The Hoover Co.v.Royal Appliance Mfg. Co.

Trademark Trial and Appeal Board

Dec 17, 1999

No. 91096834 (T.T.A.B. Dec. 17, 1999)

Hearing:
June 8, 1999
Paper No. 31
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB DEC. 17, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_______
Trademark Trial and Appeal Board
_______
The Hoover Company
v.
Royal Appliance Mfg. Co.
_______
Opposition No. 96,834
to Application No. 74/462,460
filed on November 23, 1993
_______
Ray L. Weber and Sylvia A. Petrosky of Renner, Kenner,
Grieve, Bobak, Taylor & Weber for opposer.
Patrick R. Roche, Sandra M. Koenig and Jude A. Fry of Fay,
Sharpe, Beall, Fagan, Minnich & McKee for applicant.
_______
Before Cissel, Walters and Bucher, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
The Hoover Company filed its opposition to the
application of Royal Appliance Mfg. Co. to register the
mark THE FIRST NAME IN FLOORCARE for “electrical vacuum
Opposition No. 96,834
2
cleaners for both domestic and industrial use,” in
International Class 9.1 The application includes a
disclaimer of FLOORCARE apart from the mark as a whole.
As grounds for opposition, opposer asserts that
applicant’s mark, when applied to applicant’s goods, so
resembles opposer’s previously used mark, NUMBER ONE IN
FLOORCARE, for “electric vacuum cleaners” as to be likely
to cause confusion, under Section 2(d) of the Trademark
Act. Additionally, opposer asserts that applicant’s mark
is deceptive, under Section 2(a) of the Trademark Act, or
deceptively misdescriptive, under Section 2(e)(1) of the
Trademark Act, in connection with the recited goods
“because it is a false statement which bestows upon
applicant’s [products] an appearance of greater quality or
salability to which the goods are not entitled”; and that
such an appearance “is likely to materially affect consumer
decisions to purchase said goods.”
Applicant, in its answer, denied the salient
allegations of the claim. Although applicant asserted as
an “affirmative defense” that opposer “is estopped from
proceeding with this opposition because it has abandoned
its NUMBER ONE IN FLOORCARE trademark through nonuse,”

1 Application Serial No. 74/462,460, filed November 23, 1993, based upon
use of the mark in commerce, alleging dates of first use and first use
in commerce as of April 29, 1992.
Opposition No. 96,834
3
applicant did not pursue this claim and, thus, we consider
it to be waived and we have given applicant’s claim of
abandonment based on nonuse no consideration.
The Record
The record consists of the pleadings; the file of the
involved application; various specified responses of
applicant and opposer to interrogatories and requests for
admissions, made of record by opposer’s and applicant’s
notices of reliance2; and the testimony depositions by
opposer of David A. Gault, opposer’s vice president of
marketing, A. Burgess Lowe, opposer’s patent counsel,
Jacquelyn B. Love, opposer’s publications manager, and Ann
B. Haines, with opposer’s historical center, all with
accompanying exhibits. Both parties filed briefs on the
case and an oral hearing was held.
We note, at the outset, that applicant has raised
objections to several exhibits submitted by opposer. In
particular, applicant has objected to opposer’s Exhibit 1,
consisting of photographs, on the grounds of lack of
foundation and authenticity. We find opposer’s witness,

2 Applicant submitted its own answers to opposer’s interrogatories
without any indication that this submission is responsive to opposer’s
submission. A party may not submit its own answers to interrogatories,
absent consent, unless it is to respond to or supplement the other
party’s partial submission of the same. However, as opposer has not
objected, we have considered this submission as part of the record.
Opposition No. 96,834
4
Mr. Gault, to be competent to testify on behalf of opposer
regarding the subject matter of these photographs. The
notes contained thereon are adequate to establish the
locations and dates of the labeled pictures. Those
photographs that are undated are of minimal evidentiary
value and have been so considered.
Applicant objects to opposer’s Exhibit 18, consisting
of copies of invoices and a list of sales totals for
opposer’s display cubes, on the grounds of hearsay and
relevancy and, under Fed. R. Evid. 1006, contending that
opposer has not made available to applicant the documents
underlying this compilation of figures.3 Applicant’s
contentions are not well taken and we have considered this
evidence, including any inconsistencies apparent in the
compilation.
Applicant’s remaining evidentiary objections to
specified exhibits go to, essentially, the probative value
of opposer’s evidence, rather than to its admissibility.
Applicant describes the evidence to which it objects
broadly as “surveys” and contends that the foundation and
reliability of the purported surveys have not been

3 Applicant’s objection to this exhibit under Fed. R. Evid. 1006 is that
opposer has not made available to applicant the documents underlying
this compilation of figures. However, applicant has not indicated that
it requested and was denied such documentation.
Opposition No. 96,834
5
adequately established. However, the majority of these
exhibits are articles from various newspapers and trade
publications regarding product rankings in the floorcare
industry rather than surveys. Other exhibits are studies
and/or surveys, some undertaken independently and some at
opposer’s request, but not in connection with this
proceeding. All of this evidence was presented through the
testimony of Mr. Gault. Mr. Gault testified that these
studies pertain to industry rankings, trends and consumer
information; that the studies commissioned by opposer were
conducted as part of the regular course of opposer’s
business; and that his company makes business decisions
based in part on the results of the studies commissioned by
opposer. We find applicant’s objections to this evidence
to be without merit and we have considered the evidence for
whatever probative value it may have. Certainly, this
evidence is hearsay for the truth of the statements
contained therein. However, the exhibits are probative of
consumer exposure to opposer’s company name in connection
with floorcare products.
The Parties
Opposer submitted a substantial amount of evidence and
testimony regarding its long history as a manufacturer of
vacuum cleaners and establishing the company’s renown. The
Opposition No. 96,834
6
evidence reflects opposer’s prominence in the field,
focusing on its history manufacturing various models of
vacuum cleaners for domestic use since 1910, and noting
that opposer, through its predecessor-in-interest, was the
first company to manufacture and commercially distribute
electrical vacuum cleaners. Similarly, applicant has
manufactured and distributed vacuum cleaners, principally
for domestic use, since 1912.
Opposer’s witness, David Gault, testified that
“floorcare” is a term commonly used to describe products
for the care of floors, in particular, upright, stick and
canister vacuum cleaners, wet and dry vacuum cleaners and
hand cleaners; that opposer and applicant manufacture and
sell similar lines of floorcare products for domestic use;
that opposer and applicant sell their products within
essentially the same price ranges to the same classes of
purchasers; and that opposer and applicant sell their
products nationally through the same national retailers,
such as Wal-Mart, K-Mart, Sam’s Club and Sears. Mr. Gault
stated that, during his thirty-year tenure with opposer,
Hoover has been first among manufacturers of floorcare
products for brand recognition and sales of its floorcare
products.
Opposition No. 96,834
7
It is clear from the evidence that opposer’s principal
trademark is the “Hoover” name and that this is a well-
known trademark. Mr. Gault testified that opposer has used
the slogan “Number One in Floorcare” since the mid-1970s.
The evidence includes examples of the use of this slogan in
1975 specifications brochures for a variety of models of
vacuum cleaners (opposer’s exhibit no. 44), on advertising
display mobiles in 1981 (opposer’s exhibit no. 16) and,
from the early 1980s to the present, on advertising cubes
used as point of purchase displays by retailers (opposer’s
exhibit no. 1). Mr. Gault noted that the slogan is used
along with the “Hoover” trademark. While Mr. Gault
disclosed that opposer has spent substantial sums on
national advertising of its products, opposer presented no
figures regarding extent of use, consumer recognition or
advertising specifically involving the slogan “Number One
in Floorcare.” Mr. Gault stated, unequivocally, that the
slogan “Number One in Floorcare” is descriptive of the
various areas wherein Hoover is “first,” such as,
historically, selling the first vacuum cleaner, and in
terms of product sales, reliability and innovation, and
consumer brand recognition and loyalty (Gault testimony,
pgs. 95-98); and that consumers would perceive this slogan
as describing one or more of these qualities.
Opposition No. 96,834
8
Applicant’s states in its response to opposer’s
interrogatories that it began using THE FIRST NAME IN
FLOORCARE in 1992; that the slogan is used on boxes and
cartons containing the goods, on point of purchase
displays, on stationary, and at trade shows; and that the
slogan is used along with the Royal name or, until 1996,
with applicant’s “Dirt Devil” brand. Both parties agree
that there have been no known instances of actual confusion
related to the use of their respective slogans during
approximately six years of concurrent use.
Analysis
Priority and Likelihood of Confusion
In considering priority and likelihood of confusion,
under Section 2(d), in this case, we must first consider
the issue of the distinctiveness, either inherent or
acquired, of the slogan claimed by opposer to be its mark.
As our primary reviewing court noted in Towers V. Advent
Software Inc., 913 F.2d 942, 17 USPQ2d 1471 (Fed. Cir.
1990):
Under the rule of Otto Roth [Otto Roth & Co. v.
Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40
(CCPA 1981)], a party opposing registration of a
trademark due to a likelihood of confusion with
his own unregistered term cannot prevail unless
he shows that his term is distinctive of his
goods, whether inherently or through the
acquisition of secondary meaning or through
“whatever other type of use may have developed a
Opposition No. 96,834
9
trade identity.” Otto Roth, 640 F.2d at 1320,
209 USPQ at 43.
* * *
Section 2(d) bars registration, or serves as a
basis for cancellation, if there is a likelihood
of confusion as to source. As to an unregistered
term, such a likelihood of confusion results when
there are trade identity rights in the prior
user’s term. Those trade identity rights arise
when the term is distinctive either inherently or
through the acquisition of secondary meaning.
Applicant contends that opposer’s slogan, NUMBER ONE
IN FLOORCARE, is not an inherently distinctive trademark;
and that opposer has not established that its slogan has
acquired distinctiveness. Opposer contends, on the other
hand, that its slogan is inherently distinctive; and,
alternatively, that, through extensive and exclusive use,
it has acquired distinctiveness. Opposer reasons, both in
its brief and through the testimony of its vice president
of marketing, Mr. Gault, that its designation NUMBER ONE IN
FLOORCARE “is distinctive – there can only be one number
one”; and that, as opposer is “the holder of the top
position in every recognized category in floorcare [and]
[n]o others can ‘with equal truth’ use such a designation,”
it is an inherently distinctive identifier of opposer as
the source of the goods sold in connection therewith.
We agree with applicant that the slogan NUMBER ONE IN
FLOORCARE is a generally laudatory phrase, as opposer’s own
statements indicate, and, thus, it is not inherently
Opposition No. 96,834
10
distinctive. In fact, Mr. Gault admitted that consumers
would perceive this slogan as describing one or more of
opposer’s qualities, which make it a leader in the field.
However, the fact that the slogan may merely describe
opposer and no one else does not render it an inherently
distinctive trademark. Rather, as applicant states,
opposer’s slogan merely describes “certain characteristics
of [opposer’s] goods – that is, [opposer] is number one in
floorcare in the areas of innovation, consumer brand
preference, purchase intent, consumer awareness brand
recognition and sales.” As our primary reviewing court
noted in the recent case of In re Boston Beer Company
Limited Partnership, Appeal No. 99-1123 (Fed. Cir.,
December 7, 1999), aff’g. 47 USPQ2d 1914 (TTAB 1998),
“’Marks that are merely laudatory and descriptive of the
alleged merit of a product are also regarded as being
descriptive …. Self-laudatory or puffing marks are
regarded as a condensed form of describing the character or
quality of the goods.’ 2 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition §11:17 (4th ed. 1996).”
Thus, we turn to the question of whether opposer has
established that its slogan, NUMBER ONE IN FLOORCARE, has
acquired distinctiveness as opposer’s trademark in
connection with its floorcare products. The issue is
Opposition No. 96,834
11
whether this descriptive slogan has acquired secondary
meaning, that is, whether opposer’s use and promotion of
the slogan over a period of time has been of such a nature
and extent that the primary significance of the term in the
minds of the consuming public is no longer descriptive, but
rather is an indication of the source of the goods of
opposer. In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB
1991).
Opposer has provided a substantial amount of evidence
about the history of its company and the “Hoover” name as a
trademark for its floorcare products. However, opposer has
provided meager evidence about the use of its slogan NUMBER
ONE IN FLOORCARE. While opposer has provided photographs
of advertising “cubes” containing the slogan as used by
dealers and some figures regarding numbers of advertising
cubes sold to dealers, it is impossible to determine
whether this evidence translates into substantial exposure
of opposer’s slogan to relevant purchasers. Further, the
evidence of record demonstrates use of the slogan with, or
in close proximity to, opposer’s principle trademark
“Hoover.” It would appear from this evidence that the
slogan is more likely to be perceived as a laudatory
statement in advertising about the goods than as a
trademark. The record contains no evidence of consumer
Opposition No. 96,834
12
perception or information linking opposer’s slogan with use
in contexts that would condition consumers to react to or
recognize the designation as an indication of opposer as
the source of the goods. Therefore, we conclude that
opposer has not established that its slogan NUMBER ONE IN
FLOORCARE has acquired distinctiveness as a trademark.
In view thereof, opposer’s claim of priority and
likelihood of confusion, under Section 2(d) of the
Trademark Act, must fail.
Deceptive and/or Misdescriptive
Opposer contends that applicant’s applied-for mark,
THE FIRST NAME IN FLOORCARE, “conjures up in the minds of
those seeing it the position of preeminence in the
floorcare industry[,] [b]ut, Royal does not enjoy that
position in any sense”; that applicant’s slogan “goes far
beyond puffery … [i]t goes to a proclamation of a specific
position in a specific industry”; that this claim is
inaccurate, but that prospective purchasers are likely to
believe it; and that “[c]onsumers generally tend to buy the
products of the foremost supplier in the industry.”
Applicant responds that opposer has not established
that opposer or anyone else is in the “number one position
in all areas in the floorcare industry” and, thus,
applicant’s mark is not misleading or deceptive. Applicant
Opposition No. 96,834
13
also contends that its mark “makes no representations about
its goods” and “it does not suggest that Royal is ‘first’
in any area.” Rather, applicant contends that “[t]he
portion of the mark THE FIRST NAME simply suggests consumer
familiarity with the Royal product line … [;] that there
has been and is a friendly and longstanding relationship
between Royal and the consuming public … [;] and that Royal
and a consumer are on equal footing and that Royal has
earned a measure of respect from consumers.”
To find that a mark is deceptively misdescriptive
within the meaning of Section 2(e)(1) of the Trademark Act,
the mark must misdescribe the goods in such a manner that
consumers would be likely to believe the misrepresentation.
In re Quady Winery, Inc., 221 USPQ 1213, 12 14 (TTAB 1984).
After carefully considering the record and the parties’
arguments, we find that opposer has not established that
THE FIRST NAME IN FLOORCARE either misdescribes or
misrepresents applicant’s electrical vacuum cleaners.
Rather, it appears to be a phrase that vaguely suggests, as
in advertising puffery, general familiarity or quality.
Opposer has failed to establish that “THE FIRST NAME” would
be perceived by consumers as having the same connotation as
“NUMBER ONE.” Applicant’s contentions that “THE FIRST
NAME” has connotations suggesting familiarity, as in being
Opposition No. 96,834
14
on a “first name” basis, are equally reasonable. Further,
even if “THE FIRST NAME” connotes a position of
preeminence, it is a general connotation of preeminence -
it is not clear that consumers would immediately understand
the category or categories to which the phrase would or
could pertain. Thus, we find that applicant’s mark is not
deceptively misdescriptive.
We also find that applicant’s mark is not deceptive.
The test for determining whether a mark is deceptive under
Section 2(a) is stated by the Court of Appeals for the
Federal Circuit in In re Budge Manufacturing Co., Inc., 857
F.2d 773, 8 USPQ2d 1259, 1260 (1988):
(1) Is the term misdescriptive of the character,
quality, function, composition or use of the
goods?
(2) If so, are prospective purchasers likely to
believe that the misdescription actually
describes the goods?
(3) If so, is the misdescription likely to
affect the decision to purchase?
See also, In re Woolrich Woolen Mills, Inc., 13 USPQ2d 1235
(TTAB 1989). Because, as discussed above in the context of
misdescriptiveness, applicant’s mark satisfies none of the
above tests, we conclude that applicant’s mark is not
deceptive. This case is analogous to the case of U.S. West
Inc. v. BellSouth Corp., 18 USPQ2d 1307, 1312 (TTAB 1990)
(THE REAL YELLOW PAGES for classified telephone directories
Opposition No. 96,834
15
held neither merely descriptive, deceptively misdescriptive
nor deceptive), wherein the Board stated “the phrase as a
whole appears to us to be a suggestive mark lacking in
specific meaning or definite informational quality.”
Decision: The opposition is dismissed.
R. F. Cissel
C. E. Walters
D. E. Bucher
Administrative Trademark Judges,
Trademark Trial and Appeal Board