Precedential No. 18: TTAB Denies LAGUNA CANDLES Cancellation Petition, Finding Acquired Distinctiveness And No Claim Preclusion

• Published date: 09 August 2022
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Wolf, Greenfield & Sacks, P.C.
• Author: Mr John L. Welch

Petitioner Flame & Wax found itself on the short end of the candlestick when the Board denied its petition for cancellation of a registration for the mark LAGUNA CANDLES for "aromatherapy candles; candles; scented candles" (CANDLES disclaimed), finding that the mark had acquired distinctiveness and therefore was not primarily geographically descriptive of the goods. The Board rejected petitioner's invocation of the doctrine of claim preclusion based on its earlier successful opposition to respondent's prior application to register the same mark, also on the ground of geographic descriptiveness, finding that this cancellation proceeding involved a different set of transactional facts. Flame & Wax, Inc. v. Laguna Candles, LLC, 2022 USPQ2d 714 (TTAB 2022) [precedential] (Opinion by Judge Albert Zervas).

Acquired Distinctiveness: Because the challenged registration was issued under Section 2(f), inherent distinctiveness was not an issue. See Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009) ("where an applicant seeks registration on the basis of Section 2(f), the mark's descriptiveness is a nonissue; an applicant's reliance on Section 2(f) during prosecution presumes that the mark is descriptive."). A registration may be cancelled if the mark lacks distinctiveness either when registered or at the time of trial. Neapco Inc. v. Dana Corp., 12 USPQ2d 1746, 1747 (TTAB 1989). The Board construed the petition as alleging geographical descriptiveness and acquired distinctiveness at the time of trial.

A cancellation petitioner bears the initial burden to establish a prima facie case of no distinctiveness. If it does so, then the burden shifts to the respondent to submit evidence and argument in its favor. However, the ultimate burden of proof remains with the petitioner. Cold War Museum, 92 USPQ2d at 1620.

The Board first was required to determine the degree of geographical descriptiveness of the mark LAGUNA CANDLES. See, for example, In re Boston Beer Co., 198 F.3d 1370, 1373 (Fed. Cir. 1999) ("[T]he greater the degree of descriptiveness the term has, the heavier the burden to prove it has attained secondary meaning" (quoting In re Bongrain Int'l (Am.) Corp., 894 F.2d 1316, 13 USPQ2d 1727, 1727 n.4 (Fed. Cir. 1990)). Relevant inquiries include evidence that the place named in the mark is very well known, and that third parties in the same industry use the geographic place name in connection with their goods...