Dorel Juvenile Group, Inc.

Trademark Trial and Appeal Board

Aug 17, 2004

No. 76237565 (T.T.A.B. Aug. 17, 2004)

Mailing:
August 17, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Dorel Juvenile Group, Inc.1
________
Serial No. 76237565
_______
Julia Spoor-Gard, Amanda Pecchioni Thompson, and Erin Roth
Bohannon of Barnes & Thornburg for Dorel Juvenile Group,
Inc.
Julie A. Watson, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).
_______
Before Simms, Bottorff and Rogers,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
In April 2001, Safety 1st, Inc. applied to register
the following as a mark for goods ultimately identified as
"plastic novelty signs."
1 Documents recorded in the USPTO Assignment Branch indicate that
Safety 1st, Inc. has merged into Dorel Juvenile Group, Inc.
This Opinion is Not
Citable as Precedent
of the TTAB
Ser No. 76237565
2
The application, filed April 9, 2001, recites that the
proposed mark was first used and was first used in commerce
as of September 10, 1984. As filed, the application did
not include a statement describing the mark or explaining
the significance of the stippling in the mark, and did not
state how the mark is used.
As a specimen showing use of the mark, applicant
submitted one of its signs. It is yellow and it looks
precisely the same as the drawing of the mark reproduced
herein, except that the actual sign includes a suction cup
centered in the top corner (for affixing the sign to car
windows, according to the package instructions), displays a
slogan in much smaller letters below the word BOARD!
("Safety 1st® puts Children 1st"), and bears an even smaller
copyright notice on the right side of the bottom corner ("©
1998 Safety 1st").
The sign is encased in clear plastic and attached to a
card suitable for hanging on a display rack. The card
includes a photo of the rear window of a car sporting one
of the signs. At the top of the card is the designation
"Safety 1st," and just below this is the legend "Baby on
Board Sign," and then, in smaller lettering, the phrase
"Reminds others to drive safely." Consumers might view
"Baby on Board Sign Reminds others to drive safely" as one
Ser No. 76237565
3
phrase or, because the phrase "Baby on Board Sign" is in
larger letters and underscored by a line, may view that as
separate from "Reminds others to drive safely."
In her first office action, the examining attorney
refused registration on the ground that the design proposed
for registration is incapable of functioning as a mark and
"is nothing more than informational matter." This refusal
was stated to be based on Sections 1, 2 and 45 of the
Trademark Act, 15 U.S.C. §§ 1051, 1052 and 1127. The
examining attorney also required applicant to submit a
color lining statement and a proper specimen showing use of
the proposed mark, as illustrated by the specimens.
Specifically, the examining attorney noted that the
specimen included the "Safety 1st® puts Children 1st" slogan
under the word BOARD!, while the drawing of the mark did
not. In essence, the examining attorney required applicant
to submit a substitute specimen showing the BABY ON BOARD!
design without the noted slogan.
By its response to the first office action, applicant
amended the application to include a statement that the
drawing of the mark is lined for the color yellow and to
seek registration under Section 2(f), 15 U.S.C. § 1052(f).
The latter amendment was based on a declaration from
applicant's general manager, who asserts that the mark has
Ser No. 76237565
4
been in continuous and substantially exclusive use for, at
the time of the declaration, 18 years, that millions of its
signs have been sold in, and continue to be sold in, all 50
states and "many international markets," and that articles
about the sign and its popularity have appeared in numerous
publications.2
The examining attorney maintained the refusal, arguing
that the proposed mark is not registrable on the Principal
Register, even under Section 2(f), and is not registrable
on the Supplemental Register. She also maintained the
requirement for a new specimen. When the substantive
refusal and the requirement for a new specimen eventually
were made final, applicant appealed. Applicant and the
examining attorney filed briefs, but applicant did not
request an oral hearing.
The examining attorney, in her brief, has withdrawn
the requirement that applicant submit a new specimen.
Thus, the only issue before us is the question whether the
matter presented for registration functions as a mark.3
2 The declaration lists seven publications that purportedly
contained articles about applicant's sign, and the declaration
states that copies are enclosed, but copies of the articles were
not submitted.
3 It appears the examining attorney's concern with the specimen
was actually a concern with the drawing, i.e., concern that the
drawing represented a mutilation of the mark as used because it
did not show significant matter present on applicant's actual
Ser No. 76237565
5
The record includes, apart from the application,
drawing and specimen: the declaration of applicant's
general manager; reprints of web pages from applicant's web
site; reprints of certain other web sites alleged by
applicant to establish recognition of its design as a mark;
reprints of information retrieved from USPTO records
regarding the registration of marks including the term ON
BOARD and, in particular, two registrations for BABY ON
BOARD4; web pages from www.cafeshops.com, featuring
maternity clothes and a wide variety of collateral products
bearing a BABY ON BOARD design identical to applicant's,
but without an exclamation point5, such pages being alleged
by applicant to be "an example of how BABY ON BOARD is used
as a trademark" and to show "that the public recognizes the
novelty sign. The examining attorney apparently was not
concerned that the composite phrase and design is not actually
used on the packaging for the product and "appears" only as the
product itself. Of course, when an applicant seeks registration
of its product's design, there need not be use on a hang tag,
display card or the like, for the product itself is also the
mark.
4 Registration no. 2007828 is for BABY-ON-BOARD in typed form and
covers certain prenatal health care coordination services;
Registration no. 1440672 is for BABY ON BOARD [no hyphens], also
in typed form, for "maternity clothing, namely shirts, tops, and
swimsuits." Applicant owns neither; and they are owned by
different entities.
5 These pages feature products of an entity designated as
www.Materni-Tee.com, and show a "TM" designation not on the
designs that are on the products, but on the web pages adjacent
to the listings of the various BABY ON BOARD products.
Ser No. 76237565
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trademark significance of BABY ON BOARD" (March 31, 2003
response to second office action, p. 9).
There is only one procedural issue relative to the
record to resolve. Applicant first referenced certain
third-party registrations in its brief. These
registrations are for slogans applicant says "suggest a
cautionary course of action" but which applicant says are
suggestive and stand as evidence that applicant's mark,
too, should be registered. These registrations, being
referenced by list alone, have not been properly made of
record. Moreover, all evidence to be considered in an ex
parte appeal must be made of record prior to the appeal.
See Trademark Rule 2.142(d), 37 C.F.R. 2.142(d).
Accordingly, the examining attorney's objection to
consideration of these registrations is entirely proper and
we have not considered them.
The Court of Customs and Patent Appeals, a predecessor
to our primary reviewing court, the Court of Appeals for
the Federal Circuit, long ago stated, "The Trademark Act is
not an act to register mere words, but rather to register
trademarks. Before there can be registration, there must
be a trademark, and unless words have been so used they
cannot qualify." In re Bose Corp., 546 F.2d 893, 192 USPQ
213, 215 (CCPA 1976), citing In re Standard Oil Co., 275
Ser No. 76237565
7
F.2d 945, 125 USPQ 227 (CCPA 1960). Following this
precept, the Board has affirmed refusals to register
slogans and composite word and design marks that convey
information but which do not function as marks. See, e.g.,
In re Volvo Cars of North America Inc., 46 USPQ2d 1455,
1459-60 (TTAB 1998)(Refusal to register DRIVE SAFELY
affirmed because phrase would not be regarded as indicator
of source but as a familiar safety admonition); and In re
Manco Inc., 24 USPQ2d 1938, 1941-42 (TTAB 1992)(Refusals to
register THINK GREEN and composite THINK GREEN and design
affirmed because, rather than be regarded as indicators of
source, they would be regarded as "slogan of environmental
awareness and/or ecological consciousness").
In the case at hand, the examining attorney has
chiefly analogized applicant's design to the DRIVE SAFELY
phrase in Volvo and to the WATCH THAT CHILD phrase refused
registration in In re Tilcon Warren, Inc., 221 USPQ 86
(TTAB 1984). In the final refusal of registration, she
states: "[T]he proposed mark is merely informational in
nature. When displayed in a car it reminds other[s] to
drive safely," and "merely conveys the message of a
familiar safety slogan to which consumers would give its
ordinary meaning – that it is a slogan uniquely suitable to
be displayed on vehicles carrying babies or young
Ser No. 76237565
8
children." The examining attorney also contends that the
yellow color of applicant's design is commonplace for signs
intended to frame alerts or warnings, and the diamond shape
is a common, non-distinctive shape.
Finally, as in the case of In re Wakefern Food Corp.,
222 USPQ 76 (TTAB 1984), wherein the Board affirmed a
refusal to register the phrase WHY PAY MORE for supermarket
services, noting, inter alia, that the "familiar phrase"
would be perceived as suggesting only that the applicant
offered lower prices in its stores, while its SHOP RITE
sign would be seen as the indicator of origin, in this case
the examining attorney asserts that the phrase "Safety 1st®
puts Children 1st," which appears on the instant applicant's
sign just below the phrase BABY ON BOARD!, is the matter
that would be perceived as the indicator of origin.
Applicant has advanced numerous arguments against the
refusal of registration, which we consider in turn.6
First, applicant argues that the examining attorney
has not borne the burden of proof the USPTO must bear in
refusing registration. Specifically, applicant asserts
6 Applicant has advanced many of the same arguments in its
responses to office actions and in its briefs, though not always
in the same way or the same order. Our discussion of applicant's
arguments is an attempt to summarize them as best we can, but we
do not make any presumptions about which are most important to
applicant and the order of presentation should not be deemed to
suggest anything about the relative merits of the arguments.
Ser No. 76237565
9
that the only items relied on by the examining attorney are
applicant's specimens and reprints from applicant's
website. No particular quantity of evidence, however, is
necessary for the examining attorney to carry her burden of
proof. To the extent that applicant is arguing that the
examining attorney has not put in evidence to establish
that BABY ON BOARD! is a commonplace phrase or safety
admonition, we agree that the record does not support such
a conclusion. This does not, however, establish that
applicant's sign, sans the "Safety 1st® puts Children 1st"
slogan, would be viewed as anything more than
informational. In other words, it is not a linchpin for
the refusal that the examining attorney establish that BABY
ON BOARD! is a commonplace or familiar phrase.
Second, applicant argues that the phrase BABY ON
BOARD! is suggestive not descriptive and doesn't impart any
information about the sign's function, purpose or features.
This is not, however, a case like Wakefern, wherein there
were two refusals, first that WHY PAY MORE failed to
function as a mark and, second, that it was descriptive.
In this case, the examining attorney did not issue a
descriptiveness refusal. Moreover, as we know from
Wakefern, a phrase may be found suggestive, rather than
descriptive, and still not be used in a manner where it
Ser No. 76237565
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would be perceived as a mark. Finally, this application
does not present only a slogan or phrase for registration.
Rather, it seeks to register the major elements (diamond
shape, yellow color, and most visually prominent words) of
applicant's actual sign, so our focus is not on the phrase
alone.7 In short, the argument that the phrase is
suggestive is inapposite to the question at hand.
Third, applicant argues that the examining attorney is
incorrect in asserting that applicant's signs inform those
who see the signs to drive safely. In this, we agree with
applicant, notwithstanding that applicant's specimen
contains the statement "Baby On Board Sign Reminds others
to drive safely." In terms of the information that the
proposed mark imparts, it is not the exhortation to "Drive
Safely" but that the vehicle bearing the sign contains a
baby or young child, presumably in a seat other than that
behind the wheel. That the examining attorney has
misstated the nature of the information the proposed mark
imparts does not undermine the refusal.
Fourth, applicant contends that a proposed mark need
not identify the name of the source of a product, i.e., it
7 As the proposed mark aptly depicts the major elements of
applicant's plastic novelty sign, it certainly does immediately
inform prospective purchasers of the shape, color and most
visually prominent message on the sign.
Ser No. 76237565
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need not be a trade name or house mark or identifier of a
particular source but, rather, it is sufficient
qualification for registration of a slogan or phrase if it
identifies a single, even if anonymous source. We do not
disagree with the statement as a proposition of law, but it
begs the question at hand, i.e., whether applicant's
proposed mark would be perceived as an indicator of source
or merely informational insofar as it consists merely of a
representation of applicant's actual sign.
Fifth, applicant contends that there is no need for
its competitors to utilize the proposed mark, and that the
examining attorney has not proffered any evidence of such
need. While such need might provide additional support for
a refusal under Sections 1, 2 and 45, see Volvo, supra, its
absence from this case does not establish that the proposed
mark is not merely informational and, instead, is source
indicating.
Sixth, applicant argues that others actually do use
the proposed mark as a mark, and that the office has even
registered the phrase in its proposed mark. That others
may use the proposed mark, per se,8 and claim it is a
trademark by utilizing a "TM" designation, does not
8 This argument relates to the use of a design virtually
identical to applicant's by www.Materni-Tee.com.
Ser No. 76237565
12
establish that it is in fact a trademark as so used.
Moreover, even presuming that it is a trademark when used
on maternity clothes and collateral items, this does not
establish that the design serves as a mark when used as the
design of a novelty sign.9 As for the registrations, it is,
of course, well settled that each case is taken on its own
merits. See In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564 (Fed. Cir. 2001). Moreover, the two
registrations are for the phrase alone, not the design of a
sign, and are for different types of goods or services.
The seventh argument we consider may or not have been
intended by applicant for us to consider on appeal. That
relates to whether its proposed mark has acquired
distinctiveness under Section 2(f). In response to the
initial office action, applicant amended the application to
seek registration under Section 2(f). The amendment was
not made conditionally or to stake out an alternative
position. The examining attorney responded by stating that
she did not need to consider the Section 2(f) evidence,
because it could not overcome a refusal under Sections 1, 2
and 45. In a subsequent response, applicant appeared to
9 We note again that applicant's specimen does not show use of
the proposed mark as a logo on packaging or a hang tag or the
like, but only "appears" as the product itself.
Ser No. 76237565
13
assert that it should be able to argue acquired
distinctiveness in the alternative and that even if the
phrase BABY ON BOARD! were found merely informational, it
should be able to register the composite mark with a claim
of acquired distinctiveness, in part, as to its design
elements. This argument is a non sequitur, as it does not
follow that a claim of acquired distinctiveness as to a
design element would overcome a finding that words were
merely informational. Finally, applicant did not argue the
sufficiency of its evidence of acquired distinctiveness in
its brief.
In Wakefern, the Board suggested that Section 2(f)
evidence might indeed be irrelevant when the refusal is
that a proposed mark would not be perceived as a mark. See
Wakefern, 222 USPQ at 79. Subsequent to Wakefern, however,
the Federal Circuit ruled, in In re Owens-Corning Fiberglas
Corporation, 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985),
that the applicant therein could rely on a claim of
acquired distinctiveness to overcome a refusal that the
color pink applied to the surface of insulation did not
function as a mark. Later, in Volvo, see 46 USPQ2d at
1461, the Board clearly contemplated the question whether
there was direct evidence of public recognition that DRIVE
SAFELY pointed to one source. See also in In re Remington
Ser No. 76237565
14
Products Inc., 3 USPQ2d 1714, 1715 (TTAB 1987).
Accordingly, and notwithstanding our uncertainty as to what
applicant's precise position is, we have considered whether
the record shows a secondary meaning in applicant's
proposed mark.
The only evidence we have is the brief declaration of
applicant's general manager and certain web pages. The
declaration attests to sales of millions of signs, but is
vague and general. It was not accompanied by any copies of
the articles that purportedly recognize applicant as the
source of its sign. The declaration claims continuous and
substantially exclusive use of the design, but the
CafePress.com web page featuring the Materni-Tee.com
products shows stickers with the virtually identical design
as applicant's proposed mark (without the exclamation
point).10 Thus, applicant has actually provided evidence
that it is not the only producer of stickers or signs
bearing its design, both of which could be used on
vehicles.
In addition, two of the web sites for which applicant
has put in reprints actually call into question the extent
10 This vendor also markets a bumper sticker and a license plate
holder that do not have the precise mark proposed for
registration by applicant but do bear the phrase BABY ON BOARD.
Ser No. 76237565
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of applicant's current sales. The www.badfads.com web site
states that by 1990, few drivers believed that anyone
heeded the BABY ON BOARD message and abandoned use of the
signs. The www.awesome80s.com web site states that while
applicant sold millions of signs in 1986 their use was
passé by 1987 or '88.
Applicant places great reliance on a web site entitled
"What You Need to Know About Inventors" which includes a
reprint of information about applicant's involved
application and states that applicant "trademarked the
'Baby on Board' logo and words in 1984." The page provides
no basis for this statement, however, and we can hardly be
persuaded by a third party's claim regarding what applicant
may or may not have "trademarked" in 1984, when applicant
itself has not claimed to have done so.11 Finally, there is
a "Yahoo! Shopping" web page that offers applicant's signs
for sale. This states that some shoppers may remember the
signs from the late 1980s and early 1990s, which suggests
that sales were not robust in the intervening years, and
does not, in any event, establish that shoppers actually do
11 The web page may very well have focused on applicant's claim of
first use in 1984 as the basis for its conclusion that applicant
"trademarked" the phrase and logo in 1984. In any event, even if
the web page were probative evidence, which it is not, that
applicant "trademarked" the involved logo in 1984, that would not
establish that there was any public recognition of the logo.
Ser No. 76237565
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remember the signs or that they associated the signs during
their heyday with any particular source.
Applicant's evidence of acquired distinctiveness is
patently insufficient. Even if we were to accept as
unchallenged applicant's contention that it has sold
millions of signs in all 50 states, mere sales volume alone
does not establish recognition of a mark and may be readily
attributable to desire of purchasers to acquire the product
itself. See, e.g., Remington, 3 USPQ2d at 1715 ("While
applicant may have had substantial sales and advertising of
its product, that does not prove recognition by the public
of the subject slogan as a trademark.").
The eighth and final argument we can discern in
applicant's responses to office actions and in its briefs
is that it is entitled to the "benefit of the doubt" and
its mark should be published for opposition. We do not,
however, have any doubt to resolve in this case.
Applicant's proposed mark is nothing more than a
representation of its actual sign, without the references
to applicant in the "Safety 1st® puts Children 1st" slogan
and its copyright notice, and prospective purchasers would
not view this as a trademark but would view it as a
representation of the sign itself.
Ser No. 76237565
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Decision: The refusal of registration under Sections
1, 2 and 45 on the ground that the proposed mark is merely
informational and would not be perceived as an indicator of
source is affirmed.