TTABlog Test: Is "SNKRS" Generic for or Merely Descriptive of Nike's Sneaker-Related Services?

The USPTO deemed the term "snkrs" to be generic or merely descriptive of "operating an online marketplace featuring footwear and clothing; on-line retail store services featuring footwear and clothing; retail store services featuring clothing and apparel; Pop-up retail store services featuring clothing and footwear; providing consumer product information and related news in the field of sneaker" and for "Providing recognition and incentives by the way of awards and contests to demonstrate excellence in the field of fashion and sneaker collection," and so it refused to register the proposed marks SNKRS, in standard character and design form, in the latter case absent a disclaimer of "snkrs." Nike traversed the refusals and, in its applications, claimed acquired distinctiveness under Section 2(f) as to "snkrs." How do you thing this appeal came out? In re Nike, Inc., Serial Nos. 88781464 and 88781470 (July 28, 2023) [not precedential] (Opinion by Judge Mark Lebow).

Genericness: The Board found that the word “sneaker(s)” is generic for retail services featuring sneakers because it is a term that the relevant public uses or understands to refer to a key aspect or subcategory of the genus, which Nike did dispute.

The Board also found that SNKRS would be perceived as a phonetic equivalent of the word “sneakers” when it is used in connection with retail stores services, or award services, featuring sneakers. "Simply put, there is no reasonable pronunciation of SNKRS other than as “sneakers’ in the context of providing retail store or award services for “sneakers,” nor does Applicant suggest that there is ...."

[I]rrespective of the fact that the relevant consumers are likely to recognize Applicant’s selection of SNKRS as a play on “sneakers,” a word they may understand as generic for a key aspect of Applicant’s proposed services in each application, we must balance that recognition against further evidence showing that the same consumers also view it as a source identifier for Applicant. Here, that evidence derives substantially from Applicant’s impressive showing, through various articles in wide circulation, showing that consumers do regard SNKRS as a trademark.

Nike submitted numerous articles showing use of SNKRS as a trademark. There was no evidence that SNKRS and the generic term “sneakers” are used interchangeably by those publications, and the examining attorney did not provide any evidence of third parties using SNKRS generically when discussing Nike’s goods or services. "Rather, the writers of those publications appear to purposefully distinguish the terms, referring to SNKRS when discussing Applicant’s “brand,” and “sneakers” when referring to the goods/services provided thereunder."

We find that the Applicant’s evidence showing that third parties perceive Applicant’s use of SNKRS as a mark results in a mix usage record that raises doubt that consumers, in fact, perceive its primary meaning as signifying the generic term it is intended to connote, and not as a source-identifier.

The Board ruled that the Office has not met its "substantial burden" to establish that SNKRS is generic for the identified services.

Acquired Distinctiveness: By claiming acquired distinctiveness under Section 2(f), Nike conceded that "snkr" is merely descriptive of the involved services.

The Board observed that the resemblance between SNKRS and the word “sneakers” is "so evident that the relevant consumer will automatically equate SNKRS and the word “sneakers” and know, without multi-step reasoning, that the services relate to sneakers." It therefore found find that SNKRS is highly descriptive of Nike’s services featuring sneakers. As a result, Nike's burden of establishing acquired distinctiveness under Section 2(f) was "commensurately high."

Nike's sales and advertising figures and unsolicited media coverage led the Board to conclude that SKRS has acquired distinctiveness. And so the Board concluded as follows:

The refusal to register SNKRS in Application Serial No. 88781470 on the ground that is generic for the identified services, or in the alternative that it is merely descriptive of them and has not acquired distinctiveness is reversed. The refusal to register SNKRS and Design in Application Serial No. 88781464 on the ground that Applicant has not disclaimed SNKRS because it is generic for the identified services, or in the alternative that it is merely descriptive of them and has not acquired distinctiveness, is also reversed. Both applications will proceed to publication.

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TTABlogger comment: Note the statement that the Office has a "high burden" to prove genericness. In the recent, precedential Uman decision, the Board said the standard was a preponderance of the evidence. The Board's case law is a bit confused on this issue. See Michael Hall's article here.

Text Copyright John L. W. Ielch 2023.