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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
EXAMINING ATTORNEY’S APPEAL BRIEF INTRODUCTION Preliminarily, it should be noted that that the case has been reassigned to the undersigned examining attorney. The applicant has appealed the examining attorney's final refusal to register based upon Sections 1, 2, 3, and 45 of the Trademark Act; 15 U.S.C. 1051, 1052. 1053, and 1127. The applicant's proposed mark is a miscellaneous design ("grid design") which is used in connection with "mail order services for vitamin and mineral supplements, cosmetics, jewelry, wallets, housewares, kitchen accessories, health aids, cleaning accessories." Registration was refused based upon the aforementioned sections of the Act because as used on the specimens of record, the material submitted for Registration does not function as a service mark; i.e. the material submitted for Registration is not inherently distinctive as a service mark, and would not be perceived by the relevant purchasing public as an indicator of the source of the service without being in some way educated to do so. Applicant has submitted evidence that it argues supports a claim of acquired distinctiveness of the grid design as a mark. It is and has been the position of the Office that this evidence does not in fact prove that the grid design has become recognizable as a service mark by the relevant purchasing public. Following a final refusal based upon the aforementioned grounds, and a reiteration that the evidence of acquired distinctiveness was insufficient to obviate the refusal, the applicant filed a notice of appeal and a Request for Reconsideration.[1] The previous examining attorney denied the Request, and this appeal followed. Applicant also filed, and the Board granted, a Motion to consolidate its appeal of the examining attorney’s refusal to register SN 74-380556 and 74-380556. ISSUES ON APPEAL I Whether applicant’s grid design functions as a service mark. II Whether the evidence of record establishes that the mark has acquired distinctiveness as a service mark. ARGUMENT I AS USED ON THE
SPECIMENS OF RECORD, THE PROPOSED MARK FAILS TO FUNCTION AS A SERVICE MARK. FAILURE TO FUNCTION AS A MARK A service mark is “any word, name, symbol or device or any combination thereof ... used by a person ... to identify and distinguish the services of one person ... from the services of others and to indicate the services, even if that source is unknown.” Trademark Act Section 45; 15 U.S.C. 1127. Not everything that appears on advertising for a service functions as a service mark. To be a mark, the symbol, word, device or name must be used in a manner calculated to project to purchasers or potential purchasers a single source or origin for the service in question. In re Morganroth, 208 USPQ 284 (TTAB 1980). A critical element in determining whether a word, name, symbol or device is a mark is the impression the term makes on the relevant public. In re Remington Products, Inc. 3 USPQ2d 1714 (TTAB 1987). The proposed marks are reproduced below: Whether a proposed mark functions as a mark must be evaluated in light of the use of the proposed mark on the specimens of record. Morganroth, supra. In this case, the specimens of record reveal that in use, the areas within the grids contain information regarding the price and availability of a particular vitamin, mineral, or other nutritional food supplements. There is, in each area of the grid an indication that this price will expire at some time in the future. Above the grid, in every example contained in the record, are the words “LIMIT ONE OF ANY SIZE PER COUPON BELOW.” All of this taken together would lead anyone to believe that these areas within the grids are coupons, since that is how applicant itself refers to them. The dotted lines of the grid design therefore, serve to delineate the different coupons one from another, and as the previous examining attorney has pointed out, serve as helpful cutting guides for those inclined to clip the coupons from the publication in which they are contained. With respect to SN 74-380932, the proposed mark also contains a box on the upper left of the grid design containing the disclaimed word “FREE.” In use, as shown by the specimens of record, this box area contains a description and picture of some product that will be given to a customer for free should the customer order nutritional food supplements from the applicant, and pay a handling charge for the free gift. For the reasons given above, it is clear that the matter submitted for registration is not used in manner of a mark, fails to function as a mark as used on the specimens of record, and therefore, would not be perceived as a mark by the relevant purchasing public. APPLICANT’S ARGUMENTS Applicant disagrees, and presents argument that the proposed mark, the grid design, apart from the advertising copy it is contained within, does in fact function as a mark. Applicant’s first argument in its appeal brief is “[The] Design Functions as a Distinctive Service Mark.” Yet nowhere in the following paragraphs does applicant explain why anyone would even notice the proposed mark within the advertising copy. And why, even if a customer were cognizant of this design, it would not be understood to be merely a helpful clipping guide, or a means of delineating the coupons one from another. The proposed mark is so deeply embedded within the advertising copy that it hardly makes any impact at all, let alone stands on its own as a distinctive source identifier. Applicant argues trade dress citing Two Pesos, Inc. v. Taco Cahbana, Inc. ___ US ___, 23 USPQ2d 1081 (1992). Yet applicant has not applied to register “trade dress” or even the “trade dress” of its advertisement. It has applied to register a small portion, or mutilation of its advertisement; a portion that is, if not invisible to the average customer, is at least highly obfuscated by the advertising copy of which it is a small and insignificant part. It may be that applicant’s intention was to request registration of the design of its advertisement and the position of elements within the advertisement. If so, the drawing of the proposed mark is inadequate for this purpose.[2] Applicant argues ornamentation and functionality on pages 2 and 3 of its brief, citing the leading cases on both of these issues. Since the mark was not refused based on either of these grounds, the arguments are irrelevant and will not be addressed. Accordingly, the material submitted for registration is not used in the manner of a mark, and is not inherently distinctive on its face. Therefore, absent convincing evidence of acquired distinctiveness, the proposed mark must be refused registration pursuant to Sections 1, 2, 3, and 45 of the Trademark Act; 15 U.S.C. 1051, 1052. 1053, and 1127. II BECAUSE OF THE HIGHLY
NON-DISTINCTIVE NATURE OF THE PROPOSED MARK AS USED ON THE SPECIMENS OF RECORD,
THE EVIDENCE PURPORTING TO SHOW THE ACQUIRED DISTINCTIVENESS OF THE PROPOSED
MARK IS CONSIDERED INSUFFICIENT. As a preliminary matter, it must be
noted that the previous examining attorney did not refuse registration of the
proposed mark under Section 2(f) of the Act as suggested in applicant’s appeal
brief, page 4. Section 2(f) is not a
basis for refusal. The previous
examining attorney merely determined that the evidence submitted was
insufficient to overcome the highly non-distinctive nature of the proposed
mark. The refusal itself was and is,
based upon Sections 1, 2, 3, and 45 of the Trademark Act as discussed above. SECTION 2(F) There is no general rule as to the amount of evidence of distinctiveness necessary to achieve secondary meaning in a mark. However, as a rule of thumb, the less distinctive the mark, the greater the quality and quantity of evidence of acquired secondary meaning needed to prove distinctiveness. In re Meyer & Wenthe, Inc. 122 USPQ 372 (CCPA 1959). As discussed in the preceding section, the proposed mark is remarkably non-distinctive. Thus, a great quantity of high-quality evidence of acquired secondary meaning will be required to overcome the refusal of record. Applicant has provided a great deal of evidence purporting to show that the proposed mark has acquired distinctiveness. The problem with the evidence is not with its quantity, but rather with the quality of the evidence of record. The kind and amount of evidence necessary to establish that a mark has acquired distinctiveness in relation to goods or services necessarily depends on the nature of the mark an the circumstances surrounding the use of the mark in each case. Roux Laboritories, Inc. v. Clairol Inc., 166 USPQ 34 (CCPA 1970); In re Hehr Mfg. Co., 126 USPQ 381 (CCPA 1960); In re Capiotal Formation Counselors, 219 USPQ 916 (TTAB 1983). Thus, what may be appropriate evidence to show that a mark has become distinctive in the minds of the relevant purchasing public will necessarily vary depending upon the nature of the mark. A surname or geographic term used in the manner of a mark may acquire distinctiveness quite readily; the statutory five years use will likely be enough. For matter that does not inherently function as a mark because of its nature, as is the case here, evidence of five years’ use is not sufficient to show acquired distinctiveness. In such a case, actual evidence that the grid design apart from the advertising copy it is buried within is perceived as a mark for the relevant goods or services would be required to establish distinctiveness. That is, the applicant must show that the relevant consumers have been educated to view the otherwise non-distinctive matter as a mark. See generally, In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985) (color pink as uniformly applied to applicant's fibrous glass residential insulation); In re R.M. Smith, Inc., 734 F.2d 1482, 222 USPQ 1 (Fed. Cir. 1984) (configuration of pistol grip water nozzle for water nozzles); Edward Weck Inc. v. IM Inc., 17 USPQ2d 1142 (TTAB 1990) (color green for medical instruments); In re Cabot Corp., 15 USPQ2d 1224 (TTAB 1990) (configuration of a pillow-pack container for ear plugs and configuration of a pillow-pack container with trade dress (white circle surrounded by blue border) for ear plugs); In re Star Pharmaceuticals, Inc., 225 USPQ 209 (TTAB 1985) (color combination of drug capsule and seeds therein for methyltestosterone); In re Craigmyle, 224 USPQ 791 (TTAB 1984) (configuration of halter square for horse halters). The caveat is that this use must be use as a mark. 15 U.S.C. §1052(f). See: In re Craigmyle, id., (registrability under §2(f) not established by sales over a long period of time where there was no evidence that the subject matter had been used as a mark); In re Kwik Lok Corp., 217 USPQ 1245, 1248 (TTAB 1983) (declarations as to sales volume and advertising expenditures held insufficient to establish acquired distinctiveness. "The significant missing element in appellant's case is evidence persuasive of the fact that the subject matter has been used as a mark."). This requirement that the matter be used as a mark in order to claim acquired distinctiveness only makes sense, in that without some understanding that something otherwise non-distinctive is supposed to be performing the source identifying function of a trademark, there is no reason that anyone would ever attribute trademark significance to this non-distinctive matter, no matter how long it has been in use and no matter how often this matter is seen. That is the case here. Despite the great quantity of advertising expenditures and the great number of people exposed to applicant’s advertising copy, there is absolutely no reason anyone would pull the dotted lines of the grid design out of the main body of the advertising copy and for no apparent reason, attribute to this matter trademark significance. In a case such as this, it is the job of the trademark owner to educate the relevant public to view the otherwise non-distinctive material as a trademark or service mark, and to provide the Office with evidence that this has been successfully accomplished. There is no evidence in the record that this has been done, successfully or not. It is for that reason that the examining attorney must conclude that the relevant purchasing public does not in fact, view the proposed mark as a service mark, assuming that the proposed mark is even noticed at all. APPLICANT’S EVIDENCE OF ACQUIRED
DISTINCTIVENESS Applicant argues on page 4 of its appeal brief that “[s]ince 1978, Applicant has spent Seventy Million Dollars ($70,000,000) promoting its mark in US magazines. Exhibits 16-17.” A quick look at the exhibits however, does not bear this claim out. Exhibit 16 is the Declaration of Michael C. Slade, applicant’s president. Statement 6 of this declaration indicates that the $70,000,000 was not used to promote the proposed mark, as applicant’s brief suggests, but rather to advertise the mail order service by means of the “ad layouts.” As indicated above, merely because the proposed mark may have been buried in the advertising copy (or “ad layouts”) does not mean that anyone even noticed existence of the grid design separate and apart from the advertising layout as a whole, much less attributed to it service mark significance. The same is true of the five million dollars referred to on page four of the brief. It is clearly indicated both in the brief and the declaration that the money was spent only to advertise the mail order service by means of the “ad layout”; there is no mention that the advertising in any way promoted the grid design as a service mark. Applicant argues that it has created billions of reader impressions, and billions of reader exposures. Applicant’s appeal brief, page 5; application, page 1. Yet again, these exposures are exposures to non-distinctive matter. As indicated above, such use must be use in the nature of a mark, or at least be something visible in the advertising copy, before anyone will understand that what he or she is exposed to is supposed to be the source identifier of a service mark. People do not ascribe trademark significance to everything they are exposed. A person may be exposed to something thousands of times in a lifetime and never ascribe to that thing any trademark significance at all. A thing must be used in the manner of a mark before a person will understand that it is supposed to be a mark. Applicant argues that the proposed mark has been in use for a significant time. Applicant’s appeal brief, page 5. For matter that does not inherently function as a mark because of its nature, as is the case here, evidence of five years’ use is not sufficient to show acquired distinctiveness. In such a case, actual evidence that the grid design, apart from the advertising copy as a whole is perceived as a mark for the relevant services would be required to establish distinctiveness. See generally, In re Owens-Corning Fiberglas Corp., supra; In re R.M. Smith, Inc., supra; Edward Weck Inc. v. IM Inc., supra. It is possible that a person may view the applicant’s advertising copy every week for decades without even noticing the grid design, let alone attributing to it service mark significance apart from the advertisement as a whole. Finally, in discussing the various declarations of record, we are again confronted with what appears to be a misunderstanding of just what the mark is. All of the declarations, those of the marketing managers, those of the publishing officers, those of the marketing directors, and those of the consumers all refer to the entire advertising copy or layout when indicating what it is they recognize as a mark. In fact, the consumer declarations all have the identical advertising copy attached to the declaration, and all of the form declarations refer to the “attached layout design.” But the attached layout design is not the mark applied for. None of the declarations refer to recognition of the grid design alone, apart from the advertising layout. And it is the grid design alone that is the mark applied for, and the subject of this appeal. Thus, none of the declarations are in any way relevant to showing the acquired distinctiveness of the proposed mark applied for, which is the grid design, not the advertising layout. All of the evidence of record purporting to show the acquired distinctiveness of the proposed mark, the grid design, is actually evidence tending to show the acquired distinctiveness of the overall advertising layout applicant employs to advertise its mail order service. This is not the mark applied for and therefore, this evidence is worthless in evaluating the acquired distinctiveness of the applied for grid design, which is merely a non-distinctive element within the advertising layout. Since none of the evidence of record supports the acquired distinctiveness of the grid design alone, the examining attorney is forced to conclude that the grid design alone, which is the applied for mark, has not in fact, acquired distinctiveness as a service mark in the marketplace. CONCLUSION The proposed mark is not used in the manner of a service mark and is not separable from the advertising layout of which it is a part. Based upon its manner of use therefore, it does not function as a service mark. Applicant has submitted no evidence that tends to show that the grid design has been promoted as a mark, separately and apart from the advertising layout of which it is a part. Accordingly, the refusal of record based upon Trademark Act Sections 1, 2, 3, and 45; 15 U.S.C. 1051, 1052, 1053, and 1127 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] In the Request for Reconsideration, the applicant appears to exhibit some confusion as to what the basis for the refusal actually is, seemingly confusing a refusal based upon “functionality” with the refusal of record based which is based upon “failure to function as a mark as used on the specimens of record.” This confusion resulted in the applicant arguing that the previous examining attorney had for the first time raised a new issue and that the final refusal was premature. While the Board, in its order remanding the case to the examining attorney for consideration of the Request pointed out that no new issue had in fact been raised, a reading of applicant’s appeal brief would seem to indicate that the confusion persists. A careful review of the record by the present examining attorney reveals that capability or functionality has never been at issue. The previous examining attorney has consistently argued that as used on the specimens of record, the proposed mark does not function as a service mark. The previous examining attorney has never argued that the mark is de jure functional, or de facto functional, or incapable of functioning as a trademark. To the extent that the applicant was mislead by anything in the record that may have lead the applicant to believe otherwise, the Office apologizes, but the present examining attorney cannot determine what that might have been. [2] Had it wished to do so, applicant could have applied
for the registration of the design of the entire advertisement by submitting a
drawing of the entire advertisement, sans the wording, and supplying an
appropriate description of the mark and an appropriate positional
statement. But, that is not the
proposed mark for which applicant applied.
What is applied for in the application is a small non-distinctive
element of a greater whole as evidenced by the usage on the specimens of
record. |