Glendale Int'l. Corp.

Trademark Trial and Appeal Board

Apr 14, 2004

No. 76173905 (T.T.A.B. Apr. 14, 2004)

Mailed: 4/14/04
Paper No. 20
ejs
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Glendale International Corp.
________
Serial No. 76173905
_______
Bruce A. Tassan of Tassan Law Firm for Glendale
International Corp.
Barbara A. Gaynor, Trademark Examining Attorney, Law Office
115 (Tomas Vlcek, Managing Attorney).
_______
Before Seeherman, Quinn and Rogers, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Glendale International Corp., a Canadian corporation,
has appealed from the final refusal of the Trademark
Examining Attorney to register TITANIUM as a trademark for
goods ultimately identified as "recreational vehicles,
namely, a vehicular type unit primarily designed as
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76173905
2
temporary living quarters for recreational, camping, travel
or seasonal use that is mounted on or towed by another
vehicle, namely, camping trailers, fifth wheel trailers,
travel trailers, and truck campers."1 Registration has been
refused pursuant to Section 2(e)(1) of the Trademark Act,
15 U.S.C. §1052(e)(1), on the ground that applicant's mark
is deceptively misdescriptive of its identified goods.
Applicant and the Examining Attorney have filed appeal
briefs. Applicant did not request an oral hearing.
As a preliminary matter, we note that after the
appeal was filed applicant submitted a request for remand
in order to make of record an affidavit by its president.
The Board denied the request because the additional
evidence could have been submitted at the time the appeal
was filed. Nevertheless, applicant submitted a copy of the
affidavit with its brief, to which the Examining Attorney
objected.2 The affidavit not being of record, it has been
given no consideration.
1 Application Serial No. 76173905, filed December 1, 2000, based
on Section 1(b) of the Trademark Act (intent-to-use) and also
asserting a claim of priority pursuant to Section 44(d), based on
a Canadian application filed on October 27, 2000. Applicant does
not base its application on Section 44(e).
2 Applicant referred to the affidavit as being the subject of a
request for remand, and included it as an exhibit, as part of its
recital of the prosecution history. Applicant did state that the
request for remand had been denied. However, given that the
Board stated that the affidavit would not be allowed into the
record, applicant should not have submitted it with its brief.
Ser No. 76173905
3
The test for deceptive misdescriptiveness was set out
in In re Quady Winery Inc., 221 USPQ 1213, 1214 (TTAB
1984):
The test for deceptive
misdescriptiveness has two parts. First
we must determine if the matter sought
to be registered misdescribes the
goods. If so, then we must ask if it
is also deceptive, that is, if anyone
is likely to believe the
misrepresentation.
See also, In re Phillips-Van Heusen Corp., 63 USPQ2d 1047
(TTAB 2002); In re Woodward & Lothrop Inc., 4 USPQ2d 1412
(TTAB 1987).
Titanium, as the record shows, is "a strong, low-
density, highly corrosion-resistant, lustrous white
metallic element that occurs widely in igneous rocks and is
used to alloy aircraft metals for low weight, strength, and
high-temperature stability."3 Applicant has acknowledged
that its goods do not contain any titanium, so the first
part of the deceptive misdescriptiveness test has been met.
It is with respect to the second part of the test that
applicant and the Examining Attorney differ.
See In re Psygnosis Ltd., 51 USPQ2d 1594 (TTAB 1999), in which
the Board sanctioned an applicant for attempting to circumvent a
Board order denying a motion to waive the page limitation for an
appeal brief.
3 The American Heritage Dictionary of the English Language, 3d
ed. © 1992.
Ser No. 76173905
4
It is applicant's position that titanium is not used
in recreational vehicles of the type identified in its
application and is too expensive to be used for such
purpose and, therefore, that consumers will not believe
that titanium is a component of applicant's products. The
Examining Attorney, on the other hand, contends that it is
plausible for consumers to believe that recreational
vehicles, or components of them, are made in whole or in
part of titanium. In support of her position, she has made
of record excerpts taken from the NEXIS database, some of
which are shown below:
More aluminum and aluminum-alloy
products, such as titanium, are finding
their way into automobiles and
recreational vehicles. Not only do
these materials make vehicles lighter
(500-800 lb lighter than those just 10
or 15 yr ago), but they also make them
more structurally sound.
"Tooling & Production," June 1996
Pierce's 410 car has the titanium
components in the frame that make it
lightweight and fast like an Outlaws
vehicle. A 410 car on the Outlaws tour
is between 1,000 and 1,200 pounds, much
lighter than the 1,325-pound
regulation....
"The News Tribune," August 17, 2001
Titanium seems to be a material of
interest—although let's face it: with
titanium we are talking about
comparatively exotic vehicles, not the
run-of-the-road sorts of things that
most of us roll in.
Ser No. 76173905
5
"Automotive Manufacturing &
Production," May 2001
The use of titanium instead of steel in
automotive suspension system coil
springs can reduce the space
requirements in the undercarriages of
vehicles, according to Titanium Metals
Corp.
American Metal Market," April 2, 2001
In a typical American-built five-or
six-passenger family vehicle like a
Ford Taurus, Chevrolet Impala or Dodge
Intrepid, Timet spokesmen said a total
savings of 20 to 30 pounds per car
would be achieved just by converting
the four coil springs to titanium.
"American Metal Market," February 19,
2001
Those are some of the virtues of the
recently introduced titanium
tailpipe/muffler assemblies on the new
Chevrolet Corvette Z06 for 2001. The
fabricator of the assemblies,
ArvinMeritor Inc., Troy, Mich., and the
supplier of the metal, Titanium Metals
Corp. (Timet), Denver, Col., are hoping
the public appreciates these qualities
and encourages automakers to put more
exhaust systems of this kind into use
on this vehicle...
Executives of ArvinMeritor believe
titanium exhaust system components are
extremely promising for the future in
the North American Auto industry, where
durability, fuel economy and vehicle
performance are becoming increasingly
important.
...
Timet officials think titanium in the
other forms mentioned above also can be
used to achieve significant weight
savings and durability improvements in
additional areas of family vehicles,
Ser No. 76173905
6
including engine components, drive-
train parts positioned downstream from
the transmissions, suspension system
applications, and structural parts.
"American Metal Market," October 6,
2000
Titanium-based alloys also now are
formed and shaped into things as
diverse as automotive mufflers, valves
and lifters; architectural panels and
other components; marine vehicles and
equipment; medical implants;....
"Purchasing Magazine," July 13, 2000
Automakers are interested in titanium
because, even though it costs several
times more than stainless steel, the
lighter systems prevent redesigned
vehicles from advancing to a heavier
EPA weight class.
"Ward's Auto World," September 1998
A titanium alloy division specifically
to serve the automotive industry has
been launched by Titanium Metals Corp.,
Denver, Colo. ... The amount of
titanium in automobiles, trucks, and
motorcycles is forecast to be 1100
metric tons in 2002. This compares
with 100 metric tons in 1995.
"Advanced Materials & Processes," March
1, 2002
...Research said 'meaningful
acceptance' of titanium by the auto
industry may still be five years in the
future.
'The cost of titanium is far too
expensive for the Big Three
(automakers) to begin accepting the
material on all of the automotive
models, but we see tremendous
opportunities within the luxury and
sporting vehicles,' Olin said.
"The Denver Post," January 6, 2002
Ser No. 76173905
7
Headline: Fully 'Vette-ed; General
Motors' 2002 Z06 takes America's sports
car to its highest level
The exhaust system is a first for the
auto industry in a mass-market vehicle:
It uses titanium in the twin mufflers
and tailpipes.
"San Antonio Express-News," January 4,
2002
In street-vehicle applications,
titanium is used for engine valves,
connecting rods, wheel-rim screws,
exhaust systems, and suspension
springs.
"American Machinist," January 1, 2002
Headline: Ford says what's inside
counts
"By and large, automakers use the same
key technologies and offer the same
types of vehicles, but it's still
possible to set your products apart
with better materials, greater use of
leather, wood and titanium finishes,
and more attention to detail."
"The Washington Times," August 2, 2002
Headline: Ford Focus for the future
Using lightweight materials such as
magnesium, aluminum, and titanium
knocks 400 lb off the vehicle.
"Machine Design," June 20, 2002
Headline: Infiniti G35 will win a lot
of friends; Sedan paves way for sports
car due out in 2003
Test vehicle: 1002 Infinite G35 rear-
drive sport sedan
Standard features include: Leather and
titanium interior, automatic climate
control, six-way power-adjustable
driver's seat
"The Atlanta Journal and Constitution,"
June 14, 2002
Ser No. 76173905
8
Applicant is correct that these articles are not
persuasive evidence of routine current use of titanium in
recreational vehicles. However, they indicate that
titanium can be used in recreational vehicles, that there
is a trend to increase the use of it in vehicles, and that
titanium can be used in suspension coil springs. Such
springs could be used in mounted or towed recreational
vehicles. Further, the articles show that there is an
advantage to using titanium in recreational vehicles
because it is lighter in weight, and therefore it can
increase fuel economy. Also, as "The Washington Times"
article indicates, titanium is a selling feature.
Thus, although titanium may not at this time be used
routinely as a component in recreational vehicles, it
appears that it may be so used in the future. Consumers
who are familiar with the usage of this element in
vehicles, and the trend to expand such usage, would not
regard TITANIUM as being merely a fanciful use of a term
for recreational vehicles.
Rather, consumers familiar with the benefits of
titanium would conclude, upon seeing the mark TITANIUM used
in connection with applicant's identified recreational
vehicles, that the vehicles contain titanium, or that
titanium is used in fabricating some of the parts of the
Ser No. 76173905
9
vehicles. Thus, they are likely to believe the
misdescription. This belief would be reinforced by
applicant's own promotional brochure, which emphasizes the
advanced composite materials used in its products and the
lighter weight of its materials:
While other RV manufacturers are
talking about advanced manufacturing
techniques and composite materials, we
are putting ours to the test.
***
LITE WEIGHT composite materials are
used during production which provide
significant reduced overall Weight.
Applicant argues that, because recreational vehicles
such as applicant's can cost between $25,000 and $50,000,
they will be bought by very sophisticated purchasers.
Generally the cost of goods is a duPont factor to be
considered in connection with the issue of likelihood of
confusion. To the extent that applicant is suggesting that
consumers will go behind the trademark to determine whether
its products contain any titanium, there is no evidence to
support the contention that consumers would make such an
investigation. The Examining Attorney is not asserting
that the misrepresentation that applicant's goods contain
titanium would be material to the decision to buy such
goods. If that were the case, the refusal of registration
Ser No. 76173905
10
would be made under Section 2(a) (deceptiveness), rather
than Section 2(e)(1). Because the Examining Attorney does
not contend that the presence of titanium in applicant's
goods is a material element in the purchasing decision, we
cannot assume that purchasers would inquire as to whether
the goods contain titanium. Moreover, there is an inherent
problem in requiring consumers to go behind the trademark
in order to counteract the misdescription of the trademark.
In any event, the fact that applicant's TITANIUM
recreational vehicles are expensive is more likely, rather
than less likely, to cause consumers to believe that such
products do, in fact, contain titanium. As applicant has
pointed out, titanium in an expensive element. Therefore,
consumers would expect goods that contain titanium to be
expensive. Further, sophisticated purchasers are likely to
know about the trend to use titanium in vehicles.
Finally, applicant has submitted third-party
registrations for marks containing the words GOLD and
SILVER for goods it characterizes as vehicles and vehicle
parts.4 Applicant points to these registrations as
4 Applicant submitted copies, taken from the U.S. Patent and
Trademark Office records, of the third-party registrations for
the GOLD marks, but submitted only a listing for SILVER marks,
which does not show the goods for which they are registered.
Such a listing is insufficient to make such registrations of
record. However, because the Examining Attorney never objected
Ser No. 76173905
11
indicating that the Office has allowed other precious metal
marks to be registered for such goods. We are not
persuaded, on the basis of these registrations, that
TITANIUM should be registered. The Board is not bound by
prior decisions of Examining Attorneys, but must decide
each case on its own merits. In re Nett Designs Inc., 236
F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001). In this case
we have evidence that titanium can be used in recreational
vehicles and other vehicles; we do not know whether there
was any evidence in the GOLD and SILVER applications that
such metals could have been used in the various goods
listed therein, e.g., severe duty disc brake pads and
shims, sold as a unit for land vehicles;5 cleaning,
polishing and protecting preparations for motor vehicle
tires;6 and travel trailers, fifth wheel trailers, park
trailers, motor homes.7 We also agree with the Examining
Attorney that the term "gold" has a laudatory significance
that "titanium" does not have. As for the SILVER
registrations, it is clear even from the mere list of marks
which is of record that the term "silver" as used in those
to the form of this listing, we have considered the list for the
very limited probative value it has.
5 Registration No. 2131722 for GOLD MAX.
6 Registration No. 2032861 for TIRE GOLD.
7 Registration No. 2014343 for GOLD.
Ser No. 76173905
12
marks would not be regarded as referring to the metal,
e.g., in SILVER EAGLE "silver" modifies the noun, while
QUICKSILVER is another word for mercury.
In conclusion, we find that, because applicant's goods
do not contain titanium, and because consumers are likely
to believe, upon viewing the mark TITANIUM in connection
with applicant's goods, that they do contain this element,
applicant's mark TITANIUM is deceptively misdescriptive of
its goods.
Decision: The refusal of registration is affirmed.