Thomas Fugatev.Holley van Voast

Trademark Trial and Appeal Board

Oct 29, 2012

No. 91198267 (T.T.A.B. Oct. 29, 2012)

Mailed:
October 29, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Fugate

v.

van Voast
_____

Opposition No. 91198267
_____

Thomas J. Fugate (pro se).

Brad M. Behar of Brad M. Behar & Associates PLLC for Holley
van Voast.
______

Before Holtzman, Zervas and Mermelstein, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

On October 26, 2009, Holley van Voast (“applicant”)
filed an application (Serial No. 77857204) for registration
on the Principal Register for LENSJOCKEY (in standard
character form) for the following goods and services:
“Magazines featuring views on cultural events and
celebrities” in International Class 16; and

THIS OPINION IS
NOT A PRECEDENT
OF THE T.T.A.B.
Opposition No. 91198267
2
“Digital video, audio, and multimedia publishing
services; Multimedia entertainment services in the
nature of recording, production and post-
production services in the fields of music, video,
and films” in International Class 41.

The application claims first use and use in commerce for the
International Class 16 goods on May 14, 2009, and sets forth
a claim of a bona fide intention to use the mark in commerce
pursuant to Section 1(b) of the Trademark Act, 15 U.S.C.
§1051(b), for the International Class 41 services.
Opposer, Thomas J. Fugate, opposed registration of
applicant's mark, alleging, inter alia, that he used
LENSJOCKEY for “photography services, namely even
photography, sports photography and corporate events” at
least as early as January 18, 2004; that on January 1, 2009,
he extended his services and used the mark in connection
with various types of photography, and digital editing
including retouching, color correction, optimization and
collage; and that on May 5, 2009, he began offering web
hosting services1 under the mark LENSJOCKY. In addition to
alleging priority of use, opposer alleges that applicant’s
use of LENSJOCKEY is likely to cause confusion, mistake or
deception. See Section 2(d) of the Trademark Act of 1946,
15 U.S.C. § 1052(d). Further, at paragraph 17 of the

1 The only evidence in the record of a sale of web hosting
services is to a customer who also purchased various photography
services from opposer. See exhs. 66 and 67 to the deposition of
David Jacobson.

Opposition No. 91198267
3
complaint, opposer alleges, (i) “Applicant has used the term
LENSJOCKEY on numerous occasions to refer to a person, or
group of persons that are photographers or related to
photography, [and thus] Applicant’s alleged use of the mark
does not function as a mark”; and (ii) use of LENJOCKEY by
applicant “falsely suggests a connection with Opposer’s
business name and identity.”
Applicant has denied the salient allegations of the
notice of opposition.
The record consists of the pleadings; the file of the
involved application; the trial testimony, with exhibits, of
opposer's witness, Thomas Fugate (opposer himself), and two
of opposer’s customers, namely, Cary Nilsen and David
Jacobson; and, opposer’s two notices of reliance.
Opposer filed a brief. Applicant did not submit any
trial testimony or other evidence during his testimony
period and has not filed a brief.
Standing
“Any person who believes that he would be damaged by
the registration of a mark upon the principal register …
may, file an opposition … stating the grounds therefor.”
Section 13 of the Trademark Act of 1946, 15 U.S.C.
§ 1063(a). Thus, a party has standing to oppose in a Board
proceeding if it can demonstrate a real interest in the
proceeding. Lipton Indus., Inc. v. Ralston Purina Co., 670
Opposition No. 91198267
4
F.2d 1024, 213 USPQ 185 (CCPA 1982), citing Universal Oil
Prods. Co. v. Rexall Drug and Chem. Co., 463 F.2d 1122, 174
USPQ 458 (CCPA 1972).
Opposer introduced evidence that he uses “lensjockey”
at least in connection with photography services and digital
editing of photographs. He therefore has demonstrated a
real interest in opposing registration of LENSJOCKEY and has
established his standing.
Priority
In order to prove priority as to the asserted
LENSJOCKEY common law mark, opposer must establish use prior
to applicant’s filing date, i.e., October 26, 2009. In
addition, “[u]nder the rule of Otto Roth [& Co. v. Universal
Food 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 trade identity.’” Towers v. Advent Software
Inc., 913 F.2d 942, 16 USPQ2d 1039, 1041 (Fed. Cir. 1990).
Opposer raised the issue of the distinctiveness of
“lensjockey,” when it claimed that applicant’s mark does not
function as a mark because “Applicant has used the term
LENSJOCKEY on numerous occasions to refer to a person, or
Opposition No. 91198267
5
group of persons that are photographers or related to
photography.” Additionally, at p. 32 of his brief,
applicant argues that “[e]ven if the Applicant’s use of the
term LENSJOCKEY is adjudged to function as a mark, usage of
said mark lacks distinctiveness; it is unclear if
applicant’s use of the mark refers to photographers, groups
of people, a person, the Applicant, or possibly a product.”
If indeed “lensjockey” is a term for “photographer,”
pursuant to the requirements of Otto Roth, it was incumbent
on opposer to submit evidence of any distinctiveness of
“lensjockey” and that it functions as a mark for his own
asserted photography-related services.
We have examined the evidence in the record and do not
find any evidence that establishes the distinctiveness of
opposer’s alleged mark for his alleged services in the
notice of opposition. Further, opposer did not discuss the
issue of the distinctiveness of “lensjockey” for his
asserted services in his brief. Opposer therefore has not
established a critical element of his claim that opposer has
prior rights in LENSJOCKEY; and the opposition must fail on
the question of priority. We hence do not reach the issue
of likelihood of confusion.
False suggestion of a connection
Section 2(a) of the Trademark Act of 1946, 15 U.S.C.
§1052(a), provides, in relevant part, that “[n]o trademark
Opposition No. 91198267
6
by which the goods of the applicant may be distinguished
from the goods of others shall be refused registration on
the principal register on account of its nature unless it -
(a) consists of or comprises . . . matter which may . . .
falsely suggest a connection with persons living or dead.”
The Board applies the following four-part test to
determine whether a false suggestion of a connection has
been established:
1. The mark is the same as, or a close
approximation of, the name of or identity
previously used by another person;

2. The mark would be recognized as such because it
points uniquely and unmistakably to that person;

3. The person named by the mark is not connected
with the activities performed by the applicant
under the mark; and,

4. The prior user's name or identity is of
sufficient fame or reputation that a connection
with such person would be presumed when
applicant's mark is used on applicant's goods.

University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., Inc., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983),
aff'g 213 USPQ 594 (TTAB 1982). See also In re MC MC
S.r.l., 88 USPQ2d 1378 (TTAB 2008).
Because opposer has not established that LENSJOCKEY is
opposer’s previously used name or identity, that it points
uniquely to opposer (much of the evidence demonstrates that
applicant calls herself - and is referred to as –
“lensjockey”) and that it is of sufficient fame or
Opposition No. 91198267
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reputation that a connection with opposer would be presumed
by applicant’s use of LENSJOCKEY, opposer has not
established that applicant’s use of LENSJOCKEY falsely
suggests a connection with opposer.
Failure to function as a mark/Descriptiveness
a. Failure to function as a mark
The question of whether a designation functions as a
mark that identifies and distinguishes the recited services
is determined by examining the specimen(s) and any other
evidence in the record that shows how the designation is
used by the applicant. In re Morganroth, 208 USPQ 284 (TTAB
1980); In re Republic of Austria Spanische Reitschule, 197
USPQ 494 (TTAB 1977). It is the perception of the ordinary
customer that determines whether the asserted mark functions
as a service mark, not the applicant’s intent, hope, or
expectation that it do so. In re Standard Oil Co., 275 F.2d
945, 125 USPQ 227 (CCPA 1960). See, e.g., In re Volvo Cars
of North America Inc., 46 USPQ2d 1455 (TTAB 1998) (phrase
“DRIVE SAFELY” found an ordinary and commonly used safety
admonition which does not function as a mark for
automobiles); In re Manco, Inc., 24 USPQ2d 1938 (TTAB 1992)
(term “THINK GREEN” held an informational slogan for
environmental/ecological concerns which does not function as
a mark for mailing and shipping boxes and weatherstripping);
In re Remington Products Inc., 3 USPQ2d 1714 (TTAB 1987)
Opposition No. 91198267
8
(phrase “PROUDLY MADE IN USA” found an informational slogan
which does not function as a mark for electric shavers); In
re Brock Residence Inns, Inc., 222 USPQ 920 (TTAB 1984)
(slogan “FOR A DAY, A WEEK, A MONTH OR MORE” held so highly
descriptive and informational in nature that it would not be
perceived as an indicator of source for hotel services); and
In re Tilcon Warren, Inc., 221 USPQ 86 (TTAB 1984) (phrase
“WATCH THAT CHILD” is a familiar safety slogan which does
not function as a mark for crushed stone and concrete).
Applicant’s International Class 16 specimen of use is
depicted below:

LENSJOCKEY appears in large lettering, above the line “The
Magazine of Competitive Photography” and is clearly the name
of the publication and is used in the manner of a trademark.
Hence, if distinctive (inherently or through acquired
distinctiveness), it functions as a mark for the
Opposition No. 91198267
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International Class 16 goods. As for the International
Class 41 services, applicant claims an intent to use
LENSJOCKEY in connection with such services. A claim that
the designation at issue does not function as a trademark is
generally determined by examining how the mark is actually
used by the applicant. See TMEP § 1202 (8th ed. 2011).
Thus, this claim is not appropriate in this case, where
applicant has not yet used the term in connection with the
subject services. Opposer’s claim is hence dismissed in
connection with the goods and services in both International
Classes.
b. Mere descriptiveness
Because opposer claims at paragraph 17 of the complaint
that “Applicant has used the term LENSJOCKEY on numerous
occasions to refer to a person, or group of persons that are
photographers or related to photography,” and argues at
p. 32 of his brief that “usage of said mark lacks
distinctiveness; it is unclear if applicant’s use of the
mark refers to photographers, groups of people, a person,
the Applicant, or possibly a product,” we also construe the
claim as asserting mere descriptiveness under Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1).
A mark is merely descriptive if it immediately
describes the ingredients, qualities, or characteristics of
the goods or services or if it conveys information regarding
Opposition No. 91198267
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a function, purpose, or use of the goods or services. In re
Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA
1978). See also In re Nett Designs, 236 F.3d 1339, 57
USPQ2d 1564 (Fed. Cir. 2001). To be merely descriptive, a
term need only describe a single significant quality or
property of the goods or services. In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Also, “[t]he
perception of the relevant purchasing public sets the
standard for determining descriptiveness. Thus, a mark is
merely descriptive if the ultimate consumers immediately
associate it with a quality or characteristic of the product
or service. On the other hand, if a mark requires
imagination, thought, and perception to arrive at the
qualities or characteristics of the goods or services, then
the mark is suggestive.” In re MBNA America Bank N.A., 340
F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003) (citations
and internal quotation marks omitted).
Opposer introduced the following, authored by applicant
or quoting applicant, with his notice of reliance:
● www.flickr.com
“heavenly lensjockeys[.] The first lensjockeys I
met were at the racetracks of New York City.”

● www.lensjockeymagazine.com
“NYC LENSJOCKEYS INCLUDED IN SECOND ISSUE: BOB
GRUEN, JIM KIERNAN, LEANNE STAPLES …”; and “Jim
Kiernan – a classic NYC LENSJOCKEY and I mean the
lens ‘JOCKEY.’”

Opposition No. 91198267
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● www.lensjockey.blogspot.com
“He’s competitive, fast, he reminds me of the
actual NYC jockeys I shot portraits of for 7
years. He talks like a jockey, he shoots like a
jockey – position! He moves like a jockey. He is
the most jockeylike of any lensjockeys I have seen
yet. … Other lensjockeys included in Issue 2 of
LENSJOCKEY are: Leanne Staples ….”

● www.lensjockey.blogspot.com
“FROM JOCKEYS TO LENSJOCKEYS” by Holly Van Voast
“I really went from jockeys to lensjockeys –
really.”

● www.flickr.com
LENSJOCKEYS “photographers who rock my world if no
one shoots the photographers, how will people know
about THEM? They are irreplaceable part of their
scenes, they just ARE. And they should be seen
more and get more attention because not everyone
who picks up a camera is a lensjockey. I know
what jockeys are, and I know what lensjockeys
are.”

The record also contains the following evidence
introduced by the examining attorney:
● www.wearephotographers.com
“Some lens-jockeys obsess over the search for a
single all-in-one-super-zoom lens. But is that
the nirvana of lens buying?”

● www.zoominfo.com
“The gaggle of lens jockeys has descended upon the
city for the 48th annual University Photographer’s
Association of the America[n] Technical Symposium
….”

● http://blog.megapixel.net/blog
“Camera makers weren’t the only ones introducing
new products for lens jockeys this week.”

The following Google search engine results:
Opposition No. 91198267
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While “[s]earch engine results which provide little
context to discern how a term is actually used on the
webpage that can be accessed through the search result link
may be insufficient to determine the nature of the use of a
term or the relevance of the search results to registration
considerations,” In re Bayer Aktiengesellschaft, 488 F.3d
960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007), several of the
above-depicted search results offer sufficient information
for us to conclude that the term is used to refer to a
photographer. Thus, the above evidence establishes that
applicant herself and others refer to photographers as
“lensjockeys.”
Because photography is the subject of applicant’s
International Class 16 goods (the magazine states
“LENSJOCKEY The Magazine of Competitive Photography),”
LENSJOCKEY merely informs the customer that the magazine
features the photographers whose photographs appear in the
magazine. As for the International Class 41 services,
LENSJOCKEY merely informs the customer that the publishing
and entertainment services are rendered by photographers.
As such, the proposed mark is merely descriptive of a
feature of the goods and the services.
We note that the record also includes the following
passages, also authored by applicant, which do not use
“lensjockey” descriptively:
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● www.lensjockey.blogspot.com
under the heading “Lensjockey Magazine, the blog”
stating “I’m lensjockey, I’m a photographer/
journalist.”

● www.3rdwardopencall.com
under the heading “Holly Van Voast” stating “Edgar
Prado - world renowned jockey, and inspiration for
my title as LENSJOCKEY – the name under which I
promote my current photography.”

● www.flickr.com
“the reason I call myself the lensjockey is
because that’s what I think of photography, and
especially the way I looked at shooting jockeys
themselves the way I did it. I feel like I’m
riding a lens – like I have to feel a picture out
of a situation just like a jockey on a horse.
It’s all about zooming.”2

We find this evidence unpersuasive of a different
result. A determination of descriptiveness depends on the
perception of the mark as used in connection with the
identified services, and must be considered from the
perspective of the relevant consumers of the identified
services. Here, the evidence is sufficient to establish
that the mark would be perceived as descriptive by
applicant’s customers. A relatively small number of uses of
the term LENSJOCKEY in the manner of a trademark is not
sufficient to overcome opposer’s evidence of the general
perception of the term.
DECISION: The opposition is dismissed with respect to
opposer’s claims of priority, likelihood of confusion, false

2 There is also a “testimonial” on this webpage, stating
“lensjockey is without a doubt one of my favorite people on
flickr. Her warmth & wit, her creativity ….”
Opposition No. 91198267
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association and failure to function as a mark. The
opposition is affirmed as to opposer’s claim of mere
descriptiveness and registration is refused with regard to
both the International Class 16 goods and the International
Class 41 services.