InterDesign, Inc.

Trademark Trial and Appeal BoardSep 14, 2012

No. 77954696 (T.T.A.B. Sep. 14, 2012)

Oral Hearing: Mailed: May 3, 2012 September 14, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re InterDesign, Inc. ________ Serial No. 77954696 _______ D. Peter Hochberg, Esq., of D. Peter Hochberg Co., L.P.A. for InterDesign, Inc. April A. Hesik, Trademark Examining Attorney, Law Office 113 (Odette Bonnet, Managing Attorney). _______ Before Bucher, Bergsman, and Wellington, Administrative Trademark Judges. Opinion by Wellington, Administrative Trademark Judge: InterDesign, Inc. has filed an application to register the mark SWISS+TECH (in standard character form) on the Principal Register for a long list of goods, including in relevant part the following: Expandable and compact multi-function hand tools for being carried in a person's pocket, and being attachable to a key ring and specifically excluding pocket knives, comprising one or more of the following hand tools, namely, screwdrivers, micro screwdrivers, eyeglass screwdrivers, slotted screwdrivers, knife blades, serrated knife blades, nail files, nail cleaning tools, nail clippers, wire cutters, wire THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77954696 2 strippers, wire crimpers, pliers, sheet shears, namely, device for cutting sheet metal, scissors, drills, files, wrenches and hex wrenches,... in International Class 8; and Expandable and compact multi-function electronic devices and being attachable to a key ring and specifically excluding pocket knives, comprising one or more of the following, namely, ... audiovisual receivers, voltage meters, battery voltage readers, AM/FM radios, tape measures, level gauges, bubble levels, belt holsters, namely, specialty holster for carrying multi-function electronic device; tire gauges, namely, tire pressure gauges and tire tread depth gauge, tire pressure monitors, sound alarms, sonic sound alarms, emergency flashers, red emergency flashers, ultrasonic measuring tools, namely, measuring tools having a laser for targeting and measuring distances, tire pressure gauges, digital tire pressure gauges, batteries,... thermometers, security alarms, motion-activated security alarms, compasses, graduated rulers, graduated rulers with ruler extensions, measuring implements with audible confirmation, namely, measuring tools having a laser for targeting and measuring distances, battery- measuring devices, namely a battery with feet and meter modes for obtaining measurements,... lanyards for holding multi-function tool set... in International Class 9.1 The examining attorney has ultimately refused registration of the proposed mark under Trademark Act Section 2(a), 15 U.S.C. § 1052(a), on the ground that applicant’s mark is geographically deceptive. This appeal followed. Briefs have been filed and an oral hearing was held on May 3, 2012. 1 Application Serial No. 77954696, filed March 9, 2010, under Sections 1(a) and 1(b) of the Trademark Act, 15 U.S.C. § 1051(a) and § 1051(b), alleging first use in commerce on November 20, 1995, for certain goods and a bona fide intent to use the mark in commerce on other certain goods. Serial No. 77954696 3 At the outset, we address an issue involving the statutory ground for refusal. In the first Office action, the then-assigned examining attorney refused registration on two grounds, namely, that the mark is primarily geographically deceptively misdescriptive under Section 2(e)(3) of the Act, and that the mark is geographically deceptive under Section 2(a). In the second Office action, the same examining attorney continued the Section 2(a) refusal, but did not continue or otherwise mention the refusal under Section 2(e)(3). The current examining attorney, in her appeal brief, confirms that the Section 2(e)(3) refusal was withdrawn. Brief, p. 1. The Board has previously advised that, based on the guidance of our primary reviewing court, the appropriate refusal under circumstances such as those presented herein is that the mark is primarily geographically deceptively misdescriptive under Section 2(e)(3). In re South Park Cigar Inc., 82 USPQ2d 1507, 1509 (TTAB 2007), citing to In re California Innovations, 329 F.3d 1334, 66 USPQ2d 1853, 1856 and 1858 (Fed. Cir. 2003) (“NAFTA and its implementing legislation obliterated the distinction between geographically deceptive marks and primarily geographically deceptively misdescriptive marks,” and, therefore, “this court anticipates that the PTO will usually address Serial No. 77954696 4 geographically deceptive marks under subsection (e)(3) of the amended Lanham Act rather than subsection (a).”).2 See also, In re Spirits International N.V., 86 USPQ2d 1078, fn.3 (TTAB 2008), reversed and remanded on other grounds, 563 F.3d 1347, 90 USPQ2d 1489 (Fed. Cir. 2009). Regardless of the actual statutory basis being asserted for refusing registration in this appeal, there is no dispute regarding the applicable legal standard. That is, the examining attorney and applicant have both argued, correctly so, that certain elements must be present for a mark to be refused as either geographically deceptive or primarily geographically deceptively misdescriptive. They are: 1) The primary significance of the mark is a generally known geographic place; 2) The goods or services do not originate in the place identified in the mark; 3) Purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark; and 2 In the South Park Cigar decision, the Board posited that there remains the possibility that Section 2(a) will be the basis for refusal in the limited situation where applicant seeks registration on the principal register based on a claim that the mark had acquired distinctiveness prior to December 8, 1993. In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841, fn.32 (TTAB 2012). However, as previously noted (in footnote 1) in this decision, the involved application in this proceeding is based (partially) on first use in commerce since 1995 and is otherwise based on an intent to use the mark in commerce. Moreover, there is no claim that the mark has acquired distinctiveness under Section 2(f). Serial No. 77954696 5 4) The misrepresentation would be a material factor for a substantial portion of relevant consumers in deciding whether to buy the goods or use the services. In re Spirits International, N.V., 563 F.3d 1347, 90 USPQ2d 1489, 1490-95 (Fed. Cir. 2009); In re California Innovations, 66 USPQ2d at 1858. As to the second element, it is not disputed that applicant’s goods do not come from Switzerland.3 However, applicant takes issue with the examining attorney’s conclusions with respect to the remaining three elements. In particular, arguing that the first element has not been established, applicant asserts: ... the primary significance of the mark SWISS+TECH is not a geographic location, but rather creates a separate readily understood meaning ... [It] is arbitrary or at least suggestive of the precision and high quality of the good with which the mark is used, namely goods of high precision and quality created through research and development. Brief, p. 9. With respect to the third element, applicant contends that the record does not show that consumers would necessarily perceive the term SWISS as indicating that the goods’ country of origin is Switzerland. In support of the contention, applicant has submitted copies of third-party registrations for marks containing the term SWISS for goods 3 Throughout the prosecution of the application and at oral hearing, applicant has admitted that the goods do not originate in Switzerland. Serial No. 77954696 6 or services that, according to applicant, do not originate in Switzerland. Finally, with respect to the materiality element of any geographic misrepresentation based on applicant’s mark, applicant argues that “the Examining Attorney has not proved or provided any evidence that Applicant’s miniature tools and electronic devices are a principal product or even a product of Switzerland.” Brief, p. 17. In particular, applicant distinguishes its goods from the Swiss-made goods referenced in materials submitted by the examining attorney, e.g., multi-function, pocket knives. In addition to the aforementioned arguments, applicant relies on its own Registration No. 2020587 for the same mark covering goods that applicant argues are “the same (or so substantially similar that they should be regarded as the same) since they are for multi-function tools.”4 Brief, p. 25. Applicant states that “the facts are the same now as they were 15 years ago, and registration of the present application for SWISS+TECH should not be refused since the 4 Issued on December 3, 1996, originally for the mark SWISS-TECH for “hand tools, namely, multi-function tool, consisting of screwdriver, shear, wire cutter, pliers, attachable to a key ring or the like” in International Class 8. The registration was assigned to applicant (assignment recorded September 23, 2009, at reel/frame nos. 4073/0367). The registered mark was then amended, under Section 7, to SWISS+TECH in 2011. Serial No. 77954696 7 PTO did not refuse registration of Applicant’s prior registration for SWISS-TECH (now SWISS+TECH).” Id. The examining attorney, on the other hand, argues that the term “Swiss” denotes the geographic origin of the goods in Switzerland and the addition of the +TECH element in the mark does not detract from this meaning. She argues that “Tech” is short for technology and the combination of terms “is not incongruous because technology does, in fact, originate in Switzerland. ... Therefore, the primary significance of the composite mark is geographic; that is, it denotes technology of Swiss origin.” Brief, p. 8. In support of her argument that consumers would likely believe that applicant’s identified goods emanate from Switzerland, she contends that the record “establishes that Switzerland is known for producing miniature multi-function tools, as well as the hand tools, measuring instruments, and electronic devices that are the component parts of the goods.” Id. at p. 15. Finally, the examining attorney argues that the misrepresentation that applicant’s goods emanate from Switzerland would be a material factor in the purchasing decision for a significant portion of the relevant consumers. The evidence, she contends, shows that “Switzerland is famous as a source of the goods, the goods Serial No. 77954696 8 in question are a principal product of Switzerland, and the goods in questions are, or are related to, the traditional products of Switzerland, or are an expansion of the traditional products of Switzerland.” Id. at p. 20. We address the aforementioned elements necessary for refusing registration, except for the second element in view of applicant’s concession that the goods do not emanate from Switzerland. Primary Significance of the Mark A mark is not primarily geographic where the geographic meaning is obscure, minor, remote, or not likely to be connected with the goods. In re Wada, 194 F.3d 1297, 52 USPQ2d 1539, 1540 (Fed. Cir. 1999) (NEW YORK WAYS GALLERY held primarily geographically deceptively misdescriptive where manufacturing listings and Nexis excerpts showed that handbags and luggage are designed and manufactured in New York); In re Jacques Bernier, Inc., 894 F.2d 389, 13 USPQ2d 1725, 1726 (Fed. Cir. 1990). Applicant argues, and we agree, that the entire applied-for mark, SWISS+TECH, must be considered when determining the degree, if any, of geographic significance. In re Save Venice New York, Inc., 259 F.3d 1346, 59 USPQ2d 1778, 1782 (Fed. Cir. 2001). This is not to say, however, that we cannot or should not give greater weight to a Serial No. 77954696 9 dominant feature of a composite mark in the course of evaluating the mark as a whole. In re Wada, 52 USPQ2d at 1541. Furthermore, the fact that the proposed mark may possess a meaning or usage other than as a geographic term does not necessarily alter its primary geographic significance. See, e.g., In re Opryland USA Inc., 1 USPQ2d 1409 (TTAB 1986) (THE NASHVILLE NETWORK held primarily geographically descriptive of television program production and distribution services, the Board finding that the primary significance of the term was Nashville, Tennessee, and not that of a style of music). Here, we find that applicant’s mark will be perceived as primarily geographic in nature because the first and dominant element in the mark, SWISS, means “relating to Switzerland or its people.”5 The country of Switzerland is neither remote nor obscure; rather, the record shows that it enjoys a degree of fame for a relatively small country. The term “Swiss” is used to denote products from Switzerland; indeed, Switzerland has enacted several laws to regulate the use of the wording “Swiss Made.”6 5 Compact Oxford English Dictionary of Current English (2010); printout attached to Office action dated July 6, 2010. 6 Printout from online encyclopedia, Wikipedia (www.wikipedia.org) for “Swiss Made” entry, attached to Office action dated July 6, 2010. Serial No. 77954696 10 The addition of the element +TECH does not detract from the geographical significance of the term SWISS. Rather, the term “tech” itself will most likely be understood as an abbreviated form of the descriptive word “technology.”7 In connection with the goods, the term “tech” will likely be understood in a descriptive or suggestive manner referencing any “technology” involved with applicant’s goods or, as the examining attorney posited, there is a “connotation that the goods feature technology from Switzerland.” Brief, p. 8. The evidence submitted by the examining attorney shows that the wording “Swiss technology” is not somehow incongruous but may be used by others to describe goods or services emanating from Switzerland. Thus, considering applicant’s mark as whole, as we must, we find that its significance remains primarily geographic in meaning and connotation. Applicant’s main argument that the primary significance of SWISS+TECH is not geographic is that it “creates a separate readily understood meaning ... of the precision and high quality of the goods with which the mark is used, namely goods of high precision and quality created through research and development.” Brief, 9. In support, 7 Encarta World English Dictionary (North American Edition), printout attached to Office action dated July 6, 2010. Serial No. 77954696 11 applicant points to materials submitted by the examining attorney and that “it is well known ... that the term SWISS is synonymous with precision and quality and that the Swiss have a reputation for quality.” Id. Applicant also cites to the Second Circuit’s decision in Forschner Group Inc. v. Arrow Trading Co., Inc., 30 F.3d 348, 31 USPQ2d 1614 (2nd Cir. 1994) that involved the term SWISS ARMY for pocket knives. We disagree with any conclusion that the term SWISS, either by itself or as employed in the proposed mark, is so closely linked to the country’s reputation for precision and quality that it loses its geographic significance or meaning. While the evidence does establish that Switzerland is well-regarded as a source for precision instruments and certain other goods, this does not mean that consumers will somehow overlook the geographic significance of the term SWISS. As to the Forschner decision, the Second Circuit was presented with a different record and circumstances and, based thereon “[a]s used in the phrase Swiss Army Knife, ‘Swiss’ is read more naturally to modify ‘Army’ than ‘knife’ and probably does.” 30 F.3d at 356. The court went on to find that “Swiss Army” was without geographic significance. In this case based on the record before us, the geographic significance of the term Serial No. 77954696 12 SWISS is not diminished when used in the entire mark SWISS+TECH. To the extent that applicant’s proposed mark is understood as meaning “Swiss technology,” the record does not support applicant's conclusion that such a meaning is merely “synonymous with precision and quality” and therefore without any geographic significance. Applicant’s argument that the term SWISS is interchangeable with “precision and quality” actually underscores the reasoning for the refusal; that is, consumers are likely to attribute a desirable quality to the goods based on their perceived geographic origin, supporting the “materiality” element, infra. Goods/Place Association We now address the element involving whether the mark is used in connection with goods that purchasers are likely to believe are connected with the location in question, when they are not. In re Loew's Theaters, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985). Here, the examining attorney must establish “a reasonable predicate for [the] conclusion that the public would be likely to make the particular goods/place association.” Id. at 868. The examining attorney should also examine the specimen and any other evidence in the record that shows the context in which the mark is used. See TMEP § 1210.04; In re Les Serial No. 77954696 13 Halles de Paris J.V., 334 F.3d 1371, 67 USPQ2d 1539, 1541 (Fed. Cir. 2003) (“[T]he goods-place association often requires little more than a showing that the consumer identifies the place as a known source of the product.”); see also In re Save Venice New York Inc., 59 USPQ2d at 1783-84; In re Wada, 52 USPQ2d at 1541; and In re Loew's Theatres, Inc., 226 USPQ at 868. The evidence submitted by the examining attorney strongly supports a connection between Switzerland and the goods identified in the application. The record is replete with evidence showing Swiss companies, such as Victorinox, Gerber and Wenger, who make multi-function pocket knives and such goods include many of the same components as applicant’s “multi-function hand tools,” e.g., a knife blade, screw driver, file, scissors, etc. The record shows that the same Swiss manufacturers have also modernized their handheld, multi-function tools to incorporate more technological features, e.g., USB flash drives, digital clocks, digital altimeters, LED lights, laser pointers, and MP3 players. Thus, the multi-function hand tools from Switzerland, including both the more traditional devices as well as those with more modern features, are the same or are extremely similar in function to applicant’s identified goods. Serial No. 77954696 14 Applicant argues at various points in its appeal brief that its goods, as identified, are unlike the Swiss goods referenced in the examining attorney’s evidentiary submissions. In particular, applicant notes that much of the examining attorney’s evidence involves goods frequently described as “(Swiss) army knives”8 whereas applicant has specifically excluded “pocket knives” from the application’s identification of goods. We disagree with applicant’s conclusion. To be clear, although many of the Swiss manufacturers and consumers refer to the goods as “pocket knives” or “Swiss army knives,” they are in essence multi-function hand tools such as those described in the application’s identification of goods. Furthermore, applicant’s own identification of goods, at least with respect to Class 8, lists “knife blades” as one possible feature or device incorporated into its multi-function hand tools. Accordingly, we find that the Examining Attorney has established a goods/place association between Switzerland and the goods identified in the application. Materiality 8 SWISS ARMY is a registered trademark issued to Wenger S.A., a Swiss corporation; Registration No. 2866013 (issued on January 20, 2004) for “handtools, namely multifunction pocketknives.” Serial No. 77954696 15 Finally, we address the materiality element whereby the Office must establish a reasonable predicate that the misrepresentation of the geographic origin of the goods would be a material factor for a significant portion of relevant consumers in deciding whether to purchase the goods. See TMEP § 1210.05(b); Spirits Int'l, 90 USPQ2d at 1490-95 (adding requirement that a substantial portion of the relevant consuming public be deceived); California Innovations, 66 USPQ2d 1853 (adding materiality requirement). The materiality element in cases involving goods generally will be satisfied if there is evidence showing that the place named in the mark is well known for the goods; or the goods are a principal product of the place named in the mark; or the goods are, or are related to, the traditional products of the place named in the mark, or are an expansion of the traditional products of the place named in the mark. See In re California Innovations Inc., 66 USPQ2d at 1857;In re Save Venice N.Y., Inc., 59 USPQ2d at 1784; In re House of Windsor, Inc., 221 USPQ 53, 57 (TTAB 1983), recon. denied, 223 USPQ 191 (TTAB 1984); and TMEP § 1210.05(c)(i). The evidence of record shows that Switzerland is well- known worldwide for its production of “high quality ... Serial No. 77954696 16 precision instruments,” other than watches.9 This prestige or reputation extends to the described army knives that serve as multi-function hand tools. Indeed, in their advertisements, the Swiss manufacturers of these hand tools reference this renown. For example, Wenger, a manufacturer of handheld multi-function tools makes the following representation: Swiss Made Words come to mind instantly. Powerful words, like precision, craftsmanship, and skill. For centuries, the inscription “Made in Switzerland” has carried with it untainted mystique. An air of quality. And not without reason. Passed from generation to generation, the attention to detail and the devotion to perfection are as natural to the Swiss as the snow in their Alps. Today, Swiss watches can be found on the wrists of kings. Swiss chocolates mark special occasions. And the Swiss Army Knife is the very picture of precision craftsmanship. We recognized that the aforementioned advertisements exhibit a degree of puffery and are self-serving; however, these advertisements also reflect a perception amongst consumers that certain Swiss goods are precision made and built to a higher standard of quality. This desired quality and the popularity of Swiss army knife multi- function tools are further reflected in articles discussing the Swiss manufacturers. For example, the following is an 9 From The Columbia Gazetteer of the World, printout attached to Office action issue September 13, 2011. Serial No. 77954696 17 article excerpt from Wired magazine featuring the Swiss company Victorinox:10 Today, in addition to its signature army knife, the company manufactures other precision instruments, especially watches. The classic Swiss army knife bears the Swiss national symbol, a white cross in the center of a red shield, outline in white against the red handle. More than 34,000 Swiss Army knives are manufactured every day, and small wonder. This remarkably versatile tool is standard equipment for everyone from Boy Scouts to building contractors to mountaineers. It is even carried into space aboard the space shuttle. ... Many variations are available, from relatively simple to jaw-droppingly complex. ... Other models reflect advances in technology and include features such as a laser pointer, USB flash drive and even an MP3 player. Applicant does not dispute the Swiss reputation for quality precision tools; indeed, as previously noted, applicant has recognized that “the Swiss have a reputation for quality.” Brief, p. 9. Again, the record establishes that this reputation extends to the goods identified in the application. Thus, the notion that such goods emanate from Switzerland will be an important factor in consumers’ decision to purchase the goods. Accordingly, we find that the misrepresentation in the proposed mark SWISS+TECH would be a material factor for a substantial portion of relevant consumers in deciding 10 Wired, “June 12, 1897: The Swiss Army Gets Its Own Knife,” article dated June 12, 2008. Printout attached to Office action date September 13, 2011. Serial No. 77954696 18 whether to buy applicant’s identified goods, in particular the “compact multi-function hand tools” incorporating an assortment of tools in International Class 7 as well as the “expandable and compact multi-function electronic devices and being attachable to a key ring” incorporating a variety of electronic devices and/or measuring instruments. Applicant’s Registration and Third-Party Registrations for “Swiss” Marks The fact that applicant already owns an existing registration for the same mark covering goods very similar to, or the same as, several of those identified in the involved application does not serve to negate the geographically deceptive refusal in this matter. It is well settled that each proceeding should be decided on its own facts and the record created. In re Scholastic Testing Services, Inc., 196 USPQ 517 (TTAB 1977). This standard is no different when geographically deceptive marks are involved. See, In re Loew’s Theatres, Inc., 769 F.2d at 764. Applicant also contends that there are numerous third- party registrations for marks containing the term Swiss covering goods and/or services that do not originate from Switzerland. However, a review of these registrations reveals that they have little, if any, relevance in this Serial No. 77954696 19 proceeding for several reasons. First, many of the registrations submitted have been cancelled. With respect to the remaining (live) registrations, most involve goods and services wholly unrelated to those in the involved application. Thus, a geographically deceptive refusal may have very well not been appropriate in regard to some or all of these other marks, i.e., the materiality factor may not have been established. Likewise, many registrations contain the term “Swiss” in a manner that would not be considered as primarily geographically referring to Switzerland, e.g., “Swississippi Records” (Registration No. 3938026). Finally, the third-party registrations are not necessarily an indication that the goods and/or services do not emanate from Switzerland despite being owned by an entity located outside of Switzerland. It is possible the owner of the registration may be located outside of Switzerland but the goods or services being sold under the mark actually originate from Switzerland. Ultimately, we have considered the third-party registrations but find them to have little probative value in showing that applicant’s involved mark should not be refused registration. Conclusion The primary significance of the mark SWISS is geographic, namely, a reference to country of Switzerland Serial No. 77954696 20 or its people, and Switzerland is a country generally known to the American consumer. The addition of +TECH to the term SWISS does not diminish the primary geographic significance of the mark when considered as a whole. The record in this proceeding shows that consumers will make a good/place association based on the proposed mark; that is, consumers will mistakenly believe that the applicant’s identified goods being sold under the mark SWISS+TECH originate from Switzerland when in fact they do not. Lastly, because of the Swiss renown for quality goods, such as those identified in the application, this would be a material factor for a significant portion of relevant consumers in making their decision whether to buy said goods. In view of the above, the Examining Attorney has established that SWISS+TECH is primarily geographically deceptively misdescriptive of the Trademark Act. Decision The refusal to register is affirmed.