3-a100-66fa8fd9a50c_story.html (noting that Jones was seeking pro bono assistance to appeal the TTAB decision).
95. Modele Oyewole, Wings and Mumbo Sauce to Go:A Guide to D.C. Carryout, Complex City Guide (Feb. 3,2011), http://www. complex.com/city-guide/2011/02wings-and-mumbo-sauce-to-go-a-guide-to-d-c-carryout/.
96. Notice of Appeal, Chesapeake Marine Tours, Inc. v. Alcatraz Media, Inc., No. 14-1031 (Fed. Cir. Sept. 3, 2013).
97. Judkis, Taste of D.C., supra note 94.