Watercraft Superstore, Inc.

Trademark Trial and Appeal Board

Aug 26, 2016

No. 86369831 (T.T.A.B. Aug. 26, 2016)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
August 26, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Watercraft Superstore, Inc.
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Serial No. 86369831
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Zachary D. Messa of Johnson, Pope, Bokor, Ruppel & Burns, LLP for Watercraft
Superstore, Inc.

Angela Micheli, Trademark Examining Attorney, Law Office 101 (Ronald R.
Sussman, Managing Attorney).
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Before Kuhlke, Mermelstein, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Watercraft Superstore, Inc. (“Applicant”) filed an application for registration on
the Principal Register of the mark WATERCRAFT SUPERSTORE in standard
characters for “Online retail stores services featuring personal watercraft parts and
accessories.”1 Applicant requested registration under Section 2(f), 15 U.S.C.
§ 1052(f), stating that “The mark has become distinctive of the goods/services

1 Application Serial No. 86369831 was filed on August 18, 2014 under Trademark Act
Section 1(a), 15 U.S.C. § 1051(a), stating November 28, 2008 as the date of first use and
first use in commerce.
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through the applicant’s substantially exclusive and continuous use in commerce
that the U.S. Congress may lawfully regulate for at least the five years immediately
before the date of this statement.” Applicant has disclaimed the exclusive right to
use SUPERSTORE apart from the mark as shown.
The Examining Attorney refused registration on the ground that Applicant’s mark
is merely descriptive of Applicant’s services, under Section 2(e)(1) of the Trademark
Act, 15 U.S.C. § 1052(e)(1), and that Applicant had not shown that the mark had
acquired distinctiveness. When the refusal was made final, Applicant appealed to
this Board. The case is fully briefed.
1. Refusal under Section 2(e)(1).
Where, as here, an applicant requests registration based on acquired
distinctiveness under Section 2(f), the examining attorney need not prove that the
mark is merely descriptive. Rather, the mark’s “lack of inherent distinctiveness [is]
an established fact.” Yamaha International Corp. v. Hoshino Gakki Co. Ltd., 840
F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988). The question of inherent
distinctiveness “is a nonissue” under Section 2(f), and the only remaining issue is
acquired distinctiveness. Id.
Acquired distinctiveness is generally understood to mean an acquired “mental
association in buyers’ minds between the alleged mark and a single source of the
product.” 2 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 15:5 (4th ed.
June 2016 update). “It is only necessary that a ‘substantial part’ of the buying class
make such an association.” Id. §15:45. The Trademark Act is silent as to the
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quantum of evidence that is necessary to establish acquired distinctiveness, except
for the provision of Section 2(f) that states, “The Director may accept as prima facie
evidence that the mark has become distinctive … proof of substantially exclusive
and continuous use” of the mark in commerce for the immediately preceding five
years. 15 U.S.C. § 1052(f) (emphasis added). We determine whether Applicant’s
mark has acquired distinctiveness based on the entire record, keeping in mind that
Applicant has the “ultimate burden of persuasion” as to acquired distinctiveness.
See Yamaha v. Hoshino Gakki, 6 USPQ2d at 1004. The amount and character of
evidence required to establish acquired distinctiveness depends on the facts of each
case and the nature of the mark sought to be registered. See Roux Labs., Inc. v.
Clairol Inc., 427 F.2d 823, 829, 166 USPQ 34, 39 (CCPA 1970); In re Hehr Mfg. Co.,
279 F.2d 526, 528, 126 USPQ 381, 383 (CCPA 1960). Typically, more evidence is
required where a mark is so highly descriptive that purchasers seeing the matter in
relation to the offered services would be less likely to believe that it indicates source
in any one party. See In re Bongrain Int'l Corp., 894 F.2d 1316, 1318, 13 USPQ2d
1727, 1729 (Fed. Cir. 1990).
The Examining Attorney has shown that a “superstore” is “a very large retail
store offering a very wide selection of merchandise.”2 She has also shown that
“watercraft” means “any vehicle ordinarily used for water transportation.”3 It is,
moreover, manifest from Applicant’s recitation of services that Applicant’s store

2 Definition from American English Dictionary, Office Action of
December 11, 2014 at 4. The usage example provided in the definition of “superstore” is “a
computer superstore.”
3 Id. at 6.
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features parts and accessories for “personal watercraft.” Clearly, Applicant’s mark,
as a whole, is very highly descriptive. The Examining Attorney argues that, because
of this high degree of descriptiveness, “the applicant has the burden to show a high
level of secondary meaning.”4
Applicant has submitted the declaration of its general manager, John Salvatore,
which states that Applicant has operated its online store “continuously, and upon
information and belief, substantially exclusively” under its mark since November,
2008.5 Applicant’s declarant stated that during the years 2009 through 2014, the
number of orders it took increased steadily from approximately 15,000 to 26,000 per
year;6 its advertising expenditures in 2011 through 2014 ranged between $201,000
and $376,000 per year (averaging $281,842);7 that in 2011 through 2014, it
distributed 477,376 copies of its catalogue (averaging 119,344 copies per year);8 and
that its website registered over 80,000 “unique user impressions” per year in 2009
through 2012 and over 119,000 per year in 2013 and 2014.9 Applicant’s declarant
listed 12 tradeshows and events at which it has advertised its services under the
mark.10

4 Examining Attorney’s brief at 6.
5 Declaration of John Salvatore, ¶¶ 3-4, Applicant’s response of July 7, 2015 at 1.
6 Id. at 3-4, ¶ 12.
7 Id. at 3, ¶ 11.
8 Id., ¶ 10.
9 Id. at 1-2, ¶ 5.
10 Id. at 3, ¶ 9.
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The Examining Attorney argues that the probative value of Applicant’s sales and
advertising figures is lessened because they are offered “with no context to show
whether [A]pplicant’s sales are significant in relation to others who provide similar
services”; and argues that Applicant’s sales and advertising figures “are insufficient
to show its success in educating the public to associate the proposed mark with a
single source.”11 Such context would improve the nature of the evidence. However,
the evidence does show that Applicant has meaningful, bona fide and ongoing
operations, even though it would likely be characterized as a small business. Of
course, even if Applicant’s sales and advertising figures were much greater, they
would not be direct evidence of “success in educating the public.” As we discuss
below, Applicant has taken a different approach to demonstrating actual market
recognition.
Since 2009, Applicant has operated an online forum for the discussion of personal
watercraft, called PWC Today.12 Applicant has made of record many pages of
postings by users of that forum,13 many of which clearly recognize WATERCRAFT
SUPERSTORE as the source indicator for Applicant’s online retail store. According
to Applicant’s tabulation,14 users from 21 States have shown such recognition.
Notable examples follow (the names of the posters and their given locations are in
parentheses):

11 Examining Attorney’s brief, 9 TTABVUE 7.
12 Salvatore declaration, ¶ 7, Applicant’s response of July 7, 2015 at 2.
13 Salvatore declaration, Exhibit 7, Applicant’s response of June 10, 2015 at 86-154.
14 Id. at 84-85.
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Does anyone know if the gasket / O ring are supplied
when purchasing a block off plate from Watercraft
superstore? (needforspeed, New Jersey)15
I bought a new set of traction mats from The Watercraft
Superstore on black Friday for half price. … Watercraft
SS sent me the mat without the hole for the visibility as
per my request … (TC Dave, South Carolina)16
Does anybody know of any Vendor Black Friday Sales
This Year? Post any known sales. I know Watercraft
Superstore Usually runs 50% off BlackTip Jetsports,
hopefully that deal is still in order this year! (Mcarp6,
New Jersey)17
I ordered a rebuild kit from Watercraft Superstore (SBT
branded kit, with China bearings… failed bearings were
Korean. But I found this pump (900 ZXI) did not exactly
match any of the several manuals I have … (OldGuy,
Minnesota)18
Just weird that both of the cylinders o-ring was the same.
Also, I looked at Watercraft Superstore and they had the
piston rings and o-rings all for around $70 plus shipping.
That partsland.com showed that just one set of rings was
gonna be $70! (mallen14, Dalton, Georgia)19
I was wondering where to order a new fuel pump since I
could not find one at SBT or watercraft superstore.
(chuckrock77, Branson, Missouri)20
I ordered a new fuel tank cover and hinge from watercraft
superstore and I can’t figure out how it goes on … A new
lock is like 80 bucks from wcs … I really don’t want to

15 Id. at 91.
16 Id. at 94.
17 Id. at 95.
18 Id. at 96.
19 Id. at 100.
20 Id. at 103.
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spend $80 on just a lock for this 24 year old ski, haha.
(rafaelbachman, Grass Valley, California)21
Could someone please tell me a good place to purchase a
complete winch assembly? (J_M_G_S_D, Edmond,
Oklahoma)
I got mine from Watercraft Superstore and I love it. …
(coolcam_6, Colorado Springs, Colorado)
I looked there, I a could find [sic] is the winch. I need the
completed setup, the winch stand and the winch.
(J_M_G_S_G, Edmond Oklahoma)22
The record includes over fifty postings, similar to those quoted above, in which it
is clear from context that the consumer recognizes WATERCRAFT SUPERSTORE
as Applicant’s source indicator. We note also that several users of the forum use the
abbreviations WCSS, WCS, and Watercraft SS in the apparent expectation that
other readers will understand them as references to Applicant.
The Examining Attorney says of the evidence from PWC Today that “The
applicant’s forum appears on applicant’s website, so consumers who use the forum
know on what site they are posting ….”23 This statement is not entirely accurate
and fails to convince. Although Applicant operates and advertises on the PWC
Today website at , the site is separate from Applicant’s retail store
website at . We see nothing on the website that clearly
indicates that it is a website of Applicant, although some of the users of the website
acknowledge that Applicant “sponsors” the site or is “tied to” the website.

21 Id. at 108.
22 Id. at 126.
23 Examining Attorney’s brief, 9 TTABVUE 8.
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In order to demonstrate the weakness of Applicant’s mark and that Applicant has
not made exclusive use of its mark, the Examining Attorney points to Google search
results that include references to third parties that may be using the terms
“watercraft” and “superstore” together.24 We note the following references:
Sea-Doo Watercraft from PARCS Superstore
Personal Watercraft Products – Got Gear Superstore
Personal Watercraft Covers at Tarp & Cover Superstore
Watercraft parts – TDR and Banshee Superstore
Personal Watercraft and Jetski Superstore
Powersport Superstore WaterCraft Accessories
Aquamoto Watercraft Superstore
Evidence that third parties in an applicant's field use the same or substantially the
same wording as the alleged mark tends to indicate that the mark has not acquired
distinctiveness. In re White Jasmine LLC, 106 USPQ2d 1385, 1395 (TTAB 2013).
However, the evidence described above does not show such third-party use. The only
reference that uses the words “watercraft superstore” together is “Aquamoto
Watercraft Superstore.”25 However, this reference appears to be a long list of the
sponsors of the 2015 Daytona Freeride event,26 on which Applicant happens to be
identified immediately after the sponsor identified as “Aquamoto.” The other
references demonstrate not that others in the watercraft industry have used marks

24 Salvatore declaration, Exhibit 4, Applicant’s response of June 10, 2015 at 30-42.
25 Id. at 37.
26 Applicant’s declarant stated that Applicant has participated in the Daytona Freeride
event. Salvatore declaration ¶ 9, Applicant’s response of July 7, 2015 at 3.
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similar to Applicant’s mark, but rather that they have used different marks, such as
“PARCS Superstore,” “Got Gear Superstore,” and “Tarp & Cover Superstore.”
Accordingly, this evidence does not demonstrate that Applicant’s use of
WATERCRAFT SUPERSTORE has not been substantially exclusive.
The Examining Attorney argues that, because Applicant’s mark is so highly
descriptive, recognition of Applicant’s asserted trademark rights in the mark would
“put [A]pplicant at an unfair advantage over competitors.”27 However, the
Trademark Act and the common law contemplate that a business may fairly and
legitimately acquire rights in a descriptive term that has acquired distinctiveness
as an indicator of source. The Examining Attorney does not contend that Applicant’s
mark is generic and therefore incapable of acquiring distinctiveness for Applicant’s
services.
Applicant has shown that it has established, over the course of seven years, a
substantial business and has vigorously promoted its services under the mark
WATERCRAFT SUPERSTORE in such a way as to have created, among its
customers, an association between its mark and its services. Applicant has
demonstrated actual market recognition of its mark as a source-indicator with
evidence of spontaneous comments of relevant customers and potential customers.
We note that the large amount of public commentary offered by Applicant appears
to be devoid of examples suggesting that customers would spontaneously refer to
the stores of others as “watercraft superstores.” The evidence submitted by the

27 Examining Attorney’s brief, 9 TTABVUE 7.
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Examining Attorney does not show such uses by the relevant public; nor does it
show third-party merchants using “watercraft superstore” to identify or describe
their services. In any ex parte proceeding we do not have the benefit of the types of
information about the marketplace that could be presented by an interested third
party. However, on this record, Applicant has demonstrated that it has developed
the type of good will in its mark and business that, under appropriate
circumstances, is protectable under the trademark laws. We find, therefore, that
Applicant’s mark WATERCRAFT SUPERSTORE has become distinctive of
Applicant’s services within the meaning of Section 2(f) and is accordingly entitled to
registration on the Principal Register.
Decision: The refusal to register Applicant’s mark is REVERSED.