In determining who has priority of use for superior trademark rights as a senior user, “even though something is used as a trademark, if it is not distinctive, the [earlier] user does not have a trademark because he has no existing trademark rights.” Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 1321 (CCPA 1981) (emphasis omitted); 15 U.S.C. § 1052(d) (providing for refusal of registration of a mark if it “so resembles . . . a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive”). Where the earlier-used marks were not themselves protectable as trademarks before the subsequent junior user's date of first use, so they would lack cognizable priority. 

Thus, if the senior user fails to prove acquired distinctiveness of its otherwise descriptive trademark, then it would not defeat the registration of a subseqent trademark adopted by a junior user. That is what happened in Heritage Alliance v. The American Policy Roundtable, No. 2024-1155, __ F.4th __ (Fed. Cir. April 9, 2025), where Heritage Alliance opposed registration of the marks “iVoters” and “iVoters.com” by American Policy Roundtable ("APR") for "Providing a web site of information on current public policy issues, political campaigns and citizen concerns related to political issues" on the ground that APR's proposed marks would likely be confused with Heritage's common-law marks “iVoterGuide” and “iVoterGuide.com” for online voter guides since 2008. 

APR alleged a June 2010 start date, but the Board found that APR had no evidence of use before 2019. On January 22, 2019, APR filed applications to register the marks “iVoters” (Serial No. 88271491) and “iVoters.com” (Serial No. 88271486) (collectively, iVoters marks),  

Notwithstanding Heritage's earlier date of first use of “iVoterGuide” and “iVoterGuide.com” in 2008, the Board determined that “i” stood for Internet, “VoterGuide” was highly descriptive of the service, “.com” had “no source-identifying significance,” and the combination did not convey “any distinctive source-identifying impression.” See, e.g., In re Zanova, Inc., 2001 WL 460111, at *6 (TTAB 2001) (finding that the “I” in “ITOOL” means Internet); RxD Media, LLC v. IP Application Development LLC, 2018 WL 1027859, at *13 (TTAB 2018) (finding the “I” prefix means “Internet-enabled or accessible”). The Board also found that Heritage's proffered evidence regarding the length of time Heritage had used the marks and declarations from three of Heritage's volunteers—but found the evidence insufficient to show acquired distinctiveness of the marks. Acquired distinctiveness is more difficult to establish for a highly descriptive term. Royal Crown Co. v. CocaCola Co., 892 F.3d 1358, 1368–69 (Fed. Cir. 2018); In re Louisiana Fish Fry Products, Ltd., 797 F.3d 1332, 1336 (Fed. Cir. 2015); In re Steelbuilding.com, 415 F.3d 1293, 1300 (Fed. Cir. 2005); In re Bongrain International (American) Corp., 894 F.2d 1316, 1317 n.4 (Fed. Cir. 1990). 

The Trademark Trial and Appeal Board ("Board") found that Heritage's prior-use marks were not themselves protectable, reasoning that Heritage's “iVoterGuide” and “iVoterGuide.com” marks were highly descriptive and had not acquired distinctiveness, and Heritage's opposition was dismissed. 

On appeal, the Court found that, beyond conveying a characteristic of the product or service, the “iVoterGuide” marks are such that the whole of the marks directly and immediately conveys the whole of the product—provision of a voter guide on the Internet—which was sufficient to support finding the marks to be highly descriptive. See Real Foods Pty Ltd. v. Frito-Lay North America, Inc., 906 F.3d 965, 973–77 (Fed. Cir. 2018) (affirming findings that the marks “corn thins” and “rice thins” were highly descriptive of their associated products); see also In re Hikari Sales USA, Inc., 2019 WL 1453259, at *17 (TTAB 2019) (“In this case, we find that the designation ‘Algae Wafers' is highly descriptive of fish food. The record establishes that the wording directly and immediately identifies significant features of the goods without requiring thought or imagination to discern the nature of the goods.”). 

     Even when the parts of a mark individually “are merely descriptive” of the product, the Board must “determine whether the mark as a whole, i.e., the combination of the individual parts, conveys any distinctive source-identifying impression contrary to the descriptiveness of the individual parts.” Oppedahl & Larson, 373 F.3d at 1174–75 (citing In re National Data Corp., 753 F.2d 1056, 1058 (Fed. Cir. 1985)). But consideration of a mark in its entirety “does not preclude consideration of components of a mark; it merely requires heeding the common-sense fact that the message of a whole phrase may well not be adequately captured by a dissection and recombination.” Juice Generation, Inc. v. GS Enterprises LLC, 794 F.3d 1334, 1340–41 (Fed. Cir. 2015). Thus, in evaluating an asserted mark's descriptiveness, “the Board may weigh the individual components of the mark to determine the overall impression or the descriptiveness of the mark and its various components.” Oppedahl & Larson, 373 F.3d at 1174 (citing National Data Corp., 753 F.2d at 1058). And “[e]vidence that a term is merely descriptive to the relevant purchasing public ‘may be obtained from any competent source, such as dictionaries, newspapers, or surveys.'” Bayer Aktiengesellschaft, 488 F.3d at 964 (quoting In re Bed & Breakfast Registry, 791 F.2d 157, 160 (Fed. Cir. 1986)).

The Court further held that it was within the Board's discretion to find that Heritage's five-year-prior-use evidence was insufficient to "prima facie" establish acquired distinctiveness given the highly descriptive nature of Heritage's marks. The Court also held that Board was entitled to give little weight to three declarations from alleged "end customers" that were “all essentially identical in form” with no explanation for the asserted belief that the marks were distinctive. Moreover, the declarants were not random consumers but were volunteers used by Heritage to help evaluate candidates so they could be graded regarding their positions on the issues. Furthermore, "there was no record evidence of the size and nature of the customer base that would allow an inference that the declarations “meaningfully reflect consumer perception of [Heritage's] purported marks in the marketplace.” (citation omitted). Thus, the Court affirmed the decision of the Board.