Brink's Mfg. Co., Inc.

Trademark Trial and Appeal Board

Dec 27, 2000

No. 75472290 (T.T.A.B. Dec. 27, 2000)

12/27/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Brink’s Mfg. Co., Inc.
________
Serial No. 75/472,290
_______
Edmund J. Sease of Zarley McKee Thomte Voorhees & Sease for
Brink’s Mfg. Co., Inc.
David Stine, Trademark Examining Attorney, Law Office 114
(Margaret Le, Managing Attorney)
_______
Before Simms, Hairston and Bottorff, Administrative
Trademark Judges.
Opinion by Simms, Administrative Trademark Judge:
Brink’s Mfg. Co., Inc. (applicant), a Minnesota
corporation, has appealed from the final refusal of the
Trademark Examining Attorney to register the mark VAN
LADDER for truck-mounted work platforms and aerial booms.1
The application has been amended to seek registration under
1 Application Serial No. 75/472,290, filed April 22, 1998, based
upon allegations of use since September 7, 1968. In the original
application, applicant claims ownership of Supplemental
Registration No. 904,505, issued December 15, 1970, of the mark
VAN LADDER and design. Office records show that this
registration has expired.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/472,290
2
the previsions of Section 2(f) of the Act, 15 USC §
1052(f).
The Examining Attorney has refused registration under
Section 2(e)(1) of the Act, 15 USC § 1052(e)(1), arguing
that applicant’s mark is generic as applied to van-mounted
ladders, and that, even if applicant’s mark is not generic,
applicant’s evidence of acquired distinctiveness is
insufficient to permit registration on the Principal
Register. Applicant and the Examining Attorney have
submitted briefs.2
Essentially, it is the Examining Attorney’s position
that applicant’s goods are ladders for use on vans (among
other vehicles), in other words, van ladders. Relying upon
dictionary definitions, which the Examining Attorney
submitted with his appeal brief, the Examining Attorney
argues that the mere combination of two words, each with
separately generic character, into a compound word does not
necessarily produce a registrable term. In this case, the
Examining Attorney argues that applicant’s combination is
generic since it would be perceived by the purchasing
2 On page 14 of applicant’s appeal brief, applicant requested an
oral argument. Trademark Rule 2.142(e)(1) states that a request
for oral hearing should be by separate notice. Because applicant
did not request oral argument by separate notice, the request was
not seen until this case was assigned for decision. Accordingly,
and in view of the disposition of this case, the request for oral
argument is considered moot.
Ser. No. 75/472,290
3
public as the common name for applicant’s goods because the
combination would have no different meaning than its
constituent words. In this regard, the Examining Attorney
relies upon In re Gould Paper Corp., 835 F.2d 1017, 5
USPQ2d 1110 (Fed. Cir. 1987).
Even if the term VAN LADDER were not considered
generic, the Examining Attorney argues that, because of the
highly descriptive nature of applicant’s mark, a greater
showing of acquired distinctiveness is required. In this
regard, the Examining Attorney criticizes the declaration
of the inventor of applicant’s device in several respects.
The Examining Attorney maintains that the declaration
contains no evidence of the perception of applicant’s mark
in the relevant trade; argues that the fact that
competitors use different terms does not mean that
applicant’s mark is not generic, because products may have
more than one generic name; and argues that the declaration
is only circumstantial evidence in that there is no
evidence of actual recognition of applicant’s mark as an
indication of origin in the relevant market. The Examining
Attorney states that the commercial success of a product
per se does not necessarily show that applicant’s mark has
become distinctive of its goods.
Ser. No. 75/472,290
4
Genericness
Applicant’s attorney and the Examining Attorney do not
dispute the test for determining genericness. The primary
significance of a mark to the relevant public is the test
for determining whether a mark is generic. See Section
14(3) of the Act, 15 USC § 1064(3). A term is generic if
it names the class of goods or services to which it is
applied. H. Marvin Ginn Corp. v. International Association
of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir.
1986). As noted, the test for determining whether a term
is generic is its primary significance to the relevant
public; that is, whether the term is used or understood, by
purchasers or potential purchasers of the goods at issue,
primarily to the refer to the class of such goods. Magic
Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed.
Cir. 1991); In re Merrill Lynch, Pierce, Fenner & Smith,
Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987); and H.
Marvin Ginn Corp., supra. Evidence of the relevant
public’s understanding of a term may be obtained from any
competent source, including direct testimony of consumers,
consumer surveys, newspapers, magazines, dictionaries,
catalogs and other publications. In re Merrill Lynch,
Pierce, Fenner & Smith, Inc., supra, and In re Northland
Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed.
Ser. No. 75/472,290
5
Cir. 1985). The Office has the burden of proving
genericness with clear evidence. In re Merrill Lynch,
Pierce, Fenner, & Smith Inc., supra.
The only evidence which the Examining Attorney has
submitted are dictionary definitions. As noted above, the
Examining Attorney has placed strong reliance upon the
Gould decision. However, we believe that the more recent
decision, In re America Fertility Society, 188 F.3d 1341,
51 USPQ2d 1832 (Fed. Cir. 1999), substantially limits
Gould. In America Fertility, the Board had found that
evidence, such as dictionary definitions, third-party
applications and registrations as well as articles from the
Nexis computer search system reflecting uses of the term
“reproductive medicine,” were sufficient evidence to
conclude that the phrase SOCIETY FOR REPRODUCTIVE MEDICINE
was a generic name of applicant’s services. The Court
reversed, stating that the Board had not applied the
correct test for genericness. The Court said that the
Office must be able to satisfy the elements of the Marvin
Ginn test--that is, that there be evidence that the term
sought to be registered was the genus of the goods at issue
and that there be evidence of the understanding by the
relevant public that the asserted mark refers primarily to
that genus of goods. The Court stated, at 1836-37:
Ser. No. 75/472,290
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Aptness is insufficient to prove
genericness… As the PTO produced no evidence at
all of the public’s understanding of the phrase
as it relates to the Society’s services, it
clearly failed to carry its burden. The Board
cannot simply cite definitions and generic uses
of the constitute terms of a mark, or in this
case, a phrase within the mark, in lieu of
conducting an inquiry into the meaning of the
disputed phrase as a whole to hold a mark, or a
phrase within the mark, generic.
In contrast to Gould, this is not a case
where the PTO has clearly proven that the mark as
a whole is no less generic than its constituents.
Rather, this is a case where, like Merrill Lynch
and Marvin Ginn, there was no evidence produced
that the term is used by the relevant public to
refer to a similar class (in the instance case,
the class of services provided by societies).
Therefore, the Board erred in finding that the
proven genericness of the words, “society,” and
“reproductive medicine,” without more rendered
generic the phrase SOCIETY FOR REPRODUCTIVE
MEDICINE.
Gould is limited, on is facts, language, and
holding, to compound terms formed by the union of
words. It is legally erroneous to attempt to
apply the language quoted below to phrases
consisting of multiple terms, which are not
“joined” in any sense other than appearing as a
phrase.
The compound immediately and
unequivocally describes the purpose,
function and nature of the goods as
Gould itself tells us. Gould has
simply joined the two most pertinent
and individually generic terms
applicable to its product, and then
attempts to appropriate the ordinary
compound thus created as it trademark.
In this instance, the terms remain as
generic in the compound as
individually, and the compound thus
created is itself generic.
Ser. No. 75/472,290
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Gould, 834 F.2d at 1019, 5 USPQ2d at 1112
(citations omitted).
The correct legal test, which was not
applied by the Board, is set forth in Marvin Ginn
and is to be applied to a mark, or a disputed
phrase thereof, as a whole, for the whole may be
greater than the sum of its parts. Properly
interpreted, Gould does not justify a short-cut
around this test, but rather found that the
evidence presented met this burden…
The Board erred in applying the wrong legal
test, which it derived from Gould, to the facts
at issue here. The correct legal test for
genericness of phrases, 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.” Gould
provides additional assistance in determining the
genericness of compound words only, and holds
that if the PTO can prove (1) the public
understands the individual terms to be generic
for a genus of goods and species; and (2) the
public understands the joining of the individuals
terms into one compound word to lend no
additional meaning to the term, the PTO has
proven that the general public would understand
the compound term to refer primarily to the genus
of goods or services described by the individual
terms. The PTO here failed to provide any
evidence that the phrase as a whole, SOCIETY FOR
REPRODUTIVE MEDICINE, has acquired no additional
meaning to the relevant public that the terms
“society” and “reproductive medicine” have
individually. The Board must now apply the
Marvin Ginn test to the phrase as a whole, and
not focus only on the individual terms.
Here, as applicant has pointed out, there is but a single
piece of evidence (supplied by applicant) that the term
“van ladder” has appeared anywhere, and that is in an
editorial appearing in the St. Petersburg Times of March
10, 1989, in the following context:
Ser. No. 75/472,290
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Editor: Before we get a second license
plate, we should be more observant of the one we
have. But how can we when there are trailer
hitches, van ladders, license plate frames,
overhanging truck loads, plus the lights that the
manufacturer installed so we can observe at night
that are not working. In those states that have
two plates, how many times has a moving car
license on the front been copied by law
enforcement? Vehicle violations should be
ticketed not only by the state but also by county
and city law enforcement agencies.
Except for this one instance (where it is arguable that the
term was used to refer to a ladder attached to a van for
climbing to the top thereof, and not to refer to an aerial
ladder and platform of the type sold by applicant), there
is no evidence that this phrase has been exposed to the
public, except by applicant. There is simply no evidence
that the relevant consumers use this term to refer to the
category or type of product made by applicant. Moreover,
as applicant has pointed out, an extension ladder is only a
part of applicant’s goods, which consist of a work platform
mounted on top thereof, there is no dictionary definition
of this term, and there is no evidence of use of this mark
by competitors or by consumers to refer to a category of
product. In view of the paucity of evidence that these
words have been use generically, we cannot say that the
relevant public understands the mark sought to be
registered to refer primarily to a genus or category of
Ser. No. 75/472,290
9
product. The Office has failed to carry its burden of
proof on the issue of genericness.
Acquired Distinctiveness
Having concluded that applicant’s mark is not generic,
we turn to the evidence of secondary meaning, which we
conclude presents a prima facie case of acquired
distinctiveness. In this regard, applicant submitted the
declaration of the inventor of the extension ladder now
made by applicant, covered by a patent issued in 1969.
Among other things, that inventor, Eugene Faulstich, states
that the asserted mark has been used since September 1968
(that is, for over 30 years); that this mark has been
registered by this Office (on the Supplemental Register);
that in the patent covering this device, the term VAN
LADDER has not been used generically to describe the
extension ladder unit anchored on a truck with an
electrically powered shaft connected to a cable which
extends and raises the ladder; that applicant’s product may
be used on a variety of vehicles including service vans,
flatbed, pickup and utility trucks, four-wheel-drive
vehicles, utility vehicles, station wagons and off-road
tractors; that, over the years, millions of dollars in
sales have been realized so that now applicant’s mark is
one of the best known names in the industry; that
Ser. No. 75/472,290
10
competitors do not use this term (as evidenced by brochures
of those companies) and that they are able to compete
effectively without use of applicant’s mark; and that the
generic term for applicant’s goods is “portable aerial
boom/bucket” or simply “aerial lift.”
Upon careful consideration of this declaration, and in
the absence of countervailing evidence, we conclude that
applicant has demonstrated a prima facie case of acquired
distinctiveness. There is adequate circumstantial evidence
of buyer exposure, including the length of time of
applicant’s use of this mark. If we had any doubt in this
matter, that doubt should be resolved in favor of
publication. In re Women’s Publishing Co. Inc., 23 USPQ2d
1876 (TTAB 1992) (DECORATING DIGEST held merely descriptive
but not generic for applicant’s magazines, finding
applicant’s mark to have acquired distinctiveness.
Decision: The refusal of registration is reversed.