June 13, 2016
Generally, proving secondary meaning of a trademark in order to overcome a descriptiveness refusal is notoriously difficult. A trademark owner usually has to present a voluminous amount of evidence of continuous use, and sometimes may need to present costly and time-consuming market and consumer surveys. However, in a decision issued by the Bureau of Legal Affairs, Nestle was able to successfully prove secondary meaning with a minimal amount of evidence.
The case stems from an application for the mark “SUPER CHOW” filed by a local Philippine company for use on “dog food” under Class 31. Nestle opposed the application arguing that “SUPER CHOW” is confusingly similar to its registered mark “CHOW” also used in connection with animal food products. In its Answer, the applicant alleges, among other things, that what it seeks to register is the phrase “SUPER” and “CHOW” together, not individually as it had disclaimed both words in the application. It further asserts that it does not seek to appropriate the word “CHOW” alone and that its application readily shows that apart from “SUPER CHOW”, a substantial part of its mark is the designs for the caped dog and two paw prints. The applicant, therefore, concluded that the applied mark is not confusingly similar to Nestle’s “CHOW” trademark.