No. 92060533 (T.T.A.B. Mar. 30, 2017)

Red Hen, LLCv.Ji Kim

Trademark Trial and Appeal BoardMar 30, 2017

No. 92060533 (T.T.A.B. Mar. 30, 2017)

This Opinion is Not a Precedent of the TTAB Mailed: March 30, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Red Hen, LLC v. Ji Kim _____ Cancellation No. 92060533 _____ James Albee Mitchell of Mitchell Intellectual Property Law, PLLC for Red Hen, LLC. Kevin J. Keener of Keener and Associates, P.C. for Ji Kim. _____ Before Bergsman, Masiello, and Larkin, Administrative Trademark Judges. Opinion by Masiello, Administrative Trademark Judge: Ji Kim (“Respondent”), an individual, owns U.S. Reg. No. 43496701 (the “Registration”) for the mark shown below: The mark is registered on the Principal Register for “Children's educational toys for developing fine motor, cognitive, counting, colors and alphabet skills; Toy boxes; Toy 1 Issued June 11, 2013, based upon an application filed October 6, 2012. Cancellation No. 92060533 2 building blocks,” in International Class 28. The Registration states that “The English translation of ‘SPIELGABEN’ in the mark is ‘play gifts.’” The Registrant has disclaimed the exclusive right to use SPIEL GABEN apart from the mark as shown. Red Hen, LLC (“Petitioner”) filed a petition to cancel the Registration on the ground of likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). Petitioner alleged that it has used the designation SPIELGABE as a trademark on toy blocks and toy boxes since 2003 and that this trademark has become distinctive of its goods. Respondent denied the salient allegations of the petition and asserted as an affirmative defense that the term SPIELGABE is generic and unregistrable. The case is fully briefed. I. Evidentiary matter: Respondent’s motion to strike. Before turning to the merits, we will address a pending evidentiary motion. As noted below, the parties stipulated that testimony would be submitted by declaration.2 Respondent filed a motion3 to strike the testimony declarations of Doug Stowe, Karen Hewitt, Norman Brosterman, and Tiffeni Goessel.4 The Board deferred consideration of the motion until the case was ready for final decision.5 The motion is fully briefed. Respondent first contends that the declarations are thinly veiled expert testimony offered without the formalities required of such testimony. See 37 C.F.R. § 2 14 TTABVUE. 3 29 TTABVUE. 4 27 TTABVUE 8-15. 5 30 TTABVUE. Cancellation No. 92060533 3 2.120(a)(2)(iii); Fed. R. Civ. P. 26(a)(2). We find that the declarants at issue did not testify as experts. None of them was asked to render an opinion; all of their testimony was based on their own perceptions of whether the terms SPIELGABE or SPIELGABEN were used in the United States and was not based upon scientific, technical or other specialized knowledge. The fact that the declarants may have had some qualifications in the field of education does not automatically bring their testimony under the provisions of Fed. R. Evid. 702, 703, and 705, which trigger the provisions of Fed. R. Civ. P. 26(a)(2). As a second ground for striking the declarations, Respondent argues that in an interrogatory it asked Petitioner to “[i]dentify all fact and expert witnesses Petitioner may call to testify at trial”;6 that Petitioner did not disclose the declarants in its response to the interrogatory and did not thereafter supplement its disclosure until the declarants were named in Petitioner’s pretrial disclosure. Respondent invokes the estoppel sanction of Fed. R. Civ. P. 37(c), which provides that “If a party fails to provide information or identify a witness as required by Rule [26(e)], the party is not allowed to use that information or witness to supply evidence … at a trial, unless the failure was substantially justified or is harmless.” Each of the declarations at issue consists of brief answers to a short questionnaire. In each case the witness’s identity lends no special weight to his or her answers. The testimony elicited is primarily of only peripheral importance to the issues raised by this case, and it was by no means dispositive. Although Petitioner should have 6 Interrogatory No. 3, Respondent’s motion to strike Exhibit B, 29 TTABVUE 18. Cancellation No. 92060533 4 disclosed its plans to call these witnesses at the time required under the discovery and disclosure rules, we find that their declarations occasioned no substantial surprise to Respondent and that Petitioner’s failure was essentially harmless. See Great Seats Inc. v. Great Seats Ltd., 100 USPQ2d 1323, 1327 (TTAB 2011). Accordingly, Respondent’s motion to strike the declarations is denied. II. The record. The record includes the pleadings and, by operation of Trademark Rule 2.122, 37 C.F.R. § 2.122, the file history of the Registration and underlying application. The parties stipulated that testimony would be submitted by declaration; and that non- certified copies of the trademark prosecution histories7 would be admissible. 14 TTABVUE. The parties have made of record the following testimony and evidence: A. Filed by Petitioner: - Testimony declaration of Scott Bultman, Petitioner’s CEO, 26 TTABVUE 1-13. - Supplemental testimony declaration of Scott Bultman (and exhibit), 27 TTABVUE 2-7. - Rebuttal testimony declaration of Scott Bultman, 37 TTABVUE. - Testimony declaration of James Albee Mitchell, counsel for Petitioner (and exhibits), 26 TTABVUE 14-173. - Testimony declaration of James Albee Mitchell (and exhibits), 26 TTABVUE 174-510. - Testimony declaration of Doug Stowe, 27 TTABVUE 8-9. 7 In any event, official records of the USPTO need not be certified to be offered in evidence. 37 C.F.R. § 2.122(e). Electronic versions of applications and registrations printed from the USPTO's databases are official records, and may be introduced under a notice of reliance. TBMP § 704.07 and cases cited therein. Cancellation No. 92060533 5 - Testimony declaration of Karen Hewitt, 27 TTABVUE 10-11. - Testimony declaration of Norman Brosterman, 27 TTABVUE 12-13. - Testimony declaration of Tiffeni J. Goesel, 27 TTABVUE 14-15. B. Filed by Respondent: - Testimony declaration of Ji Kim, 33 TTABVUE 2-7. - Evidentiary declaration of Kevin Keener, counsel for Respondent, 33 TTABVUE 8-58. - Supplemental evidentiary declaration of Kevin Keener, 34 TTABVUE (confidential). - Evidentiary declaration of Andrea Bolander, educational specialist, 33 TTABVUE 59-60. - Evidentiary declaration of Krista Bertelson, educational administrator, 33 TTABVUE 61-62. - Evidentiary declaration of Susan Meriwether, educational administrator, 33 TTABVUE 63-64. - Respondent’s notice of reliance on Petitioner’s responses to requests for admission, 35 TTABVUE. III. Standing. Standing is a threshold issue that must be proven by a plaintiff in every inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401 (2015). The plaintiff must show that it has a real interest in the proceeding beyond that of a mere intermeddler and that it has a reasonable basis for its belief of damage resulting from registration of the subject mark. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999). Cancellation No. 92060533 6 Petitioner has shown that it filed an application for U.S. registration of the mark SPIELGABE (Serial No. 86144407), and that the USPTO has refused registration on grounds of likelihood of confusion with Respondent’s registered mark.8 This is sufficient to demonstrate Petitioner’s standing to seek cancellation of the Registration. Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982) (a cancellation petitioner may establish its standing by proving that its pending application for registration has been refused on the basis of the involved registration). Respondent’s contention that Petitioner lacks standing because the terms SPIELGABE and SPIELGABEN are generic terms9 is unavailing. Respondent’s registered mark prominently features the term SPIELGABEN and as a whole is entitled to the evidentiary presumptions of Section 7(b), 15 U.S.C. § 1057(b). Even if SPIELGABEN were demonstrated to be generic, when an assertion of confusing similarity between marks is tried, even generic matter is considered in assessing the overall commercial impression created by a mark. (The USPTO’s refusal to register Petitioner’s mark is an illustration of such an assessment.) Thus, Petitioner could reasonably believe that Respondent’s Registration might be deployed against it in a trademark claim. For the reasons stated, we find that Petitioner has established standing to bring this cancellation proceeding. 8 Final refusal, 26 TTABVUE 394-396. 9 Respondent’s brief at 15-21, 42 TTABVUE 20-26. Cancellation No. 92060533 7 IV. Petitioner’s claim under Section 2(d). Petitioner seeks to cancel the Registration under Trademark Act § 2(d), on the ground that Respondent’s mark “so resembles … a mark or trade name previously used in the United States by [Petitioner] and not abandoned, as to be likely, when used on or in connection with the goods of [Respondent], to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1052(d). A party seeking to cancel a registration under Section 2(d) must prove that it has proprietary rights in the term it relies upon to demonstrate likelihood of confusion as to source. Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981). In this case, Petitioner asserts that it has common law proprietary rights in the term SPIELGABE as a trademark for “toy blocks and toy boxes.”10 Respondent contends that SPIELGABE is a generic term that is incapable of functioning as a trademark; or, in the alternative, that it is merely descriptive as applied to Petitioner’s goods and lacking in acquired distinctiveness. As we will discuss, on the record before us it is clear that SPIELGABE is at a minimum merely descriptive of Petitioner’s goods. Therefore, Petitioner must demonstrate that its mark has acquired distinctiveness in order to prevail in this matter. A. Mere descriptiveness. Petitioner’s principal Scott Bultman testified, “The word ‘spiel’ is German for ‘play,’ or sometimes ‘game,’ the word ‘gabe’ is German for ‘gift’ and ‘gaben’ is German for 10 Petition for cancellation, 1 TTABVUE 3. Cancellation No. 92060533 8 ‘gifts.’”11 Petitioner’s pending application to register SPIELGABE contains the statement, “The English translation of the wording ‘SPIELGABE’ is ‘play gift’”;12 and the Registration now at issue contains the statement, “The English translation of ‘SPIELGABEN’ in the mark is ‘play gifts.’” Mr. Bultman, in his rebuttal declaration, refers to the phrase “play gifts” as the “English counterpart” of Respondent’s mark SPIELGABEN.13 Petitioner, throughout its briefs, treats “play gift” as an English translation of SPIELGABE.14 In addition, Petitioner, in its pending application to register SPIELGABE, has sought registration on grounds of acquired distinctiveness under Section 2(f); Petitioner thereby admitted, at least for purposes of that application, that its mark is merely descriptive. See Yamaha Int'l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988) (“Where, 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.”). As the record clearly establishes that SPIELGABE is the German equivalent of the expression “play gift,” we find that the term is merely descriptive of toys that are suitable as gifts, such as Petitioner’s toy blocks. A mark is merely descriptive of goods if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods. In re Chamber of Commerce of the U.S., 11 Declaration of Scott Bultman ¶ 4, 26 TTABVUE 3. 12 26 TTABVUE 391. 13 Bultman rebuttal declaration ¶ 7, 37 TTABVUE 6. 14 See, e.g., Petitioner’s reply brief at 14 (“Neither SPIELGABE nor the English translations ‘play gifts’ and ‘game gifts’ ‘directly and immediately conveys some knowledge of the characteristics of’ toy blocks or toy boxes.”). Cancellation No. 92060533 9 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); see also, In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Whether a mark is merely descriptive is determined in relation to the goods for which registration is sought and the context in which the mark is used, not in the abstract or on the basis of guesswork. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In other words, we evaluate whether someone who knows what the goods are will understand the mark to convey information about them. DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). Where a mark is expressed in foreign wording, the foreign words are translated into English to determine descriptiveness, and “a foreign equivalent of a descriptive English word is no more registrable than the English word itself.” In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1637 (Fed. Cir. 2016). We are persuaded that persons familiar with the German language would immediately understand SPIELGABE to mean a gift to be used for playing or a plaything that is suitable as a gift. In this sense, it immediately conveys information about the nature and purpose of Petitioner’s toy blocks. Petitioner comes close to admitting as much when it argues that “The English translations, play gifts and game gifts, could apply to any toy or game.”15 We find that SPIELGABE is merely descriptive of Petitioner’s goods and, therefore, Petitioner’s asserted mark lacks inherent distinctiveness as a source indicator. 15 Petitioner’s reply brief at 15, 43 TTABVUE 16. Cancellation No. 92060533 10 B. Acquired distinctiveness. Because SPIELGABE is merely descriptive of Petitioner’s goods, Petitioner must show that it has acquired distinctiveness in order to demonstrate a proprietary interest in this term as a trademark. In order to demonstrate that its proprietary interest is prior in time to Respondent’s rights in his mark (i.e., that Petitioner’s mark is a “mark … previously used”), Petitioner must show that such acquired distinctiveness arose not later than the date Respondent adopted his mark. Towers v. Advent Software Inc., 913 F.2d 942, 16 USPQ2d 1039, 1042 (Fed. Cir. 1990) (holding that in a cancellation proceeding a petitioner asserting common law rights in a term that is not inherently distinctive must demonstrate that its proprietary interest arose not later than the respondent’s adoption of its registered mark). For purposes of this priority test, Respondent is entitled to rely upon the October 6, 2012 filing date of the application underlying his Registration as his constructive date of first use. 15 U.S.C. § 1057(c). “To show that a mark has acquired distinctiveness, an applicant must demonstrate that the relevant public understands the primary significance of the mark as identifying the source of a product or service rather than the product or service itself.” In re Steelbulding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005) (emphasis added). Acquired distinctiveness is generally understood to mean “a mental association in buyers’ minds between the alleged mark and a single source of the product.” 2 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 15:5 (4th ed. Cancellation No. 92060533 11 June 2016 update). “It is only necessary that a ‘substantial part’ of the buying class make such an association.” Id. §15:45. Petitioner’s principal Scott Bultman testified that Petitioner and its predecessors have used SPIELGABE on toy blocks, toy block sets, and toy boxes since 2003.16 However, his testimony casts doubt on whether Petitioner can claim the benefit of its earliest predecessor’s use of the term. The entity that initiated use in 2003 (American Traditional Toys, Inc.) dissolved in 2006; and for several years business was conducted by another company, Lindenwood, Inc., having a different ownership structure. Petitioner does not explain how or whether the goodwill of American Traditional Toys’ business was transferred to Lindenwood. In 2009 Petitioner itself acquired Lindenwood’s business under the SPIELGABE designation.17 Thus, Petitioner apparently succeeded to the rights of Lindenwood, such that Lindenwood’s use of SPIELGABE since 2006 may be found to inure to Petitioner’s benefit; however, on this record we cannot find that American Traditional Toys’ use of the term since 2003 inured to Petitioner’s benefit. Mr. Bultman testified that, since 2003, Petitioner has sold over 10,000 marked items;18 that the goods have been sold in 16 locations in 7 states (Illinois, Pennsylvania, Arizona, Wisconsin, New York, Oregon and Ohio) and have been exhibited at least at 10 events in 5 states (California, Michigan, Massachusetts, 16 Bultman declaration ¶ 2, 26 TTABVUE 2. 17 Id. ¶ 37, 26 TTABVUE 12. 18 As we have discussed above, on this record we cannot find that sales prior to 2006 contributed to Petitioner’s goodwill; and we do not know what portion of these 10,000 sold items is attributable to the period beginning in 2006. Cancellation No. 92060533 12 Tennessee, and Pennsylvania).19 Annual sale revenues between 2009 and 2014 ranged from $22,000 to $64,000; and the annual advertising expenditures for those years ranged from $1,400 to $18,000.20 Petitioner owns 12 internet domain names that “relate” to its use of the term SPIELGABE.21 Three declarants testified that they know of commercial use of the term SPIELGABE only by Petitioner.22 A fourth declarant testified that she was aware of use of the term by both Petitioner and Respondent (becoming aware of Respondent via the internet).23 Petitioner has sought to make favorable use of a survey performed by Respondent at an earlier stage of this proceeding.24 We have given the survey little to no weight. The survey is unscientific for many reasons: Respondent himself was involved in designing the survey and he himself administered it; the universe of survey subjects was limited to Respondent’s own customers, and the response rate was extremely low (14 responses out of 180 customers solicited). The questions were not well-drafted, so that the answers thereto are of very questionable significance. Little if any useful information regarding public perceptions can be gleaned from the results of this survey. 19 Id. ¶¶ 7, 12, 14, 26 TTABVUE 4-6. 20 Id. ¶¶ 15-16., 26 TTABVUE 7. 21 Id. ¶ 9, 26 TTABVUE 5. 22 Declarations of Doug Stowe, Karen Hewitt, and Norman Brosterman, 27 TTABVUE 8-13. 23 Declaration of Tiffeni J. Goesel, 27 TTABVUE 14-15. 24 See Bultman declaration, 26 TTABVUE 288-318. Cancellation No. 92060533 13 Petitioner and Respondent have both asserted that the expression SPIELGABE was originally used by the 19th-century German educator Friedrich Fröbel to describe particular sets of building blocks and other educational toys developed by him for use in teaching small children.25 The goods of both Petitioner and Respondent are inspired by – and to some extent replicate – the toys invented by Fröbel. Respondent has submitted the declarations of three educators who stated that, to their understanding, the words SPIELGABE and SPIELGABEN “refer generically to wood blocks to be used in the Fröbel method of teaching.”26 Respondent himself stated that, in prosecuting his application for registration of his mark, “I disclaimed SPIEL GABEN because of the generic nature of the phrase when applied to the goods.”27 The evidence adduced by Petitioner shows that Petitioner is a small business; the amount of business it has done and its efforts to advertise and otherwise promote its business are extremely modest. There is very little evidence to demonstrate the degree to which members of the relevant public associate the term SPIELGABE with Petitioner, and that evidence is counterbalanced by evidence indicating that some members of the relevant public regard SPIELGABE as a term referring not to Petitioner but to specific types of toys associated with Friedrich Fröbel. The extent to which some members of the public may understand SPIELGABE in this way reduces the likelihood that customers would come to associate the term SPIELGABE 25 Bultman declaration ¶ 3, 26 TTABVUE 2-3; Petitioner’s response to request for admission No. 6, 35 TTABVUE 5; Testimony declaration of Ji Kim ¶ 7, 33 TTABVUE 3-4. 26 Declarations of Andrea Bolander, Krista Bertelson, and Susan Meriwether, 33 TTABVUE 59-64. 27 Kim declaration ¶ 2, 33 TTABVUE 2. Cancellation No. 92060533 14 exclusively with Petitioner as a source indicator. We find that substantially more evidence bearing directly on the degree of public recognition of Petitioner’s mark would be required to demonstrate that it has acquired public recognition as Petitioner’s source indicator. In re Steelbuilding.com, 75 USPQ2d at 1424 (“[T]he applicant’s burden of showing acquired distinctiveness increases with the level of descriptiveness; a more descriptive term requires more evidence of secondary meaning.”) Considering all of the evidence of record, we find that Petitioner has failed to demonstrate that its asserted mark has become distinctive of its goods. Petitioner, having failed to prove that it has proprietary rights in the term SPIELGABE, cannot prevail in its claim of likelihood of confusion. We therefore enter judgment against Petitioner. Decision: The petition for cancellation is dismissed.