Arrow Trading Co., Inc.v.Victorinox A.G. and Wenger S.A.

Trademark Trial and Appeal Board

Jun 27, 2003

No. 91103315 (T.T.A.B. Jun. 27, 2003)

Mailed: June 27, 2003
Hearing: Paper No. 73
April 15, 2003 BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Arrow Trading Co., Inc.
v.
Victorinox A.G. and Wenger S.A.
_____
Opposition No. 103,315
to application Serial No. 74/600,279
filed on November 17, 1994
_____
Joseph H. Lessem and Mary L. Grieco of Gursky & Ederer, LLP
for opposer.
Jonathan E. Moskin of Pennie & Edmonds LLP and Susan Progoff
of Fish & Neave for applicants.
______
Before Cissel, Chapman, and Holtzman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
Victorinox A.G. and Wenger S.A., (both Switzerland
corporations), as joint applicants, seek to register on the
Principal Register under Section 2(f) of the Trademark Act,
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 103315
2
15 U.S.C. §1052(f)1, the mark SWISS ARMY for “handtools,
namely, multifunction pocketknives” in International Class
8. The application is based on applicants’ claimed date of
first use and first use in commerce with the United States
of 1958.
The Pleadings
Arrow Trading Co., Inc. (a New York corporation) has
opposed registration, alleging that “for many years and
continuing trough the present day, [opposer], itself and
through its business successors Arrow Trading Group, Inc.
and Archer Worldwide, Inc., has imported and sold handtools,
including multifunction pocketknives” (paragraph 1); that
since 1991, opposer has used the designation “Swiss Army
knife” on these goods, and “continues to use, or has an
intention to use, this designation through its business
successors in connection with these products” (paragraph 2);
that applicants’ purported mark is a generic designation
which is incapable of distinguishing the goods of applicants
from those of others; that the designation “SWISS ARMY” has
been “judicially declared to be generic in connection with
1 During the ex parte prosecution of the application, the
Examining Attorney had originally refused registration on the
basis that the mark is merely descriptive/generic of the goods
under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1). The Examining Attorney subsequently approved the
application for publication based on applicants’ claim of
acquired distinctiveness under Section 2(f).
Opposition No. 103315
3
multifunction pocketknives” (paragraph 13), citing several
decisions from the case of The Forschner Group Inc.2 v.
Arrow Trading Co. Inc., specifically (i) 833 F. Supp. 385,
30 USPQ2d 1258 (SDNY 1993), (ii) 30 F.3d 348, 31 USPQ2d 1614
(2nd Cir. 1994), and (iii) 904 F.Supp. 1409, __ USPQ2d __
(SDNY 1995) (paragraphs 4-6);3 that applicants’ purported
mark as applied to the involved goods, “does not identify a
single product emanating from a single source,” but rather
the two applicant corporations “are unrelated parties with
adverse interests and rights,” and thus, “they are not joint
owners of the mark”; and that “SWISS ARMY is not and cannot
be a trademark for multifunction pocketknives because it
does not identify a single source of origin of such
products” (paragraphs 14-16).4
In their answer, applicants claim that they are the
exclusive manufacturers of SWISS ARMY multifunction
pocketknives; and admit, inter alia, certain matters
regarding the civil suit involving opposer and Forschner and
2 For clarity, it is explained that The Forschner Group Inc.
(Forschner) is Victorinox A.G.’s exclusive distributor for knives
in the U.S.; and Forschner is now known as Swiss Army Brands,
Inc. Wenger S.A.’s exclusive distributor for knives in the U.S.
is Precise Imports, Inc.
3 See also, 124 F.3d 402, 43 USPQ2d 1942 (2nd Cir. 1997), which
decision was issued the year after the notice of opposition was
filed.
4 Opposer’s pleading was organized by opposer setting forth three
grounds--(i) the mark is generic, (ii) the mark fails to identify
a single source, and (iii) applicants committed fraud based on
applicants’ asserted misrepresentations to the Examining Attorney
that they were joint owners of the mark.
Opposition No. 103315
4
certain specific responses made by applicants during the ex-
parte prosecution of their involved application. Applicants
otherwise deny the salient allegations of the notice of
opposition. In addition, applicants assert the “affirmative
defenses” that (i) opposer lacks standing to oppose; (ii)
opposer lacks capacity to oppose; (iii) opposer is guilty of
unclean hands;5 and (iv) the opposition is barred under the
principles of collateral estoppel.6
Opposer’s Motion to Amend Its Pleading to Add Parties
Opposer filed on May 12, 2003 (about one month after
the oral hearing was held in this case), a motion to amend
the notice of opposition to add opposer’s “sole
shareholders, Mark Dweck and Jack Dweck, as additional
Opposers” (brief, pp. 1 and 5) pursuant to Fed. R. Civ. P.
15(b) and 21. Opposer provided no information whatsoever as
to why it did not take action to add party plaintiffs at any
time earlier in this opposition proceeding. Aside from the
extremely late nature of the motion, opposer neither
5 Applicants did not raise the defense of unclean hands in their
brief. Thus, they have waived that affirmative defense.
6 In deciding opposer’s motion and applicants’ cross-motion for
summary judgment, the Board in its March 24, 2000 decision, inter
alia, explained that both parties argued that collateral estoppel
applied based on court decisions in the case of The Forschner
Group Inc. v. Arrow Trading Co. Inc. (see citations listed
above); held that “collateral estoppel is not applicable in this
case” (p. 7); granted applicants’ motion for summary judgment on
the fraud claim; and otherwise denied the parties’ respective
motion and cross-motion for summary judgment.
Opposition No. 103315
5
provided evidence in support thereof accompanying its brief,
nor pointed to any such evidence in the record. We are well
aware opposer is asserting the joinder of additional parties
under Fed. R. Civ. P. 15(b) to conform the pleadings to the
evidence. However, in order to amend the pleadings to
conform to the evidence, the record must establish what the
party moving to amend seeks to add to the pleading. Here
the evidence does not support opposer’s motion, and in fact,
if anything, the evidence shows that opposer was reorganized
into two corporations, not that two individuals now stand in
its shoes. Specifically, opposer’s president, Jack Dweck,
testified in his discovery deposition (submitted into the
record as Exhibit L in applicants’ notice of reliance)(p.
11) that there was “an arbitration agreement which
distribute[d] [opposer’s] assets to the two new
corporations.” He did not specify the two successor
corporations, and he did not testify (nor is there any
evidence of record) that opposer’s assets were transferred
to the individuals, Jack Dweck and Mark Dweck. There is
only argument by opposer’s counsel to that effect. Thus,
the issue was not tried by the parties and amendment of the
opposition under Fed. R. Civ. P. 15(b) is inappropriate.
Moreover, opposer’s motion is otherwise untimely. Fed.
R. Civ. P. 21 provides for the adding or dropping of parties
“at any stage of the action and on such terms as are just.”
Opposition No. 103315
6
The grant or denial of a motion under Rule 21 is within the
discretion of the trial judge. The timing of such a motion
may influence the judge’s determination of whether to grant
said motion. Courts typically deny requests that come so
late in the case that it will delay the case or prejudice
any of the parties to the case. See Wright, Miller & Kane,
Federal Practice and Procedure: Civil 3d, §§1688 and 1688.1.
(2001).
In the circumstances of this opposition proceeding
involving the registrability of a mark before this
administrative tribunal, it would be clearly unjust and
prejudicial to applicants to allow opposer to add two
individual party plaintiffs at this juncture. Opposer
waited from the filing of its notice of opposition in 1996,
through briefing and decision on summary judgment motions
which included arguments and issues related to opposer’s
standing (1997-2000), through trial (2001-2002), and even
through briefs after trial (2002) and oral hearing (2003)
before opposer took any action to join any party plaintiff.
Moreover, as explained above, the evidence does not
show that the individuals sought to be joined are the
successors to opposer, and this would amount to allowing
these individuals to file an untimely notice of opposition.
See SDT Inc. v. Patterson Dental Co., 30 USPQ2d 1707 (TTAB
1994).
Opposition No. 103315
7
We find opposer’s proposed amendment to the pleadings,
filed so late in the proceeding, is not supported by the
evidence, and would be prejudicial to applicants.
Accordingly, opposer’s May 12, 2003 motion to amend the
notice of opposition to add two individual opposers is
denied. Cf. Kalman v. The Berlyn Corp., 914 F.2d 1473, 16
USPQ2d 1093 (Fed. Cir. 1990)(involving a motion to amend
under Fed. R. Civ. P. 21 and 15(a) -- not 15(b)).
The Record / Evidentiary Matters
The record consists of the pleadings; the file of the
opposed application; opposer’s notice of reliance on Exhibit
Nos. 1-61 (filed September 29, 2001);7 opposer’s
supplemental notice of reliance on Exhibit Nos. 62-63 (filed
November 27, 2001);8 applicants’ notice of reliance on
Exhibits A-L (filed February 8, 2002); applicants’
supplemental notice of reliance on Exhibit M (filed July 3,
2002);9 the testimony, each with exhibits, taken by
7 Applicants’ motion to strike certain of opposer’s exhibits in
this notice of reliance will be determined later in this
decision.
8 The parties filed two stipulations on November 27, 2001: (1)
indicating applicants’ consent to opposer’s filing of its
supplemental notice of reliance after the close of opposer’s
initial testimony period; and (2) that opposer’s Exhibit Nos. 1-
63 in its two notices of reliance may be offered into evidence
without objection as to authenticity of said materials, but
without prejudice to applicants’ right to raise objections to
admissibility on any other grounds.
9 On July 3, 2002, the parties filed a stipulation that
applicants were permitted to supplement their trial evidence with
the material in their supplemental (footnote continued)
Opposition No. 103315
8
applicants of (i) Charles Elsener, president of Victorinox,
A.G.,10 (ii) Maurice Cachot, CEO of Wenger S.A. (through a
French interpreter), and (iii) Dr. Henry D. Ostberg,
chairman of The Admar Group (survey expert)11; and a
stipulation (filed on May 3, 2002, via certificate of
mailing, the closing date of opposer’s rebuttal testimony
period) submitted in lieu of the testimony (by subpoena) of
Swiss Army Brands, Inc. (SABI) -- Victorinox A.G.’s
exclusive distributor of knives in the United States, and
Precise Imports, Inc. (Precise) -- Wenger S.A.’s exclusive
distributor of knives in the United States. (Based thereon,
the subpoenas were withdrawn by opposer.)
Portions of the testimony depositions were filed under
seal as “confidential.” Neither opposer’s nor applicants’
briefs after trial were marked “confidential.” Nonetheless,
the Board has exercised discretion in discussing evidence
originally submitted as confidential.
notice of reliance.
The Board notes that neither of applicants’ notices of reliance
includes statements of the relevance of the material offered as
required by Trademark Rule 2.122(e). However, opposer did not
object thereto; thus any objection on that basis is waived.
10 Opposer’s objections to applicants’ Exhibit Nos. 22-23
introduced during the Charles Elsener deposition, and reiterated
by opposer in its brief, will be determined later in this
decision.
11 During opposer’s cross-examination, opposer objected to the
testimony of Dr. Ostberg, but did not reiterate that objection in
its brief. (In point of fact, opposer specifically listed the
testimony of Henry D. Ostberg in its description of the record
without reference to any objection.) Opposer has accordingly
waived its objections thereto. See TBMP §718.04.
Opposition No. 103315
9
Both parties filed briefs on the case.12 An oral
hearing was held before the Board on April 15, 2003.
We will now decide the evidentiary matters raised by
the parties. Opposer objected to two exhibits offered
during the testimony deposition of Charles Elsener, and
reiterated the objections in its brief.13 Specifically,
opposer objects to applicants’ Exhibit No. 22 (portions of a
document titled “Trademark Agreement” between the Swiss
Confederation and SABI), based on lack of authentication,
redacted document, hearsay; and applicants’ Exhibit No. 23
(consisting of three photocopied pages--a September 4, 1997
letter in English from the Swiss Military Department
addressed to “To whom it may concern,” the “enclosure”
referenced in the letter consisting of one page from the
February 27, 1997 Swiss “Handelszeitung” article (in
German), and an English translation of the article) based on
hearsay, no certified translation of the document, and where
the witness purported to translate two phrases in the
letter, that he is not a certified translator.
Regarding Exhibit No. 22, other than making the
objections during the trial deposition and stating in its
brief (p. 5) “[opposer] restate[s] that objection here,”
12 Opposer’s motion (filed July 5, 2002) to extend the time to
file briefs is granted.
13 These are the only objections to any part of the record
reiterated by opposer in its brief. Thus, all other objections
Opposition No. 103315
10
opposer has offered neither any specific argument nor any
legal precedent in support of its request that this exhibit
be excluded from the record. There is no indication from
opposer why an exhibit should be stricken from the record
solely because it is redacted, and here the document appears
on its face to be admissible. Opposer’s objection as to
lack of proper authentication of the document is not well
taken as the witness’s testimony relative thereto
substantiates his familiarity with the “Trademark Agreement”
sufficient to allow it into the record (e.g., Victorinox,
A.G. has a copy of the document in its records, the witness
had discussed the agreement with the parties thereto).
(Elsener dep., pp. 93-97). Moreover, the Board does not
generally strike properly taken and filed testimony or
exhibits based on substantive objections such as hearsay.
Rather, such objections are taken into consideration in
determining the probative value of the evidence. See
Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321,
1326 (TTAB 1992). Opposer’s objections to applicants’
Exhibit No. 22 are overruled.
Regarding Exhibit No. 23, subsequent to the deposition
of Charles Elsener, applicants filed a notice of reliance,
including as Exhibit K the identical three page document,
but also including both (i) a letter from the Swiss
made by opposer during depositions, including those previously
Opposition No. 103315
11
Confederation confirming the signature and the authenticity
of the September 4, 1997 letter, and (ii) a certification of
the translation of the article. Opposer made no objection
to applicants’ Exhibit K. Thus, opposer’s objections to
Exhibit 23 are overruled as moot.
We turn then to applicants’ motion (included as part of
its brief on the case) to strike opposer’s Exhibit Nos. 1-8,
10-18, 20-23, 25-27, and 29-61.14 Applicants’ objections
are generally based on hearsay and/or relevance and/or lack
of foundation. Applicants also objected to certain of the
above-enumerated exhibits because leave was not granted by
the Board to admit testimony from another proceeding under
Trademark Rule 2.122(f), or because they are not “printed
publications” under Trademark Rule 2.122(e), or because they
are not self-authenticating and thus are not “printed
publications” under Trademark Rule 2.122(e).
Upon careful review of the record, the objections, the
arguments of the parties on applicants’ motion to strike,
and the applicable law, we overrule applicants’ objections
and we allow into the record all of opposer’s exhibits. We
particularly note that applicants stipulated to the
authenticity of all materials submitted by opposer (Exhibit
noted herein, are considered waived. See TBMP §718.04.
14 As noted above, opposer took no testimony, but offered 63
exhibits by way of one notice of reliance (Exhibit Nos. 1-61) and
one supplemental notice of reliance (Exhibit Nos. 62-63).
Opposition No. 103315
12
Nos. 1-63) in the stipulation filed with the Board on
November 27, 2001. In addition, opposer’s Exhibit No. 3
Opposition No. 103315
13
(objected to by applicants) is also applicant’s Exhibit No.
33 introduced at the testimony deposition of Maurice Cachot,
Wenger S.A.’s CEO (pp. 45-49). Opposer’s Exhibit Nos. 34-52
are copies of miscellaneous published court decisions (in
which the judge(s) used the term “Swiss Army knife”) which
the Board is free to consider for whatever probative value,
if any, they may have. Also, opposer’s Exhibit Nos. 53-61
are printouts of stories from printed publications and are
therefore admissible under Trademark Rule 2.122(e).
Based on the discussion above, applicants’ motion to
strike certain of the exhibits from opposer’s September 29,
2001 notice of reliance is denied.
The Parties
Applicants, Victorinox A.G. and Wenger S.A., are both
corporations of Switzerland, and both are located in
Switzerland. Victorinox A.G. (under a different name) was
founded in 1884 by Karl Elsener; and he also founded the
Association of Swiss Master Cutlers consisting of a few
small enterprises in the knife manufacturing business,15 in
order to obtain an order from the Swiss military for knives
for each soldier. In 1891 the first order from the Swiss
military for pocketknives with multiple utensils thereon was
15 Today, the Association of Swiss Master Cutlers has over fifty
members, and both joint applicants herein are still members
thereof.
Opposition No. 103315
14
filled. The knife was and is called “the soldier’s knife.”
Victorinox A.G. first sold knives in the United States in
1936 or 1937, and in 1952 it first sold knives through its
U.S. distributor, Forschner (now SABI). American GIs coined
the nickname “Swiss Army knife” for these multifunction
pocketknives after World War II. It was in 1952 that
Victorinox A.G. first used “SWISS ARMY” on and in connection
with its pocketknives. Victorinox A.G.’s sales of
pocketknives in the United States is in the millions of
units per year.
Wenger S.A. was founded in 1893 under the name
Coutellerie Suisse, and in 1907 was renamed Wenger. It
first sold the soldier’s knife to the Swiss military in 1901
(this may have occurred earlier, but, due to a fire, its
records trace back only to 1901). Today, Wenger S.A.
manufactures several types of knives, including various
models of multifunction pocketknives (80% of Wenger’s
business) and professional cutlery (such as for chefs,
gardeners). Wenger S.A. first sold multifunction
pocketknives in the United States in 1949. Since then,
Precise has been Wenger S.A.’s distributor of knives in the
U.S. Wenger S.A.’s sales of pocketknives in the United
States are also in the millions of units per year.
Opposition No. 103315
15
The Swiss military required two sources for the
soldier’s knife, and thus, it purchases half of its supply
thereof from Wenger S.A. and half from Victorinox A.G.
Opposer has offered no testimony concerning its
activities or background. In its brief (“Statement of
Facts” Section, p. 9), opposer set forth two paragraphs of
information regarding opposer’s activities, mentioning
several related companies. However, opposer did not refer
to anything in the record to support these asserted facts.16
16 Opposer had the burden of introducing evidence in support of
its claims. If opposer intended that the Board accept the
findings of fact and conclusions of law from the various
decisions and court orders in the case of The Forschner Group,
Inc. v. Arrow Trading Co., Inc., cited above, we decline to do
so. The issues in that case were very narrow and were so
explained by the courts, beginning with the first decision of
September 29, 1993, in which the U.S. District Court for the
Southern District of New York stated “This action involves only a
small slice of the law of unfair competition. The existence of a
trademark is not at issue.” 833 F.Supp. at 388. The issue in
that case was whether Arrow’s representation of the Chinese knife
as a Swiss Army knife misleads consumers as to the geographic
origin and the quality of the Chinese knife. The Court noted
that:
“Arrow, rather than focusing upon these issues,
has directed its energies in an attempt to prove
that ‘Swiss Army knife’ is a generic term
denoting any multifunction pocketknife.” ...
“...Arrow rivets itself to the notion that ‘Swiss
Army knife’ cannot receive trademark protection
if it is a generic term. (Citations omitted.)
However, Forschner does not seek trademark
protection in this action, but attempts to stop
Arrow from misrepresenting the Chinese knife....”
833 F.Supp. at 392. “...Arrow still has failed
to demonstrate that ‘Swiss Army knife’ is a
generic term.” 833 F.Supp. at 395.
After remand from the 1994 decision of the Court of Appeals for
the Second Circuit, the U.S. District Court reiterated:
“My underlying decision held that ‘the existence
of a trademark is not an issue.’ (Citation
omitted.) The Court of Appeals agreed.
(Citation omitted.) The phrase ‘Swiss Army
Opposition No. 103315
16
The Board gleaned information about opposer mainly from the
excerpts of the discovery deposition of Jack Dweck,
opposer’s president, (submitted into the record by
applicants). Also, Exhibit J from applicants’ notice of
reliance is a certificate of the State of New York
Department of State showing the incorporation of Arrow
Trading Co., Inc. on August 27, 1969 and its dissolution on
December 27, 2000.
knife’ has never enjoyed trademark protection, as
Forschner readily concedes in its complaint.
(Footnote omitted.) Because the issue was not
presented, it was never reached, and the Court of
Appeals left unanswered the question of whether
the mark is registrable.” 904 F.Supp. at 1414.
Along this line, we emphasize that this was made clear in the
March 24, 2000 Board order holding collateral estoppel not
applicable to this opposition proceeding. (See Board order, pp.
3-7.) Thus, opposer has been (or should have been) fully aware
of its burden to prove its case by means other than through the
decisions in the Forschner (and other) cases. We note, in
contrast to the issue before the Courts, the Board is an
administrative tribunal with limited jurisdiction over only the
question of registrability of the mark. We have no jurisdiction
over issues of trademark infringement or unfair competition. See
Sections 17 and 18 of the Trademark Act, 15 U.S.C. §§1067 and
1068. See also, TBMP §102.01.
In addition, opposer contends that the statements made by the
joint applicants’ respective U.S. distributors (Forschner, now
SABI and Precise) in various court cases (both documents and
testimony), and in letters signed by the distributors are
admissions against interest as to the involved joint applicants.
We decline to so hold. Of course, it is not surprising that the
U.S. distributors would not be claiming ownership rights in the
mark of the foreign manufacturers of the products they
distribute. Moreover, the record shows that applicants’
distributors did not consult with applicants prior to filing
various lawsuits; that applicants did not pay any part of the
expenses of any of these cases; that applicants did not receive
papers from these cases, but, rather, they were sometimes
informed of the results. (Elsener dep., pp. 102-107.)
Victorinox A.G. and Forschner (SABI) have been in a contractual
relationship since 1937, but they first sold knives to Forschner
in 1952, and the first written contract was executed in 1980.
(Elsener dep., pp. 110-111.)
Opposition No. 103315
17
The excerpts of the discovery deposition of Jack Dweck
indicate that opposer first used “Swiss Army” in connection
with multifunction pocketknives on purchase orders and
invoices in the late 1980s and first used it on opposer’s
packaging and on the knives around 1992; and that for the
year 1992-1993 opposer sold about 8,000 units, and opposer
sold none thereafter.
In 1991 opposer ordered, inter alia, about 20,100
multifunction pocketknives from a company located in Hong
Kong. It was also in 1991 that opposer filed an application
to register the mark shown below (with no disclaimer)
for watches in International Class 14, pens in International
Class 16, and luggage and umbrellas in International Class
18.17
The record is clear that opposer completely ceased
business operations in 1993. It last had any income in
1993. Its lease terminated in 1993. There have been no
directors’ meetings since 1993. Employees were let go in
1993. No knives have been sold by opposer since 1993.
(See, e.g., Dweck discovery dep., pp. 10-13, 59, 119-120,
17 Application Serial No. 74/154,714, filed April 8, 1991, and
held abandoned on June 15, 1992 for failure to respond to an
Office action.
Opposition No. 103315
18
127). Mr. Dweck testified (pp. 120-124) that after 1993,
Arrow Trading Group, Inc. and Classic Knife Corporation sold
imported pocketknives which did not display “Swiss Army” on
the handles of the knives or on the packaging therefor; but
that these goods were marketed using “Swiss Army knife.”
The only marketing material created was a video (Exhibit No.
18 to the Dweck testimony), which is the video for which
opposer was held in contempt in 1996 in the U.S. District
Court for the Southern District of New York (Exhibit No. 22
to the Dweck testimony). (See footnote 22, infra.)
Burden of Proof
Opposer, as plaintiff in the opposition proceeding,
bears the burden of proving, by a preponderance of the
evidence, it has standing to bring this opposition, and the
asserted grounds for opposition -- that SWISS ARMY is
generic for multifunction pocketknives, that the mark does
not indicate a single source of origin, and that applicants
are not proper joint applicants. See Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir.
2000); and Cerveceria Centroamericana, S.A. v. Cerveceria
India Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir.
1989).
Opposer’s Standing
Opposition No. 103315
19
The standing question is an initial and basic inquiry
made by the Board in every inter partes case. That is,
standing is a threshold inquiry. Standing is an essential
element of opposer’s case which, if it is not proved at
trial, defeats opposer’s claims. See Lipton Industries,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185
(CCPA 1982); and No Nonsense Fashions, Inc. v. Consolidated
Foods Corporation, 226 USPQ 502 (TTAB 1985).
In this case, applicants challenge opposer’s standing
on two separate bases.18 First, applicants challenge
opposer’s standing on the basis that opposer is a dissolved
corporation. We cannot agree with applicants because
opposer filed its notice of opposition in September 1996,
but opposer was not dissolved as a corporation by the State
of New York until December 2000. (Applicants’ Exhibit J.)
Simply put, because opposer was not a dissolved corporation
at the time it filed the notice of opposition, we cannot
find that opposer lacks standing based solely on the
dissolution of opposer corporation four years later.
However, applicants also contend that opposer lacks
standing because opposer ceased doing business years ago,
18 “Lack of standing” is not an affirmative defense (as stated in
applicants’ answer to the notice of opposition). Rather, it is,
as explained above, an essential element of the plaintiff’s case.
The defendant is, of course, free to assert that the plaintiff
has failed to establish its standing.
Opposition No. 103315
20
does not currently exist, and thus, cannot be damaged by
registration of the mark.
Section 13(a) of the Trademark Act, 15 U.S.C. §1063(a),
allows for opposition to the registration of a mark by
anyone “who believes that he would be damaged by the
registration of a mark...” The party seeking to oppose the
registration of the mark must prove two elements: (1) that
it has standing and (2) that there is a valid ground to
prevent the registration of the opposed mark.
As stated by our primary reviewing court, the Court of
Appeals for the Federal Circuit, in Cunningham v. Laser,
supra, 55 USPQ2d at 1848:
Standing is the more liberal of the two
elements and requires only that the
party seeking cancellation believe that
it is likely to be damaged by the
registration. ... A belief in likely
damage can be shown by a direct
commercial interest.
Further, the same Court stated in Ritchie v. Simpson, 170
F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999):
Section 13 of the Lanham Act establishes
a broad class of persons who are proper
opposers; by its terms the statute only
requires that a person have a belief
that he would suffer some kind of damage
if the mark is registered. However, in
addition to meeting the broad
requirements of §13, an opposer must
meet two judicially-created requirements
in order to have standing--the opposer
must have a “real interest” in the
proceedings and must have a “reasonable”
basis for his belief in damage.
Opposition No. 103315
21
... and at 1027 the Court stated:
However, our precedents suggest
something more – that the “belief of
damage” required by Section 13 of the
Lanham Act is more than a subjective
belief. See Universal Oil, 463 F.2d at
1124, 174 USPQ at 459-460. The belief
must have a “reasonable basis in fact.”
In this case, the record clearly and unequivocally
establishes that opposer ceased business operations in 1993,
three years before it filed the notice of opposition.
Opposer does not dispute and in fact concedes that it “is no
longer doing business as a separate entity” (reply brief, p.
8), but it argues that this opposition comes within the
category of “winding up its business affairs” under the New
York dissolution statute and that it now represents the
interests of both former shareholders/officers, Jack Dweck
and Mark Dweck, whom it has attempted to join as parties to
this opposition. (For the reasons stated, the joinder of
parties plaintiff was denied earlier herein.) To be very
clear, the Board is not finding a lack of standing based on
the dissolution of the opposer corporation in 2000 under New
York law. Rather, we hold that opposer lacks standing
because the entity which filed this opposition in 1996,
having ceased business operations in 1993,19 has failed to
show a “real interest” in the opposition, and certainly has
19 We note that opposer corporation was formally dissolved by the
State of New York prior to opposer filing any evidence in this
case.
Opposition No. 103315
22
failed to demonstrate a “reasonable” basis for its belief in
damage.
Having found that opposer lacks standing, we
necessarily find that the opposition must be dismissed.
However, for the sake of thoroughness of the decision on
registrability, in the event it should be determined on
appeal that opposer has standing, we will rule on opposer’s
claims and applicants’ affirmative defenses.
Estoppel Defense20
In support of this affirmative defense, applicants
argue that opposer applied to register the mark shown below
for watches in International Class 14, pens in International
Class 16, and luggage and umbrellas in International Class
18,21 without disclaiming the words “SWISS ARMY”; that
20 Applicants’ affirmative defense of estoppel is distinguished
from the collateral estoppel explained previously herein,
involving the March 24, 2000 Board order and discussion of and
holding on the question of collateral estoppel in the context of
the civil action between one of the joint applicants’ U.S.
distributors and opposer (Forschner v Arrow). The Board, in
denying summary judgment, held that the issues of whether
applicants are proper joint applicants and whether the term SWISS
ARMY is generic for multifunction pocketknives were not
determined in the prior civil action; and that “collateral
estoppel is not applicable in this case.”
21 Serial No. 74/154,714, filed April 8, 1991, and abandoned for
failure to respond to an Office action on June 15, 1992.
Opposition No. 103315
23
opposer later adopted the word ‘classic’ to modify the mark
SWISS ARMY, thereby exploiting the standard English meaning
of ‘classic’ and thus, affirmatively recognizing the
trademark significance of the words SWISS ARMY; that on the
packaging for its Chinese made pocketknives, opposer used a
“TM” symbol and stated on the packaging that “the Swiss Army
logo design” is a trademark used by opposer under license.
(Applicants’ Exhibit No. 7 to the Dweck dep.)22 From this,
applicants conclude that opposer’s “use as a trademark and
attempted registration of the term SWISS ARMY should estop
[opposer] from contending that the mark is anything other
than a trademark.” (Brief, p. 42.)
Opposer contends that it removed the words SWISS ARMY
before obtaining a registration for the design portion of
the mark; that “an affiliate” of opposer, Colony
Corporation, obtained the registration for the design
portion23; and that because opposer has been litigating for
22 Applicants also point out that opposer’s use of the word
‘classic’ with the words SWISS ARMY was held by the United States
District Court for the Southern District of New York (order dated
June 26, 1996--applicants’ Exhibit No. 22) to be in contempt of a
previous injunction order, specifically finding that Arrow
Trading Co., Inc. was attempting to “piggyback” on the
plaintiff’s goodwill and that Arrow acted in bad faith.
23 Mr. Dweck’s discovery deposition includes his acknowledgment
that approximately one year after he signed an application based
on an assertion of a bona fide intention to use the mark in the
name of Arrow Trading Co., Inc. (Serial No. 74/154,714), he
signed an application in the name of Colony Corporation (Serial
No. 74/285,495 now issued as Reg. No. 2,089,486) for the design
portion of the mark (without the words SWISS ARMY) for goods in
International Classes 6, 8, 9, 11, 14, 16, 18, 21, 25 and 34,
also based on that applicant’s assertion of a bona fide intention
Opposition No. 103315
24
years over the right to use “Swiss Army knife” for
multifunction pocketknives and has consistently taken the
position the term is generic for said goods, there is no
estoppel against opposer herein.
Opposer’s application Serial No. 74/154,714, included
the words SWISS ARMY as part of the mark, but it did not
include multifunction pocketknives in the identification of
goods. Thus, it cannot be said that opposer is now taking a
position from which it should be estopped by asserting SWISS
ARMY is generic for multifunction pocketknives. With regard
to opposer’s past use of the words “Swiss Army logo design”
in a sentence referring to an anonymous license on its
pocketknives and/or the packaging therefor, we simply do not
find sufficient evidence on this issue to find for
applicants.
Accordingly, we hold that this affirmative defense must
fail. Opposer is not estopped from making its claims in
this case.
Opposer’s Capacity to Sue Defense
Applicants contend that opposer lacks the capacity to
sue under the laws of the state of New York because opposer
to use the mark in commerce. (Applicants’ Exhibit Nos. 9 and 10,
Dweck dep.) While Mr. Dweck testified that opposer licensed the
design mark (as shown on its label -- Exhibit 7) from Colony
Corporation, when questioned regarding the license, it was clear
Opposition No. 103315
25
is a dissolved New York corporation. Opposer contends that
a dissolved corporation may maintain a legal action or
proceeding under NY Bus. Corp. Law §1006.24
First, the notice of opposition was filed by opposer in
1996, four years before opposer was dissolved as a
corporation. Second, even assuming, arguendo, that
dissolution applies herein, the relevant portion of “NY Bus.
Corp. Law §1006 Corporate action and survival of remedies
after dissolution” reads as follows:
(a) A dissolved corporation, its
directors, officers and
shareholders may continue to
function for the purpose of winding
up the affairs of the corporation
in the same manner as if the
dissolution had not taken place,
except as otherwise provided in
this chapter or by court order. In
particular, and without limiting
the generality of the foregoing:
...
(4) The corporation may sue or
be sued in all courts and
participate in proceedings,
whether judicial,
administrative, arbitrative or
otherwise, in its corporate
name, and process may be
served by or upon it.
(b) The dissolution of a corporation
shall not affect any remedy
available to or against such
corporation, its directors,
that there was no written license agreement, and opposer never
paid any license fees to Colony Corporation.
24 Both sides have cited cases from the courts of the state of New
York regarding this issue.
Opposition No. 103315
26
officers or shareholders for any
right or claim existing or any
liability incurred before such
dissolution, except as provided in
sections 1007 (Notice to creditors;
filing or barring claims) or 1008
(Jurisdiction of supreme court to
supervise dissolution and
liquidation).
We find that opposer has, or at least at the time of
filing of the notice of opposition had, the capacity to sue.
Applicants’ affirmative defense that opposer lacks capacity
to oppose therefore must fail.
Joint Applicants
Opposer contends that these applicants are not proper
joint applicants because they are not cooperatively
producing and marketing a single product as a single source
of origin; that applicants are competitors and have been for
about 100 years; and that there is no joint venture or
license agreement between them.25
Applicants contend that joint applicants are
specifically recognized by the USPTO; that when two entities
agree to own a mark jointly, their elected arrangement is
presumed valid because the joint applicants have a strong
interest in protecting the validity of their mark as
25 We reiterate at this juncture that opposer’s fraud claim (based
on applicants misrepresenting themselves as joint applicants) was
dismissed by way of Board order dated March 24, 2000, granting
applicants’ motion for summary judgment thereon.
Opposition No. 103315
27
explained in In re Diamond Walnut Growers, Inc. and Sunsweet
Growers Inc., 204 USPQ 507, 511 (TTAB 1979); that here the
Opposition No. 103315
28
two applicants have achieved “100 years of unmatched
consistent quality”; that there is no requirement that the
parties enter a written agreement or that there be a formal
partnership or joint venture; that there is no requirement
that only jointly produced products merit or qualify for
joint trademark ownership; that “where the rights of joint
owners have been recognized generally have been instances
where common sense acceptance of how a mark is used in the
marketplace required such an acknowledgment to reflect
actual consumer understanding” (brief, p. 23); that
protecting the mark SWISS ARMY for knives in the name of the
only producers of authentic SWISS ARMY knives furthers the
basic premises of trademark law of preventing consumer
confusion and protecting the owner’s rights.
Section 1 of the Trademark Act, 15 U.S.C. §1051,
provides that “[t]he owner of a trademark used in commerce
may request registration....” See also, Section 45 of the
Trademark Act, 15 U.S.C. §1127 for a definition of “Person,
juristic person.” TMEP §803.03(d) (Third Edition 2002)
explains that “[a]n application may be filed in the name of
joint applicants or joint owners. ... Joint applicants are
not the same as a joint venture. A joint venture is a
single applicant, in the same way that a partnership is a
single applicant.”
Opposition No. 103315
29
In order to prevail on this issue, opposer must show
that the individual applicants are not both owners of the
mark SWISS ARMY for multifunction pocketknives. Opposer has
failed to do so. In fact, the evidence is to the contrary
that both applicant entities have ownership rights in the
mark and they share ownership of the mark for these involved
goods. The fact that there is no written agreement between
the two joint applicant corporations is not fatal to their
joint ownership, as the record clearly establishes that
these two entities have an agreement regarding quality of
the goods and the use of the mark SWISS ARMY. Moreover, the
Swiss government placed Victorinox A.G. and Wenger S.A. into
a cooperative relationship by requiring each to share the
franchise of making knives for the Swiss military about 100
years ago; and applicants have never disagreed about the
rights of each other in the mark SWISS ARMY for knives.
We find that applicants Victorinox A.G. and Wenger S.A.
are proper joint applicants.26 See In re Polar Music
International AB, 714 F.2d 1567, 221 USPQ 315, 318 (Fed.
Cir. 1983); Taco Cabana International, Inc. v. Two Pesos,
26 Informationally, we note of interest two documents made of
record in this case: (1) applicants’ Exhibit No. 25 introduced
in the Charles Elsener deposition, which is a copy of United
Kingdom Registration No. 2043590 issued November 6, 1995 to
Victorinox A.G. and Wenger S.A. for the mark SWISS ARMY for
“multifunctional pocketknives; all being made in Switzerland,”
and (2) applicants’ Exhibit K, which includes a letter from the
Swiss Military Department acknowledging the “joint exclusive
rights” of Victorinox A.G. and Wenger S.A. in the mark SWISS ARMY
for multifunction pocketknives.
Opposition No. 103315
30
Inc., 932 F.2d 1113, 19 USPQ2d 1253, 1259 (5th Cir. 1991),
aff’d 505 U.S. 763 (1992); In re Diamond Walnut Growers,
supra; and Ex parte Pacific Intermountain Express Co., 111
USPQ 187 (Comm. 1956). See also, 2 J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition, §16:41 and
“Author’s Comment” in §16:45 (4th ed. 2001).
Single Source of Origin
Opposer argues that a term cannot serve as a trademark
if it does not indicate a single source of origin of the
goods; that the term SWISS ARMY is not a trademark for
multifunction pocketknives because it does not indicate a
single commercial source of origin; that Victorinox A.G. and
Wenger S.A. do not manufacture a single product, but rather
they are competitors who separately manufacture their goods
and offer them to the purchasing public.
In response, applicants argue as follows:
[H]ere, the Swiss government placed
Victorinox and Wenger into a cooperative
relationship by requiring each to share
the franchise of making folding knives
for the Swiss military. In like cases,
where governing authorities have decreed
the conditions for use or non-use of a
mark, courts consistently have applied
the principle that the law abhors a
forfeiture by refusing to find a loss of
rights. (Citations and footnote
omitted.) The forfeiture Opposer seeks
here would be particularly inappropriate
since the government-decreed sharing of
the Swiss Army knife franchise entailed
neither a cessation of sales nor an
Opposition No. 103315
31
impairment of quality control standards,
but rather required both manufacturers
to satisfy the very highest standards
possible, led the two companies into a
cooperative relationship, and hence
helped establish the brand’s singular
reputation for consistent quality.
(Emphasis in original.)
We acknowledge that this case presents a situation with
unusual, unique circumstances. It is true that Victorinox
A.G. and Wenger S.A. are competitors in the sense that, for
example, they compete for sales of their multifunction
pocketknives; they use different distributors in the United
States27; they do not inspect each other’s facilities; and
they do not share patents or technology information.
However, it is also true that, for example, these two
corporations for over 100 years have never disputed their
shared rights in the mark SWISS ARMY; that for over 50
years they have been the only sources of SWISS ARMY brand
pocketknives in the United States; that they both use the
same suppliers of the materials (e.g., steel, aluminum)
needed to make SWISS ARMY multifunction pocketknives; that
27 The stipulation of the parties (filed May 5, 2002) regarding
Swiss Army Brands, Inc. and Precise Imports, Inc. makes clear
that these two entities are the exclusive U.S. distributors of
Victorinox A.G. and Wenger S.A., respectively; that the U.S.
distributors do not have a written agreement between themselves
regarding their distribution of SWISS ARMY pocketknives; that
they do not claim to own the trademark SWISS ARMY for knives;
that these distributors compete with regard to the distribution
and marketing of the pocketknives; that the distributors do not
possess any documents concerning the license between the two
joint applicant corporations; and that the distributors have no
direct knowledge of the terms of the oral agreement between the
joint applicants Victorinox A.G. and Wenger S.A.
Opposition No. 103315
32
they make the soldier’s knife to identical specifications
(as required by the Swiss military) and, by agreement
between the companies, they make all SWISS ARMY brand
pocketknives to the same specifications. In addition,
Victorinox A.G. and Wenger S.A. cooperate not only on the
specifications for manufacturing SWISS ARMY brand
pocketknives, but also on the quality control of the
pocketknives they produce; and they cooperate in enforcing
their trademark rights as against third parties.
We certainly do not disagree with the general
propositions that a trademark is used by a manufacturer or
merchant to distinguish its goods from those manufactured or
sold by others, and that a trademark must be used in a
manner calculated to project to consumers that the goods
originate from a single source. However, as argued by
applicants, where two entities have a long-standing
relationship and rely on each other for quality control, it
may be found, in appropriate circumstances, that the
parties, as joint owners, do represent a single source. See
In re Polar Music International AB, supra; James Burrough
Ltd. v. Sign of the Beefeater, Inc., 540 F.2d 266, 192 USPQ
555, 563 (7th Cir. 1976)(“The trademark laws exist not to
‘protect’ trademarks, but, as indicated above, to protect
the consuming public from confusion, concomitantly
protecting the trademark owner’s right to a non-confused
Opposition No. 103315
33
public”); and Coca-Cola Bottling of Shreveport v. Coca-Cola
Co., 696 F.Supp. 97 (D.C. Del. 1988)(“...the defendant’s
contention that joint ownership is frowned upon in trademark
law is of no moment....The defendant goes too far in
contending that joint ownership of the ‘Coca-Cola’ mark ‘is
unworkable and fundamentally inconsistent with basic
principles of trademark law.’ In the Court’s view, in the
case of Coke products, rather than creating a likelihood of
confusion in the minds of the public as to source, joint
ownership better represents reality. ... The bottlers and
the Company share responsibility for the quality of the
product.”).
In the circumstances of this very unusual case now
before us, we find that SWISS ARMY is a trademark
essentially indicating a single source in these joint
applicants.
Genericness
The critical issue in determining genericness is
whether members of the relevant public primarily use or
understand the designation sought to be registered to refer
to the genus or category of goods or services in question.
See H. Marvin Ginn Corp. v. International Association of
Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir.
1986). In making our determination, we follow the two-step
Opposition No. 103315
34
inquiry set forth in that case and reaffirmed in In re
American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832
(Fed. Cir. 1999), namely:
(1) What is the genus or category of goods at
issue?, and
(2) Is the designation sought to be registered
understood by the relevant public primarily to
refer to that genus or category of goods?
“The correct legal test for genericness, as set forth
in Marvin Ginn, requires evidence of ‘the genus of goods or
services at issue’ and the understanding by the general
public that the mark refers primarily to ‘that genus of
goods or services.’” American Fertility Society, 51 USPQ2d
at 1836. That is, do the members of the relevant public
understand or use the term sought to be registered to refer
to the genus of the goods and/or services in question?
The genus or category of goods involved in this case is
“multifunction pocketknives,” as the goods are identified in
applicants’ application. During the discovery testimony of
Jack Dweck, he had difficulty defining precisely what “SWISS
ARMY” was generic for. For example, he identified “Swiss
Army knives” as “having red handles,” but later he
acknowledged that he knew they were not all red, but most
consumers believe they are all red (dep., pp. 97 and 101).
The record shows that applicants have sold SWISS ARMY knives
in other colors (e.g., black, white, blue, silver, green)
for many years (some of those colors since 1976). He also
Opposition No. 103315
35
identified the generic characteristics of “Swiss Army
knives” as being “smooth” and not having rivets on the sides
(dep., p. 104). However, the record shows that applicants
sell multifunction pocketknives with wooden handles and
grainy handles and some have rivets on the sides. Applicant
offers that the generic names to describe the “genus” of its
involved goods include “multifunction pocketknife,” “jack-
knife,” “pocketknife,” “penknife,” and “folding knife.”
In considering the understanding of the relevant
public, we must first determine who comprises the public for
the identified goods. See Stocker v. General Conference
Corp. of Seventh-day Adventists, 39 USPQ2d 1385, at 1394
(TTAB 1996). In this case, we find the relevant public is
ordinary consumers in the United States.
As previously stated, it is opposer’s burden to
establish, by a preponderance of evidence, that the applied-
for mark is generic. During its testimony in chief, opposer
submitted 63 exhibits to prove its case. These exhibits
include various papers (e.g., complaint, pre-trial order,
pages from transcripts of testimony, final court decisions,
a settlement agreement) from various court cases (e.g.,
Forschner v. Arrow, Forschner v. International Branded
Cutlery, Inc., Forschner v. Precise, and a case before the
International Trade Commission); a few letters from
Forschner to Victorinox A.G.; a page from a book The Knife
Opposition No. 103315
36
and Its History28; three otherwise unidentified
advertisements but listed in opposer’s notice of reliance as
advertisements for Wenger S.A.; a page from Wenger S.A.’s
catalog; a few Internet web site pages and a few entries
from encyclopedias and dictionaries; nineteen reported court
decisions in miscellaneous cases in which the judge referred
to “Swiss Army knife/knives” therein; nine articles from
various newspapers; a 1979 letter from Victorinox A.G.
regarding an article in the “San Francisco Chronicle,” and a
1975 “Overall Business Study” Report for Forschner and
Victorinox.
Applicant submitted evidence including the testimony of
Victorinox A.G.’s president, of Wenger S.A.’s CEO and of Dr.
Henry Ostberg (a survey expert), as well as notices of
reliance on, inter alia, excerpted sections from various
books, encyclopedias, dictionaries and Internet web sites
and the excerpts from the discovery deposition of Jack
Dweck, opposer’s president.
Opposer’s evidence that SWISS ARMY is generic for
multifunction pocketknives is weak and/or ambiguous. Much
of opposer’s evidence is not evidence of the perception of
the term by the general public. Many of these materials
would not ordinarily be seen by consumers, e.g., papers
28 The entire book, published in 1984 on the 100th anniversary of
Victorinox A.G., was introduced at the deposition of Charles
Elsener, as Exhibit No. 5.
Opposition No. 103315
37
filed in the different “Forschner” court cases and before
the ITC (and of course, those papers filed therein by
opposer are likely to express opposer’s view regarding the
term SWISS ARMY for knives),29 letters from one businessman
to another, miscellaneous published court decisions, an
“Overall Business Study” report to a corporation.
While opposer submitted dictionary and encyclopedia
excerpts which include references to “Swiss Army knife,” it
is not even clear that all the uses in opposer’s own
references are evidence of generic use of the term.
Moreover, applicants submitted dictionary and encyclopedia
entries which do not include references to “Swiss Army” or
“Swiss Army knife.” This amounts to conflicting credible
evidence going to the public perception of the term.
Most of opposer’s newspaper evidence of use of the term
“Swiss Army knife” is generally ambiguous in that the term
appears in a list of items (e.g., things not allowed at
airports, things to take as camping equipment), or it
appears in the article in such a manner that one cannot
ascertain whether the term is being used generically or
whether it indicates a trademark. That is, the uses in
these publications are ambiguous insofar as they use “Swiss
Army knife” in a manner which could be interpreted as
29 As explained previously herein, the questions of genericness
and registrability of “SWISS ARMY” for multifunction pocketknives
were not issues in the “Forschner” cases.
Opposition No. 103315
38
generic use or as use referring to the source of applicants’
products. These several indeterminate or ambiguous uses of
the term “Swiss Army knife” (which is not the mark
applicants have applied to register--rather the mark is
SWISS ARMY) are certainly not persuasive of the public
perception of the term as the generic name of the goods.
“Swiss Army knife” with a capital “S” and a capital “A”
could be either.
There are perhaps two exceptions -- opposer’s Exhibit
No. 59, “News & Record (Greensboro, NC),” June 16, 1996,
which refers to the “Swiss Army knife” as “...the familiar
red knife – with versions made by Victorinox, Wenger,
Imperial Schrade and Buck....”; and Exhibit No. 58, “The
State Journal-Register (Springfield, IL),” June 13, 1995,
which refers to “...A good quality Swiss Army knife-
Victorinox and Wenger are the top brands-can provide a small
but versatile toolbox in a convenient package....” These
two exceptions are not sufficient to establish that the
public understands the words SWISS ARMY as a generic name
for multifunction pocketknives. We cannot find based on
such a minuscule number of journalistic uses (or misuses) of
“Swiss Army knife” that the mark SWISS ARMY is generic. Use
of “Swiss Army knife” with the “S” and “A” capitalized is
not inconsistent with the use of the term as a trademark.
Opposition No. 103315
39
Opposer’s submission of several uses of “Swiss Army” or
“Swiss Army knife” by judges in their decisions (Exhibit
Nos. 34-52) are also ambiguous, as it is not clear whether
such uses are evidence of generic use or of trademark use.
Moreover, such uses are not persuasive of how the general
public perceives SWISS ARMY for knives because it is highly
unlikely that the general public reads such reported court
decisions.
Applicants, however, have submitted convincing evidence
that SWISS ARMY is their trademark for multifunction
pocketknives. This evidence includes the testimony of Dr.
Henry D. Ostberg, chairman of The Admar Group30, and the
results of the telephone survey his company conducted in
1997 to determine whether the term “Swiss Army” was
perceived as a generic name or as a brand designation. The
findings from the survey were: (1) of a cross-section of
potential purchasers, 81% considered “Swiss Army” to be a
brand name, not a common name; and (2) most consumers (92%)
associated “Swiss Army” with knives or pocketknives,
although 16% believed there was some association between the
“Swiss Army” name and watches.
This survey utilized the generally approved “Teflon
Methodology.” It involved men and women, ages 18 and older,
who indicated an intention to purchase a pocketknife in the
Opposition No. 103315
40
next six months; and it was conducted between November 5 and
18, 1997. Consumers were asked a series of questions,
including whether they thought “Margarine,” “Aspirin,”
“Cellophane,” “Easy Spirit,” “Swiss Army,” “M & M,” and
“Sony” were common names or brand names. The findings were
based on 215 respondent interviews which were completed and
tabulated.
Opposer thoroughly cross-examined applicant’s survey
expert witness regarding the type of survey, the
interviewing, the analysis, etc. However, it is noteworthy
that opposer did not retain a survey expert to critique
applicants’ survey, and did not conduct its own survey (or
elected not to submit such testimony or survey results).
Rather, opposer argued in its brief that applicants’ survey
“is fatally flawed because the survey failed to test the
term at issue in this case – Swiss Army knife. Instead,
consumers were asked whether they believed SWISS ARMY was a
brand name or a generic term.” (Brief, p. 40.) Opposer
further explains in that, for example, “polo” is not
generic, but “polo shirt” is generic.
We have carefully considered the entire testimony of
Dr. Ostberg, and we find no reason to discount his survey.
The survey showing an 81% public recognition rate of SWISS
ARMY (the mark applied for herein) as a brand designation is
30 Opposer stipulated that Dr. Ostberg is qualified in the area of
Opposition No. 103315
41
probative evidence that the term is not a generic name for
pocketknives.
In addition, Jack Dweck, opposer’s president, was asked
in his discovery deposition, whether he was aware of
importers or manufacturers of multifunction pocketknives,
other than applicants, who used the name SWISS ARMY on
knives, or the packaging or the promotional materials for
knives. He answered “yes,” and then explained there were
two companies (Azad and DME) he knew of because of
proceedings against them by Forschner. Other than those
two, he was aware of no others. (Dep., pp. 91-93). When
questioned further on this matter, i.e., asked specifically
if he had seen any knife made by Azad or DME bearing the
mark SWISS ARMY, he answered that he saw an advertisement in
the late 1980s or early 1990s that may have been DME’s ad
and it may have appeared in “Parade Magazine,” but he could
not be sure, nor could he recall whether the words SWISS
ARMY were used on the knife or somewhere in the ad copy.
(Dep., pp. 93-95.)
Opposer’s assertion in its reply brief that applicants’
own evidence establishes that the term SWISS ARMY is generic
is simply neither accurate nor persuasive in this case.
While we have no doubt that opposer strongly believes
the term SWISS ARMY is generic for multifunction
consumer surveys. (Ostberg dep., p. 4.)
Opposition No. 103315
42
pocketknives, we likewise have no doubt that opposer has
utterly failed to prove that claim.
In sum, we find that opposer lacks standing to bring
this opposition; and that opposer has failed to prove any of
the claims asserted in the notice of opposition. (We also
find that applicants did not establish a factual basis for
their affirmative defenses of estoppel and lack of capacity
to oppose.)
Decision: The opposition is dismissed.