Calsonic Kansei North America, Inc

Trademark Trial and Appeal BoardJan 20, 2021

88243196RE (T.T.A.B. Jan. 20, 2021)

Mailed: January 20, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Calsonic Kansei North America, Inc. _____ Application Serial No. 88243196 _____ REQUEST FOR RECONSIDERATION _____ Timothy L. Capria, Alexandria C. Lynn, and Richard W.F. Swor of Bradley Arant Boult Cummings LLP for Calsonic Kansei North America, Inc. Kelley L. Wells, Trademark Examining Attorney, Law Office 118, Michael W. Baird, Managing Attorney. _____ Before Zervas, Bergsman and English, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Calsonic Kansei North America, Inc. (Applicant) seeks registration on the Principal Register of the mark TRANSLUCENT SKIN, in standard character form, for the goods listed below: Cruise controls for motor vehicles; Vehicle detection equipment, namely, display monitors, computers, image sensors, video cameras, and operating system and application software to detect vehicle location; Safety and driving assistant system for mobile vehicles and vessels comprised of electronic proximity sensors and switches, high-resolution cameras, integrated circuits for the This Opinion Is Not a Precedent of the TTAB Precedent of the TTAB PrePrecedent of the TTAB Serial No. 88243196 - 2 - purpose of imaging processing, and display monitors; Human-machine interface displays in an automobile, namely, electronic display screens and touchscreens for use in automobiles; Human-machine interface controls in an automobile, namely, electronic display screens and touchscreens for controlling electrical interior functions, motor starters, cruise control, heat and air conditioning, audio, and transmission gears, in International Class 9; and Gear shifts; Steering wheels for vehicles; Turn signal levers for vehicles; Vehicle parts, namely, steering wheels, in International Class 12.1 The Examining Attorney refused to register Applicant’s mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that the mark TRANSLUCENT SKIN is descriptive of the goods listed in the application. According to the Examining Attorney, TRANSLUCENT SKIN describes a feature of the goods (i.e., “they will feature a translucent automotive skin or be used in association with such a skin.”).2 The evidence of record shows that the wording TRANSLUCENT SKIN is used in the automotive industry to describe things that have a surface or skin which is transparent enough for light or lit items to be seen through the skin of the part.3 In a decision dated December 15, 2020, the Board affirmed the Section 2(e)(1) refusal to register the mark TRANSLUCENT SKIN for the goods in International Class 9 and reversed the refusal to register the goods in International Class 12. 1 Serial No. 88243196 filed December 27, 2018, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s claim of a bona fide intent to use the mark in commerce. 2 Examining Attorney’s Brief (9 TTABVUE 3). 3 Id. at 9 TTABVUE 4. Serial No. 88243196 - 3 - On January 14, 2021, Applicant filed a Request for Reconsideration of the December 15, 2020 final decision refusing to register the goods in International Class 9.4 As grounds for reconsideration, Applicant contends the Board made two errors: ● The Board erred “in affording evidentiary weight to … international websites, as they have no bearing on the average U.S. consumer’s understanding of Applicant’s Mark”;5 and ● The Board “erred in ignoring Applicant’s evidence that Applicant’s Mark evokes a suggestive commercial impression.”6 In the alternative, Applicant requests to amend the International Class 9 description of goods by deleting “human-machine interface displays in an automobile, namely, electronic display screens and touchscreens for use in automobiles; human- machine interface controls in an automobile, namely, electronic display screens and touchscreens for controlling electrical interior functions, motor starters, cruise control, heat and air conditioning, audio, and transmission gears.”7 I. Evidentiary weight accorded to foreign websites. At the outset, we acknowledge the panel’s inconsistency in considering foreign websites. On the one hand, we noted in our decision that we did not consider the Sekan Skin website (sekanskin.com) because it is a Canadian company and the Examining Attorney did not submit any evidence showing U.S. consumers 4 13 TTABVUE. 5 13 TTABVUE 6. 6 13 TTABVUE 8. 7 13 TTABVUE 12-14. Serial No. 88243196 - 4 - encountering this company or accessing the website,8 and that we did not consider the excerpt from the National Digital Science Library (ndsl.kr/ndsl) regarding “Translucent Skin Material, And Method For Manufacturing The Same” because there was not enough English language to make it relevant.9 On the other hand, we identified the Which Car website (whichcar.au) (Australia) and Applicant’s website (calsonickanswei.co.jp.) without noting that they are foreign websites and explaining why we were considering them.10 Applicant contends that the Board improperly accorded weight to evidence that has no bearing on the significance of Applicant’s Mark to the average American purchaser based on the false premise that there is no evidence that American consumers would encounter them.11 We cannot be blind to the fact that the Internet is ubiquitous. Even ordinary consumers research goods and services electronically using the Internet. Acknowledging this reality, the Court of Appeals for the Federal Circuit held that we must evaluate the probative value of foreign information sources on a case-by-case basis. In re Bayer Aktiengesellscahft, 488 F.3d 960, 82 USPQ2d 1828, 1835 (Fed. Cir. 2007). Indeed, the Court explained “[i]nformation originating on foreign websites or in foreign news publications that are accessible to the United 8 11 TTABVUE 6 n.16 (citing the May 7, 2020 Request for Reconsideration Denial (TSDR 8- 14)). 9 11 TTABVUE 5 (citing the October 16, 2019 Office Action (TSDR 19-20)). 10 11 TTABVUE 5 (citing the March 22, 2019 Office Action (TSDR 33-36) and the October 16, 2019 Office Action (TSDR 4 and 12-18)). 11 13 TTABVUE 6. Applicant asserts that the Car Body Design website (carbodydesign.com) is a foreign website and, therefore, it is ipso facto irrelevant. Serial No. 88243196 - 5 - States public may be relevant to discern United States consumer impression of a proposed mark.” Id. While foreign websites may not have the same probative value as websites originating in the United States, we may not summarily dismiss them. Various factors may inform the probative value of a foreign website in any given case, such as whether the website is in English (or has an optional English language version), and whether the nature of the goods or services makes it more or less likely that U.S. consumers will encounter foreign websites in the field of question. In re Well Living Lab Inc., 122 USPQ2d 1777, 1781 n.10 (TTAB 2017). In this case, because the products at issue are automotive parts, U.S. consumers researching the products may encounter foreign websites in English especially as they relate to imported automobiles and automobile parts or concept cars. See In re i.am.symbolic, llc, 127 USPQ2d 1627, 1634 n.8 (TTAB 2018) (not wholly discounting a European website because U.S. consumers may have some exposure to such websites retrieved from an Internet search). As indicative of the global nature of automobile manufacture and sale, and the global distribution of parts for such automobiles, we need look no further than Applicant’s website that indicates Applicant is a global company with a North American location and does business in the United States.12 Nevertheless, even if we did not consider the foreign websites, the remaining evidence still persuades us that the mark TRANSLUCENT SKIN for the goods in International Class 19 is merely descriptive. 12 October 16, 2019 Office Action (TSDR 18). Serial No. 88243196 - 6 - The Board did not err by considering the foreign website evidence the Examining Attorney submitted. II. Applicant’s evidence that TRANSLUCENT SKIN evokes a suggestive commercial impression. Applicant argues, “the Board erred in ignoring Applicant’s evidence that Applicant’s Mark evokes a suggestive commercial impression.”13 Here, Applicant presented plentiful evidence that Applicant’s Mark, in its entirety, conveys “a unique, nondescriptive” commercial impression, separate and apart from the dictionary meanings of the individual terms. Indeed, in Applicant’s Brief, Applicant asserted that Applicant’s Mark “connotes high tech features that do not interfere with driving and the driving experience.” Applicant’s Brief at 9 (7 TTABVUE 10). This commercial impression is especially significant as it relates to Applicant’s Goods in International Class 9, as Applicant’s Mark “connotes that Applicant’s Goods will seamlessly and discreetly integrate into the automobile, much like a second ‘skin,’ that bridges human communication and interaction with automobile functionality while also minimizing driver distraction.” Id. The Board disagreed with Applicant’s commercial impression arguments, asserting that “[t]here is no evidence that supports these contentions.” Applicant respectfully asserts that this is simply not the case. Applicant presented ample evidence in support of its contentions regarding commercial impression.14 The evidence to which Applicant refers, Exhibits A-F attached to the April 16, 2020 Request for Reconsideration,15 does not use the term “Translucent Skin.” Therefore, we find that there is no evidence supporting Applicant’s contention that 13 13 TTABVUE 8. 14 13 TTABVUE 8-9. 15 April 16, 2020 Request for Reconsideration (TSDR 23-171). Serial No. 88243196 - 7 - “Translucent Skin,” “in its entirety, conveys ‘a unique, nondescriptive’ commercial impression, separate and apart from the dictionary meanings of the individual terms.”16 Based on those exhibits, Applicant argues, Applicant’s Mark suggests that Applicant’s Goods will seamlessly integrate into the automobile. Specifically, Applicant’s Mark suggests that Applicant’s Goods will be a second “skin” on the car that does not detract from the car’s appearance and expected functions (i.e., the technology is designed to be inconspicuous or “translucent”). The result is a discrete, uncomplicated device that is also aesthetically pleasing. Therefore, Applicant’s Mark gives the distinct commercial impression that, unlike other in-vehicle technologies, Applicant’s Goods will not distract from driving or the driving experience.17 However, we find that the evidence submitted by the Examining Attorney persuades us without doubt, that Applicant’s proposed mark is merely descriptive under Section 2(e)(1) is more persuasive.18 There is simply no evidence of record to support finding that the term TRANSLUCENT SKIN when used in connection with the goods at issue has anything other than a merely descriptive meaning. The Board analyzed the evidence of record, considered Applicant’s arguments, and properly found them wanting. The Board did not make an improper finding of fact or state an improper conclusion of law. 16 If in fact any of Applicant’s exhibits refer to the term “Translucent Skin,” Applicant should have cited to their location in the record rather than leaving it to us to divine what it had in mind. “Judges are not like pigs, hunting for truffles buried in briefs.” U.S. v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991). 17 April 16, 2020 Request for Reconsideration (TSDR 13). 18 11 TTABVUE 9 (Applicant’s “contentions fly in the face of the meaning of the term – a covering transparent enough to permit light to pass through.”). Serial No. 88243196 - 8 - III. Request to amend the description of goods. As noted above, Applicant requests, in the alternative, to amend the International Class 9 description of goods by deleting “human-machine interface displays in an automobile, namely, electronic display screens and touchscreens for use in automobiles; human-machine interface controls in an automobile, namely, electronic display screens and touchscreens for controlling electrical interior functions, motor starters, cruise control, heat and air conditioning, audio, and transmission gears .” In analyzing whether the mark TRANSLUCENT SKIN for the goods in International Class 9 is merely descriptive, the Board focused on the above -noted goods. The mark need not describe all the goods identified, as long as it merely describes one of them. See In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005) (“[T]he Trademark Office may require a disclaimer as a condition of registration if the mark is merely descriptive for at least one of the products or services involved.”); In re Oppedahl & Larson LLP, 71 USPQ2d at 1371 (“A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.”) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); In re Gyulay, 820 F.2d 121, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1171 (TTAB 2013) (“[I]f the mark is descriptive of some identified items – or even just one – the whole class of goods still may be refused by the examiner.”). Serial No. 88243196 - 9 - Applicant claims that it never had the opportunity to delete those goods to overcome the Section 2(e)(1) refusal to register because the Examining Attorney failed to present a more nuanced analysis.19 Applicant’s request to amend the description of goods is precluded by Trademark Rule 2.142(g), 37 C.F.R. 2.142(g). An application which has been considered and decided on appeal will not be reopened except for the entry of a disclaimer under section 6 of the Act of 1946 or upon order of the Director, but a petition to the Director to reopen an application will be considered only upon a showing of sufficient cause for consideration of any matter not already adjudicated. As explained in the Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 1218 (2020), Once an application has been considered and decided by the Board on appeal, applicant’s course of action normally is limited to a request for reconsideration of the Board’s decision, and/or the filing of an appeal therefrom, either by way of an appeal to the Court of Appeals for the Federal Circuit, or by way of a civil action seeking review of the Board’s decision. See TBMP § 1219. An application may not be “reopened,” that is, an applicant may not amend its application, or submit additional evidence, at this stage, except in two very limited situations. [Note 1.] They are as follows: (1) The application may be reopened by the Board for entry of a disclaimer under Trademark Act § 6, 15 U.S.C. § 1056; [Note 2.] and (2) The application may be reopened upon order of the Director, but a petition to the Director to reopen an application will be considered only upon a showing of 19 13 TTABVUE 13. Serial No. 88243196 - 10 - sufficient cause for consideration of any matter not already adjudicated. [Note 3.] When a decision of the Board affirming a refusal to register in an ex parte case has been appealed to the United States Court of Appeals for the Federal Circuit, the Court may remand the application for further action, such as further examination and the submission of additional evidence. [Note 4.] Finally, as noted above, if the mark at issue is merely descriptive of any one of the products listed in the description of goods, we must refuse registration for the entire class. Nothing prevented Applicant from contacting the Examining Attorney to determine the precise basis for her refusal to register Applicant’s mark or inquiring whether any options were available for overcoming the objection, such as deleting the offending goods from the description of goods. Decision: The Request for Reconsideration is denied and our decision of December 2020 stands.