Diamond Machining Technology, Inc.

Trademark Trial and Appeal Board

May 4, 2004

No. 76345344 (T.T.A.B. May. 4, 2004)

Hearing: Mailed:
February 24, 2004 May 4, 2004
Paper No. 15
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Diamond Machining Technology, Inc.
________
Serial No. 76345344
_______
Jeffrey L. Snow of Kirkpatrick & Lockhart LLP for Diamond
Machining Technology, Inc.
Richard A. Straser, Trademark Examining Attorney, Law
Office 114 (K. Margaret Le, Managing Attorney).
_______
Before Quinn, Bucher and Drost, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Diamond Machining Technology, Inc. seeks registration
on the Principal Register of the mark DIAMOND WHETSTONE
for goods identified as “whetstones for sharpening, honing,
deburring and abrading,” in International Class 8.1 The
original application was filed pursuant to the provisions
of Section 2(f) of the Trademark Act, 15 U.S.C. 1052(f).
1 Application Serial No. 76345344 was filed on December 5,
2001 based upon applicant’s allegation of use in commerce since
at least as early as April 26, 1981.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76345344
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This case is now before the Board on appeal from the
final refusal to register on the ground that the
designation DIAMOND WHETSTONE is generic and, thus,
incapable of distinguishing applicant’s services from like
services of others under Section 2(e)(1) of the Act, 15
U.S.C. 1052(e)(1). If the mark is determined not to be
generic but rather merely descriptive, then we must
determine the sufficiency of the Section 2(f) claim of
acquired distinctiveness.
Both applicant and the Trademark Examining Attorney
have briefed the case and both appeared at an oral hearing
held before the Board.
It has been repeatedly stated that “determining
whether a mark is generic … 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?” H. Marvin Ginn
v. International Association of Fire Chiefs, 782 F.2d 987,
228 USPQ 528, 530 (Fed. Cir. 1986). Of course, in a
proceeding such as this, the genus of goods at issue is
based upon the goods set forth in the identification of
Serial No. 76345344
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goods in the application itself. Magic Wand Inc. v. RDB
Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991).
Moreover, the burden rests with the Trademark
Examining Attorney to establish that the mark sought to be
registered is generic for the goods as described in the
application. In re Merrill Lynch, 828 F.2d 1567, 4 USPQ2d
1141, 1143 (Fed. Cir. 1997). It is incumbent upon the
Trademark Examining Attorney to make a “substantial showing
… that the matter is in fact generic.” Indeed, this
substantial showing “must be based on clear evidence of
generic use.” Merrill Lynch, 4 USPQ2d at 1143. Thus, it
is beyond dispute that “a strong showing is required when
the Office seeks to establish that a term is generic.” In
re K-T Zoe Furniture Inc., 16 F.3d 390, 29 USPQ2d 1787,
1788 (Fed. Cir. 1994). Furthermore, doubt on the issue of
genericness must be resolved in favor of the applicant. In
re Waverly Inc., 27 USPQ2d 1620, 1624 (TTAB 1993).
Addressing the first part of the Marvin Ginn
genericness inquiry above, the record herein, beginning
with the identification of goods, confirms that the
involved goods are a particular type of whetstones. A
whetstone is defined as “a hard, fine-grained stone for
honing tools” (The American Heritage® Dictionary of the
Serial No. 76345344
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English Language, Fourth Edition 2000) or “an abrasive
stone for sharpening knives or other edged tools”
(Webster’s New World Dictionary, 2d ed. 1984). According
to a package insert included with applicant’s product, this
is a “stone” having a sharpening area that is covered or
impregnated with continuous monocrystalline diamond
particles to create an abrasive surface. Hence, we find
that the genus of goods at issue in this case would be
diamond-encrusted whetstones, diamond-coated whetstones,
diamond-covered whetstones, diamond-impregnated whetstones,
diamond sharpeners or diamond sharpening stones.
We turn next to the second part of the Marvin Ginn
genericness inquiry: whether the matter applicant seeks to
register, DIAMOND WHETSTONE, is understood by the relevant
public primarily to refer to the genus of goods at issue,
i.e., diamond-impregnated whetstones, diamond sharpening
stones, etc.
Applicant argues that the applied for mark cannot be
generic because this would literally be “a whetstone made
of a diamond”:
… Applicant respectfully submits that even
an uneducated consumer would recognize that
a “diamond whetstone” would be unlikely to
refer to a whetstone that is, or is made
entirely from, a diamond, and so must be
referring to something else… [Based on its
Serial No. 76345344
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package insert], [a]pplicant therefore
submits that there is no such thing as a
“diamond whetstone,” but that the mark
rather refers to applicant’s diamond-coated
or diamond-impregnated sharpener. The
combination of the two words “diamond” and
“whetstone” therefore produces a phrase that
has a literal meaning that clearly cannot be
an actual product in the eyes of the
purchasing public (i.e., a whetstone made of
a diamond).
(Applicant’s appeal brief, pp. 3 – 4)
We note at the outset, even before examining the state
of current usage in newspapers, advertisements and online
content, that in the context of applicant’s identified
goods, the term “diamond whetstone” is clearly not
arbitrary in origin. Given the variety of generic
designations that the record shows are used for the
involved goods (e.g., “diamond-impregnated whetstones,”
“diamond sharpening stones,” etc.), and in light of our
national penchant for adopting shorthand terminology,2 it is
arguable that the term “diamond whetstone” would rather
readily follow from these quite similar, admittedly generic
expressions.
Nonetheless, given the fact that the Trademark
Examining Attorney must make a substantial showing of
2 See In re Abcor Development Corp., 588 F.2d 811, 200 USPQ
215, 219 (CCPA 1978) (J. Rich, concurring opinion): “… [T]he
Serial No. 76345344
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genericness based upon clear evidence of generic usage, we
turn to the actual evidence of record.
The Trademark Examining Attorney initially assigned to
this case provided excerpted stories he had retrieved from
the LEXIS/NEXIS database. As noted by applicant, the
following articles expressly refer to applicant’s products:
HEADLINE: “Olympian visits Marlboro company”
Work at Diamond Machining Technology
Inc. ground to a halt yesterday morning
when one of the company’s best known
clients stopped by to show employees
the importance of the diamond
whetstones they make in his drive
toward Olympic gold…
Worcester Telegram and Gazette, September
27, 1997.
- o O o –
HEADLINE: “Pantone develops broad color
palette”
… DMT, based in Marlborough, Mass.,
makes diamond whetstones for blade
sharpening…
Plastics News, July 25, 1994.
- o O o –
HEADLINE: “Tagged Sharks for the Record”
… carry a recently manufactured
whetstone in which industrial diamonds
provide the cutting edge. Called
Diafold, it is made by Diamond
Machining Technology of Marlborough,
Mass…
Diamond whetstones have been around for
quite a while …
users of language have a universal habit of shortening full names
– from haste or laziness or just economy of words…”
Serial No. 76345344
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The New York Times, June 23, 1988.
At least one LEXIS/NEXIS story retrieved by the
Trademark Examining Attorney that referred to applicant
used the words “diamond” and “whetstone” in individually
descriptive but separate ways, as pointed out by applicant:
HEADLINE: “Marlboro firm opens addition”
The company celebrated its construction
of an 8,000 square foot addition and
the purchase of a horizontal molding
machine designed to increase production
of diamond-coated whetstones, according
to Chairman Elizabeth P. Powell.
Worcester Telegram and Gazette, March 30,
1999.
The text of other LEXIS/NEXIS stories (if not all of
their headlines) reflects similar usage of the “diamond-
impregnated” terminology that applicant argues is the
correct generic designation for these goods, but wherein it
is not clear whether the reference is to applicant’s goods:
HEADLINE: Diamond Whetstones Sharp, but
Costly Idea
… You probably saw diamond-impregnated
whetstones on those TV cooking shows.
These “stones” have a fine steel
lattice studded with diamond that is
bonded to a hard base, generally
plastic…
The Palm Beach Post, February 12, 1998.
- o O o –
HEADLINE: “Some points about knives; Choices
abound – care a must”
Traditional whetstone[s] or diamond
impregnated sharpening stones can bring
Serial No. 76345344
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back a knife’s edge, Larson says, but
they seem to require a “knack.” …
The Bismarck Tribune, November 30, 1996.
The Trademark Examining Attorney also provided a
number of webpages retrieved from an Internet search. It
is clear in a majority of these sites that the items being
offered for sale or otherwise referenced are applicant’s
products.3 In some of these cases, the term is shown with
initial upper-case letters, with a trademark symbol (“ ”),
etc. On the other end of the spectrum, where the Internet
excerpt is drawn from an online, informal chatroom, the
probative value of the seemingly generic usage is most
limited.4
On the other hand, in reviewing the balance of the
LEXIS/NEXIS and Internet evidence, it is clear that there
are several occasions where the writer, speaker or online
retailer is using the term “diamond whetstone” in a
generic-like manner and/or is referring specifically to a
similar product manufactured by someone other than
applicant. Nonetheless, these instances appear to
represent a distinct minority of the uses found by the
Trademark Examining Attorney. As if to demonstrate this
3 www.sharpeningstones.com, www.profhdwr.com, www.seamar.com,
www.gofastest.com
4 http://carverscompanion.com.
Serial No. 76345344
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reality, on September 4, 2002, applicant conducted an
Internet search on the Google® search engine for the words
“diamond whetstone.” From the printed summaries of the
first fifty hits from this search (a search that garnered a
total of 9,510 hits), applicant showed that all fifty of
these websites referred specifically to applicant and/or
applicant’s trademarked products.
Hence, we find that in answering the second prong of
the Marvin Ginn genericness inquiry as to how the term
DIAMOND WHETSTONE is understood by the relevant public,
this record reveals a mixed bag. Despite the highly
descriptive (if not generic) nature of these individual
words when applied to these goods, and in spite of an
evidentiary record having scattered indications of generic
usage, we have reasonable doubts on the issue of
genericness based upon a thorough review of this entire
record. Under our case law, we must resolve these doubts
in favor of applicant. Accordingly, on the issue of
genericness, we have no choice but to reverse the refusal
to register made by the Trademark Examining Attorney.
In addition to the compelling case for descriptiveness
reflected above, there is no dispute but that DIAMOND
WHETSTONE must be viewed as merely descriptive of
Serial No. 76345344
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applicant’s goods inasmuch as the application was filed
under the provisions of Section 2(f) of the Act. Having
determined that the Trademark Examining Attorney has failed
on this record to make a substantial showing of
genericness, the critical determination herein is whether
of not the term has been shown to have acquired
distinctiveness as a trademark.
It is settled that the applicant has the burden of
proof with respect to establishing a prima facie case that
a merely descriptive term has acquired distinctiveness.5
For instance, as stated in Yamaha International Corp. v.
Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1006
(Fed. Cir. 1988), “the ultimate burden of persuasion under
Section 2(f) on the issue of acquired distinctiveness is on
… [the] applicant.”
5 Under Trademark Rule 2.41(a), an applicant may demonstrate
that such a term has acquired distinctiveness by submitting
“affidavits, or declarations in accordance with §2.20,
depositions, or other evidence showing duration, extent and
nature of use in commerce and advertising expenditures in
connection therewith (identifying types of media and attaching
typical advertisements), and affidavits, or declarations in
accordance with §2.20, letters or statements from the trade or
public, or both, or other appropriate evidence tending to show
that the mark distinguishes the goods.” In the alternative,
Trademark Rule 2.41(b) provides that “[i]n appropriate cases,
ownership of one or more prior registrations on the Principal
Register … of the same mark may be accepted as prima facie
evidence of distinctiveness” and that an acquired distinctiveness
claim may also be based on a verified statement that the asserted
mark has been in “substantially exclusive and continuous use in
Serial No. 76345344
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In addition, as our principal reviewing Court has
noted with respect to the possible registrability of merely
descriptive terms which may nevertheless acquire
distinctiveness, the more descriptive the term, the more
evidence of acquired distinctiveness is required to attain
registration. See In re K-T Zoe Furniture Inc., 16 F.3d
390, 29 USPQ2d 1787, 1789 (Fed. Cir. 1994) [Court confirms
that the words THE SOFA & CHAIR COMPANY were aptly
descriptive of “custom manufacturing of furniture
upholstered with fabrics furnished or pre-selected by
customers,” and that the degree of acquired distinctiveness
that must be shown varies with the degree of
descriptiveness of the mark]; In re Bongrain International
(American) Corp., 894 F.2d 1316, 13 USPQ2d 1727, 1728 (Fed.
Cir. 1990); and Yamaha International Corp., supra.
In this context, we find the DIAMOND WHETSTONE
designation to be highly descriptive of diamond-coated
whetstones. Therefore, the law requires a relatively
strong showing of acquired distinctiveness before it can be
registered.
Nonetheless, applicant has provided no direct evidence
showing that the mark distinguishes these goods, such as
commerce … by applicant for the five years before the date on
Serial No. 76345344
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the extent and nature of the annual or cumulative sales of
this product, the nature and volume of expenditures for
advertising and other promotional activities, or any
statements or letters from the trade the relevant public.6
In light of our finding that the term DIAMOND
WHETSTONE is highly descriptive of applicant’s goods, we
find that applicant’s mere claim of use since 1981 fails to
demonstrate that such term has in fact acquired
distinctiveness as an indication of source for the
identified goods.7
Accordingly, it is adjudged that applicant has failed
to establish a prima facie case of acquired distinctiveness
and thus has not overcome the refusal on the ground of mere
which the claim of distinctiveness is made.”
6 Both the Trademark Examining Attorneys and applicant have
focused exclusively on the issue of genericness since the time of
the initial Office action. Hence, the alternative issue of
whether applicant had established a prima facie case of acquired
distinctiveness was never the focus of any discussion during the
prosecution of this application. While it would have been better
practice for the Trademark Examining Attorney explicitly to have
raised this as an alternative basis for the refusal, the
Trademark Examining Attorney never conceded de facto acquired
distinctiveness. Applicant retains the burden of making the case
for acquired distinctiveness, and in our judgment, has clearly
failed to do so during the prosecution of this application.
7 In fact, while the opening sentence of the original
application papers contained a clause that applicant “requests
that said mark be registered pursuant to Section 2(f) …,”
applicant has nowhere asserted that the mark DIAMOND WHETSTONE
has become distinctive of applicant’s goods as a result of
substantially exclusive and continuous use in commerce by
applicant for the five years before the date on which the claim
of distinctiveness is made. See Trademark Rule 2.41(a).
Serial No. 76345344
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descriptiveness. See In re Pennzoil Products Co., 20
USPQ2d 1753, 1760-61 (TTAB 1991); and In re Packaging
Specialists, Inc., 221 USPQ 917, 920-21 (TTAB 1984).
Decision: The refusal under Section 2(e)(1) on the
ground of genericness is reversed, but the refusal on the
ground of mere descriptiveness is affirmed due to the
insufficiency of applicant’s claim of acquired
distinctiveness.