Franklin Pierce Law Center, Appellant, v. Georgetown University, Appellee, 895 F.2d 1421 (Fed. Cir. 1990)

DECISION

This appeal by Franklin Pierce Law Center, a New Hampshire corporation, is from a unanimous decision of the United States Patent and Trademark Office Trademark Trial and Appeal Board (board), which sustained an opposition brought by Georgetown University (Georgetown) to Franklin Pierce's proposed registration of the title "The Journal of Law and Technology," the current subtitle of its journal, IDEA. We affirm the board's holding.

OPINION

The board held no secondary meaning was established here. To have held that the descriptive words have a distinctiveness for the applicant's product would have required that there be strong proof of a secondary meaning. The applicant's evidence on this was that the words had been used as a subtitle for IDEA since 1976 and that much money had been spent on the journal since that date. Further, correspondence and invoices used the words sought to be registered and statements from 10 people attest to the fact that they are unaware of other journals using the name "The Journal of Law and Technology." The board could not find that this was sufficient proof of secondary meaning in this case. Its holding was that the words were only descriptive terminology explaining what type of publication IDEA was and that length of use did not prove secondary meaning here. As to expenditures, the proof fell short of showing promotion of the words in the title or that the words have lost their descriptive significance and have acquired any secondary meaning thereby. Evidence of promotional activity was sparse. References by the applicant and others in correspondence were held insufficient to establish secondary meaning for the words in light of their highly descriptive nature. Letters by 10 subscribers solicited by the applicant with an eye toward this proceeding were held not to establish a scientifically accurate survey.