Corporate Counsel Daily, ‘iVoters’ and related mark for online political information services survive opposition challenge, (Apr 9, 2025)

By Saurabh Kashyap, B.A., LL.B., LL.M.

TTAB correctly found opposer’s mark highly descriptive, unsupported by sufficient evidence of acquired distinctiveness and ineligible for protection.

The U.S. Court of Appeals for the Federal Circuit affirmed a Trademark Trial and Appeal Board(TTAB) decision dismissing an opposition filed by Heritage Alliance and AFA Action, Inc. against American Policy Roundtable’s (APR) application for registration of the marks “iVoters” and “iVoters.com” (both standard characters) for online political information services under International Class 35. The Federal Circuit found that while Heritage established priority of use, it failed to show that its own “iVoterGuide” and “iVoterGuide.com” marks were distinctive or had acquired distinctiveness under §2(d) of the Lanham Act. The court also upheld the Board’s finding that APR had effectively conceded a likelihood of confusion, but concluded that Heritage could not block registration without demonstrating protectable rights in its prior marks (Heritage Alliance v. American Policy Roundtable, No. 24-1155 (Fed. Cir. Apr. 9, 2025)).

Background. The appellants are nonprofit organizations that provide online voter guides under the names “iVoterGuide” and “iVoterGuide.com.” These marks were used in connection with online tools that compare candidates’ positions and policy records and had been in use since at least the 2008 Presidential election cycle. A similar mark was once registered in 2016 but was later cancelled for failure to maintain it. At issue in the appeal were only the common-law rights asserted by Heritage.

The appellee is another nonprofit organization engaged in political education and advocacy. On January 22, 2019, APR applied to register the marks “iVoters” and “iVoters.com” for use in connection with a website providing information on public policy and political campaigns. Heritage timely opposed the registration under 15 U.S.C. §1052(d), claiming it had priority in the “iVoterGuide” marks and that the applied-for marks were likely to cause confusion.

The Board found that APR began using its marks only in 2019 and that Heritage had established prior use. APR did not contest likelihood of confusion. However, the Board dismissed the opposition after finding that Heritage’s marks were not protectable: the marks were highly descriptive and had not acquired distinctiveness by the relevant date. Heritage appealed the dismissal under 15 U.S.C. §1071(a)(1).

Descriptiveness of the iVoterGuide marks. The Federal Circuit agreed with the TTAB’s conclusion that “iVoterGuide” and “iVoterGuide.com” are highly descriptive marks. The Board found that the term, as a whole, directly and immediately conveyed the nature of the service—providing a voter guide online. The court affirmed that “i” would be commonly understood to refer to the Internet, while “VoterGuide” directly described the product. The ".com" suffix, under established Board precedent, added no source-identifying meaning. Reviewing the mark in its entirety, the Board found—and the court affirmed—that it conveyed no distinctive source-indicating impression.

The court emphasized that descriptiveness is a question of fact and that the Board’s conclusion was supported by substantial evidence, including admissions in Heritage’s own filings and testimony. Citing Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965 (Fed. Cir. 2018), the court held that the marks fell on the “highly descriptive” end of the spectrum, requiring a heightened showing of acquired distinctiveness to support protectability.

No acquired distinctiveness. Heritage contended that even if the marks were descriptive, they had acquired distinctiveness through continuous use over more than five years, public recognition, and volunteer declarations. The court rejected this argument.

Heritage relied primarily on the length of use and declarations from three individuals who had served as volunteers and self-identified as end users. The court held that under 15 U.S.C. §1052(f), continuous and exclusive use for five years may serve as prima facie evidence of acquired distinctiveness—but that the Board was not required to accept it, especially where the mark is highly descriptive.

Citing 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 court held that acquired distinctiveness requires more than duration of use. The Board was entitled to discount the declarations as conclusory, identical in form, and offered by non-random participants with limited insight into the marketplace. Heritage also failed to produce evidence on other relevant factors such as advertising expenditures, consumer surveys, market share, or unsolicited media attention.

The court thus affirmed the Board’s conclusion that Heritage had failed to meet its burden to prove acquired distinctiveness by a preponderance of the evidence.

APR’s concession and limitations of ruling. The court acknowledged that APR had “effectively conceded” the issue of likelihood of confusion by failing to brief it before the Board. But the court reiterated that an opposer under §2(d) must show not only priority of use but also protectable rights in the mark, and in this case, Heritage’s failure to demonstrate distinctiveness meant it could not block APR’s registration—even if confusion was presumed.

In a final observation, the court noted that while the opposition failed, questions remained about whether APR’s applied-for marks were themselves too descriptive to merit registration under §2(e) of the Lanham Act. The court observed that §1063(b) allows registration only where the mark is entitled to registration and that the PTO may still reconsider the application or it may be subject to cancellation under §1064. However, those issues were not before the court and were left open.

The Case is No. 24-1155.

Judge: Prost, S.

Attorneys: Joshua Jones (Dickinson Wright PLLC) for Heritage Alliance and AFA Action, Inc. Robert J. Basil (Basil Law Group, PC) for The American Policy Roundtable.

Companies: Heritage Alliance; AFA Action, Inc.; The American Policy Roundtable

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