Wenger S.A.

Trademark Trial and Appeal BoardAug 27, 2010

No. 78544020 (T.T.A.B. Aug. 27, 2010)

Mailed: August 27, 2010 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Wenger S.A. ________ Serial No. 78544020 _______ David I. Greenbaum of Edwards Angell Palmer & Dodge LLP for Wenger S.A. Laura Gorman Kovalsky, Trademark Examining Attorney, Law Office 110 (Chris A. F. Pedersen, Managing Attorney). _______ Before Quinn, Wellington and Ritchie, Administrative Trademark Judges. Opinion by Wellington, Administrative Trademark Judge: Wenger S.A. (“applicant”), a Swiss Corporation, has filed an application to register the mark WENGER SWISS MILITARY in standard characters for “watches of Swiss origin” in International Class 14.1 Registration has been refused pursuant to Section 6(a) of the Trademark Act, 15 U.S.C. § 1056(a), based on applicant’s failure to comply with the requirement to 1 Application Serial No. 78544020 was filed on January 7, 2005, and is based on an allegation of first use anywhere and in commerce on April 30, 2004, under Trademark Act Section 1(a), 15 U.S.C. §1051(a). THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 78544020 2 disclaim the wording SWISS MILITARY on the ground that it is merely descriptive of applicant’s goods within the meaning of Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1). The prosecution of the application has involved numerous Office Actions with responses from applicant and involving other statutory refusals and requirements. We do not attempt to synopsize this correspondence or events, but note that this proceeding has been boiled down to the disclaimer requirement issue identified above. After this requirement was made “final,” applicant appealed and filed a request for reconsideration. On November 12, 2009, the examining attorney ultimately denied the request for reconsideration and maintained the refusal to registration based on the disclaimer requirement. The appeal was subsequently resumed and has been fully briefed.2 We affirm the refusal of registration in the absence of a disclaimer. As a preliminary matter, we note that applicant argues for the first time in its appeal brief (filed on January 11, 2010) that, “as an alternative to inherent 2 Because of the nature of prosecution of the application, including the application file twice being remanded to the examining attorney at her request, applicant has filed an original appeal brief and two “supplemental” briefs, as well as a reply brief. We have considered all of the arguments made in these briefs to the extent they are relevant to the disclaimer requirement. Serial No. 78544020 3 distinctiveness, WENGER SWISS MILITARY has acquired distinctiveness” under Section 2(f) based on “at least five years of substantially exclusive and continuous use” of the mark on watches. Brief, p. 8. The examining attorney has objected to applicant’s alternative claim of acquired distinctiveness as untimely, and further points out that applicant’s claim of years of substantial and exclusive use is not supported by an affidavit or signed declaration. Applicant does not address the examining attorney’s objections to the alternative acquired distinctiveness claim in its reply brief. Because applicant did not timely assert the acquired distinctiveness claim, and it has not formally sought to amend its application to seek registration under Section 2(f), we decline to treat this as a request to remand to the examining attorney for consideration thereof. We further note that the examining attorney is correct that applicant’s acquired distinctiveness statement is not sufficiently supported by any evidence, let alone an affidavit or formal declaration attesting to the years of substantial and exclusive use of its mark. Accordingly, we do not give further consideration to applicant’s alternative acquired distinctiveness claim. Serial No. 78544020 4 An examining attorney may require an applicant to disclaim an unregistrable component of a mark otherwise registrable. Trademark Act Section 6(a). Merely descriptive terms are unregistrable, under Trademark Act Section 2(e)(1) and, therefore, are subject to disclaimer if the mark is otherwise registrable. Failure to comply with a disclaimer requirement is grounds for refusal of registration. See In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Richardson Ink Co., 511 F.2d 559, 185 USPQ 46 (CCPA 1975); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977); and In re Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB 1968). A term is deemed to be merely descriptive of goods or services, within the meaning of Section 2(e)(1), if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services. See, e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978). A term need not immediately convey an idea of each and every specific feature of the applicant’s goods or services in order to be considered merely descriptive; it is enough that the term describes one significant attribute, function Serial No. 78544020 5 or property of the goods or services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). Whether a term is merely descriptive is determined not in the abstract, but in relation to the goods or services for which registration is sought, the context in which it is being used on or in connection with those goods or services, and the possible significance that the term would have to the average purchaser of the goods or services because of the manner of its use. That a term may have other meanings in different contexts is not controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Finally, “[a] mark can be descriptive if it describes the intended users of the goods or services.” In re Planalytics, Inc., 70 USPQ2d 1453, 1454 (TTAB 2004). The examining attorney argues that the word SWISS merely describes the geographic origin and quality of the watches and that the term MILITARY merely describes a style of watches. The two terms together, she contends, do not form a unique commercial impression when used in connection with the identified goods. In support, she references a dictionary definition for the word SWISS as “of or relating Serial No. 78544020 6 to Switzerland or its people or culture.”3 She also points to various third-party websites that reference the “Swiss watch industry” and indicate that “Swiss watches” are well- known or perceived as being of high quality. As to the term “military” being descriptive of watches, she points to several websites where the term “military watches” may infer certain features of a watch. For example4: ...timepieces featuring radioluminescent emission are mostly designed for very specific uses: military watches, professional divers watches, etc... [from “Federation of Swiss Watch Industry” website]; Military Field Watch. Features: Metal Body, Nylon Slide-thru band, Sweep Second Hand, Water Resistant Quartz, Battery, Standard Luminous Dial Anti-Magnetic Shock Proof Quartz movements, Standard 12 hour and 24 hour military time marked dial. NEW. Available in Black or Olive Drab. [from the IMS-Plus website, under “Military Watches and Watchbands” category]. The examining attorney argues that it is also entirely permissible to analyze the terms SWISS and MILITARY separately in determining whether they are descriptive in connection with watches. She concludes that neither term is “lost in the mark as a whole because both words are so highly descriptive, if not generic, for ‘watches of Swiss origin,’ and the competitive need for use thereof is so 3 Taken from The American Heritage Dictionary of English Language, Houghton-Mifflin Co. (3rd ed. 1992); attached to August 10, 2005 Office Action. 4 Website printouts attached to March 7, 2006 Office Action. Serial No. 78544020 7 great when used in relation to watches as to necessitate a disclaimer of these terms.” Brief, (unnumbered) p. 9. Applicant, on the other hand, argues that SWISS MILITARY is a “phrase” that “creates a new, unique commercial impression, suggesting the precision of Swiss engineering in the context of watches, along with the general ruggedness and accuracy of goods made for use in military contexts.” Reply Brief, p. 9. Applicant cites to the Second Circuit’s decision in Forschner Group Inc. v. Arrow Trading Co., Inc., 30 F.3d 348 (2nd Cir. 1994) that involved the term SWISS ARMY for pocket knives and argues said decision “should be accepted as evidence of the common perception of the term SWISS.” Brief, p. 10. Specifically, applicant contends, “[i]f SWISS is not considered geographically descriptive for pocket knives, it should not be considered geographically descriptive for watches.” Id. Based on the evidence of record and the arguments presented, we find that the examining attorney has made a prima facie case that the wording SWISS MILITARY is descriptive in connection with watches of Swiss origin. Putting aside the fact that the identification of goods uses the term “Swiss” descriptively, the dictionary definition of “Swiss” in addition to the website evidence Serial No. 78544020 8 showing that certain watches are referred to as “Swiss watches” to designate watches from Switzerland clearly demonstrate that the term SWISS is descriptive of watches of Swiss origin. The record further demonstrates that MILITARY is a term used in connection with watches to describe a motif, style or features that the watches may have. Each term is descriptive and when combined these elements do not lose their descriptive significance. As to applicant’s argument that the combination is “unique”, it is well established that merely because an applicant is the first to use a descriptive term or phrase does not make it non-descriptive. In re National Shooting Sports Foundation, Inc., 219 USPQ 1018 (TTAB 1983). We find that the combination of the terms does not present a incongruous phrase nor does it create a commercial impression whereby the descriptive nature of these terms is eliminated. That is, the record does not show that SWISS MILITARY has any meaning other than being descriptive of watches of Swiss origin; taken together, the terms do not create the type of double entendre that removes the phrase from being merely descriptive. See, e.g., In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (SUGAR & SPICE held not merely descriptive as applied to bakery products where one meaning evokes a nursery rhyme). As to Serial No. 78544020 9 applicant’s reliance on the Forscher Group decision, the Second Circuit was clearly presented with a different record involving a different term (SWISS ARMY) in connection with different goods (pocket knives). The decision has little, if any, persuasive value with regard to the descriptive nature of the terms SWISS and MILITARY in connection with watches of Swiss origin. Applicant correctly states that we must resolve doubt in favor of applicant;5 however, we have no such doubt in this case that the terms SWISS MILITARY, separately and taken together, are descriptive of the goods identified in the application. In view of the above, we find that the disclaimer requirement is appropriate. Decision: The refusal to register based on the requirement to disclaim the wording SWISS MILITARY is affirmed. However, if applicant submits the required disclaimer to the Board within thirty days, this decision will be set aside as to the affirmance of the disclaimer requirement.6 See Trademark Rule 2.142(g), 37 C.F.R. § 2.142. 5 Normally, such deference is given in cases involving refusals under Section 2(e)(1) and not necessarily disclaimers of terms that are merely descriptive. 6 The standardized printing format for the required disclaimer text is as follows: “No exclusive right to use SWISS MILITARY is Serial No. 78544020 10 claimed apart from the mark as shown.” TMEP 1213.08(a) (5th ed. 2007).