Court Affirmed TTAB Decision Rejecting Heritage’s Voter Guide Marks

Heritage Alliance began publishing online voter guides during the 2008 election season, using the names “iVoterGuide” and “iVoterGuide.com.” These names were used as common law marks after Heritage’s earlier federal registration lapsed in 2016 for failure to maintain required filings. In January 2019, the American Policy Roundtable (APR) filed trademark applications for “iVoters” and “iVoters.com,” describing its services as providing information on public policy issues, political campaigns, and citizen concerns. Once the PTO examiner approved APR’s applications, the marks were published in the Official Gazette.

In July 2019, Heritage opposed the registrations, arguing that APR’s proposed marks would cause confusion with its prior iVoterGuide marks, which had priority. The Trademark Trial and Appeal Board (TTAB) accepted that APR effectively conceded likelihood of confusion but dismissed Heritage’s opposition on the ground that its marks were not protectable because they were highly descriptive and lacked acquired distinctiveness.

TTAB proceedings and findings

The Board explained that for a descriptive term to function as a trademark, it must acquire secondary meaning that identifies the source of the goods or services. Heritage argued that its long use of the marks, combined with declarations from volunteers, showed distinctiveness. The Board, however, found that the evidence was insufficient. It held that the “iVoterGuide” name clearly described an internet-based voter guide, with the prefix “i” referring to the internet, “VoterGuide” identifying the service, and “.com” lacking distinctiveness. The Board ruled the marks were highly descriptive and that Heritage’s evidence, including limited declarations, did not demonstrate acquired distinctiveness.

Appeal to the Federal Circuit

Heritage appealed to the U.S. Court of Appeals for the Federal Circuit. The court reviewed the TTAB’s factual findings for substantial evidence and legal conclusions de novo. Heritage challenged both the descriptiveness finding and the determination that its marks had not acquired distinctiveness.

The Federal Circuit affirmed the Board’s ruling. It agreed that the iVoterGuide marks were highly descriptive, noting that the whole phrase immediately conveyed the nature of the service: an online voter guide. The court also upheld the Board’s conclusion that Heritage had not shown acquired distinctiveness. The evidence of use for over five years and declarations from three volunteers was not sufficient. The declarations were conclusory, came from individuals with ties to Heritage, and did not establish consumer recognition in the broader marketplace. The court emphasized that the Board had discretion not to accept five years of use as prima facie evidence of distinctiveness, especially for highly descriptive marks.

Final outcome

The Federal Circuit affirmed the TTAB’s dismissal of Heritage’s opposition to APR’s “iVoters” marks. It held that Heritage’s common law marks lacked protectability due to their highly descriptive nature and failure to acquire distinctiveness.

Help with trademark disputes and brand protection

If your business is involved in disputes over trademark registration, brand distinctiveness, or opposition proceedings, Whitcomb, Selinsky PC handles trademark litigation, opposition actions, and intellectual property protection. Reach out to schedule a consultation and learn how our team can assist with your case.