In recently reviewing a batch of new trade mark decisions, Socrates came to mind as this Kat encountered a result that he has seen numerous times. An application is filed, the examiner issues her report, questioning distinctiveness, but stating that the mark will be approved for publication if the applicant can prove acquired distinctiveness (or, in US parlance, secondary meaning). The applicant then files evidence of acquired distinctiveness (he may or may not also address the issue of inherent distinctiveness). The examiner reviews the file and proceeds to decide the issue. More particularly, the examiner decides that the evidence is sufficient to establish that the mark has acquired sufficient distinctiveness to be deemed registrable, pending publication and the outcome of any opposition that may be filed. The examiner goes on to state explicitly that she will not rule on whether the mark is inherently distinctive.
All that is well and good, "a jolly good job by counsel for the applicant", this Kat said to himself. And then—this Kat's Socrates moment. What exactly does it mean for the examiner to choose not to decide conclusively the issue of inherent distinctiveness but rather to rule solely on the sufficiency of the evidence in support of acquired distinctiveness? After all, the situation raised by the examiner's decision is not identical to the circumstance in which the adjudicator has before him two alternative grounds upon which to make a decision whereby, if ground no. 1 is found to be sufficient, then there is no need to rule on ground no. 2—the matter has been decided. Perhaps saying "there is no need" goes too far, because should ground no. 1 be overturned on appeal without judgment having been given on ground no. 2, the matter will presumably be sent back to the adjudicator of first instance to rule on ground no. 2. That may be true, but it does not change the basic situation that the two alternative grounds are independent. Each of them can stand on its own, without any consideration needed to consider the other ground and without the result given in respect of one ground affecting any decision rendered with respect to the other.
But what happens if the mark in question is inherently distinctive? In that situation, what exactly is the force of the evidence that has been adduced to show that the mark has acquired distinctiveness? After all, if the mark is inherently distinctive, it would seem that evidence of acquired distinctiveness has no meaning. This is because the issue to be proved--distinctiveness, has already been established on other grounds, namely the adjudicator has ruled that the mark is inherently distinctive. Accordingly, the underlying question to which the evidence is directed, namely that the mark, having been descriptive ab initio, has subsequently "acquired" distinctiveness by virtue of "use" by the applicant or his licensee, is inapplicable. Stated otherwise, the evidence is directed to a legal question that does not exist.
The problem with the decision described above is that we do not know which circumstance applies with respect to inherent distinctiveness. As such, we are not in a position to determine conclusively whether the adduced evidence is of legal effect regarding the question of distinctiveness. In such a case, it seems to this Kat that the claims of inherent distinctiveness and acquired distinctiveness do not function as alternative grounds for reaching a decision. If this be true, it is incumbent on the examiner (or any other adjudicator) in such a situation to first rule on the question of inherent distinctiveness. If she finds that there is no inherent distinctiveness, the force of the evidence regarding acquired distinctiveness is clear. If, however, she finds that the mark is inherently distinctive, she should preface her ruling on acquired distinctiveness with a statement that the findings regarding acquired distinctiveness are being given only should the mark be found not inherently distinctive. Whatever the correct treatment of the question of inherent distinctiveness, the examiner or other adjudicator cannot simply ignore the question of inherent distinctiveness in such circumstances and rule solely on the issue of acquired distinctiveness.
One final word—even if Kat readers disagree with this Kat's thoughts above, please don't pass the hemlock in his direction.
More on quotes from Socrates, here.