OMS Investments, Inc.

Trademark Trial and Appeal Board

Jan 22, 2003

No. 75660252 (T.T.A.B. Jan. 22, 2003)

Mailed:
January 22, 2003
Paper No. 14
DEB
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re OMS Investments, Inc.
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Serial No. 75/660,252
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Melville Owen and Koorosh Afshari of Owen Wickersham &
Erickson, P.C. for OMS Investments, Inc.
Marlene Bell, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______
Before Hanak, Hohein and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
OMS Investments, Inc. seeks registration of the term
WINTERIZER on the Principal Register as used in connection
with “lawn fertilizer for agricultural and domestic use;
combination of lawn fertilizer and herbicide for
agricultural and domestic use,” in International Class 1.1
As filed, the initial application papers claimed that this
1 Application Serial No. 75/660,252 was filed on March 15,
1999, based upon an amended claim of use in commerce since at
least as early as October 1985 (see amended declaration of
February 7, 2000, based upon amended identification of goods).
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75/660,252
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term had acquired distinctiveness as a source indicator
consistent with Section 2(f) of the Lanham Act.
This case is now before the Board on appeal from the
final refusal to register based upon the ground that
applicant’s showing of acquired distinctiveness is
insufficient to overcome the highly descriptive nature of
the mark. Applicant and the Trademark Examining Attorney
have briefed the issues, but applicant did not request an
oral hearing.
This decision involves weighing the degree of
descriptiveness of the term WINTERIZER against the volume of
evidence applicant has proffered to show acquitted
distinctiveness. While both sides of the balance have been
argued vigorously by applicant and by the Trademark
Examining Attorney, in a close decision, we reverse the
Trademark Examining Attorney’s refusal to register.
By applying with an initial claim of acquired
distinctiveness, applicant has conceded that the term
“Winterizer” is merely descriptive of (although not generic
for) its goods. Such a claim is tantamount to an admission
that the term “Winterizer” is not inherently distinctive and
therefore is unregistrable on the Principal Register, in
light of the prohibition in Section 2(e)(1) against merely
descriptive marks, absent a showing of acquired
distinctiveness pursuant to Section 2(f). See Yamaha
Serial No. 75/660,252
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International Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572,
6 USPQ2d 1001, 1005 (Fed. Cir. 1988) ["[w]here, as here, an
applicant seeks a registration based on acquired
distinctiveness under Section 2(f), the statute accepts a
lack of inherent distinctiveness as an established fact"];
and TMEP §1212.02(b).
As our principal reviewing court has noted with respect
to the possible registrability of descriptive terms which may
nevertheless acquire distinctiveness, “the greater the degree
of descriptiveness the term has, the heavier the burden to
prove it has obtained secondary meaning.” Yamaha
International Corp. v. Hoshino Gakki Co. Ltd., supra at 6
USPQ2d 1008. See In re Bongrain International (American)
Corp., 894 F.2d 1316, 13 USPQ2d 1727, 1728 (Fed. Cir. 1990)
at n. 4. It is settled, moreover, that the applicant has the
burden of proof with respect to establishing a prima facie
case that a merely descriptive term has acquired
distinctiveness. For instance, as stated in Yamaha, "the
ultimate burden of persuasion under Section 2(f) on the issue
of acquired distinctiveness is on … [the] applicant." Id.
We turn first to a consideration of exactly where on
the continuum of distinctiveness the applied-for mark falls.
The word "winterize” is a common English language word. It
is a verb meaning “to prepare for winter.”2 As seen in the
2 Winterize [transitive verb]: to make ready for winter or
winter use… Webster’s Third New International Dictionary of the
English Language Unabridged (1993).
Serial No. 75/660,252
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second of these dictionary entries, the word “winterizer” is
itself listed as a dictionary word without a definitional
entry. Logically, it appears to be a noun meaning ‘a thing
that prepares something else for winter.’ The recurrent
theme in applicant’s submissions, as well as in more than a
hundred LEXIS/NEXIS hits submitted by the Trademark
Examining Attorney, is that applicant’s product is a
fertilizer high in potassium that is recommended for use on
lawns in late-fall as it is designed to help the turf
develop a stronger root system during the cold of the winter
months.
As presented on the computer-generated pages of NEXIS,
many of the newspaper stories appear to use the term
“winterizer” in a highly descriptive, if not generic manner.
However, at the time of briefing, the Trademark Examining
Attorney did not take the position that this term is generic
for applicant’s goods (and she is certainly not required to
do so in order to prevail herein). Nonetheless, we begin
our discussion by clarifying that the Trademark Examining
Attorney appears to have conceded the capability of this
term to function as a source indicator.
Winterize (verb): to prepare (an automobile, house, etc.) for
cold weather… winterizer (noun), The Random House Dictionary of
the English Language, Second Ed. Unabridged.
Serial No. 75/660,252
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On the other hand, applicant continues to argue that
there is no clear evidence that the term “Winterizer” is
even “highly descriptive.” However, there are more than one
hundred LEXIS/NEXIS stories – many of them local newspaper
articles distributed in cities and towns across the United
States – demonstrating what appears to be non-trademark
usages of this term for fall-time fertilizers designed for
one’s turf.
Writers often use the word in quotation marks (e.g.,
“winterizer” fertilizer, “winterizer-style” fertilizer or
“winterizer-type” fertilizer). Some of the articles
referred specifically to “Winterizer” as Scott’s branded
product. Conversely, few of the hits contained similar
references to other branded lawn care products. In any
case, based upon a thorough review of this record, it is not
clear whether, and if so, how many, of applicant’s
competitors may be using this term in a highly descriptive
or generic manner on their own goods.3
When considering carefully the substantial amount of
LEXIS/NEXIS evidence on which the Trademark Examining
Attorney relied, we do not agree with applicant’s position
3 On this point, we would urge the Trademark Examining Attorney
in a similar case to supplement the NEXIS evidence with Internet
search results that might show more clearly the extent of third-
party usage of this term in a descriptive manner within product
names for their own competing lawn care products.
Serial No. 75/660,252
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that these NEXIS articles “apparently authored by lawn-and-
garden type reporters” do not reflect the knowledge of the
average American consumer. While it is understandable that
the average cosmetics customers may not know of “Vittel” – a
place name for a small French town rarely mentioned in the
American press,4 the frequent use of a highly-descriptive
(and arguably generic), English-language word in these many
newspaper articles reinforces the shared understanding of
dozens of newspaper writers and the many consumers who read
these articles that the term conveys information about a
characteristic or function of the identified lawn care
products.
Applicant’s continues its criticism of the LEXIS/NEXIS
evidence, charging that “many of the articles cited by the
Examining Attorney expressly refer to WINTERIZER as a brand
and thus a source indicator.” Applicant then points out a
number of examples:
- Good fall weather in North America helped spur
sales in nearly all categories, especially late
fall lawn fertilizer products like Scotts
Winterizer™. Financial Times Information, January
14, 2002.
- October-November: Winterizer – Fall Lawn
Fertilizer. The Chicago Sun-Times, April 8,2001.
- Scotts 17.05-pound bag of Winterizer with weed
control. Daily Press, October 6, 1999.
4 Accord In re Societe Generale des Eaux Minerales de Vittel
S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987).
Serial No. 75/660,252
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Accordingly, applicant takes the position that the
Trademark Examining Attorney’s “‘evidence’ that Appellant's
mark is ‘highly descriptive’, is at best, inconclusive and
contradictory and far from clear proof that the mark
WINTERIZER has not established a prima facie case of
acquired distinctiveness.” (Applicant’s reply brief, p. 5).
Applicant herein cites to the court’s determination of In re
Merrill Lynch, Pierce, Fenner, and Smith Inc., 828 F.2d
1567, 4 USPQ2d 1141 (Fed. Cir. 1987) for the proposition
that wholesale reliance on NEXIS entries is improper given
the contradictory nature of the articles retrieved by NEXIS
and relied upon by the examining attorney in that case (the
“mixture of usages unearthed by the NEXIS computerized
retrieval service does not show, by clear evidence” that the
mark was highly descriptive/generic).
In fairness to the position taken by the Trademark
Examining Attorney herein, it should be made clear that the
majority of the NEXIS uses in the record do not contain
recognizable references to applicant or applicant’s
products. The term “winterizer” (lower case, and as a noun)
is repeatedly used to describe a particular type of lawn
care fertilizer applied in the fall. In fact, one could
actually conclude from a review of all the NEXIS hits that
the term is used throughout the lawn care industry to
Serial No. 75/660,252
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describe goods such as applicant offers. Hence, given what
the totality of the evidence in the record demonstrates, we
find that applicant’s applied-for term is at the very least,
highly descriptive.
As a result of this finding, the sole remaining issue
in this appeal is whether the highly-descriptive term
WINTERIZER has acquired sufficient distinctiveness to be
registered under the provisions of Section 2(f) of the
Lanham Act.
Applicant has supplied an extensive array of evidence
of acquired distinctiveness demonstrating:
- More than $137 million worth of WINTERIZER brand
products sold since 1997.
- Applicant’s sales of WINTERIZER brand products have
increased by 1700% over the past sixteen years.
- By 1997/1998, the WINTERIZER brand fertilizer products
had captured more than 60% of the entire U.S.
fall/winter fertilizer market making it the most
popular brand of fall/winter fertilizer in the United
States.
- During the five-year period of 1997-2002, applicant
expended more than $12 million on advertising and
promoting the WINTERIZER brand in various media,
including regularly advertising the brand on such high
profile TV/cable programs as:
1. Good Morning America
2. Law and Order
3. World News With Peter Jennings
4; NBC's Nightly News
5. Today Show
6. Spin City
7. 48 Hours
8. Nash Bridges
9. 20/20
10. NFL Football
Serial No. 75/660,252
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11. Dateline
12. The Cosby Show
13. Diagnosis Murder
14. Major League Baseball Playoffs
15. College Football
16. PGA Weekday Afternoon
17. JAG
18. ESPN Sports Center
19. Breeder's Cup
20. ESPN Major League Soccer Pennant Race
- Applicant’s print and television promotions
specifically promote the WINTERIZER mark as one of
applicant’s source indicators by linking the mark to
applicant through visual placement and textual
description.
- The WINTERIZER advertising program has made fundamental
changes in consumer behavior, causing a large segment
of consumers to fertilize their lawns during fall.
- Applicant’s Lawn Care magazine, reaching more than 7
million consumers annually, has continuously and
prominently featured/promoted the WINTERIZER mark.
- Applicant’s web site, which has continuously and
prominently featured and promoted the WINTERIZER mark
received more than 15 million hits in 1999 alone.
- Applicant’s advertising efforts, including those
associated with the WINTERIZER brand fertilizer, which
is one of the applicant’s core products, were recently
projected to create 2.5 billion consumer impressions
annually.
- Extensive use of various brochures and point of
purchase signage, clearly indicating applicant as the
source of WINTERIZER brand fertilizer.
- Extensive promotion of the WINTERIZER mark in
applicant’s catalogs with descriptive text and images
stresses that WINTERIZER brand fertilizer is exclusive
to applicant.
Nonetheless, without discussing or refuting this
collection of evidence, the Trademark Examining Attorney
simply takes the position that she “is not persuaded that a
prima facie case of acquired distinctiveness has been
established because the proposed mark is highly descriptive,
Serial No. 75/660,252
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as evidenced by the numerous articles from the LEXIS/NEXIS
Research Database, that refer to WINTERIZER as an actual
type of fertilizer.” (Trademark Examining Attorney’s appeal
brief, p. 7).
It is certainly true, for example, that we do not have
benefit of a survey clarifying how the relevant public
perceives this term when used on the identified goods. On
the other hand, applicant is not required to conduct and
submit a survey, and we must determine on the evidence of
record whether applicant has met its burden of persuasion
under Section 2(f) on the issue of acquired distinctiveness.
We turn then to a consideration of how applicant uses
the “Winterizer” term on the specimens of record:
and
Serial No. 75/660,252
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These cut-out portions of applicant’s fourteen pound
bags of fertilizer demonstrate use of applicant’s house mark
(Scotts®), in close proximity to the term applicant argues is
its product mark (Winterizer™), shown in relatively large,
red, bold and shadowed letters, followed in smaller letter by
the category of the goods (Fall Lawn Fertilizer). Moreover,
in all of applicant’s promotional materials contained in this
record, whether directed to stockholders, retailers or
consumers, applicant has clearly demonstrated that its own
manner of use is consistent with valid trademark usage.
The record shows that applicant has sold more than $137
million worth of WINTERIZER brand product since 1997 alone.
Furthermore, applicant has provided evidence of substantial
advertising activity specifically directed to creating
acquired distinctiveness for this term as used on
fertilizer. In the past five-year period for which the
Serial No. 75/660,252
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record contains data, applicant has spent more than $12
million advertising its WINTERIZER brand. We find this
volume of promotion and sales to be substantial.
Moreover, applicant has also provided some context by
which we can evaluate its conclusion that such figures
represent substantial sales. Specifically, applicant’s
WINTERIZER fertilizer has captured more than 60% market
share during the time period for which sales figures were
furnished. Hence, the volumes of WINTERIZER products sales
demonstrated by applicant are not merely substantial in the
abstract, but the record shows that applicant is the
dominant player in this niche market – a specialized market
it appears to have helped to create.
We find that this is a close case, inasmuch as the mark
is highly descriptive and yet applicant has proffered a
substantial showing of acquired distinctiveness that has not
been refuted by the Trademark Examining Attorney. The
record suggests that applicant may have created substantial
demand for a new type of product, and has managed to control
a substantial share of that newly-developed market. While
acknowledging that many newspaper writers use this term to
describe any fall fertilizer for lawns, we conclude that
appellant has proven acquired distinctiveness by a
preponderance of the evidence See Tone Brothers, Inc. v.
Serial No. 75/660,252
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Sysco Corp., 31 USPQ2d 1321 (Fed. Cir. 1994) (the party
attempting to establish legal protection for its mark has
the burden of proving secondary meaning by a preponderance
of the evidence).
Decision: The refusal to register under Section 2(f)
of the Act is reversed.