In Heritage Alliance v. American Policy Roundtable, No. 24-1155 (Fed. Cir. Apr. 9, 2025), the Federal Circuit affirmed the TTAB’s refusal to block registration of “iVoters” and “iVoters.com” despite evidence of earlier use of “iVoterGuide” and “iVoterGuide.com” by the challenger. The court agreed with the Board that Heritage’s marks were highly descriptive and had not acquired distinctiveness as of the relevant date, and therefore could not serve as the basis for a § 2(d) opposition.
The Facts and Procedural Posture
Heritage had been using “iVoterGuide” and “iVoterGuide.com” since at least 2008 to publish online voter guides. In 2019, the American Policy Roundtable (APR) applied to register “iVoters” and “iVoters.com” for providing public policy and political campaign information. Heritage opposed the applications under 15 U.S.C. § 1052(d), asserting a likelihood of confusion with its own prior-used marks.
APR effectively conceded likelihood of confusion by not contesting the issue. However, the TTAB found that Heritage’s marks lacked protectability due to their highly descriptive nature and failure to acquire secondary meaning. The Federal Circuit affirmed.
Key Holdings
1. Highly Descriptive Marks Require More Than Length of Use
The court upheld the Board’s finding that “iVoterGuide” and “iVoterGuide.com” are “highly descriptive.” The prefix “i” was reasonably understood to mean “Internet,” and “VoterGuide” plainly described the services provided. Importantly, the court emphasized that even a combination of descriptive elements must be considered as a whole to determine whether it creates a distinctive source-identifying impression. Relying on Oppedahl & Larson LLP, 373 F.3d 1171 (Fed. Cir. 2004), and Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334 (Fed. Cir. 2015), the court concluded there was no such impression here.
2. Five Years of Use Does Not Guarantee Distinctiveness
Heritage argued that more than five years of continuous use should have sufficed under § 2(f) to demonstrate acquired distinctiveness. But the court reaffirmed that for highly descriptive marks, the TTAB is not required to treat this as prima facie evidence of distinctiveness. Citing In re Bongrain Int’l (Am.) Corp., 894 F.2d 1316 (Fed. Cir. 1990), In re Steelbuilding.com, 415 F.3d 1293 (Fed. Cir. 2005), and Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358 (Fed. Cir. 2018), the panel held that the Board did not abuse its discretion in requiring more compelling evidence.
3. Declarations from Insiders Carry Limited Weight
The declarations Heritage submitted came from internal volunteers rather than neutral consumers, lacked detail, and represented a small segment of the marketplace. The court cited In re Pacer Tech., 338 F.3d 1348 (Fed. Cir. 2003), to underscore that such conclusory statements—especially from affiliated individuals—are insufficient to prove secondary meaning.
Practical Implications
This decision serves as a reminder that the burden to prove distinctiveness is high—especially for descriptive marks. Even longstanding use and internal endorsements may not tip the scale without broader market recognition or evidence such as consumer surveys or significant media coverage. When pursuing or opposing trademark registrations based on prior common-law rights, parties must marshal persuasive evidence of source-identifying significance, especially if the mark plainly describes the goods or services offered.
Moreover, while the Board acknowledged a conceded likelihood of confusion, it was irrelevant in the absence of protectable rights in the opposing mark. That finding also raises questions about whether the PTO may revisit registration decisions under § 1052(e) or § 1064 where the applicant’s own mark may also be merely descriptive.
Conclusion
Heritage reinforces a fundamental trademark principle: descriptiveness is not destiny, but it is a hurdle. Overcoming that hurdle requires more than use—it requires clear evidence that the mark has become associated in the minds of consumers with a single source. Without that, even priority of use won’t carry the day.
By Charles Gideon Korrell