Pacific Aviation Museum Pearl Harbor, Inc.

Trademark Trial and Appeal BoardMar 26, 2018

No. 87074024 (T.T.A.B. Mar. 26, 2018)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: March 26, 2018 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Pacific Aviation Museum Pearl Harbor, Inc. _____ Serial No. 87074024 _____ Timothy J. Buckley of Cowan Liebowitz & Latman, PC, for Pacific Aviation Museum Pearl Harbor, Inc. Anne M. Farrell, Trademark Examining Attorney, Law Office 118, Michael W. Baird, Managing Attorney. _____ Before Taylor, Adlin and Pologeorgis, Administrative Trademark Judges. Opinion by Pologeorgis, Administrative Trademark Judge: Pacific Aviation Museum Pearl Harbor, Inc. (“Applicant”) seeks registration on the Principal Register of the mark SWAMP GHOST (in standard characters) for “museum services; educational services, namely, conducting exhibitions, workshops, seminars, lectures, tours, film and video presentations, in the field of aviation related to World War II in the Pacific arena” in International Class 41.1 1 Application Serial No. 87074024, filed on June 16, 2016, based on an allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). Serial No. 87074024 - 2 - The Trademark Examining Attorney refused registration of Applicant’s mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that Applicant’s mark is merely descriptive of the identified services. After the Trademark Examining Attorney made the refusal final, Applicant appealed to this Board. We affirm the refusal to register. 2 I. Mere Descriptiveness - Applicable Law Section 2(e)(1) of the Trademark Act prohibits registration on the Principal Register of “a mark which, (1) when used on or in connection with the [services] of the applicant is merely descriptive . . . of them.” 15 U.S.C. § 1052(e)(1). A term is “merely descriptive” within the meaning of Section 2(e)(1) if it “immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used.” In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer AG, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). “On the other hand, if one must exercise mature thought or follow a multi-stage reasoning process in order to determine what product or service characteristics the term indicates, the term is suggestive rather than merely descriptive.” In re Tennis in the Round, Inc., 199 USPQ 496, 498 (TTAB 1978); see also In re Shutts, 217 USPQ 363, 364-65 (TTAB 1983); In re Universal Water Systems, Inc., 209 USPQ 165, 166 (TTAB 1980). 2 The TTABVUE and Trademark Status and Document Retrieval (“TSDR”) citations reference the docket and electronic file databases for Application Serial No. 87074024. All citations to the TSDR database are to the downloadable PDF version of the documents. Serial No. 87074024 - 3 - A term need only describe a single feature or attribute of the services to be descriptive. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001). Moreover, a mark need not be merely descriptive of all recited goods or services in an application. A descriptiveness refusal is proper, “if the mark is descriptive of any of the [services] for which registration is sought.” In re Chamber of Commerce of the U.S., 102 USPQ2d at 1219 (quoting In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005)). Descriptiveness of a term must be evaluated “in relation to the particular [services] for which registration is sought, the context in which it is being used, and the possible significance that the term would have to the average purchaser of the [services] because of the manner of its use or intended use.” In re Chamber of Commerce of the U.S., 102 USPQ2d at 1219 (quoting In re Bayer AG, 82 USPQ2d at 1831). “The question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods and 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) (quoting In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002)). The Trademark Examining Attorney maintains that Applicant’s applied-for mark SWAMP GHOST is merely descriptive of Applicant’s identified services because the mark, which is the nickname of a World War II American bomber relic, is the subject matter of Applicant’s educational services, as well as the subject matter of an exhibit Serial No. 87074024 - 4 - that is featured or will be featured in Applicant’s museum.3 In support of the Section 2(e)(1) refusal, the Trademark Examining Attorney submitted screenshots from Applicant’s website, displayed below, which explain that in the early days of American involvement in World War II, a B-17E “Flying Fortress” bomber ran out of fuel when returning from a mission and crash-landed in a remote area of New Guinea. The crew survived and managed to walk out of the swamp, but the aircraft was left behind. The website further states that, in 1972, it was spotted by a Royal Australian Air Force helicopter, and nicknamed “Swamp Ghost.” Although “Swamp Ghost” is not the historical name of the bomber, it “is the name history has given it.”4 Applicant’s website further demonstrates that Applicant is seeking donations from the public to preserve the bomber and display it as an exhibit at its museum. 3 Trademark Examining Attorney’s Appeal Brief, 7 TTABVUE 4-5. 4 September 30, 2016 Office Action; TSDR p. 5. Serial No. 87074024 - 5 - Serial No. 87074024 - 6 - Additionally, the Trademark Examining Attorney submitted an article from the website www.huffingtonpost.com which provides the history of the SWAMP GHOST WWII bomber, as displayed below:5 5 January 3, 2017 Final Office Action, TSDR pp. 4-6. Serial No. 87074024 - 7 - Serial No. 87074024 - 8 - Serial No. 87074024 - 9 - Applicant, in traversing the refusal, argues that the USPTO’s general practice is to register marks that identify the subject matter of a museum and/or educational services associated with museum services on the Principal Register without a showing of acquired distinctiveness.6 In support of its contention, Applicant submitted copies of the following eight third-party registrations:7 MARK REG. NO. RELEVANT SERVICES SPACE SHUTTLE ATLANTIS 4507602 Museum services. KALMAR NYCKEL 4667726 Museum services, namely, display of a historical sailing vessel; education services, namely, classes, lectures, field trips, and interactive online instruction about starting a colony, a historical vessel, economics, geography, civics, social studies, culture, engineering and history SALISBURY HOUSE 4734138 Museum services; providing educational exhibitions in the nature of tours of an historical American home; running of museums SOLITUDE HOUSE 4798033 Conducting guided tours of a historic house; museum (TRAILER HISTORICAL SOCIETY disclaimed) 4869253 Inter alia, Museum curator services in the field of a traveling exhibit featured in automotive or historical museums in the field of transportation prior to 1965 6 Applicant’s Appeal Brief, p. 4, 5 TTABVUE 5. 7 Applicant’s November 10, 2016 Response to Office Action, Exh. G, TSDR 40-76. Serial No. 87074024 - 10 - MARK REG. NO. RELEVANT SERVICES GEORGE JONES MUSEUM (MUSEUM disclaimed) 4851389 Inter alia, museum services CLIFFORD THE BIG RED DOG 4246113 Education and entertainment services in the nature of interactive museum exhibits; Education and entertainment services for children in the nature of live performances by costumed characters, based on a series of books for children FRIENDS OF HUNLEY 2604493 Inter alia, museum services, namely, exhibitions concerning the Confederate submarine the H.L. Hunley and providing items of historic or scientific importance or value for research and study; educational services, namely, conducting museum tours and seminars in the field of pro-civil war era history and distributing educational materials in connection therewith, namely, educational materials relating to the Confederate submarine the H.L. Hunley Applicant further maintains that its SWAMP GHOST mark was chosen as a source designation for the museum’s overall services and programs because it stands as a symbol of resilience and survival that fits the museum's image and broader purpose as a reminder of the bravery of the men and women who served in the U.S. aviation corps in World War II.8 Moreover, while conceding that SWAMP GHOST is 8 Applicant’s Reply Appeal Brief, p. 2, 11 TTABVUE 3. Serial No. 87074024 - 11 - the nickname of an airplane that was downed in World War II and survived fairly unscathed, Applicant nonetheless contends that its SWAMP GHOST mark can function as a service mark if used in a prominent, eye catching fashion in connection with the promotion of its museum services.9 To that end, Applicant maintains that while the word mark has not been used as yet in connection with its museum and educational services, a logo which is a representation of the SWAMP GHOST airplane has been developed by Disney artists which is currently in use, as displayed below:10 Finally, Applicant requests that the Board resolve any doubts as to whether Applicant’s SWAMP GHOST mark is descriptive in Applicant’s favor and allow the application to proceed to publication.11 We find Applicant’s arguments unpersuasive. As Applicant concedes and as demonstrated by the evidence of record, the term SWAMP GHOST is the nickname of a WWII American bomber. The evidence also demonstrates that Applicant intends to display the bomber nicknamed SWAMP GHOST as an exhibit at its museum, and provide educational services regarding the bomber, including informational tours. As 9 Id. 10 Id. 11 Id. at 3, 11 TTABVUE 4. Serial No. 87074024 - 12 - such, the mark clearly is descriptive of the subject matter or featured exhibit currently displayed or intended to be displayed at Applicant’s museum. See e.g., The Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626 (Fed. Cir. 2009) (COLD WAR MUSEUM for museum services related to the Cold War only registrable based on showing of acquired distinctiveness). The mark also describes the subject matter of Applicant’s educational services, including the provision of informational tours regarding the “SWAMP GHOST” WW II bomber at Applicant’s museum and, as such, is merely descriptive of Applicant’s educational services. See e.g., In re Harcourt Brace Jovanovich, Inc., 222 USPQ 820 (TTAB 1984) (holding LAW & BUSINESS incapable of distinguishing the services of arranging and conducting seminars in the field of business law); In re Indus. Relations Counselors, Inc., 224 USPQ 309 (TTAB 1984) (holding INDUSTRIAL RELATIONS COUNSELORS, INC. an apt name or so highly descriptive of educational services in the industrial relations field that it is incapable of exclusive appropriation and registration); In re Nat’l Shooting Sports Found., Inc., 219 USPQ 1018 (TTAB 1983) (holding SHOOTING, HUNTING, OUTDOOR TRADE SHOW & CONFERENCE incapable for trade show). Applicant’s third-party registration evidence is inconclusive. Although the third- party registrations submitted by Applicant appear to show that the USPTO has allowed the registration of eight marks that purportedly identify the subject matter of museum services, and while we recognize that uniform treatment under the Trademark Act is an important administrative goal, see In re Omega SA, 494 F.3d Serial No. 87074024 - 13 - 1362, 83 USPQ2d 1541, 1544 (Fed. Cir. 2007) (“consistency is highly desirable”), consistency in examination is not itself a substantive rule of trademark law, and our desire for consistency with the decisions of prior examining attorneys must yield to proper determinations under the Trademark Act and rules. See In re Shabby Chic Brands, LLC, 122 USPQ2d 1139, 1145 (TTAB 2017) (citing In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016)). The Board must assess each mark on its own facts and record. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). Indeed, the Board has previously found that: It is axiomatic that we must decide each case on its own merits. The bare fact that the USPTO allowed the marks in the referenced third-party registrations to register is of little persuasive value and does not dictate the result in this case nor does it rebut our finding that LITTLE MERMAID is descriptive in the context of this mark. When a mark is refused registration, and the applicant appeals, we must decide the case based on the record in that case in accordance with the governing statutory standard. We are not estopped or disqualified from applying the statute because, in a prior application which we did not review (and could not have), an examining attorney (or attorneys) may have overlooked a relevant statutory provision and, perhaps erroneously, allowed an application to register. In re United Trademark Holdings, Inc., 122 USPQ2d 1796, 1800 (TTAB 2017). Moreover, eight third-party registrations are by no means overwhelming, given how many marks are registered for museum or educational services. II. Conclusion We have carefully considered all arguments and evidence of record, including any not specifically discussed. Based on the evidence of record, we conclude that consumers who encounter Applicant’s mark in commerce in the context of Applicant’s identified services would immediately perceive the wording “SWAMP GHOST” as Serial No. 87074024 - 14 - identifying the relic World War II American bomber featured at Applicant’s museum and as the subject matter of the exhibitions, workshops, seminars, lectures, tours, film and video presentations Applicant provides. Moreover, while Applicant correctly states the general principle that all doubts as to descriptiveness must be resolved in its favor, in this case, we have no doubt that SWAMP GHOST is merely descriptive of a feature of Applicant’s museum and educational services under Section 2(e)(1) of the Trademark Act. Decision: The refusal to register Applicant’s mark SWAMP GHOST is affirmed.