Sno-Wizard Mfg., Inc.

Trademark Trial and Appeal Board

Aug 5, 2004

No. 76059333 (T.T.A.B. Aug. 5, 2004)

5 August 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Sno-Wizard Manufacturing, Inc.1
________
Serial No. 76059333
_______
Raymond G. Areaux of Carver, Darden, Koretzky, Tessier,
Finn, Blossman & Areaux for Sno-Wizard Manufacturing, Inc.2
Raul Cordova, Trademark Examining Attorney, Law Office 114
(Margaret Le, Managing Attorney).
_______
Before Bucher, Holtzman and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
Sno-Wizard Manufacturing, Inc. (applicant) applied to
register the term SNOBALL (typed) on the Principal Register
for goods ultimately identified as “ice shaving machines
1 After this case was briefed, a paper was filed in the Office
assigning the mark to Snowizard Holdings, Inc. Real/Frame No.
2846/0936.
2 On June 8, 2004, a new power of attorney was filed naming Seth
M. Nehrbass and other attorneys from Garvey, Smith, Nehrbass &
Doody, L.L.C. as the attorneys for applicant. A copy of this
opinion will be sent to both applicant’s current and previous
counsel.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE
TTAB
Ser. No. 76059333
2
for sale to retail business selling shaved ice confections”
in International Class 7. The application was eventually
amended to claim a date of first use and a date of use in
commerce of June 15, 1955, and to seek registration under
the provision of Section 2(f). 15 U.S.C. § 1052(f).
The examining attorney3 sets out the issue in this case
as follows: “Whether the applicant’s mark SNOBALL is
generic for snowball making machines under Trademark Act
Section 1, 2 and 45 and whether the term fails to function
as a mark as shown in the specimens of record under
Trademark Act Section 1 and 45?” Examining Attorney’s
Brief at 3. The examining attorney also indicated in his
brief that applicant’s “acquired distinctiveness evidence
must be rejected.” Examining Attorney’s Brief at 5.
The examining attorney argues that SNOBALL and
SNOWBALL are legally identical terms and that third parties
use the term “SNOWBALL MACHINE to identify a machine that
make[s] a type of ice confection.” Examining Attorney’s
Brief at 4. In response, applicant argues that the usage
of record “reflects a careful and respected distinction
between the terms ‘snow ball’ and ‘snoball.’ The former
3 The current examining attorney was not the original examining
attorney in this case.
Ser. No. 76059333
3
term is used to refer to any ice-shaving machine; the
latter term is not so used.” Applicant’s Brief at 16.
Genericness
The key issue in this case is whether the term SNOBALL
is generic for applicant’s ice shaving machines.4 The Court
of Appeals for the Federal Circuit has held that: “The
critical issue in genericness cases is whether members of
the relevant public primarily use or understand the term
sought to be protected to refer to the genus of goods or
services in question.” H. Marvin Ginn Corp. v. Int’l
Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ
528, 530 (Fed. Cir. 1986). Ginn goes on to explain that:
Determining whether a mark is generic therefore
involves a two-step inquiry: First, what is the genus
of goods or services at issue? Second, is the term
sought to be registered or retained on the register
understood by the relevant public primarily to refer
to that genus of goods or services?
Id.
We begin by analyzing the evidence of record on the
question of whether “snoball” is used to refer to ice
shaving machines. The evidence consists of excerpts
4 Inasmuch as applicant is seeking registration under Section
2(f), there is no question that its mark is merely descriptive.
Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d
1001, 1005 (Fed. Cir. 1988) (“Where, as here, an applicant seeks
a registration based on acquired distinctiveness under Section
2(f), the statute accepts a lack of inherent distinctiveness as
an established fact”) (emphasis in original).
Ser. No. 76059333
4
submitted by the examining attorney and applicant
from the Internet, NEXIS, and phone book Yellow Pages. In
an article from www.gumbopages.com, the author explains
that:
The sno-ball is a New Orleans creation. The main
reason for this is a machine called a “Hansen’s Sno-
Bliz.” This is a machine that turns blocks of ice
into sno-balls… The classic sno-ball machine (now
manufactured by four or five companies in the area)
works like a deli meat slicer. I have never seen
anything like a sno-ball in any part of the country,
although Lani Teshima-Miller’s description of “shaved
ice” in Hawaii is the closest thing I’ve heard. A
sno-ball isn’t an Italian ice, nor is it a crushed ice
abomination.
Other evidence includes:
Snoballs are big business in New Orleans. So big that
snoball machines are becoming a major export to
foreign countries… The business has such stature that
a snoball museum is being built on the Orleans-
Jefferson parish line.
New Orleans CityBusiness, June 16, 1997.
Snoballs are extremely popular and “kind of like the
espresso of Louisiana,” Bridget Huckabay said.
Chattanooga Times and Free Press, June 8, 2001.
In addition, the examining attorney made of record an
entry from the American Heritage Dictionary of the English
Language (3rd ed. 1992) that included a definition of “snow
ball” as “Chiefly Southern U.S. A cup of crushed or shaved
ice flavored with colored syrup.”
Applicant submitted excerpts from twenty years of
Yellow Pages from the New Orleans area. Those Yellow Pages
Ser. No. 76059333
5
show that since at least 1990 products such as applicant’s
are listed under the category entitled “Snow Ball
Machines.” The term “snow ball” is a term commonly used by
applicant’s competitors in these Yellow Pages ads. For
example, the April 1994 New Orleans Yellow Pages contained
the following entries from companies other than applicant:
Fluffy-Ice Snowball Machines Flavors & Supplies
Eisenmann Products
- Snowball & Block Ice Machines
The Original Southern Snow Machine
- Snow Ball Machines
The May 1998 Yellow Pages contains an ad from a
competitor that refers to itself as the “Home of the ‘New
Orleans Style Snowball Machine & Flavors.’”
Applicant’s ad in the May 1996 Yellow Pages describes
an individual apparently connected with applicant as the
“Inventor of the Snowball Machine.” Applicant also
submitted that it was aware of a competitor using the term
SNO BALL in the 1987 edition of the Yellow Pages. After
applicant complained to the phone book, the ad was changed
to refer to “snow ball.” Sciortino affidavit, April 25,
2002 at 2. Applicant admits that the term “snow ball” is a
“term used to refer to any ice-shaving machine.”
Applicant’s Brief at 16. Indeed, applicant admits that
members of the public recognize that “‘Snow Ball Machines,’
Ser. No. 76059333
6
not SNOBALL machines, is the generic term for the goods at
issue.” Applicant’s Brief at 17. Therefore, based on this
evidence, it is clear that “snow ball” is a generic term
that refers to an ice-shaving machine.
We next look at whether applicant’s term is understood
by the relevant public to refer to that genus. Ginn, 228
USPQ at 530. “Evidence of the public's understanding of
the term may be obtained from any competent source, such as
purchaser testimony, consumer surveys, listings in
dictionaries, trade journals, newspapers, and other
publications.” In re Merrill Lynch, Fenner and Smith Inc.,
828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987). The
critical issue in genericness cases is whether members of
the relevant public primarily use or understand the term
sought to be protected to refer to the genus of goods or
services in question.” Ginn, 228 USPQ at 530. Applicant
defines the relevant public as “manufacturers,
distributors, and purchasers of ice-shaving machines.”
Applicant’s Brief at 17. Obviously, these purchasers of
ice-shaving machines would use the Yellow Pages to purchase
these machines.5 The 1998 Yellow Pages identify the
5 Applicant’s president indicated that “the ice-shaving machine
manufacturers that advertise in the Greater New Orleans Yellow
Pages represent at least 70% of the total sales, by volume, of
ice-shaving machines in the United States.” Sciortino affidavit
dated April 24, 2000 at 2.
Ser. No. 76059333
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category of the goods as “Snow Ball Machines” and “Snow
Ball Machines Equipment & Supplies.” Prospective
purchasers would see advertisements that refer to the goods
with language such as “snowball & block ice machines,”
“snow ball machines,” and “New Orleans Style snowball
machine and flavors.” This evidence leads to the
conclusion that customers would understand that the genus
of the goods is snow ball or snowball machines.
At this point, we address the question of whether
applicant’s exact mark SNOBALL is generic. As noted
earlier, applicant admits that the term “Snow Ball
Machines” is “the generic term for the genus of goods at
issue.” Applicant’s Brief at 17. It is also clear from
the Yellow Page advertisements that the term “snowball
machines” is likewise generic. Applicant in its ad (New
Orleans Yellow Pages April 1994) refers to George J.
Ortolano as “The Inventor of The Snowball Machine.” On the
same page, Eisenmann Products lists “Snowball & Block Ice
Machines” and a separate entry appears for “Fluffy-Ice
Snowball Machines Flavors & Supplies.” Therefore, the only
question is whether the term SNOBALL is not generic while
the terms SNOWBALL and SNOW BALL are generic.
A slight misspelling does not convert a generic term
into a non-generic term. See Nupla Corp. v. IXL
Ser. No. 76059333
8
Manufacturing Co., 114 F.3d 191, 42 USPQ2d 1711, 1716 (Fed.
Cir. 1997) (“Based on overwhelming documentary evidence of
record showing widespread and long-time prior use of the
CUSHION-GRIP mark in the hand tool industry, we agree with
the district court's conclusion that there is no genuine
issue of material fact that Nupla's mark [CUSH-N-GRIP],
which is merely a misspelling of CUSHION-GRIP, is also
generic as a matter of law, and the registrations are
therefore invalid”); In re A La Vielle Russie Inc., 60
USPQ2d 1895 (TTAB 2001) (RUSSIANART generic for particular
field or type of art and also for dealership services
directed to that field); In re Yardney Electric Corp., 145
USPQ 404, 405 (TTAB 1965) (“‘NICEL’ is merely a misspelling
and phonetic equivalent of ‘nickel’ and means the same
thing. As such the subject matter identifies applicant's
product as to kind and not source. It is therefore not
registrable within the purview of the statute) (citation
omitted). The terms SNOBALL and SNOWBALL would be
pronounced identically and have the same meaning. Omitting
the letter “w” in the middle of the term does not change
the term from a generic term to a non-generic one.
Furthermore, in addition to the genericness of the
term “snow ball” and “snowball,” there is evidence that the
same term for which applicant seeks registration, “SNOBALL”
Ser. No. 76059333
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with and without a space, is used generically. See New
Orleans CityBusiness (“Snoballs are big business in New
Orleans. So big that snoball machines are becoming a major
export”); Chattanooga Times and Free Press (“Snoballs are
extremely popular”); www.gumbopages.com (“About Sno-
Balls”). This evidence supports the correctness of the
examining attorney’s conclusion that the term SNOBALL is
generic for “ice shaving machines for sale to retail
business selling shaved ice confections.”
Applicant argues that “the constituent SNO does not
have the meaning of ‘snow,’ to wit: frozen precipitation
that falls in soft white flakes; similarly, the constituent
BALL does not mean a spherical object. Applicant’s SNOBALL
mark is not used on a ball of snow; rather, it is used on
an ice-shaving machine.” Applicant’s Brief at 5-6
(citations to record omitted). However, the refusal in
this case is not based on an argument that the individual
words are generic and that they form a generic compound.
See, e.g., In re Gould Paper Co., 834 F.2d 1017, 5 USPQ2d
1110, 1111-12 (Fed. Cir. 1987) (“We hold, however, that the
PTO has satisfied its evidentiary burden if, as it did in
this case, it produces evidence including dictionary
definitions that the separate words joined to form a
compound have a meaning identical to the meaning common
Ser. No. 76059333
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usage would ascribe to those words as a compound”).
Instead, the refusal here is based on the evidence that the
term “Snoball” itself is generic. Obviously, if the
evidence shows that the term “football” is generic for an
athletic competition, the examining attorney does not have
to show that the individual terms “foot” and “ball” are
individually generic for the game.
Applicant also argues that several references use the
term “snoball” and its equivalents “to refer to the snow
ball product (purchased at the retail level by consumers of
shaved-ice confections), not the ice-shaving machine used
in creating the product (purchased by retail businesses
selling shaved-ice confections”). Applicant’s Brief at 10-
11 (emphasis in original). While several references refer
to the products, much of the evidence including applicant’s
own usage in its ads, its competitor’s ads, the heading in
the Yellow Pages, and some of the articles specifically use
the term “snow ball” and its equivalents to refer to the
machines themselves. See, e.g., New Orleans CityBusiness,
June 16, 1997 (“[S]noball machines are becoming a major
export to foreign countries”).
Applicant maintains that “the use of a mark on goods
or services other than the goods or services for which
registration is sought has no probative value as to whether
Ser. No. 76059333
11
such term is generic for the field of interest.”
Applicant’s Brief at 9 (emphasis omitted). Applicant then
goes on to explain that “evidence of usage of the term
‘chair’ on baseball caps or cigarettes has no probative
value as to whether the term ‘chair’ is generic for a piece
of furniture.” Id. While applicant’s example is correct,
it would not be true that evidence of the genericness of
the term “chair” for furniture would not be relevant in
considering whether the term “chair” is generic for a store
that sells chairs or a machine that makes chairs. See In
re Northland Aluminum Products, 777 F.2d 1556, 227 USPQ 219
(TTAB 961) (BUNDT generic for a “ring cake mix” despite
evidence that showed generic use of the term only for a
type of cake, and not for a cake mix); A La Vielle Russie,
60 USPQ2d at 1900 (RUSSIANART “is generic for applicant’s
services of selling such art”); In re Log Cabin Homes Ltd.,
52 USPQ2d 1206 (TTAB 1999) (LOG CABIN HOMES generic for
“architectural design of buildings, especially houses, for
others,” and “retail outlets featuring kits for
constructing buildings, especially houses”). Even if the
evidence only showed that the products produced by
applicant’s machines are called snowballs or snow balls, it
is at least some evidence that the machines themselves
would be known as snowball or snow ball machines. Of
Ser. No. 76059333
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course, there is more direct evidence in this case. For
example, applicant itself in its ads uses the term
“snowball machine” in a generic fashion and it admits in
its brief that the term “Snow Ball Machines” is “the
generic term for the genus of goods at issue.” Applicant’s
Brief at 17.
We are also not persuaded by applicant’s point that
there is evidence of non-generic usage and that some
articles use the term ice-shaving machines. There is
nothing unusual about a product or a service having more
than one generic name or about a generic term having some
evidence of de facto trademark recognition. Roselux
Chemical Co. v. Parsons Ammonia Co., 299 F.2d 855, 132 USPQ
627, 632 (CCPA 1962) (“Consider, however, that the product
commonly known as tooth paste is also commonly known as
dentifrice and dental cream. A gravestone is also commonly
known as a headstone, a tombstone and a monument”); In re
Recorded Books Inc., 42 USPQ2d 1272, 1282 (TTAB 1997)
(“Nonetheless, if the evidence as a whole establishes -- as
it does to our satisfaction -- that the term is primarily
perceived as a generic term, the recognition of the term as
a trademark by a subset of applicant's customers must be
deemed no more than a de facto secondary meaning that, in
Ser. No. 76059333
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legal effect, can neither confer nor maintain trademark
rights in the designation sought to be registered”).
Acquired Distinctiveness
If applicant’s term is generic, which we have found in
this case, then no amount of evidence of acquired
distinctiveness can establish that the mark is registrable.
In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227
USPQ 961, 964 (Fed. Cir. 1985). However, for the sake of
completeness, we now address applicant’s claim that its
mark has acquired distinctiveness. On this issue,
applicant has the burden of proving that its mark has
acquired distinctiveness. In re Hollywood Brands, Inc.,
214 F.2d 139, 102 USPQ 294, 295 (CCPA 1954)(“[T]here is no
doubt that Congress intended that the burden of proof
[under Section 2(f)] should rest upon the applicant”).
“[L]ogically that standard becomes more difficult as the
mark’s descriptiveness increases.” Yamaha Int’l, 6 USPQ2d
at 1008.
Applicant’s evidence of acquired distinctiveness
consists primarily of a claim that two competitors changed
their Yellow Pages ads to read “snow ball” instead of
“snoball.” Applicant’s Brief at 20-21. The fact that two
competitors chose to change the spelling of the generic
name for the goods to include the traditional letter “w”
Ser. No. 76059333
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after applicant protested is hardly significant. Indeed,
it would have been surprising if these entities litigated
over the right to use “snoball” when applicant had no
objection to their use of the virtually identical term
“snowball.”
When the only difference between the generic term and
applicant’s alleged trademark is a letter that does not
change the pronunciation, any evidence of acquired
distinctive would have to be very persuasive. If a
salesman or a speaker at an industry convention referred to
“snowball machines,” it would not be clear whether he was
referring to applicant’s “Snoball Machines” or Southern
Snow Machine’s “snow ball machines” or Eisenmann Products
Co.’s “New Orleans Style Snow Ball Machines.” See 2002 New
Orleans Yellow Pages. We also add that even applicant’s
allegation of long use of the term does not convert a
generic term into a non-generic term. In re Helena
Rubinstein, Inc., 410 F.2d 438, 161 USPQ 606, 609 (CCPA
1969). Inasmuch as applicant’s mark is phonetically
identical to the admittedly generic term, applicant’s
evidence falls far short of demonstrating that its mark has
acquired distinctiveness, even if the mark would ultimately
be determined to not be generic for applicant’s goods.
Ser. No. 76059333
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Does Not Function as a Mark
The examining attorney has also refused registration
on the ground that the term does not function as a mark.
The examining attorney argues (p. 6) that:
The method of presentation, a moniker identifying a
product subservient to a classic trademark form,
cannot be said to create a trademark impression since
the specimen itself is identifying the product by a
trademark (‘SNOWIZARD’), and the rest of the wording,
because of its placement and format, identifying and
classifying the product itself (‘SNOBALL MACHINE’).
We do not view this refusal as a separate refusal.
Applicant’s specimens show the term used roughly as
follows:
SnoWizard
SNOBALL MACHINE
There is no reason why applicant could not use more that
one trademark in association with its goods. Applicant’s
use does not per se indicate that the term does not
function as a mark. The examining attorney’s failure to
function as a mark refusal appears to be subsumed into the
genericness refusal to the extent that if the term SNOBALL
is generic, it obviously would not function as a mark. If,
on the other hand, the term is not generic, its use on the
specimens would not prevent it from being registered.
Therefore, we do not separately affirm a refusal to
Ser. No. 76059333
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register on a ground that the term does not function as a
mark.
CONCLUSION
Applicant’s term SNOBALL is generic for the goods
recited in the application and, in the event that the term
is not generic, applicant has not demonstrated that its
mark has acquired distinctiveness.
Decision: The refusal to register is affirmed.