Ronald W. Fontainev.Light My Fire, AB

Trademark Trial and Appeal Board

Jan 12, 2012

No. 92051304 (T.T.A.B. Jan. 12, 2012)

Mailed: January 12, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Ronald W. Fontaine
v.
Light My Fire, AB
_____

Cancellation No. 92051304
to Registration No. 2870820

_____

Melissa A. Simola of Halberstadt Curley, LLC for Ronald W.
Fontaine.

Andrea Anderson and Tyler J. Davis of Holland & Hart, LLP for
Light My Fire, AB.
______

Before Quinn, Bergsman and Lykos, Administrative Trademark
Judges.

Opinion by Lykos, Administrative Trademark Judge:

On August 3, 2009, Ronald W. Fontaine (“petitioner”) filed
a petition to cancel Light My Fire, AB’s (“respondent”)
registration for the mark SWEDISH FIRESTEEL, in standard
character format, for the goods listed in International Class
13: “hand-operated fire igniter in the form of metal sticks with
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Cancellation No. 92051304
2
a holder and a tin, and hand-operated fire strikers.”1
Petitioner asserted as the sole ground for cancellation that
respondent’s mark is primarily geographically deceptively
misdescriptive of respondent’s identified goods pursuant to
Section 2(e)(3) of the Trademark Act, 15 U.S.C.
§ 1052(e)(3). Respondent, in its answer, denied the salient
allegations in the petition for cancellation.
I. The Record
Pursuant to Trademark Rule 2.122(b), the record includes
respondent's registration file and the pleadings. In addition,
the parties introduced the following:
A. Petitioner’s Evidence
1. Petitioner’s Notice of Reliance comprising the
following items:

a. Petitioner’s requests for admission nos. 6, 7
and 11 and respondent’s responses thereto;

b. Petitioner’s first set of interrogatory nos.
1, 3, and 4 and respondent’s responses
thereto;

1 Registration No. 2870820, filed December 14, 2001 pursuant to
Sections 1(b) and 44(d). The registration was issued on August
10, 2004 pursuant to both Sections 1(a) and 44(e) with a
disclaimer of SWEDISH. “[A] registration more than five years
old can be cancelled on the ground of geographic deceptiveness if
a registrant, through its own actions, causes its mark to become
geographically deceptive subsequent to the issuance of the
registration”). K-Swiss Inc. v. Swiss Army Brands, Inc., 58
USPQ2d 1540, 1542-1543 (TTAB 2001). A partial Section 8 was
filed and accepted for respondent’s International Class 8 and 13
goods; respondent’s International Class 6 goods were cancelled
under Section 8.
Cancellation No. 92051304
3
c. Petitioner’s second set of interrogatory nos.
1-3 and respondent’s responses thereto; and

d. Petitioner’s third set of interrogatory no. 4
and respondent’s response thereto.

2. Declaration of Ronald W. Fontaine (“Fontaine
Declaration”), petitioner, and Exhibits A-C.2

B. Respondent’s Evidence

1. Respondent’s amended notice of reliance
comprising the following items:

a. Respondent’s first set of interrogatories and
petitioner’s responses thereto;

b. Respondent’s requests for admission and
petitioner’s responses thereto; and

c. Respondent’s request for production of
documents and things and petitioner’s
responses thereto.

2. The amended Declaration of J. Michael Odqvist
(“Odqvist Declaration”), an owner and founder of
respondent, with Exhibits A-J attached thereto.

II. Evidentiary Issues

Respondent has made the following evidentiary objections
discussed below.
A. Respondent objects to portions of the Fontaine
Declaration (¶¶ 14-19; 25-26) as well as Exhibits A and C
attached thereto on relevancy grounds under Fed. R. Evid. 402.
Specifically, respondent maintains that insofar as the
statements and exhibits pertain to the issue of whether the term

2 The parties stipulated to submit the testimony of their trial
witnesses by declaration in lieu of oral deposition.
Cancellation No. 92051304
4
FIRESTEEL is generic, and because genericness is not a claim in
this proceeding, the evidence is irrelevant. We disagree. The
issue of whether the term FIRESTEEL is generic is relevant in
determining the primary significance of respondent’s mark.
Accordingly, respondent’s objection is overruled.
B. Respondent objects to the following articles submitted
under Notices of Reliance Nos. 6-9 on the grounds that they are
irrelevant because they pertain to the unpleaded issue of
genericness:
-Ken Drouillard, A Primer to Ignition and Tinder
Sources for Basic Fire Starting, Forest and
Stream, http:///www.forestandstream.com;

-“Ferrocerium,” obtained from Wikipedia.com; and

-Schwert, Ben’s Backwoods Mini Firesteel,
Outdoors-Magazine.com, March 10, 2008.

Respondent, relying upon In re IP Carrier Consulting Group, 84
USPQ2d 1028, 1032 (TTAB 2007), also objects to the “Ferrocerium”
entry from Wikipedia.com due to the collaborative nature of the
web site.
For the same reasons articulated above, we overrule
respondent’s relevancy objections. As to the objection
regarding the entry for “Ferrocerium” from Wikipedia.com, “the
Board will consider evidence taken from Wikipedia so long as the
non-offering party has an opportunity to rebut that evidence by
submitting other evidence that may call into question the
Cancellation No. 92051304
5
accuracy of the particular Wikipedia information.” Id. at 1032.
In addition, “the better practice with respect to Wikipedia
evidence is to corroborate the information with other reliable
sources, including Wikipedia's sources.” Id. Because
respondent has not submitted evidence challenging the accuracy
of the entry, and also petitioner has provided corroborative
testimony on the subject of ferrocerium, respondent’s objection
is overruled. Fontaine Declaration, ¶¶ 15-21, 23-24.
C. Respondent objects to the supplemental declaration of
Ronald L. Fontaine (petitioner) submitted with petitioner’s
trial brief as untimely. It is well settled that evidence
submitted outside of a party’s assigned trial period, including
evidence submitted with a brief, is untimely and will not be
considered. See Trademark Rule 2.121(a). See also Life Zone
Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1955 (TTAB 2008).
As such, respondent’s objection is sustained; petitioner’s
supplemental declaration has been given no consideration.
III. Standing
To establish standing to petition to cancel respondent's
registration, petitioner must prove that he has a real interest
in the outcome of this proceeding and, thus, a reasonable basis
for his belief that he would be damaged by the registration.
See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir.
1999).
Cancellation No. 92051304
6
Petitioner alleges in the petition to cancel that an
attorney representing respondent sent petitioner a cease and
desist letter stating the belief that petitioner’s use of the
mark FIRESTEEL was “infringing” upon respondent’s SWEDISH
FIRESTEEL mark; that in the letter, respondent demanded, among
other things, that petitioner immediately cease “all marketing
and sale of fire igniters under the FIRESTEEL mark…;” and that
if petitioner refused to comply with respondent’s demands,
respondent would file an infringement lawsuit relying upon its
registration. Petition to Cancel, ¶¶ 13-21. In addition, the
complaint alleges that petitioner and respondent sell competing
products. Petition to Cancel, ¶ 22.
Based on the record before, petitioner has standing to
bring the instant case. A credible threat of litigation may
constitute a basis for standing. See Syntax U.S.A. Inc. v. E.R.
Squibb & Sons, Inc., 14 USPQ2d 1879 (TTAB 1990). See also Ipco
Corp. v. Blessings Corp., 5 USPQ2d 1974 (TTAB 1988) (cease and
desist letter coupled with plaintiff’s use of mark sufficient to
establish standing). Although not entered into the record by
petitioner, the cease and desist letter referred to in
petitioner’s complaint submitted by respondent as Exhibit H to
the Odvqist Declaration establishes petitioner’s “real interest”
in this proceeding. Once testimony or any other evidence is
Cancellation No. 92051304
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introduced, it is of record for any purpose, and the adverse
party need not take any action in order to rely on it.
In addition, “a party need not be a manufacturer or seller
of the goods in connection with which a descriptive,
misdescriptive, or merely ornamental designation is used in
order to object to the registration thereof. It is sufficient
that the party objecting to such registration be engaged in the
manufacture and/or sale of the same or related goods and that
the product in question be one that could be produced in the
normal expansion of that person's business.” Federal Glass Co.
v. Corning Glass Works, 162 USPQ 279, 282-83 (TTAB 1969). See
also Corporacion Habanos S.A. v. Empressa Cuban del Tabaco,
d.b.a. Cubatabaco, __ USPQ2d __ (August 1, 2011, Cancellation
No. 92052146)(“where… the pleaded ground is that the mark sought
to be cancelled is deceptive under Section 2(a), or primarily
geographically deceptively misdescriptive under Section 2(e)(3),
petitioners do not need to own a pending application for the
mark, do not have to be using the term as a mark, or even use
the term at all, in order to establish their standing”). The
averments in the Fontaine Declaration that petitioner sells fire
starter devices and other wilderness-related products through
his website are sufficient to establish petitioner’s standing to
bring this case. Fontaine Declaration, ¶¶ 3, 14-16.
Cancellation No. 92051304
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IV. Geographically Deceptively Misdescriptive
As set forth in the case of In re California
Innovations, Inc., 329 F.3d 1334, 66 USPQ2d 1853, 1858
(Fed. Cir. 2003) the elements of a Section 2(e)(3)
geographically deceptively misdescriptive claim are as
follows:
(1) the primary significance of the mark is a
generally known geographic location;

(2) the consuming public is likely to believe the
place identified by the mark indicates the origin
of the goods bearing the mark (i.e., that a
goods/place association exists), when in fact the
goods do not come from that place; and

(3) the misrepresentation would be a material
factor in the consumer's decision to purchase the
goods.

With regard to the first prong, petitioner merely asserts
that “the country of Sweden is known generally to the consuming
public in the United States.” Petitioner’s Brief, p. 5. More
specifically, petitioner failed to present any arguments or
evidence regarding the “primary significance” of the mark
SWEDISH FIRESTEEL. To state the obvious, Sweden is a generally
known geographic location. See definition of Sweden from
www.merriam-webster.com.3 In addition, we find that the word

3 The Board may take judicial notice of dictionary definitions,
including online dictionaries which exist in printed format. See
In re CyberFinancial.Net Inc., 65 USPQ2d 1789 (TTAB 2002). See
also University of Notre Dame du Lac v. J. C. Gourmet Foot
Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
Cancellation No. 92051304
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FIRESTEEL does not detract from the primary geographic
significance of the mark. See, e.g., In re Wada, 194 F.3d 1297,
52 USPQ 1539 (Fed. Cir. 1999) (the mark NEW YORK WAYS GALLERY
projects a primarily geographic significance and the addition of
WAYS GALLERY to NEW YORK does not detract from the primary
significance of the mark); In re Boyd Gaming Corp., 57 USPQ2d
1944 (TTAB 2000) (the primary significance of the marks ROYAL
HAVANA RESORT & CASINO and HAVANA RESORT AND CASINO is
geographic and the additional wording in the marks does not
detract from the geographic meaning).
The second prong of the test involves two inquiries (1)
whether there is a goods/place association; and (2) whether or
not the goods come from the place named. The first inquiry
requires proof that the public is likely to believe that
respondent's goods originate in Sweden or in other words
“whether the public would reasonably identify or associate the
goods sold under the mark with the geographic location contained
in the mark.” In re Save Venice New York Inc., 259 F.3d 1346, 59
USPQ2d 1778, 1783 (Fed. Cir. 2001). To establish such an
association, petitioner may submit evidence showing that the
area identified in the mark has, as one of its principal
product, respondent’s goods or related goods. Such evidence may
include gazetteer or dictionary entries, news stories, expert
testimony, consumer surveys, or consumer affidavits. See
Cancellation No. 92051304
10
Corporacion Habanos S.A. v. Anncas Inc., 88 USPQ2d 1785 (TTAB
2008). Cf. Consorzio del Prosciutto di Parma v. Parma Sausage
Products Inc., 23 USPQ2d 1894, 1901 (TTAB 1992). In this case,
petitioner has not proved that consumers associate the country
of Sweden with the type of goods of respondent. The sole
evidence petitioner can point to in the record is respondent’s
admission that the Swedish military uses fire starter devices.4
This, by itself, is insufficient to establish a goods/place
association.
As to the second inquiry, petitioner, relying on the
principle that “[a] product might be found to originate from a
place where the main component or ingredient was made in that
place,” argues that respondent’s finished products do not
originate from Sweden. Corporacion Habanos, 88 USPQ2d at 1791 ,
citing In re Joint-Stock Co. “Baik,” 80 USPQ2d 1305 (TTAB 2006).
Specifically, respondent contends that the flint rod is the
“only essential part” of respondent’s fire starter device
because it is impossible to produce a spark in the absence of
pyrophoric metals or ferrocerium. Fontaine Declaration, ¶ 2.
Respondent takes the position that because this main component
is not produced in Sweden, respondent’s finished goods do not
originate from Sweden. Fontaine Declaration, ¶ 21.

4 As noted above, the supplemental declaration of petitioner
submitted with his main brief was not properly made of record.
Cancellation No. 92051304
11
We find, however, that the record reflects otherwise,
namely that each component part of respondent’s goods plays an
equally important and essential role in the proper functioning
of the devices. While it is true that the flint is purchased
from a vendor located outside of Sweden, respondent’s fire
starter products are comprised of five other component parts,
all of which are manufactured in Sweden: (1) striker, (2)
striker handle, (3) flint handle, (4) lanyard, and (5) lock.
Odqvist Declaration, ¶¶ 12, 15. 18. Respondent manufactures the
striker and flint handles in its production facility in
Vastervik, Sweden. Odqvist Declaration, ¶ 14. The striker,
lanyard, and lock are purchased from outside vendors all located
in Sweden. Id. Respondent’s testimony contradicts petitioner’s
assertion that the flint alone is the main component. As
explained by one of respondent’s founders:
13. The [fire starter] is an “all-in-one” product with
the lanyard connecting both the flint and the
striker so that the small components are always
located together, and do not become separated. To
make a fire, the user strikes the striker and flint
together to create a spark. The handle allows the
user to hold the flint comfortably, firmly, and
steadily to create a spark with the striker. The
lock and lanyard keep the striker together with the
handle.

18. The SWEDISH FIRESETEEL fire starters are a “luxury
grade” outdoor product, designed to provide
superior functionality and ease of use over most
common “flint and striker” fire starters. As such,
there is no single component of our SWEDISH
FIRESTEEL devices that is the main or primary
Cancellation No. 92051304
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component of the product. Rather, all components
of the product are necessary to the superior
functioning of the product. For example, the
lanyard is essential to keeping the striker
together with the flint. In addition, the handles
of the striker and the flint are necessary for
maintaining a proper and comfortable grip on the
tool, particularly in adverse weather conditions.
Without either of these features, the product would
not function as intended.

Odqvist Declaration.

Respondent has submitted documentary evidence to
corroborate its testimony. Respondent’s advertising brochure
confirms the importance of other component parts such as the
striker:
A flash of genius takes fire making to the next level.
Originally developed for the Swedish Department of
Defense, our legendary Swedish FireSteel® is the
original fire starter. Being the best, however, means
always having to push the envelope. The result is a
new generation with an improved striker that makes it
even easier to build a fire in any weather, at any
altitude. We Sell Fire, 2010/2011.

Furthermore, when asked to “admit that the flint rod is the main
component of the fire starter devices” sold under the SWEDISH
FIRESTEEL mark, respondent responded with a denial. Response to
Request for Admission No. 9.
Notwithstanding the above, the point of origin of a product
may be determined in a number of other ways, including the place
of packaging and distribution, see e.g., In re JT Tobacconists,
59 USPQ2d 1080 (TTAB 2001), or the location of the party’s
headquarters, research and development facilities, or place of
Cancellation No. 92051304
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distribution, see e.g., In re Nantucket Allserve Inc., 28 USPQ2d
1144, 1146 (TTAB 1993). Applying any of the above criteria,
respondent’s goods originate from Sweden. Respondent is a
privately held company, organized under the laws of Sweden and
headquartered in Mamo, Sweden. Odqvist Declaration, ¶ 2.
Respondent’s research and development center is located in
Malmo, Sweden and its production facility is located in
Vastervik, Sweden. Odqvist Declaration, ¶ 3. Respondent
contracts with a Swedish state-owned company to assemble and
package the firestarters from these component parts in
Vastervik, Sweden. Odqvist Declaration, ¶ 16. The finished
product is distributed from Sweden. Odqvist Declaration, ¶ 17.
Hence, we find that respondent’s goods do indeed originate from
Sweden.
Accordingly, petitioner cannot prevail on its
geographically deceptively misdescriptive claim, and we need not
consider the third prong, i.e., whether the mark's
misrepresentation is a material factor in the consumer's
decision to purchase the goods.5
Decision: The petition to cancel is dismissed with
prejudice.

5 Even if we were to consider the third prong, petitioner failed
to submit any admissible evidence, other than respondent’s
admission that the Swedish military uses fire starter devices
discussed above. Such evidence is insufficient to establish the
final element of petitioner’s claim.