Montres Charmex S.A.v.Montague Corp.

Trademark Trial and Appeal Board

Jul 8, 2015

No. 91191784 (T.T.A.B. Jul. 8, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: July 8, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Montres Charmex S.A.
v.
Montague Corp.
_____

Opposition No. 91191784
against Serial No. 75111267

Cancellation No. 92052183
against Registration No. 3403759
_____

Harry I. Jacobs, Esq.,
for Montres Charmex S.A.
Leigh Ann Lindquist of Sughrue Mion PLLC,
for Montague Corporation.

_____

Before Cataldo, Lykos and Hightower,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:1

1 Citations to the opposition and cancellation records throughout the decision include
references to TTABVUE, the Board’s online docketing system. The number preceding
“TTABVUE” corresponds to the docket entry number; the number(s) following “TTABVUE”
refer to the page number(s) of that particular docket entry. See, e.g., Turdin v. Trilobite,
Ltd., 109 USPQ2d 1473 (TTAB 2014).

Opposition No. 91191784 and Cancellation No. 92052183
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Montague Corp. (“Defendant”) seeks to register on the Principal Register the
mark SWISS MILITARY in standard characters for “bicycles” in International
Class 12 pursuant to Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f).2 On
September 2, 2009, Montres Charmex S.A. (“Plaintiff”) filed a notice of opposition
against registration of Defendant’s mark. During the interlocutory phase of the
opposition proceeding, multiple complaints and motions surrounding the pleading of
Plaintiff’s claims were filed.3 The operative claims in the proceeding are now as
follows: that the mark has not acquired distinctiveness under Section 2(f) of the
Trademark Act; that the mark is primarily geographically deceptively
misdescriptive under Section 2(e)(3) of the Trademark Act, 15 U.S.C. § 1052(e)(3);
and that the mark is deceptive as to a quality of the goods under Section 2(a) of the
Trademark Act, 15 U.S.C. § 1052(a).4 In its answer, Defendant denied the salient
allegations in the first amended notice of opposition.

2 Application Serial No. 75111267, filed May 29, 1996. The original filing basis for the
application was Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b).
3 Plaintiff’s first amended notice of opposition included a claim that Defendant’s mark
suggests a false connection with the Swiss armed forces bicycle infantry unit within the
meaning of Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a). Insofar as Plaintiff
alleged no connection with the Swiss military, Defendant moved to dismiss the Section 2(a)
claim under Fed. R. Civ. P. 12(b)(6); said motion was granted by the Board. See Opposition
No. 91191784, August 7, 2010 Interlocutory Order pp. 12-13; 20 TTABVUE 13-14. The
Board also sua sponte struck Plaintiff’s fraud claim as improperly pleaded, but permitted
Plaintiff time to re-plead the claim. Id. Plaintiff filed a second amended notice of opposition
under Fed. R. Civ. P. 15(a) with a newly amended fraud claim; however, inasmuch as
Plaintiff’s amended complaint was filed long after the deadline for doing so as set by the
Board, the motion was deemed untimely. See Opposition No. 91191784 December 31, 2011
Interlocutory Order pp. 3-4; 37 TTABVUE 3-4.
4 See Opposition No. 91191784: First Amended Notice of Opposition dated February 3,
2010; 9 TTABVUE.
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Subsequent to the filing of the notice of opposition, Plaintiff initiated a second
inter partes proceeding against Defendant by filing a petition to cancel Defendant’s
registered mark SWISSBIKE on the Supplemental Register for “bicycles” in
International Class 12.5 Pursuant to Plaintiff’s first amended Petition to Cancel, the
operative claims in that proceeding are: Defendant’s registered mark is generic and
incapable of distinguishing Defendant’s goods under Section 23 of the Trademark
Act, 15 U.S.C. § 1091; that the mark is primarily geographically deceptively
misdescriptive of the goods under Section 2(e)(3) of the Trademark Act, 15 U.S.C.
§ 1052(e)(3); that Defendant committed fraud during the ex parte prosecution of its
registered mark in connection with its signatory’s position and allegations
regarding the geographic origin of its bicycles; and that Defendant has not used its
mark in commerce.6 Defendant denied the salient allegations in the petition to
cancel.
I. Evidentiary Issue - Consolidation
On December 26, 2012, the Board reconsidered Plaintiff’s previously denied
motion to consolidate the proceedings and ordered consolidation. As per the Board’s
order, both proceedings “shall be considered to be consolidated after the close of the
rebuttal period in the cancellation, so that the parties may submit a single trial

5 Registration No. 3403759, registered on March 25, 2008, alleging December 2005 as the
date of first use anywhere and June 2006 as the date of first use in commerce; Section 8
affidavit accepted.
6 Cancellation No. 92052183: First Amended Petition to Cancel; 8 TTABVUE.
Opposition No. 91191784 and Cancellation No. 92052183
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brief for both matters.”7 The trial schedule made clear that the testimony periods
for the opposition and cancellation remained separate, and that consolidation was
solely for the purpose of filing briefs and oral argument.8 Indeed, when the Board
issued its consolidation order, all testimony periods in the opposition had already
closed, and the only testimony period that remained open was Plaintiff’s rebuttal
period in the cancellation proceeding.
Plaintiff now asserts that the evidentiary record for both proceedings is
identical; in other words, that the parties may rely on the trial record in the
opposition to prove or defend against claims in the cancellation and vice-versa.
Defendant however objects, arguing that these are “separate proceedings with
separate evidence.”9
When proceedings are consolidated prior to trial, the trial record generally is
identical. However, this is not the case here. The Board’s interlocutory order as
noted above made clear that the testimony periods in each case remained separate
and that consolidation was only for the convenience of filing a single brief or oral
argument.
Accordingly, Defendant’s objection is sustained. The Board, in reaching its
determination, has considered the separate and distinct evidentiary record in each
proceeding. We therefore will consider each case in turn, commencing first with the
cancellation proceeding.

7 Opposition No. 91191784: December 26, 2012 Interlocutory Order; 49 TTABVUE 8.
8 Id.
9 Opposition No. 91191784: Defendant’s Brief, p. 36; 69 TTABVUE 43.
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II. Cancellation No. 92052183
The record in the cancellation proceeding includes the pleadings, and pursuant
to Trademark Rule 2.122, the file for the involved registration for the mark
SWISSBIKE. During its main testimony period, Plaintiff filed under notice of
reliance the following:
● The status printout retrieved from the USPTO Trademark Status
Document and Retrieval (“TSDR”) database of Application Serial No. 77968883 for
the mark SWISS MILITARY;10
● A copy of a decision involving both parties dated September 25, 2007
issued by the National Arbitration Forum, Montres Charmex S.A. v. Montague USA
Corp. (Claim No. FA0707001049282) regarding the registered domain name
swissmilitary.com;11
● Definitions of the words “timer”, “stopwatch”, and “watch” from
Webster’s New World Dictionary (1980);12
● An article entitled “Product Watch: The Clever Planet” by M. Deme
published in Adventure Cycle (March 2001);13
● An excerpt entitled “Deepest Rated Diving Watch” from Guinness Book
of World Records (2010) C. Glenday ed.;14

10 Cancellation No. 92052183: 30 TTABVUE.
11 Cancellation No. 92052183: 31 TTABVUE. As set forth in the procedural history of the
decision, disputes surrounding the registration of domain names with Network Solutions,
Inc. are to be decided by arbitration in accordance with ICANN’s Uniform Domain Name
Dispute Resolution Policy.
12 Cancellation No. 92052183: 32 TTABVUE.
13 Cancellation No. 92052183: 33 TTABVUE.
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● An entry for “Switzerland” from Merriam-Webster’s Geographical
Dictionary (3d ed. 2001) and an entry for “Horology” from Beeton’s Dictionary of
Industries and Commerce (2006);15
● Certified copies of corporate records maintained by the Massachusetts
Secretary of Commonwealth of Defendant’s “Annual Report for Domestic and
Foreign Corporations” for the years 2003-2008;16 and
● An article entitled “Pez Pedals Backwards: The Swiss Cycling
Museum” from Pez Cycling News at www.pezcyclingnews.com pursuant to Safer,
Inc. v. OMS Investments, Inc., 94 USPQ2d 1031 (TTAB 2010) (admissibility of
documents obtained from the Internet under notice of reliance).17
Neither Plaintiff nor Defendant took testimony depositions; Defendant
submitted no evidence.
Before discussing the merits of the cancellation proceeding, we shall consider the
evidentiary objections raised by Defendant in its brief.
Defendant objects to the article obtained from Adventure Cyclist on the grounds
that because the article is over ten years old it is unavailable to “the general public
in libraries or of general circulation among members of the public or that segment of
the public which is relevant under an issue in a proceeding.” See Trademark Rule
2.122(e), 37 C.F.R. § 2.122(e) (“Printed publications and official records”). Insofar as

14 Cancellation No. 92052183: 34 TTABVUE.
15 Cancellation No. 92052183: 35 TTABVUE.
16 Cancellation No. 92052183: 36 TTABVUE.
17 Cancellation No. 92052183: 37 TTABVUE.
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we have no evidence in the record showing the extent of circulation or availability of
this reference material, we are unable to make such a determination. That being
said, the age of the article, per se, does not automatically lead to the determination
that it is unavailable within the meaning of the Trademark Rule governing the
submission of evidence under notice of reliance. See id. Accordingly, Defendant’s
objection is overruled.
Defendant also objects to the Adventure Cyclist article, as well as the Pez Cycling
News article and excerpt from the Guinness Book of World Records (2010), as
hearsay. See Fed. R. Evid. 801 and 802. Insofar as Plaintiff seeks to rely on any
statements made therein for the truth of the matter asserted, Defendant’s objection
is sustained. See Fed. R. Evid. 801(c)(2).
Lastly, Defendant objects to the materials obtained from Merriam-Webster’s
Geographical Dictionary (3d ed. 2001) and Beeton’s Dictionary of Industries and
Commerce (2006) on the grounds that the documents are illegible. Plaintiff has a
duty to ensure that the evidence it submits is legible. Alcatraz Media Inc. v.
Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1758 (TTAB 2013) (citing Hard
Rock Café Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1404 (TTAB 1998) (“It is
reasonable to assume that it is opposer’s responsibility to review the documents it
submits as evidence to ensure that such submissions meet certain basic
requirements, such as that they are legible….”)). Nonetheless, we decline to strike
the documents in their entirety because some portions are legible. That being said,
“the Board can only review evidence that is clear and unobstructed so we have
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considered this evidence to the extent it is legible and we are able to read the entire
context of the material.” Alcatraz Media, 107 USPQ2d at 1758.
Turning now to the merits, we begin our analysis with standing. Plaintiff has
challenged Defendant’s standing to bring the cancellation proceeding. Standing is a
threshold issue that must be proved in every inter partes case. Lipton Industries,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 1028, 213 USPQ 185, 189 (CCPA 1982).
See also Yamaha Int’l Corp. v. Hoshino Gakki Co., Ltd., 231 USPQ 926, 931 (TTAB
1986) (“Standing to oppose is an essential element of proof in opposition
proceedings”), aff’d, 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988). The purpose of
the standing requirement, which is directed solely to the interest of the plaintiff, is
to prevent litigation when there is no real controversy between the parties. In the
case of a cancellation proceeding, the standing requirement has its basis in Section
14 of the Trademark Act which provides in relevant part that “[a]ny person who
believes that he is or will be damaged … by the registration of a mark upon the
principal register” may file upon payment of the prescribed fee, a petition to cancel
stating the grounds therefor. 15 U.S.C. § 1064. Our primary reviewing court, the
U.S. Court of Appeals for the Federal Circuit, has enunciated a liberal threshold for
determining standing, namely that a plaintiff must demonstrate that he possesses a
“real interest” in a proceeding beyond that of a mere intermeddler, and “a
reasonable basis for his belief of damage.” See Ritchie v. Simpson, 170 F.3d 1902, 50
USPQ2d 1023, 1025-26 (Fed. Cir. 1999). A “real interest” is a “direct and personal
stake” in the outcome of the proceeding. Id. at 1026. A plaintiff cannot rest on mere
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allegations in its complaint to prove standing. Lipton Industries, Inc., 213 USPQ at
188. See also Ritchie v. Simpson, 50 USPQ2d at 1027.
Defendant’s answer in the cancellation proceeding does not include any
admissions regarding Plaintiff’s business activities related to the goods identified in
the registration or Plaintiff’s interest in the mark SWISSBIKE. In addition, as
noted above, we have no testimony from Plaintiff in this case. We must therefore
examine the remaining evidence submitted by Plaintiff under notice of reliance to
ascertain whether Plaintiff has proven its standing to bring the instant cancellation
against Defendant’s registered mark SWISSBIKE for “bicycles.”18
First we consider the printout retrieved from the TSDR database of Plaintiff’s
Application Serial No. 77968883 for the mark SWISS MILITARY for “bicycle
computers and bicycle trip timers” displaying the status of the application as
suspended.19 Because Plaintiff did not introduce the file wrapper of the application,
we are unable to ascertain the basis for the suspension. Aside from this deficiency,
Plaintiff’s applied-for mark SWISS MILITARY is distinct from the mark at issue
here in the cancellation, SWISSBIKE. The TSDR printout standing alone, without
testimony, does not provide evidence regarding the nature of Plaintiff’s business
activities or commercial interest in Defendant’s registered mark.

18 As indicated by Plaintiff in its notices of reliance, none of the evidence obtained from
Webster’s New World Dictionary (1980) or the Massachusetts Secretary of Commonwealth
corporate records was submitted for the purpose of proving standing. That being said, we
have reviewed this evidence, and insofar as it fails to discuss Plaintiff or any of Plaintiff’s
commercial interests, it clearly does not establish standing.
19 Cancellation No. 92052183, 30 TTABVUE.
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Next we consider the copy of the decision involving both parties dated September
25, 2007 issued by the National Arbitration Forum regarding the domain name
swissmilitary.com.20 Defendant had registered the domain name with Network
Solutions, Inc. Plaintiff requested that ownership of the domain name be
transferred from Defendant to Plaintiff based on the ground that the domain name
is confusingly similar to Plaintiff’s various trademark registrations incorporating
the term “Swiss Military.” The domain name portion preceding the top-level domain
“.com” at issue in the arbitration (swissmilitary) is distinct from the mark at issue
here (SWISSBIKE). In any event, even if the marks were identical, an arbitration
decision does not constitute evidence of commercial use. As such, this evidence does
not prove Plaintiff’s standing to bring the instant petition to cancel.
We direct our attention now to the entries for “Switzerland” from Merriam-
Webster’s Geographical Dictionary (3d ed. 2001) and “Horology” from Beeton’s
Dictionary of Industries and Commerce (2006). Plaintiff contends that because this
evidence shows that Switzerland is known for locally-produced watches, knives, and
bikes it demonstrates Plaintiff’s standing to bring this proceeding. None of this
evidence, however, references Plaintiff, and even if it did, it would be considered
hearsay with regard to Plaintiff’s business activities. The same holds true for the
“Pez Pedals Backwards: The Swiss Cycling Museum” article from Pez Cycling News.
We now turn to the excerpt entitled “Deepest Rated Diving Watch” from the
Guinness Book of World Records. The excerpt states, in relevant part, “The 20,000-

20 Cancellation No. 92052183: 31 TTABVUE.
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feet model from CX Swiss Military Watch is a mechanical divers wristwatch made
by Montres Charmex SA (Switzerland) that can function, as its name suggests, at
depths of 20,000 ft.”21 Plaintiff contends that this evidence establishes that
“Plaintiff is a Swiss watchmaker which produces, inter alia, watches (in this case a
diver’s watch) at least as early as January 2009.” Although this excerpted
publication is admissible for what it shows on its face, because it constitutes
hearsay as per Federal Rules of Evidence 801 and 802, it may not be relied upon for
the truth of the matter asserted, i.e., that Plaintiff is a Swiss watch manufacturer
and has been manufacturing watches since 2009. See Syngenta Crop Protection Inc.
v. Bio-Chek LLC, 90 USPQ2d 1112, 1117 n.7 (TTAB 2009) (printed publications
made of record by notice of reliance are admissible and probative only for what they
show on their face, not for the truth of the matters contained therein, unless a
competent witness has testified to the truth of such matters). See also 7-Eleven Inc.
v. Wechsler, 83 USPQ2d 1715, 1717 n.2 (TTAB 2007) (materials made of record by
notice of reliance under Trademark Rule 2.122(e) not admissible for the truth of the
matters contained therein, unless a competent witness has testified to the truth of
such matters); Midwest Plastic Fabricators Inc. v. Underwriters Laboratories Inc.,
12 USPQ2d 1267, 1270 n.5 (TTAB 1989) (annual report in evidence only for what it
showed on its face), aff’d, 906 F.2d 1568, 15 USPQ2d 1359 (Fed. Cir. 1990). The rule
against hearsay mandates that an out-of-court statement cannot be offered as
evidence of the truth of the matter asserted in that statement. Insofar as none of

21 Cancellation No. 92052183: 34 TTABVUE.
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the exceptions to the hearsay rule apply, we cannot consider the submissions to
prove the truth of any matter stated therein.
Indeed, the record is utterly devoid of any evidence concerning the nature of
Plaintiff’s commercial activities and its interest in Defendant’s registered
SWISSBIKE mark. “Proof of standing in a Board proceeding is a low threshold.”
Syngenta, 90 USPQ2d at 1118. Plaintiff could have submitted testimony or
competent documentary evidence as to its use of its trademarks and nature of its
business activities to establish its standing. See, e.g., Panda Travel Inc. v. Resort
Option Enterprises Inc., 94 USPQ2d 1789, 1793 (TTAB 2009) (testimony that
opposer has used the mark PANDA TRAVEL continuously since June 1981 to
identify its travel agency services sufficient to prove standing to bring Section 2(d)
claim); Automedx Inc. v. Artivent Corp., 95 USPQ2d 1976, 1978 (TTAB 2010)
(testimony that opposer has been manufacturing and selling portable ventilators
sufficient to prove standing to bring 2(d) claim). Plaintiff neglected to do so. Thus,
on the record before us, Plaintiff has failed to establish a “real interest” and
“reasonable belief in damage.”
Accordingly, the cancellation proceeding is dismissed for Plaintiff’s lack of
standing. See, e.g., Lumiere Productions, Inc. v. International Telephone and
Telegraph Corp., 227 USPQ 892, 893 (TTAB 1985).
III. Opposition No. 91191284
We turn now to the opposition. As a preliminary matter, insofar as Plaintiff did
not argue in its main brief its pleaded claims under Sections 2(a) and 2(e)(3) of the
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Trademark Act, we find in accordance with the Board’s usual practice those claims
have been waived. See, e.g., Knight Textile Corp. v. Jones Investment Co., 75
USPQ2d 1313, 1314 n.4 (TTAB 2005). As such, the sole claim we shall consider is
the Section 2(f) claim.
The record in the opposition includes the pleadings, and pursuant to Trademark
Rule 2.122, Defendant’s application file for Serial No. 75111267. In addition,
Plaintiff submitted a notice of reliance on the following documents:
● Certified copies of corporate records maintained by the Massachusetts
Secretary of Commonwealth of Defendant’s “Annual Report for Domestic and
Foreign Corporations” for the years 2003-2008; and
● Printouts from the USPTO TSDR database showing the status and ex parte
examination history of Defendant’s registered mark SWISSBIKE.
Neither Plaintiff nor Defendant took testimony; Defendant submitted no
evidence.
As with the cancellation proceeding, Defendant also challenges Plaintiff’s
standing to bring the instant opposition proceeding. However, according to the
pleadings in the opposition, Defendant admits that Plaintiff “is the owner of the
domain name swissmilitary.com and that [it] uses its domain name in its
business.”22 Because the prefix to the TLD is identical to Defendant’s registered
mark SWISS MILITARY, this admission is sufficient to establish that Plaintiff is
not a mere intermeddler, but has a real interest in this proceeding and a reasonable

22 Opposition No. 91191784: Answer to Amended Notice of Opposition ¶ 2 b; 21 TTABVUE.
Opposition No. 91191784 and Cancellation No. 92052183
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belief in damage. See Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107
USPQ2d 1750, 1760 (TTAB 2013) (“As a competitor who uses the term ‘Annapolis
Tours’ as part of its domain name, petitioner has shown that it is not a mere
intermeddler, but has a real interest in this proceeding.”).
We consider now the sole claim argued by Plaintiff in the opposition namely that
that Defendant’s applied-for mark SWISS MILITARY for “bicycles” has not
acquired distinctiveness under Section 2(f). During ex parte prosecution, the
Examining Attorney refused registration of the mark on the ground that the mark
is merely descriptive of the identified goods under Trademark Act Section 2(e)(1), 15
U.S.C. § 1052(e)(1). As explained in the Final Office Action dated October 3, 2007:
In this instance, applicant has acknowledged that the goods are
made for the Swiss military and are designed to the specifications
of the Swiss military. Accordingly, the proposed mark describes
both the intended user and salient characteristics of the goods.23

In response, Defendant amended its basis to Section 1(a) of the Trademark Act,
15 U.S.C. § 1051(a), by submitting an amendment to allege use alleging December
31, 1997 as the date of first use anywhere and in commerce. The amendment to
allege use was executed on March 6, 2008 and signed by David Montague who
identified his title as “President.” The specimens state in relevant part:
The Swiss Military™ XO is an aggressive hard tail that can be ridden
anywhere. This model is inspired by the breathtaking rides found
throughout the Alps and performs accordingly.24

23 USPTO TSDR Case Viewer Application Serial No. 75111267, entry dated October 3, 2007
(Final Office Action).
24 USPTO TSDR Case Viewer Application Serial No. 75111267, entry dated March 6, 2008
(specimen).
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Defendant also amended the application to seek registration pursuant to Section
2(f). The Section 2(f) declaration was executed on February 8, 2008, and reads as
follows:
I, David Montague, declare that I am President of the Applicant and
that I am authorized to execute this application on its behalf.
Applicant declares that the mark has been used by Applicant in lawful
commerce for at least five years prior to the filing of this Declaration in
connection with the goods in Class 12. The mark has become
distinctive of the goods through Applicant’s substantially and exclusive
continuous use in commerce for at least the five years immediately
before the date of this statement.25

The examining attorney accepted the Section 2(f) declaration and approved the
application for publication in the Official Gazette.
Plaintiff challenges the validity of the Section 2(f) declaration as well as
amendment to allege use on the ground that the signatory to both affidavits, David
Montague, misidentified himself as “President” of Defendant when Massachusetts
state corporate records show his position as “Clerk” and “Treasurer.” Plaintiff
asserts that this incongruity rises to the level of “an intentional misrepresentation
under oath” or “perjury,” effectively negating the evidentiary value of the
declarations.26
The parties in their briefs dispute the burden of proof regarding Plaintiff’s
Section 2(f) claim. In an opposition proceeding, the opposer has the initial burden of
showing that an applicant’s mark has not acquired distinctiveness. Yamaha

25 USPTO TSDR Case Viewer Application Serial No. 75111267, entries dated March 6, 2008
(amendment to allege use and specimen).
26 Opposition No. 91191784: Plaintiff’s Brief, p. 20; 54 TTABVUE 24; Plaintiff’s Reply Brief,
p. 6, 70 TTABVUE 7.
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International v. Hoshino Gakki, 840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir.
1988) (a party challenging the sufficiency of an applicant’s § 2(f) showing “must
have at least the initial burden of challenging or rebutting the applicant’s evidence
of acquired distinctiveness made of record during prosecution which led to
publication of the proposed mark”). As explained by the court:
An opposer to an application submitted under Section 2(f) sufficiently
meets its initial burden if it produces sufficient evidence or argument
whereby, on the entire record then before the board, the board could
conclude that the applicant has not met its ultimate burden of showing
acquired distinctiveness. Cf. Sanyo Watch Co. v. Sanyo Electric Co., 691
F.2d 1019, 1022, 215 USPQ 833, 834 (Fed. Cir. 1982) (opposer’s prima
facie case requires “facts from which the board might reasonably
conclude” that applicant was not entitled to the registration sought).
Thus, the board’s requirement that Yamaha establish a prima facie case
of no acquired distinctiveness does not require Yamaha to “prove”
anything, but simply requires Yamaha to present sufficient evidence or
argument on which the board could reasonably conclude that Hoshino had
not proven at least one of the elements necessary to obtain a trademark
registration.

Id. at 1004. When an opposer has met its initial burden challenging the sufficiency
of applicant’s proof of acquired distinctiveness, an applicant may then present
additional evidence and argument to rebut opposer’s showing and to establish that
its mark has acquired distinctiveness. Id. at 1005. In this regard, the ultimate
burden of persuasion on the issue of acquired distinctiveness is on applicant. Id. at
1006.
Keeping this standard in mind, we will now evaluate whether Plaintiff has made
an initial prima facie case that Defendant’s mark lacks acquired distinctiveness. As
noted earlier, during prosecution of the application, Defendant did not submit any
actual evidence of acquired distinctiveness (e.g., advertising expenditures, volume of
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sales under the mark, consumer surveys). Instead, the USPTO found acquired
distinctiveness solely on the basis of Defendant’s Section 2(f) declaration of five
years of “substantially exclusive and continuous use” immediately preceding the
date of execution of the declaration. Thus Plaintiff’s claim that Defendant’s mark
lacks the requisite evidence of acquired distinctiveness is not based on an assertion
that Defendant’s mark SWISS MILITARY is so highly descriptive that a
heightened showing of acquired distinctiveness is necessary and that Defendant
cannot rely solely on its declaration of use of its mark. Rather it is based on
purported technical deficiencies in the execution of the declaration. We must
therefore determine whether the signatory to the declaration and amendment to
allege use, David Montague, had the requisite authority to sign on behalf of
Defendant.
According to the certified copies of corporate records maintained by the
Massachusetts Secretary of Commonwealth of Defendant’s “Annual Report for
Domestic and Foreign Corporations” for the years 2003-2008 submitted under
notice of reliance by Plaintiff, Mr. Montague identifies his position with Applicant
as “Clerk” on the signature line. He also, however, is identified as “Treasurer” of
Applicant in response to the inquiry “[s]tate the names and address of the officers
specified below and of all the directors of the corporation…”.
A “person properly authorized to sign on behalf of the applicant” as set forth in
Trademark Rule 2.193(e)(1) is defined, in relevant part, as “(i) [a] person with legal
authority to bind the owner (e.g., a corporate officer or general partner of a
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partnership); or (ii) [a] person with firsthand knowledge of the facts and actual or
implied authority to act on behalf of the owner.” Trademark Rule
2.193(e)(1) applies to among other things, amendments to allege use and
declarations supporting claims of acquired distinctiveness under Section 2(f). See
Trademark Rule 2.193(e)(1), 37 C.F.R. § 2.193(e)(1). See also Trademark Manual of
Examining Procedure (“TMEP”) § 804.04 (January 2015). The documents submitted
by Plaintiff obtained from the Massachusetts state records clearly show that
Mr. Montague was an officer during the relevant time period. Thus, contrary to
Plaintiff’s assertions, Mr. Montague did indeed possess the requisite legal authority
to sign both the Section 2(f) declaration as well as amendment to allege use on
Defendant’s behalf. Defendant’s Section 2(f) declaration is not invalid simply
because the title of the signatory was misidentified.
Plaintiff’s Section 2(f) claim is also premised on the allegations that the
“designation Swiss Military did not appear on any of Applicant’s bicycle models
used in commerce in the United States” during the years 1999-2006; that “[t]o the
extent that applicant is using the mark in commerce in the United States, such use
is limited to a bicycle model whose name or number includes the letters ‘XO’”; that
“the XO model is depicted in the specimen(s) filed by Applicant on March 6, 2008”;
and that “[t]he XO model was not sold in the United States before 2007.”27 Other
than pointing to the discrepancy in Mr. Montague’s title, Plaintiff submitted no
evidence to prove any of these allegations. That is to say, the record is devoid of any

27 Opposition No. 91191784: First Amended Notice of Opposition ¶¶ 16-28; 9 TTABVUE 4-5.
Opposition No. 91191784 and Cancellation No. 92052183
- 19 -

evidence that Defendant did not use its applied-for mark SWISS MILITARY in
lawful commerce in connection with “bicycles” for at least five years prior to the
execution of its Section 2(f) declaration.
Thus, based on the record before us, we find that Plaintiff has not satisfied its
initial burden of demonstrating that Defendant failed to meet its ultimate burden of
acquired distinctiveness.
Accordingly, the opposition is dismissed.28

28 In the event Defendant prevails in the opposition, Plaintiff has requested remand of the
application to a “newly reassigned examining attorney, on the stricken (thus unpleaded)
ground of false suggestion of a connection with the Swiss Military; and on the unpleaded
ground of that the designation is geographically deceptive (as opposed to the pleaded
ground that the designation is primarily geographically deceptively misdescriptive).”
Opposition No. 91191784: Plaintiff’s Reply Brief, p. 10; 70 TTABVUE 11. Trademark Rule
2.131 provides in relevant part that if during an opposition proceeding facts are disclosed
which appear to render the mark unregistrable but the matter has not been tried by the
parties under the pleadings or as they may be deemed amended under Fed. R. Civ. P. 15(b),
the Board has discretion to remand the application to the Trademark Examining Attorney
for further examination in light of the newly disclosed facts. We cannot point to any facts
disclosed here to warrant remand of the application in this regard. Accordingly, Plaintiff’s
request for remand is denied.