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IN THE UNITED
STATES PATENT AND TRADEMARK OFFICE
EXAMINING ATTORNEY’S APPEAL BRIEF Introduction Grounds
for Refusal Registration was refused by the previous examining attorney on two grounds. First, registration was refused based on §2(e)(1) of the Act; the proposed mark is merely descriptive of the goods on which the mark is used. Second, the mark was refused based upon §2(d) of the Act; i.e., use of the mark on luggage and related goods is likely to cause confusion with Registration No. 1,784,138. The
Identification of Goods There has been confusion throughout the prosecution of this application concerning the identification of goods. This confusion stems from applicant’s response to Office Action No. 2, filed February 23, 1996. In this response, applicant requested the identification of goods be amended as follows: “Please amend the identification to: textile fabric sold as a component part of tote bags, garment bags for travel and luggage. Please amend the identification of finished goods to: tote bags, garment bags for travel and luggage.” Office Action No. 2, filed February 23, 1996, p. 1. Obviously, there are two contradictory requests to amend the identification and it is therefore, unclear which identification of goods should be operative. However, the Office had picked up and entered into the data base the first identification of goods listed. It is clear from reading applicant’s responses and argument in his appeal brief that his intention was that the application be amended to reflect second identification of goods, i.e., “tote bags, garment bags for travel and luggage.” As will be discussed in the following sections, applicant’s mark must be refused registration on the two aforementioned grounds notwithstanding which of the two identifications of goods applicant ultimately adopts; whether applicant uses “BALLISTIC NYLON” on finished goods, or only to identify a component of those goods, the mark is descriptive, and likely to cause confusion with the cited mark.[1] ISSUES ON APPEAL I. Whether the term “BALLISTIC NYLON” is merely descriptive when used in connection with tote bags, garment bags for travel and luggage, or in connection with a fabric component of these goods. II. Whether the term “BALLISTIC NYLON” when used in connection with tote bags, garment bags for travel and luggage, or in connection with a fabric component of these goods, is likely to cause confusion with the Registered Mark “BALLISTIC LITE” in use on Luggage. ARGUMENT I THE TERM “BALLISTIC NYLON” IS THE NAME OF A TYPE OF FABRIC, AND IS THEREFORE, MERELY DESCRIPTIVE OF GOODS MADE FROM THE FABRIC The Test For Decriptiveness: A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. 1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP section 1209.01(b). A term that describes a characteristic, or feature of a product is considered merely descriptive of the product itself. See: In re Reckitt & Coleman, North America, Inc., 18 USPQ2d 1389 (TTAB 1991) (“PERMA-PRESS” used on clothing is generic for the clothing); Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75, 80, 195 USPQ 281, 285 (7th Cir. 1977), cert. denied, 434 U.S. 1025, 196 USPQ 592 (1978). (“LITE” is a generic term for beer).[2] The evidence of record indicates that “ballistic nylon” is a common descriptive term for a particular type of fabric that is used in the manufacture of luggage. See previous examining attorney’s evidence mailed August 7, 1996, and November 5, 1996. See also the evidence accompanying the final Office Action of June 3, 1997 from several luggage manufactures which shows that the term “ballistic nylon” is used in the industry as the generic name for a type of fabric which is commonly used in the manufacture of luggage.[3] Applicant is attempting to register the term “BALLISTIC NYLON” for use on tote bags, garment bags for travel and luggage.[4] The specimens of record clearly show that applicant’s goods are made of ballistic nylon. “BALLISTIC NYLON” therefore, describes a characteristic or feature of applicant’s goods. And, as such, the proposed mark is merely descriptive in relation to the goods, whether the goods are the finished luggage items, or a component of those goods. In fact, applicant himself uses “BALLISTIC NYLON” in a generic manner on his own goods. The specimen of record consisting of a tag bearing the term “DIPLOMAT BENTLEY” touts the features of the piece of luggage: 0815 BLACK HEAVY DUTY WATERPROOF BALLISTIC NYLON EXPANDABLE CAPACITY LARGE ORGANIZER POCKET KEY KEEPER LEATHER CARRY HANDLE PADDED SHOULDER STRAP LARGE FRONT POCKET LARGE REAR POCKET SELF HEALING NYLON ZIPPER 15 1/2” X 12” X 5” Note that each line names a generic feature or characteristic of the piece of luggage and that “BALLISTIC NYLON” is among them. Also, the same is true for the three-fold tag for the “Portofino Collection” bearing the name “Travel-Wear, Inc.” and a smiling porter on its front, which uses “BALLISTIC NYLON” in a generic manner on the first inside page: ¶Ballistic Nylon ¶Top Grain Leather. ¶Heavy Nylon Zipper. Guaranteed Durability Again, “BALLISTIC NYLON” is used by the applicant in the same type style and font as he uses other generic terms “top grain leather,” and “heavy nylon zipper.” This does nothing more than reinforce the generic meaning of the term to potential purchasers. Thus, on the only two acceptable specimens of record, applicant himself uses “BALLISTIC NYLON” merely as generic term indicating the material composition of the goods.[5] Suffice it to say that is basic trademark law that a term which is descriptive of, or generic for, an attribute, component, ingredient, or any characteristic of the goods on which the proposed mark is used, is descriptive or generic for the goods themselves. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); Miller Brewing Co. v. Heilman Brewing Co. 195 USPQ 281 (7th Cir. 1977) cert. den. 434 U.S. 1025 (1978); TMEP section 1209.01(b). As such, the proposed mark must be refused based upon §2(e)(1) of the Act. Applicant’s Arguments: Applicant argues that the previous examining attorney had “accepted” an amendment to the identification of goods i.e. “tote bags, garment bags for travel and luggage,” and that this “acceptance” meant that the refusal of record based upon §2(e)(1) was obviated. This is a misunderstanding on the part of applicant. This wording was accepted by the previous examining attorney for purposes of ensuring that a properly worded identification of goods was of record pursuant to TMEP §804, but the acceptance of the manner in which the identification of goods was worded in no way indicated that any statutory refusal of record had been withdrawn. None of the decisions of the prior examining attorney have been ignored or changed. Applicant argues that the Lexis/Nexis® articles, and the catalog evidence from other luggage manufacturers retrieved from the world wide web are not competent in that they show only examples of the media and other manufacturers misusing applicant’s trademark. It is the position of the Office that these articles show common descriptive usage of the term, and indicate how the general public views the term. In re Omaha National Corp., 1 USPQ2d 1859 (Fed. Cir. 1987); In re National Data Corp., 222 USPQ 515 (TTAB 1984). Applicant’s reliance on Books on Tape v. The Booktape Corp., 5 USPQ2d 1301 (CAFC 1987) is misplaced as that decision was first, based on an allegation that the mark in question was generic (as opposed to merely descriptive, as in this case) and should be Canceled. Far from finding the mark “...simply not descriptive and thus is a strong mark,”[6] the Court only found the mark not generic, a far cry from not descriptive and strong. Second, the case was primarily a procedural determination as to whether or not the petitioner in the cancellation proceeding had standing to bring the proceeding. While it is true that applicant cannot control the media’s use of the term “ballistic nylon,” applicant can control its own use of the mark, and even applicant uses the “ballistic nylon” as a generic designator as has been discussed above. But the media’s use of a term is evidence of the meaning of that term as understood by its readers. Dan Robbins & Associates, Inc. v, Questor Corp., 202 USPQ 100 (CCPA 1979). One Circuit Court refers to newspaper and magazine usage of a term as a “strong indication of the general public’s perception” of the meaning of the term. Murphy Door Bed Co. v. Interior Sleep Systems, Inc., 10 USPQ2d 1748 (2d Cir. 1989). Finally, with respect to applicant’s arguments regarding the media’s generic usage of other registered marks, merely because registered marks of third parties may be misused by the media has no impact on this application as each case must be decided on its own merits. In re Scholastic Testing Service, Inc., 196 USPQ 517 (TTAB 1977). Applicant argues that it is originator of the term “BALLISTIC NYLON,” and is therefore, entitled to register the term as a trademark. The fact that an applicant may be the first or even the only user of a merely descriptive or generic designation does not justify registration if the only significance projected by the term is merely descriptive. See: In re National Shooting Sports Foundation, Inc., 219 USPQ 1018 (TTAB 1983) (SHOOTING, HUNTING, OUTDOOR TRADE SHOW AND CONFERENCE held apt descriptive name for conducting and arranging trade shows in the hunting, shooting and outdoor sports products field). The evidence of record shows the term to be understood as the generic name for a type of fabric by the industry as well as by luggage consumers. Applicant argues that because the term “ballistic nylon” does not appear in a textile encyclopedia, this somehow is proof that the mark is not descriptive or generic of the fabric. The fact that a term is not found in an encyclopedia is not controlling on the question of registrability where the examining attorney can show that the term has a well understood and recognized meaning. See In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) (SCREENWIPE held generic for premoistened antistatic cloths for cleaning computer and television screens); In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB 1977) (BREADSPRED held merely descriptive of jellies and jams). In re Pharmaceutical Innovations, Inc., 217 USPQ 365 (TTAB 1983). Perhaps the term is too new to appear in the dictionaries offered by applicant. Here, the record clearly shows that not only is “ballistic nylon” understood in the trade as a generic term for a type of fabric commonly used in the manufacture of luggage, but that this is understood by consumers of luggage as well since the manufacturers tout the fact that their goods are made from ballistic nylon. Manufacturers would be unlikely to do this if they believed consumers were unaware of the meaning of the term. Applicant cites case law in which marks composed of descriptive elements were found not to be descriptive because the combination of the terms resulted in a unitary expression. For example, applicant points out that the mark “SUGAR AND SPICE” was found not to be descriptive of bakery products despite the fact that each of the individual components of the mark was descriptive of the ingredients of the bakery products. This is so because “SUGAR AND SPICE” is a unitary expression that evokes fond childhood memories of a favorite nursery rhyme. It is likely the result would be different had the mark been say, “POTASSIUM BROMIDE AND BHT,” also ingredients in bakery products, but lacking the connotation, nuance, and double entendre of “sugar and spice.” Applicant has provided no evidence that the term “BALLISTIC NYLON” means anything other than “ballistic nylon,” a type of fabric used in the manufacture of luggage, pistol cases and other goods. Applicant provides a listing of third party registrations for marks containing the word “ballistic,” and others containing the word “nylon.” First, the registrations were not properly made of record and should not be considered. In re Duofold Inc., 184 USPQ 638 (TTAB 1974). Second, third‑party registrations are not conclusive on the question of descriptiveness. The examining attorney must consider each case on its own merits. A mark that is merely descriptive is not registerable merely because other similar marks appear on the register. In re Scholastic Testing Service, Inc., 196 USPQ 517 (TTAB 1977). But third, and more important, the listing is irrelevant. The refusal is based on the fact that “ballistic nylon,” the unitary term, is descriptive of applicant’s goods. That is, “ballistic nylon” has a very specific meaning that relates directly to applicant’s goods, a meaning which “ballistic” alone does not have. Based upon the foregoing, the proposed mark “BALLISTIC NYLON” must be refused registration pursuant to §2(e)(1) of the Act. II CONTEMPORANEOUS USE OF “BALLISTIC NYLON” AND “BALLISTIC LITE” ON LUGGAGE AND RELATED PRODUCTS, ARE LIKELY TO CAUSE CONFUSION IN THE MARKETPLACE Likelihood of Confusion Registration was also refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 1,784,138 as to be likely, when used on the identified goods, to cause confusion, or to cause mistake, or to deceive. The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion. First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Second, the examining attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely. In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978). Comparing the Marks: The examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977). When the applicant's mark is compared to a registered mark, "the points of similarity are of greater importance than the points of difference." Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 USPQ 517 (1956). The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison. The issue is whether the marks create the same overall impression. Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980). The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks. Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP section 1207.01(b). Here, the marks are considered related in that they both share the common term “ballistic.” Applicant’s proposed mark adds to “ballistic” the generic term “nylon,” Registrant’s mark adds to “ballistic” the descriptive term “lite.” In both marks, the additional term has been disclaimed. While the examining attorney cannot ignore a disclaimed portion of a mark and must view marks in their entireties, one feature of a mark may be more significant in creating a commercial impression. Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976); In re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986). Disclaimed matter is typically less significant or less dominant. Here, the dominant portion of the mark is clearly the word “ballistic.” The dominant portions of the marks are therefore, similar in all three areas of comparison. Comparing the Goods: The goods of both parties are essentially the same; both marks are used on luggage and related products.[7] Applicant does not argue the relatedness of the goods. If the goods or services of the respective parties are closely related, the degree of similarity between marks required to support a finding of likelihood of confusion is not as great as would apply with diverse goods or services. ECI Division of E Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980). Thus, the marks are similar and the goods related so it would appear that a refusal based on §2(d) of the act is appropriate. Applicant’s Arguments: Applicant argues that consumers of luggage are “specialized and discriminating.” Applicant has provided no evidence at all on this issue, however, even assuming arguendo that this might be true, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. See In re Decombe, 9 USPQ2d 1812 (TTAB 1988); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983). Applicant argues on pages VI and VII of its appeal brief that the term which the two marks have in common, “BALLISTIC,” is very descriptive, and should be excluded from the comparison between the marks, whereas, the disclaimed terms, “NYLON” and “LITE” art the terms which “create the source identifier.” Applicant’s Brief, page VI. This admission of descriptiveness of “ballistic” is interesting considering the arguments of the preceding section however, it is the position of the Office, based on evidence of record, that “nylon” is the generic name of a type of fabric, (applicant’s exhibit 10) and that “lite” means “lightweight” (applicant’s appeal brief, page V1). Therefore, it is the common term “BALLISTIC” which is the dominant portion of both marks. Applicant cites Keebler Co. v. Murray Bakery Products, 9 USPQ2d 1736 (C.A.F.C. 1989)[8] arguing that in that case, both marks shared a common term (“pecan”), and that confusion was not found between “SHORTIES” and “SANDIES.” The difference between the cited case and the present situation is of course, that in that in the cited case, the common term (“pecan”) is descriptive of pecan cookies and the remaining terms (“SHORTIES” and “SANDIES”) are not. In the present case the situation is reversed. The shared term, “ballistic” alone is not descriptive.[9] The remaining terms “nylon” and “lite” are generic or descriptive, and therefore of little or no trademark significance. Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976); In re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986). Finally applicant refers back to the third party registrations improperly made of record with respect to the discussion of descriptiveness. Even if these registrations were to be considered, third‑party registrations, by themselves, are entitled to little weight on the question of likelihood of confusion. In re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983). Third‑party registrations are not evidence of what happens in the marketplace or that the public is familiar with the use of those marks. National Aeronautics and Space Administration v. Record Chemical Co., 185 USPQ 563 (TTAB 1975). Further, none of the third party “BALLISTIC” registrations are in use on goods in any way related to luggage or related goods. Confusion as to source being likely, applicant’s mark must be refused under Section 2(d) of the Act. CONCLUSION Accordingly, the refusals of record based upon Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), and Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1) should be affirmed. Respectfully submitted,
Ronald R. Sussman Senior Trademark Attorney Law Office 108 (703) 308-9108 ext. 175 David Shallant Managing Attorney Law
Office 108 [1] Should both of the refusals of record be reversed by the Trademark Trial and Appeal Board , the examining attorney will update the Office’s records such that they reflect the proper identification of goods before the mark is sent on to Publication. [2] Although the cases cited find the terms in question to be generic, these cases are appropriate in that "The generic name of a thing is in fact the ultimate in descriptiveness." H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986). [3] Some of this evidence is taken from the world wide web. The top right corner of each page displays the URL of the web-site from which the evidence was retrieved. The applicant therefore, has every opportunity to check the site for himself, just as he would have with other forms of computerized research. Further, The Trademark Trial and Appeal Board has held that materials obtained through computerized text searching are competent evidence to show the descriptive use of terms under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1). In re National Data Corp., 222 USPQ 515, 517 n.3 (TTAB 1984). [4] Were applicant to amend the identification of goods to “textile fabric sold as a component part of tote bags, garment bags for travel and luggage,” the refusal would be at least as appropriate, if not more so, in that the applied for mark “BALLISTIC NYLON” would then be identifying the thing itself i.e., the fabric, rather than goods made from the fabric. [5] The remaining specimen, a copy of what appears to be the contents page of a catalog of applicant’s goods would not be acceptable as evidence of actual trademark use. In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); Lands' End Inc. v. Manbeck, 24 USPQ2d 1314 (E.D. Va. 1992), rev'g In re Lands' End Inc., 21 USPQ2d 1148 (TTAB 1991); TMEP sections 905.05 and 905.07. See also: In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984). [6] Applicant’s appeal brief, page IV. [7] The analysis would be the same it applicant used the mark on a fabric component of luggage, In re Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978) as usage of the mark would still be on the finished goods. TMEP §804.08(b). [8] cited as “PECAN SANDIES V. PECAN SHORTIES” by applicant. Applicant’s appeal brief, last page. [9] The evidence of record shows only that the combined term “ballistic nylon” is the generic or descriptive name for a type of fabric, not “ballistic” alone. |