Baseball Express, Inc.

Trademark Trial and Appeal Board

Apr 11, 2003

No. 75795970 (T.T.A.B. Apr. 11, 2003)

Mailed: 11 APR 2003
Paper No. 15
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Baseball Express, Inc.
________
Serial No. 75/795,970
_______
Pamela B. Huff of Cox & Smith, Incorporated for Baseball
Express, Inc.
Lourdes D. Ayala, Trademark Examining Attorney, Law Office
106 (Mary Sparrow, Managing Attorney).
_______
Before Cissel, Hanak and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
Baseball Express, Inc. (applicant) filed an
application to register the mark SOFTBALL SALES in typed
form for services ultimately identified as “retail services
featuring softball equipment, namely, balls, bases, bats,
belts, chest protectors, equipment bags, face protectors,
gloves, hats, helmets, jerseys, leg protectors, pants,
shoes, and socks, available through catalogs and a global
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE
TTAB
Ser. No. 75/795,970
2
computer network” in International Class 35. The
application (Serial No. 75/795,970) was filed on September
9, 1999, and it claimed a date of first use and a date of
first use in commerce of February 1, 1987.
The examining attorney refused registration on the
ground that the mark SOFTBALL SALES is merely descriptive
of the services. 15 U.S.C. § 1052(e)(1). The examining
attorney also advised applicant that she could not
recommend amending the application to the Supplemental
Register because the mark “appears to be generic.” Office
Action dated February 11, 2000 at 1.
In response, applicant argued that its mark was not
merely descriptive, but it also amended its application to
seek registration under Section 2(f) of the Trademark Act.
15 U.S.C. § 1052(f). See also Applicant’s Brief at 7:
“Applicant’s position is that SOFTBALL SALES is not merely
descriptive.”1
When the refusals on the basis of genericness,
descriptiveness, and lack of acquired distinctiveness were
made final, applicant filed a notice of appeal.
1 The examining attorney’s only argument regarding the issue of
acquired distinctiveness is that “since this mark appears to be
generic and fails to function as a mark, the matter is thus
unregistrable. The claims of acquired distinctiveness by the
applicant are insufficient to overcome the generic refusal.”
Brief at 6. Thus, the examining attorney has conceded that if
Ser. No. 75/795,970
3
GENERICNESS
The primary issue in this case is whether the term
SOFTBALL SALES is generic for applicant’s catalog and
Internet services featuring softball equipment. The Court
of Appeals for the Federal Circuit has held that: “The
critical issue in genericness cases is whether members of
the relevant public primarily use or understand the term
sought to be protected to refer to the genus of goods or
services in question.” H. Marvin Ginn Corp. v. Int’l
Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ
528, 530 (Fed. Cir. 1986). Ginn goes on to explain that:
Determining whether a mark is generic therefore
involves a two-step inquiry: First, what is the genus
of goods or services at issue? Second, is the term
sought to be registered or retained on the register
understood by the relevant public primarily to refer
to that genus of goods or services?
Id.
First, we discuss the evidence that the examining
attorney has made of record (emphasis added) that the term
“softball sales” is used to refer to the sale of softball
products.
“From a product standpoint, there is more selection
and variety,” explains Mark Talarico, Easton’s
director of U.S. baseball and softball sales.
Sporting Goods Business, June 10, 1998.
the mark is not generic, it is registrable under the provisions
of Section 2(f) of the Trademark Act.
Ser. No. 75/795,970
4
A number of outfitters who had strong baseball and
softball sales this past season will also be attending
the show, shopping primarily for high-end goods.
Sporting Goods Business, July 1991.
Support for the SCMAF by softball manufacturers
Dudley, John deBeer and Worth led to a contract which
pays the organization 50 cents per dozen after the
first $2,000 of yearly softball sales.
Los Angeles Times, July 11, 1985.
Baseball/softball sales remained soft, totaling some
$161 million for the year.
Chain Store Age – General Merchandise Edition, July
1984.
Today, merchants say they’d have a tough time if they
had to rely solely on baseball or softball sales.
Detroit News, March 24, 1998.
U.S. Justice Dept. moves to settle antitrust suit
against Amer Softball Assn, Dudley Sports and H
Harwood & Sons for monopolizing softball sales.
Wall Street Journal, December 31, 1973.
Applicant has also submitted an affidavit from the
Executive Director of the American Softball Association
identifying applicant’s services as the “retail sales of
softball equipment”). Radigonda affidavit, p. 2 (emphasis
added).
In addition, we look at the individual words in the
term SOFTBALL SALES. “Softball” is defined as a “variation
of baseball played on a smaller diamond with a larger,
softer ball pitched underhand” and the “ball used in
softball.” Webster’s II New Riverside University Dictionary
Ser. No. 75/795,970
5
(1984).2 A review of the record leaves no doubt that
applicant’s services involve softball equipment. Indeed,
applicant’s identification of services is identified as
retail services featuring softball equipment, namely,
balls, bases, bats, and other softball equipment.
Applicant’s specimens and catalog feature softballs,
softball bats, softball gloves, and other softball
equipment. The term “softball” is obviously a generic term
for softballs and other softball equipment.
The other word in applicant’s mark is “sales.” That
term is defined as the “exchange of goods or services for
an amount of money or its equivalent; the act of selling.”
See Office Action dated September 15, 2000 at 2. A review
of the record supports a finding that applicant’s services
involve the sale of softball equipment. The application
originally identified its services as “retail sales of
softball equipment…” Applicant itself refers people to its
website to: “Check out all the features on this site – Q&A
‘Ask The Umpire” Tournament Directory, Softball Links and
Equipment sales.” Balls and Strikes Softball, insert after
page 34 (emphasis added, capitalization in original).
2 We take judicial notice of this definition. University of
Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594,
596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).
Ser. No. 75/795,970
6
Applicant’s catalog shows that applicant is involved in the
sale of softball equipment. The examining attorney has
also included Internet printouts that show that the term
“sales” is commonly used in association with such items as
shoes, clothing, cars, and furniture.
Clearly, applicant’s services involve the retail “sale
of softball equipment” or “softball sales.” Just as the
sales of other products are referred to as “furniture
sales” or “shoe sales,” applicant’s term defines the genus
of retail sales in the field of softball equipment.
Next, we look at whether the term is understood by the
relevant public to refer to that genus. Ginn, 228 USPQ at
530. “Evidence of the public's understanding of the term
may be obtained from any competent source, such as
purchaser testimony, consumer surveys, listings in
dictionaries, trade journals, newspapers, and other
publications.” In re Merrill Lynch, Fenner and Smith Inc.,
828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987). The
critical issue in genericness cases is whether members of
the relevant public primarily use or understand the term
sought to be protected to refer to the genus of goods or
services in question.” Ginn, 228 USPQ at 530. Here, the
relevant public would understand that the combined term
“softball sales” refers to the genus of the services.
Ser. No. 75/795,970
7
Combining generic words can result in the combined term
also being generic. See In re Gould Paper Corp., 834 F.2d
1017, 5 USPQ2d 1110 (Fed. Cir. 1987) (SCREENWIPE generic
for a wipe for cleaning television and computer screens);
In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215 (CCPA
1978) (GASBADGE at least descriptive for gas monitoring
badges; three judges concurred in finding that term was the
name of the goods); In re American Institute of Certified
Public Accountants, 65 USPQ2d 1972 (TTAB 2003) (CPA
EXAMINATION found generic). However, a failure to provide
evidence that the public uses the term to refer to the
genus of the goods can result the Office failing to satisfy
its burden. In re American Fertility Society, 188 F.3d
1341, 51 USPQ2d 1832 (Fed. Cir. 1999) (SOCIETY FOR
REPRODUCTIVE MEDICINE held not generic for association
services because there was no evidence of generic use of
the term); In re Dial-A-Mattress Operating Corp., 240 F.3d
1341, 57 USPQ2d 1807, 1811 (Fed. Cir. 2001) (“There is no
record evidence that the relevant public refers to the
class of shop-at-home telephone mattress retailers as ‘1-
888-M-A-T-R-E-S-S’”). Here, the evidence discussed above
demonstrates that the public would understand that
applicant’s term refers to the genus of the services. We
Ser. No. 75/795,970
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have evidence that the relevant public refers to, or
understand, that applicant’s services are “softball sales.”
Our decision in this case is reinforced by the Eighth
Circuit’s decision in the case of Cellular Sales Inc. v.
MacKay, 942 F.2d 483, 19 USPQ2d 1712 (8th Cir. 1991). In
that case, the court held that the “terms ‘cellular’ and
‘sales’ individually are generic in nature. Moreover, even
when combined, ‘cellular sales’ does not describe a
particular product, but instead describes the sale of
cellular telephone equipment, which is a genus or class of
products.” Id. at 1713-14. The court concluded that the
“term ‘cellular sales’ defines this category of companies
selling cellular telephone equipment.” Id. at 1714.
Similarly, “softball sales” defines companies selling
softball equipment.
Applicant argues that its mark is not generic and it
refers to two affidavits and a court decree as evidence to
support its position. We start by noting that the court
decree is a consent judgment. “The agreement to terminate
the civil action must be considered for what it is – an
agreement or a consent decree whereby the parties were able
to settle their differences and avoid the cost of going to
trial and possible imposition of money damages. This does
not carry the probative effect or persuasiveness that a
Ser. No. 75/795,970
9
judgment after a trail on the merits would have.” In re
Illinois Bronze Powder & Paint Co., 188 USPQ 4459, 462-63
(TTAB 1975). While we have consider the consent degree, we
do not find it persuasive.
Applicant also refers to two affidavits as evidence
that its mark is not generic. The first affidavit is from
Ron Radigonda, Executive Director of the Amateur Softball
Association (ASA). Mr. Radigonda declares that “the mark
SOFTBALL SALES does not represent ordinary descriptive
words. Instead, ASA recognizes SOFTBALL SALES as
identifying the source of Softball Sales, Inc.’s services
(retail sales of softball equipment through catalogs and
the Internet).” Affidavit, p. 2. It is significant that
Mr. Radigonda and the ASA are not ordinary consumers. The
ASA and applicant are in a business relationship. In its
Balls and Strikes Softball magazine of record, the “Letter
from the Editor” (page 4) reports that “[i]n 2000 and 2001,
the Amateur Softball Association and Softball Sales will
join forces to create the first softball mag-a-log… The
relationship with Softball Sales is something that we hope
will be positive for everyone. No where else can you get
the latest news on ASA/USA Softball and order all of your
equipment for the upcoming season. And no other softball
catalog brings you the selection that Softball Sales
Ser. No. 75/795,970
10
offers.” Indeed, a review of affiant’s magazine reveals
that approximately half the pages of the magazine consist
of applicant’s advertisements and catalog and the front
cover announces “SOFTBALL SALES See page 35 for our full
catalog.” Inasmuch as applicant and affiant’s organization
are in a business relationship, it is not surprising that
affiant recognizes the term SOFTBALL SALES as identifying
affiant’s business partner’s services. Therefore, we do
not give the affidavit much weight. In re David Crystal,
Inc., 296 F.2d 771, 132 USPQ 1, 2 (CCPA 1961) (“None of
[the affidavits] are from the purchasing public except in
the case of two affiants who wear the socks and who are
buyers for stores in which socks are sold. At best, these
affidavits merely assert that affiants believe that what
amounts to a very small portion of the purchasing public
identify these socks as those of applicant”); In re Soccer
Supply Company, Inc., 507 F.2d 1400, 184 USPQ 345, 348
(CCPA 1975) (Four affidavits from soccer coaches and a
retailer “do not establish an association of applicant’s
mark with a single source by other than a small number of
purchasers”).
Applicant’s other affidavit is from a person
identified as Jean Stout who, besides stating that she is
Ser. No. 75/795,970
11
over 18 and executing the affidavit voluntarily, submits
that:
I frequently purchase high-end softball equipment. In
that regard, I have purchased several items from
Softball Sales, Inc. through its SOFTBALL SALES
catalog. To me, the mark SOFTBALL SALES is not an
ordinary, descriptive, or generic term. Instead, it
identifies the source of Softball Sales, Inc.’s
equipment. When I see the SOFTBALL SALES mark, it
indicates to me the origin of the services I’m
receiving (Softball Sales, Inc.’s services) and
distinguishes those retail sales services from the
services of others.
While we give the affidavit some weight, the affiant
has provided little basis for her belief that the mark is
“not an ordinary, descriptive or generic term,” especially
since the affiant refers to the services as “retail sales
services” of softball equipment. Even if affiant is a
typical purchaser, the affidavit simply indicates that a
single purchaser recognizes applicant’s term as a
trademark. While this is entitled to some weight, it is
hardly significant evidence of non-genericness or even non-
descriptiveness.
The only other affidavit of record is that of
applicant’s president. To the extent that the affidavit
addresses the genericness issue, we note that the
“affidavit of the president of the applicant-company comes
from an interested party and we give it little weight.”
David Crystal, 132 USPQ at 2. Applicant’s president also
Ser. No. 75/795,970
12
addresses the volume of sales, Internet website hits, and
the number of catalogs applicant has distributed.
Regarding the Internet hits, the record shows that
applicant’s website is advertised as www.softball.com not
www.softballsales.com so applicant’s domain name does not
include the applied-for term. See specimens; and Balls and
Strikes Softball, first insert after page 34. SOFTBALL
SALES would simply be a term that appears on the site.
Applicant’s sales and advertising information is not
evidence that its term is not generic. This evidence does
not show that purchasers recognize applicant’s term as a
trademark. In re Leatherman Tool Group Inc., 32 USPQ2d
1443, 1450 (TTAB 1994) (“Absent, therefore, anything to
link applicant's gross sales of over $20 million and
advertising expenditures of $200,000, which were generated
and spent in connection with its marketing of in excess of
one million tools during a nearly ten-year period, with use
in contexts which would condition customers to react to or
recognize the designation ‘POCKET SURVIVAL TOOL’ as an
indication of source rather than as a description of a
category of product, there is no convincing basis for
finding that such designation functions other than as a
generic name”).
Ser. No. 75/795,970
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If applicant is arguing that no other competitor is
using the same term, we note that at least one softball
equipment supplier’s spokesman is identified as the
“director of U.S. baseball and softball sales.” Sporting
Goods Business, June 10, 1998. Even if no other competitor
were using the term, that would not establish that
applicant’s term, was not generic. A product or a service
may have more than one generic name. Roselux Chemical Co.
v. Parsons Ammonia Co., 299 F.2d 855, 132 USPQ 627, 632
(CCPA 1962). Even novel ways of describing products have
been held to be generic. Clairol, Inc. v. Roux
Distributing Co., 280 F.2d 863, 126 USPQ 397, 398 (CCPA
1960) (HAIR COLOR BATH, novel way of describing liquid for
hair coloring, held generic).
We find that the examining attorney has provided clear
evidence that SOFTBALL SALES is generic and applicant’s
evidence does not rebut the examining attorney’s case of
genericness. In re Central Sprinkler Co., 49 USPQ2d 1194,
1196 (TTAB 1998).
Lastly, we address the issue of whether applicant’s
term is merely descriptive. For a mark to be merely
descriptive, it must immediately convey knowledge of the
ingredients, qualities, or characteristics of the services.
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir.
Ser. No. 75/795,970
14
1987); In re Quik-Print Copy Shops, Inc., 616 F.2d 523, 205
USPQ 505, 507 (CCPA 1980). To be “merely descriptive,” a
term need only describe a single quality or property of the
services. International Nickel Co., 262 F.2d 806, 120 USPQ
293, 294 (CCPA 1959). Descriptiveness of a mark is not
considered in the abstract, but in relation to the
particular goods or services for which registration is
sought. Abcor Dev., 200 USPQ at 218. “As often stated,
genericness is the ultimate in descriptiveness.” Central
Sprinkler, 49 USPQ2d at 1199. Here, the record supports a
finding that the term SOFTBALL SALES, when viewed in
relationship to applicant’s services, would immediately
inform prospective purchasers that applicant’s services
involve the sale of softball equipment. Therefore, we find
that SOFTBALL SALES is also merely descriptive.
CONCLUSION
The term SOFTBALL SALES is merely descriptive and
generic for the services recited in the application.
Inasmuch as the examining attorney has not objected to
applicant’s claim of acquired distinctiveness on the
merits, if the genericness refusal is eventually
overturned, applicant’s term would be registrable under the
provision of Section 2(f) of the Trademark Act.
Ser. No. 75/795,970
15
Decision: The refusal to register is affirmed.