Cavco Industries, Inc.

Trademark Trial and Appeal Board

Feb 3, 1998

No. 74661944 (T.T.A.B. Feb. 3, 1998)

Paper No. 13
EWH/HLJ
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB FEB. 3, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Cavco Industries, Inc.
________
Serial Nos. 74/661,944 and 74/661,770
_______
Anna Conyers Kuhn of Baker & Botts, L.L.P. for Cavco
Industries, Inc.
Angela M. Micheli, Trademark Examining Attorney, Law Office
108 (David E. Shallant, Managing Attorney).
_______
Before Simms, Cissel and Hanak, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
On April 17, 1995 Cavco Industries, Inc. (applicant)
filed intent-to-use applications seeking registration of
CEDAR SPRINGS (74/661,770) and CEDAR COURT (74/661,944) for
“prefabricated residental and commericial buildings
manufactured primarily of non-metallic materials.” During
the examination process, applicant disclaimed in each case
the exclusive right to use “CEDAR” apart from the marks in
their entireties. Also, in its appeal brief, applicant
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memorialized a fact that apparently had been conveyed to the
examining attorney by telephone, namely, that applicant’s
prefabricated residential and commercial buildings are not
made of cedar wood. (Applicant’s brief page 1).
In each case, the examining attorney refused
registration pursuant to Section 2(a) of the Lanham
Trademark Act on the basis that applicant’s marks are
deceptive as applied to applicant’s goods.
When the refusal was made final, applicant appealed to
this Board. Applicant and the examining attorney filed
briefs. Applicant did not request a hearing.
As a housekeeping matter, we note that both the
applicant and the examining attorney have filed essentially
identical briefs in these two cases. Thus, although there
are two sets of briefs, we will refer to them in the
singular form.
At page 5 of her brief, the examining attorney
articulates the basis of her Section 2(a) deceptiveness
refusal as follows: “In summary, the evidence of record,
the architectural dictionary, the building books and the
Nexis articles show that cedar is a siding material and that
use of cedar in applicant’s mark would deceive people into
believing that the goods are make of cedar. Accordingly,
the mark must be found to be deceptive as used in the goods
and the refusal under Section 2(a) should be affirmed.” As
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support for her Section 2(a) refusal, the examining attorney
places a great deal of reliance on a prior decision of this
Board where it was held that the mark CEDAR RIDGE was
deceptive “for non-cedar siding products which simulate
cedar.” Evans Product Company v. Boise Cascade Corp., 218
USPQ 160, 163 (TTAB 1983). This case will be discussed at
greater length later in this opinion.
In order for a term to be held deceptive as applied to
particular goods (or services), the examining attorney must
summit evidence which would support an answer of “yes” to
each of the following three questions: (1) Is the term
misdescriptive of the character, quality, function,
composition or use of the goods? (2) If so, are prospective
purchasers likely to believe that the misdescription
actually describes the goods? (3) If so, is the
misdescription likely to affect the decision to purchase?
In re Budge Manufacturing, 857 F.2d 773, 8 USPQ2d 1259, 1260
(Fed. Cir. 1988). Moreover, it has long been held that in
determining whether a mark or term is deceptive, the mark or
term must be considered in its entirety. A.F. Gallun v.
Aristocrat Products, 135 USPQ 459, 460 (TTAB 1962). Thus,
in these two cases, the terms to be considered are CEDAR
SPRINGS and CEDAR COURT, and not the term CEDAR per se.
In considering the first of the Budge questions, we
find that the examining attorney has simply not established
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that either CEDAR SPRINGS or CEDAR COURT is misdescriptive
of the composition of even a part of prefabricated
residential and commercial buildings, namely, the siding
component. Applicant has argued that both CEDAR SPRINGS and
CEDAR COURT evoke images of particular physical locations.
(Applicant’s brief page 2). At page 5 of her brief, the
examining attorney acknowledges that it “may be true … that
the mark[s] may conjure an image of” a particular physica1
location.
We believe that in their entireties, the marks CEDAR
SPRINGS and CEDAR COURT, when applied to entire buildings,
are more likely to evoke the imagine of a physical location
such as a street or a subdivision, as opposed to evoking the
notion that the siding component of these buildings is
necessarily cedar. In this regard, the facts of these two
cases are very different from the facts in Evans Products.
In Evans Products, the goods were non-cedar siding products.
In these cases, the goods are entire buildings, or more
precisely, pre-fabricated residential and commercial
buildings manufactured primarily of non-metallic materials.
More importantly, in Evans Products this Board found “that
the deceptive significance of the term CEDAR for a non-cedar
product is [not] lost by its combination which the word
RIDGE … [because] applicant has acknowledged in its brief
that the term RIDGE suggests the surface configuration [of a
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particular type] of hardboard siding.” 218 USPQ at 164.
Thus, CEDAR RIDGE was found to be deceptive in its entirety
as applied to non-cedar siding because the record revealed
that there was in existence both cedar siding and ridge
siding. In the present cases, the examining attorney has
never indicated that the words SPRINGS and COURT have any
misdescriptive meaning or connotation whatsoever when
applied to buildings or when applied to particular
components of buildings (i.e. the siding).
Because we have found that the first of the three Budge
questions must be answered in the negative, we could stop
our analysis here. However, even if the first Budge
question had been answered in the affirmative, we find that
the examining attorney has failed to show that prospective
purchasers of prefabricated buildings are likely to believe
that the purported misdescription actually describes the
buildings (i.e. the second prong of the Budge test).
Obviously, prefabricated residential and commercial
buildings are very expensive items which would be purchased
only with great care. The examining attorney has never
disputed that the purchase of such a building would involve
numerous “necessary details.” (Applicant’s request for
reconsideration page 3).
Thus, even assuming for the sake of argument that
the marks CEDAR SPRINGS and CEDAR COURT in their entireties
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were misdescriptive of the composition of a component of
prefabricated buildings (which they are not), we find that
prospective purchasers, in negotiating the numerous details
to buy these expensive products, would not be likely to
believe the purported misdescription. Again, comparing
these two cases to Evans Products, we note that purchasers
would, of course, exercise far greater care in the purchase
of an entire building as opposed to merely buying siding
products from retail lumber yards, perhaps in small
quantities.
One final comment is in order. As noted, these are in-
tent-to use applications. Applicant has not yet submitted
any specimens of use. Should applicant’s specimens of use
indicate that applicant, by using the marks CEDAR SPRINGS or
CEDAR COURT, is attempting to convey to the buyers of its
buildings that said buildings have cedar siding or other
cedar components, then this would be evidence of bad intent
on the part of the applicant. In this regard, it should be
noted that in Evans Products, the Board found that in
selecting the mark CEDAR RIDGE, applicant’s own documents
showed “that applicant intended to adopt a mark that
conveyed the impression of authentic cedar.” 218 USPQ at
164. If the present applicant’s specimens of use
demonstrate bad intent, then the examining attorney is not
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bound by this decision from again issuing a refusal pursuant
to Section 2(a).
DECISION: The refusals to register are reversed.
R. L. Simms
R. F. Cissel
E. W. Hanak
Trademark Administrative
Judges, Trademark Trial and
Appeal Board
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