Fextel Inc.v.Avatar Technologies Inc.

Trademark Trial and Appeal BoardApr 27, 2016

No. 91220616 (T.T.A.B. Apr. 27, 2016)

This Opinion is not a Precedent of the TTAB Mailed: April 27, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Fextel Inc. v. Avatar Technologies Inc. _____ Opposition No. 91220616 _____ Elizabeth C. Barnes of Law Office of Elizabeth C. Barnes Esq., LLC for Fextel Inc. Yevgeny Strupinsky of Law Offices of Eugene Strupinsky PLLC for Avatar Technologies Inc. _____ Before Taylor, Shaw, and Masiello, Administrative Trademark Judges. Opinion by Masiello, Administrative Trademark Judge: Avatar Technologies Inc. (“Applicant”) filed an application to register on the Principal Register the mark AVATAR in standard characters for “Telemarketing,” in International Class 35.1 Fextel Inc. (“Opposer”) opposed registration of the mark on the ground that it is generic as applied to Applicant’s services; and on the ground that the mark is merely 1 Application Serial No. 86387988, filed on September 8, 2014, based on an allegation of use in commerce under Trademark Act Section 1(a), 15 U.S.C. § 1051(a), claiming January 4, 2013 as the date of first use and first use in commerce. Opposition No. 91220616 2 descriptive as applied to the services, under Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1), and has not acquired distinctiveness.2 Applicant, in its answer, denied the salient allegations of the notice of opposition.3 Applicant asserted the affirmative defense of failure to state a claim upon which relief can be granted, and filed with its answer a motion to dismiss on this ground, which the Board denied.4 Applicant also asserted the affirmative defenses of unclean hands, consent, acquiescence, waiver and estoppel. However, Applicant failed to pursue these defenses at trial, and we deem them waived. The parties filed a joint stipulation to elect Accelerated Case Resolution,5 whereby they agreed to forego discovery, expert testimony, and oral hearing. The parties also agreed to submit their evidence together with their respective briefs, “as if proceeding on summary judgment”; and agreed that testimony could be submitted in the form of declarations or affidavits. The case is now fully briefed. I. The record. The record includes the pleadings and, by operation of Trademark Rule 2.122, 37 C.F.R. § 2.122, the application file for the opposed mark. Opposer submitted its brief, which included certain images from third-party websites and references to certain printed and online publications. 2 Notice of opposition, 1 TTABVUE. 3 Answer, 6 TTABVUE. 4 9 TTABVUE. 5 10 TTABVUE. Opposition No. 91220616 3 Applicant submitted an affidavit of its counsel, Yevgeny Strupinski, which included an excerpt from Applicant’s website and a third-party web page. II. Standing. As a threshold matter, Opposer must prove its standing in order to be heard on its substantive claims. See, e.g., Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 187 (CCPA 1982). To do so, Opposer must prove that it has a “real interest” in the proceedings and a “reasonable” basis for its belief of damage. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); see also Jewelers Vigilance Comm. Inc. v. Ullenberg Corp., 853 F.2d 888, 7 USPQ2d 1628 (Fed. Cir. 1988). To prove a “real interest” in this case, Opposer must show that it has a “direct and personal stake” in the outcome herein and is more than a “mere intermeddler.” See Ritchie v. Simpson, 50 USPQ2d at 1026. Applicant contends that Opposer lacks standing to oppose registration of Applicant’s mark.6 We disagree. The parties, in their joint stipulation to elect accelerated case resolution, stipulated to the fact that “Opposer and Applicant both use the word AVATAR in connection with telemarketing services.”7 This establishes that Opposer has a business interest in use of the term AVATAR. The possibility that Applicant might use a registration of the mark in enforcement efforts against Opposer provides a reasonable basis for Opposer’s belief that it may be damaged. 6 Applicant’s brief at 6, 14 TTABVUE 7. 7 10 TTABVUE 2, ¶ 1(2). Opposition No. 91220616 4 III. Opposer’s claim under Section 2(e)(1). We turn first to Opposer’s claim that Applicant’s mark is unregistrable under Trademark Act Section 2(e)(1), 15 U.S.C. § 2(e)(1), on the ground that it is merely descriptive of Applicant’s services and lacks acquired distinctiveness. A mark is merely descriptive of services within the meaning of Section 2(e)(1) if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the services. In re Chamber of Commerce of the U.S., 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 services 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 services 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). A mark need not immediately convey an idea of each and every specific feature of the services in order to be considered merely descriptive; it is enough if it describes one significant attribute, function or property of the goods. See In re Gyulay, 3 USPQ2d at 1010; In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). Opposer has the burden to show, prima facie, that Applicant’s mark is merely descriptive of Applicant’s services. Opposition No. 91220616 5 Yamaha Int’l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988). Opposer argues that the word AVATAR “is commonly found within telemarket industry marketing and branding to describe a product.”8 To illustrate the marketplace use of the term AVATAR, Opposer provides, within the body of its brief, five excerpts from Internet web pages.9 These internet materials are not properly of record. “A document obtained from the Internet … must identify its date of publication or the date it was accessed and printed, and its source (URL).” TBMP § 704.08(b); see Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012); Safer Inc. v. OMS Invs. Inc., 94 USPQ2d 1031 (TTAB 2010). However, because Applicant has addressed these web page excerpts, and in some cases has provided their URLS, we will consider them. Opposer’s web page excerpts are difficult to interpret because of the absence of meaningful context. Overall, the evidence is scant, fragmentary, and equivocal in meaning. Only one of item (Example 1) contains any use of the term AVATAR that might possibly be interpreted as descriptive use: The Avatar: Call Center Software Feature … Fortunately, there is a new call center software feature known as the Avatar which can assist [call center agents] on this issue. The Avatar are interactive virtual agents programmed with an automated voice messaging system that will enable them to entertain customers as if they are live call 8 Opposer’s brief at 7, 12 TTABVUE 8. 9 Id. at 8-9, 12 TTABVUE 9-10. Opposition No. 91220616 6 center agents as well. … We all know that busy dial tones is [sic] a huge no-no for contact centers that is why having avatars stationed to assist live agents will always be an advantage. … As Example 1 appears to be drawn from a commercial website that is offering call center services, it is not clear that these uses of AVATAR are intended as descriptive matter; it is at least as likely that they are intended as trademark or trade name use. With respect to Opposer’s Example 2, Applicant has submitted testimony stating that it is drawn from Applicant’s own website.10 There is nothing in it that suggests that AVATAR has descriptive meaning. In Example 3, it is impossible to tell whether the bold heading which reads “Cloud IVR/Avatar Systems” is trademark use or descriptive use. This is the only use of the term AVATAR in this example. Example 4 shows the term “Avatar Transfers” within a circle at the top of a page. Other relevant text reads: instead of speaking directly to the prospects, our agents merely listen and then let the Avatar talk for them by pushing the appropriate soundboard buttons. … As the prospect and the Avatar agent converse, the Avatar agent continues to press the appropriate buttons to advance the sale. Again, it is impossible to clearly interpret the intended meaning of AVATAR in this example. The uses of AVATAR, all of which are capitalized, are consistent with trademark use or trade name use. In any event, Applicant has provided testimony 10 Declaration of Yevgeny Strupinsky, ¶ 8, 13 TTABVUE 4. Opposition No. 91220616 7 that Opposer’s Example 4 shows use by “an authorized reseller of Applicant’s [that] is using the Avatar mark with permission.”11 Example 5 presents the expression “Avatar Dialler” in three headings, all of which are consistent with trademark use, not descriptive use. There is no use of AVATAR in textual context, so it is impossible to determine whether the user intended the word to have descriptive meaning or trademark meaning. Opposer also refers, in its brief, to three articles from International Journal of Human Computer Interaction; The Atlantic; and “the online journal CRM Search.”12 Opposer has not submitted copies of these articles, and Applicant has objected to their admission. The Board will consider “[p]rinted publications … of general circulation among members of the general public” without authentication, 37 C.F.R. § 2.122(e), but they cannot be made of record merely by naming them. Any submission must be “accompanied … by the printed publication or a copy of the relevant portion thereof.” Id. The Board has no way of knowing what is contained in the articles named, so we cannot give them any consideration. The remainder of Opposer’s case consists only of the arguments set forth in Opposer’s brief. We cannot treat such argument as evidence: Factual statements made in a party's brief on the case can be given no consideration unless they are supported by evidence properly introduced at trial. Statements in a brief have no evidentiary value, except to the extent that they may serve as admissions against interest by the party that made them. 11 Id., ¶ 11, 13 TTABVUE 5. 12 Opposer’s brief at 10, 12 TTABVUE 11. Opposition No. 91220616 8 TBMP § 704.06(b), citing Saul Zaentz Co. v. Bumb, 95 USPQ2d 1723, 1725 n.7 (TTAB 2010). The determination that a mark is merely descriptive is a finding of fact and must be based upon substantial evidence. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007). We have considered all of the evidence of record and all arguments of the parties relevant to the question of mere descriptiveness, including those not specifically discussed herein. We find the web page excerpts to be of uncertain meaning as to whether third parties have used the designation AVATAR in a descriptive manner with respect to telemarketing services; they do not constitute substantial evidence of the descriptiveness of Applicant’s mark. Accordingly, we find that Opposer has not met its burden of establishing, prima facie, that Applicant’s mark is merely descriptive within the meaning of Section 2(e)(1). IV. Opposer’s claim on grounds of genericness. “The generic name of a thing is in fact the ultimate in descriptiveness.” BellSouth Corp. v. DataNational Corp., 60 F.3d 1565, 35 USPQ2d 1554, 1557 (Fed. Cir. 1995), quoting H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986). Inasmuch as we have found the evidence of record (all of which has been discussed above) insufficient to show that Applicant’s mark is merely descriptive, it is, a fortiori, insufficient to demonstrate that the mark is generic. Decision: The opposition is DISMISSED.