## Facts

- Hoshino Gakki Co., Ltd., a guitar manufacturer using the “IBANEZ” brand, filed two trademark applications (1979) to register two guitar peg-head configurations (one electric, one acoustic) as trademarks.
- In 1984, Hoshino amended both applications to seek registration based on acquired distinctiveness (secondary meaning) under Lanham Act § 2(f).
- After publication, Yamaha International Corporation, a competing guitar manufacturer, filed two substantially identical notices of opposition, alleging the designs had not become distinctive of Hoshino’s goods under § 2(f).
- The Trademark Trial and Appeal Board (TTAB) consolidated the oppositions, rejected Yamaha’s evidentiary objections to Hoshino’s proof, and dismissed the oppositions.
- The TTAB concluded that Yamaha failed to make a prima facie showing that the designs lacked acquired distinctiveness and that Hoshino’s evidence supported registrability.
- Yamaha appealed, arguing the TTAB misallocated the burden of proof and that Hoshino’s evidence was insufficient to establish acquired distinctiveness.

## Issues

1. In an opposition to a trademark application seeking registration under Lanham Act § 2(f), who bears the ultimate burden of proving acquired distinctiveness, and what is the opposer’s evidentiary burden?
2. Did the TTAB err in its burden analysis and in finding that Hoshino proved acquired distinctiveness while Yamaha failed to rebut that showing?

## Decision

- The Federal Circuit affirmed the TTAB’s dismissal of Yamaha’s oppositions.
- The court held that the applicant bears the ultimate burden of proving acquired distinctiveness under § 2(f) by a preponderance of the evidence.
- The opposer bears an initial burden of production to come forward with a prima facie case that the proposed mark has not acquired distinctiveness; this does not shift the ultimate burden of persuasion from the applicant.
- The court concluded the TTAB did not improperly shift the ultimate burden to Yamaha and that substantial evidence supported the TTAB’s finding that Hoshino’s peg-head designs had acquired distinctiveness.

## Legal Principles

- In proceedings involving registration based on acquired distinctiveness under Lanham Act § 2(f), the applicant retains the ultimate burden of persuasion to prove secondary meaning by a preponderance of the evidence.
- An opposer has a burden of production to present sufficient contrary matter to place acquired distinctiveness in genuine dispute, but the opposer is not required to prove the “negative” as the ultimate issue.
- Acquired distinctiveness may be shown through evidence such as length and scope of use, advertising and promotion, sales success, and marketplace recognition connecting the design to a single source.

## Conclusion

The Federal Circuit upheld dismissal of the oppositions, clarifying that an applicant seeking registration under § 2(f) must ultimately prove acquired distinctiveness, while an opposer’s role is to produce enough contrary evidence to contest distinctiveness; on this record, Hoshino satisfied its burden and Yamaha’s rebuttal was insufficient.


Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572 (Fed. Cir. 1988)