Midmark Corporation

Trademark Trial and Appeal BoardSep 28, 2012

No. 77730355 (T.T.A.B. Sep. 28, 2012)

Hearing: Mailed: July 19, 2012 September 28, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Midmark Corporation ________ Serial No. 77730355 _______ Sarah Otte Graber, Thomas W. Flynn and Glenn Bellamy of Wood, Herron & Evans, L.L.P for Midmark Corporation. Tasneem Hussain, Trademark Examining Attorney, Law Office 105 (Thomas G. Howell, Managing Attorney). _______ Before Quinn, Zervas and Mermelstein, Administrative Trademark Judges. Opinion by Zervas, Administrative Trademark Judge: Midmark Corporation (“applicant”) filed an application (Serial No. 77730355) to register RITTER (in standard character form) on the Principal Register for “oil-less air compressors; lubricated air compressors, dental ultrasonic cleaners, namely, electrical ultrasonic cleaning units for cleaning dental equipment” in International Class 7; and “dental chairs, dental stools, instrument delivery systems comprised of air and water delivery tubes and controls, operating lights for medical use only, oral surgery chairs, surgery THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Serial No. 77730355 2 lights for medical use only, examination floor lights for medical use only, dental operatory casework, namely, cabinets, dental furniture, dental instrument processing centers, namely instrument cleaners and associated cabinets, and dental sterilizers” in International Class 10. Applicant seeks registration under the intent-to-use provisions of Trademark Act § 1(b), 15 U.S.C. § 1051(b). Although applicant maintains that RITTER is inherently distinctive, applicant claims acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), as an alternative position. Applicant entered (i) the following translation statement into the record: “The English translation of the word ‘RITTER’ in the mark is KNIGHT”; and (ii) a claim of ownership of Registration No. 1451997 (renewed July 24, 2007) for the mark RITTER for medical products, equipment and appliances, namely, physicians' examination tables, proctology tables, podiatry chairs and tables, stools, physicians' equipment cabinets, stands, units and counters, and accessories and replacement items and parts therefor. Registration No. 1451997 registered under Section 2(f). The examining attorney refused to register applicant's proposed mark on the ground that the proposed mark is primarily merely a surname under Section 2(e)(4) of the Trademark Act. 15 U.S.C. § 1052(e)(4). In addition, the examining attorney did not accept applicant’s alternative claim of acquired distinctiveness under Section 2(f) of the Serial No. 77730355 3 Trademark Act, 15 U.S.C. § 1052(f). After the examining attorney made the refusal final and denied applicant's request for reconsideration, applicant appealed. Both applicant and the examining attorney have filed briefs, and the Board conducted an oral hearing. We first address the material applicant filed with its reply brief, namely, the printouts from the Office’s Trademark Applications and Registrations Retrieval (TARR) database1 for two trademark applications containing the term RITTER, both stating the current status as “abandoned”; definitions of “dentistry” from The Free Dictionary at medical-dictionary.thefreedictionary.com; printouts of various webpages from “Medline Plus” and American Dental Association’s website; and printouts of TARR records for various third-party registrations. We have not considered these materials in arriving at our decision herein because applicant filed them after filing its appeal, and the record in an application must be complete prior to the filing of an appeal. 37 C.F.R. § 2.142(d); In re Fitch IBCA Inc., 64 USPQ2d 1058 (TTAB 2002); TBMP §§ 1203.02(e), 1207.01; TMEP § 710.01(c). In addition, to the extent that applicant requests that we take judicial notice of this 1 The TARR database has since been replaced by TSDR (Trademark Status Document Retrieval), which provides trademark status and Serial No. 77730355 4 material, we decline because we do not require the definition of “dentistry” to reach our determination, and the Board does not take judicial notice of third-party registrations or any of the other material submitted by applicant. See, e.g., In re Ruffin Gaming LLC, 66 USPQ2d 1924 (TTAB 2002).2 We next consider applicant’s request in its main brief that the Board take “Administrative Notice” of “Applicant’s extensive product line, as shown, for example, at its website, www.midmark.com.” We presume that applicant is requesting we take judicial notice of the product line and of the webpage; neither is appropriate for judicial notice and we do not take judicial notice of this information or webpages. Surname We turn now to the examining attorney’s refusal under Section 2(e)(4) of the Trademark Act on the ground that the proposed mark is primarily merely a surname. When we are faced with a Section 2(e)(4) refusal, we consider the impact a term has or would have on the purchasing public because “it is that impact or impression prosecution history information, as well as access to file images. TSDR may be found at http://tsdr.uspto.gov/. 2 Even if we were to consider this material, our resolution of this case would not be any different. Serial No. 77730355 5 which should be evaluated in determining whether or not the primary significance of a word when applied to a product is a surname significance. If it is, and it is only that, then it is primarily merely a surname.” In re Harris- Intertype Corp., 518 F.2d 629, 186 USPQ 238, 239 (CCPA 1975), quoting, Ex parte Rivera Watch Corp., 106 USPQ 145 (Comm'r 1955). We normally look to four factors in a surname analysis: (i) whether the surname is rare; (ii) whether anyone connected with applicant has the involved term as a surname; (iii) whether the term has any other recognized meaning; and (iv) whether the term has the “look and feel” of a surname. See In re United Distillers plc, 56 USPQ2d 1220 (TTAB 2000), citing In re Benthin Management Gmbh, 37 USPQ2d 1332 (TTAB 1995). The examining attorney has the initial burden of presenting evidence to show prima facie that a mark is primarily merely a surname. In re Hutchinson Technology Inc., 852 F.2d 552, 7 USPQ2d 1490 (Fed. Cir. 1988); In re Raivico, 9 USPQ2d 2006 (TTAB 1988). The examining attorney submitted the following with her Office actions: (i) 411.com search results indicating “Over 300 Results matching ‘Ritter, United States’” (no listings for “Ritter” were submitted); Serial No. 77730355 6 (ii) w3.lexis.com search results indicating at least 500 entries for “Ritter” as a surname from the “Public Records” database (13 listings for “Ritter” were included); (iii) a definition of “Ritter” from rhymezone.com stating, “name: A surname (common: 1 in 9090 families; popular rank in the U.S.: #1131); (iv) references from a variety of sources to the following individuals: • Colorado Governor Bill Ritter • The All-American Rejects’ band member Tyson Ritter • Actor John Ritter, identified as “the star of the ABC series ‘8 Simple Rules … For Dating My Teenage Daughter,” and the “award- winning star of the sitcom ‘Three’s Company,’ … with credits ranging from TV’s ‘The Waltons’ to the 1996 movie ‘Sling Blade.’”3 • Anheuser-Busch’s executive vice president Jerry Ritter (v) a wikipedia.com entry for “Ritter” listing approximately twenty-five Americans with the surname “Ritter” and their significance in sports, music, government, law or other fields. In regard to the first factor, i.e., whether the surname is rare, the examining attorney's evidence reflects that the surname “Ritter” ranks as the 1,131st most popular surname in the United States; and that “Ritter” is the 3 “Trial Begins Over John Ritter’s Death,” Associated Press, February 12, 2008, submitted with August 3, 2009 Office action. Serial No. 77730355 7 surname of several Americans who have made significant accomplishments in their professional lives, including John Ritter, the star of two sitcoms, and Bill Ritter, the governor of Colorado. When we consider this evidence cumulatively, we find that the examining attorney has demonstrated that “Ritter” is a surname, and not a rare surname. Turning to the second factor, whether anyone associated with applicant has the surname “Ritter,” the record does not reflect that anyone associated with applicant has the surname “Ritter.” The absence of anyone associated with applicant who has the surname “Ritter” renders this factor neutral. See In re Gregory, 70 USPQ2d 1792, 1795 (TTAB 2004) (fact that “a proposed mark is not the applicant's surname, or the surname of an officer or employee, does not tend to establish one way or the other whether the proposed mark would be perceived as a surname.”). Regarding the third factor, there is no evidence of another recognized meaning for "Ritter" in English. The examining attorney’s search result on the Encarta Serial No. 77730355 8 Dictionary, submitted with the January 26, 2010, Notice of Suspension states; “No results found for “ritter.”4 Fourth, we consider whether the term has the “look and feel” of a surname. The examining attorney's evidence supports her argument that "Ritter" has the “look and feel” of a surname. She has shown that there are numerous individuals with that surname; and that some of such persons are notable in view of their professional accomplishments. The resulting public attention contributes to public perception of "Ritter" as a surname. Gregory, 70 USPQ2d at 1796 (“[T]he evidence regarding the number of individuals having ROGAN as a surname, including those who, as politicians or celebrities, have received more attention than the average individual named ROGAN, also supports the finding ROGAN looks and sounds like a surname.”). Additionally, the term would not be perceived as an initialism or acronym, but appears to be a cohesive term. 4 In its response to the first Office action, applicant stated that “ritter” translates into English from German as “knight,” and argued, without support, that “a substantial portion of the population of the United States is of German origin and would readily recognize the term RITTER as the German word for knight.” The examining attorney disagreed in his notice of suspension, and applicant did not pursue this argument in either of its briefs. We therefore consider applicant to have waived this argument. Cf. In re Isabella Fiore LLC, 75 USPQ2d 1564, 1570 (TTAB 2005) (“When we consider the common meaning of the term “Fiore” in Serial No. 77730355 9 In view of the examining attorney’s evidence, we find that the record contains sufficient evidence to establish prima facie that the primary significance of RITTER to the purchasing public for applicant's goods is merely that of a surname within the meaning of Section 2(e)(4). Three of the four factors bearing upon the issue favor a determination that the primary significance of RITTER to the purchasing public for applicant’s goods is that of a surname and the other factor is neutral. The record reflects that the surname significance of “Ritter” would be readily recognized. Applicant has not rebutted the examining attorney’s prima facie case through evidence or argument. We therefore find that applicant’s proposed mark is primarily merely a surname under Section 2(e)(4). Acquired Distinctiveness We now turn to applicant’s claim of acquired distinctiveness in the alternative. An intent-to-use applicant who has used the same mark on related goods may file a claim of acquired distinctiveness under Trademark Act Section 2(f) before filing an allegation of use, if applicant can establish that, as a result of applicant’s use of the mark on other goods, the mark has become Italian, we conclude that it does have a meaning that detracts from the surname significance of the term.”) Serial No. 77730355 10 distinctive of the goods in the intent-to-use application, and that this previously created distinctiveness will transfer to the goods in the intent-to-use application when use in commerce begins. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001); TMEP § 1212.09(a). In order to establish that a mark in an intent-to-use application has acquired distinctiveness: [1.] [A]pplicant must establish, through the appropriate submission, the acquired distinctiveness of the same mark in connection with specified other goods and/or services in connection with which the mark is in use in commerce. To satisfy the first element, the applicant must establish acquired distinctiveness as to the other goods and/or services by appropriate evidence, such as ownership of a prior registration for the same mark for related goods and/or services, a prima facie showing of acquired distinctiveness based on five years use of the same mark with related goods and/or services, or actual evidence of acquired distinctiveness for the same mark with respect to the other goods and/or services. [2.] [In addition] applicant must establish, through submission of relevant evidence rather than mere conjecture, a sufficient relationship between the goods and/or services in connection with which the mark has acquired distinctiveness and the goods and/or services recited in the intent-to-use application to warrant the conclusion that the previously created distinctiveness will transfer to the goods and/or services in the application upon use. To satisfy this element, applicant must show the extent to which the goods and/or services in the intent-to-use application are related to the goods and/or services in Serial No. 77730355 11 connection with which the mark is distinctive, and that there is a strong likelihood that the mark's established trademark function will transfer to the related goods and/or services when use in commerce occurs. In re Binion, 93 USPQ2d 1531, 1538 (TTAB 2009), citing In re Rogers, 53 USPQ2d 1741 (TTAB 1999). See generally TMEP § 1212.09(a) (8th ed. 2011). In addition to relying on the previously issued registration, applicant relies on the declaration of Eric Shirley, vice president and general manager of applicant’s dental division. Mr. Shirley states, inter alia, that “use by Applicant and its predecessor dates back over ninety years to 1919,” referring to Registration No. 1451997; that “many medical products also find use in the dental field and it is not uncommon for a single entity, such as Applicant, to design, manufacture and distribute both medical and dental products”; and that medical and dental products are related goods. Shirley decl., ¶¶ 4 -6. The crux of the issue before us is whether all of the goods recited in applicant’s application are related to the goods of its prior registration. If any particular goods are not related to the goods of the registration, then applicant’s claim of acquired distinctiveness based on the registration must fail. Serial No. 77730355 12 Turning first to the International Class 7 goods, we find – at a minimum - there is no apparent relationship between the air compressors of the application and any of the International Class 10 medical products of the registration. With regard to the application’s International Class 10 goods and those International Class 10 goods of the registration, we find that – at a minimum – there is no apparent relationship between the application’s operating lights for medical use only, and instrument delivery systems comprised of air and water delivery tubes and controls, on one hand, and registrant’s medical products, equipment and appliances, on the other hand. The goods have different uses and have different purposes. With regard to those goods in the application which specify that they are for “dental” uses, we do not find them to be related simply because the registered goods state they are for “medical” uses. There is no evidence in the record to demonstrate that the references to medical products of the type in the registration include or are related to dental products of the type recited in the application. Mr. Shirley’s broad statement that “many medical products also find use in the dental field” is Serial No. 77730355 13 lacking in specificity and does not assist applicant in demonstrating a relationship between such goods. Accordingly, applicant's ownership of the prior registration and its use of RITTER for the goods set forth in the registration since 1919 do not establish acquired distinctiveness of the proposed mark now sought to be registered. See TMEP § 1212.04 (8th ed. 2011). DECISION: The refusal to register under Section 2(e)(4) on the ground that the term sought to be registered is primarily merely a surname is affirmed, and applicant has not shown the term has acquired distinctiveness.