Dyna-motors, Inc.

Trademark Trial and Appeal Board

Dec 23, 2003

No. 75260248 (T.T.A.B. Dec. 23, 2003)

Mailed: December 23, 2003
Paper No. 33
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Dynamotors, Inc.
________
Serial No. 75260248
_______
Robert V. Vickers of Fay, Sharpe, Fagan, Minnich & McKee
for Dynamotors, Inc.
Catherine Pace Cain, Trademark Examining Attorney, Law
Office 113 (Odette Bonnet, Managing Attorney).
_______
Before Simms, Cissel and Chapman, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
On March 19, 1997, Dynamotors, Inc. (an Ohio
corporation) filed an application to register the mark
DYNAMOTORS on the Principal Register for “electric motors
for machines and electric controls therefor, sold as a
unit” in International Class 7. The application was based
on applicant’s assertion of a bona fide intention to use
the mark in commerce in connection with the identified
goods. The Examining Attorney approved the application for
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75260248
2
publication in the Official Gazette, and the mark was
published for opposition on January 13, 1998. A Notice of
Allowance was issued for this application on April 7, 1998.
Following several requests to extend applicant’s time to
submit a Statement of Use (all of which were approved by
the USPTO), applicant filed its Statement of Use on April
4, 2001, asserting a date of first use and first use in
commerce of March 28, 2001.
The Examining Attorney finally refused registration on
the grounds that applicant’s mark, DYNAMOTORS, is (i)
deceptive in relation to applicant’s goods under Section
2(a) of the Trademark Act, 15 U.S.C. §1052(a); (ii)
deceptively misdescriptive of applicant’s goods under
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1); and (iii) generic for applicant’s goods under
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1).
Applicant appealed to the Board, and both applicant
and the Examining Attorney have filed briefs. Applicant
did not request an oral hearing.
In her brief on appeal (p. 3), the Examining Attorney
withdrew the refusal to register the mark as generic for
the identified goods. Thus, the only two issues before the
Board are whether the mark is deceptive under Section 2(a)
Ser. No. 75260248
3
and/or whether the mark is deceptively misdescriptive under
Section 2(e)(1).
The Examining Attorney contends that “dynamotor” is
the generic name for a device that consists of both a motor
and a generator. The Examining Attorney submitted
dictionary definitions of the term “dynamotor,” such as the
following:
A (usually small) self-contained motor-
generator. The motor and generator
portions are enclosed in a common
housing, giving the machine the
appearance of a simple motor. The
Illustrated Dictionary of Electronics
(Seventh Edition 1997);
A rotating device for changing a dc
voltage to another value. It is a
combination electric motor and dc
generator … . Modern Dictionary of
Electronics (1999); and
A motor generator combining the
electric motor and generator. Merriam-
Webster Dictionary (Unabridged On
line).
In addition, we take judicial notice of the following
definition of “dynamotor” from another standard English
dictionary, Webster’s Third New International Dictionary
(1993):
A motor generator combining the motor
and generator in a single machine with
one field magnet and two armatures or
with one armature and two windings one
of which receives current as a motor
Ser. No. 75260248
4
and the other of which generates
current as a dynamo.
The Examining Attorney then contends that the proposed
mark misdescribes applicant’s goods because they are not
dynamotors, i.e., applicant’s goods do not include a
generator; and that consumers are likely to believe the
misdescription because a dynamotor “has the appearance of a
simple motor” (brief, p. 5). Further, the Examining
Attorney argues that because the additional generator
function of a dynamotor is a desirable feature and an
essential element of that product, it would materially
affect the decision to purchase applicant’s product by
believing that it is a motor-generator when it is only a
motor, thereby making term deceptive in relation to
applicant’s identified goods.
In further support of the refusals, the Examining
Attorney made of record (i) copies of numerous excerpted
stories retrieved from the Nexis database, and (ii) third-
party registrations, all to establish that the term
“dynamotor” is currently used to identify a particular
device, specifically, a small, self-contained motor-
generator.
Examples of the third-party registrations submitted by
the Examining Attorney (all based on use, all still valid
Ser. No. 75260248
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and subsisting registrations when submitted by the
Examining Attorney, and all containing the term
“dynamotors” within the identifications of goods) include
Registration No. 411,610, issued January 23, 1945 to
Pioneer Gen-E-Motor Corporation; Registration No. 947,517,
issued November 21, 1972 to Bendix Corporation;
Registration No. 668,938, issued October 28, 1958 to
Wincharger Corporation; Registration No. 612,989, issued
September 27, 1955 to Motorola, Inc.; Registration No.
554,290, issued January 29, 1952 to Pyle-National Company;
and Registration No. 2,540,310, issued February 19, 2002 to
Dyna Technology, Inc.
Examples of the Nexis stories include the following:
Headline: Virginia
…The Pentagon’s public affairs office
said Sunday that a weapon of one of the
complex’s security guards had been
discharged. But it was not clear
whether that is related to the
shooting. Alarming package contains
dynamotor, not dynamite… . … But after
x-raying the package, technicians
opened it and found only a small motor
- a dynamotor - inside, complete with
wires and brackets. … . “The
Virginian-Pilot (Norfolk, VA),” March
9, 1998;
Headline: N.E. Mysteries; ‘Phantom P-
40’ Pilot’s Identity Still a Mystery
…They removed the machine guns,
ammunition, radio, oxygen equipment,
dynamotor, and everything else not
essential to the flight, and made a
Ser. No. 75260248
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stainless steel drop tank and another
internal tank to carry extra gasoline.
… . “The Patriot Ledger (Quincy, MA),”
April 13, 1996; and
Headline: When the War Is Over
Footnotes to the Good War
…radioman, steals a refrigerator out of
an abandoned Martin PBM seaplane, and
Hoffman, an electrician’s mate,
converts it to the 110-volt current
that feeds our barracks. He also finds
a bunch of small dynamotors that, with
some sheet aluminum, we convert into
electric fans. … . “The Baltimore
Sun,” August 30, 1995.
Applicant argues that “a ‘dynamotor,’ as is generally
known to those in the art, is ‘a converter that combines
both motor and generator action, with one magnetic field
and with two armatures, or with one armature having
separate windings’ IEEE Standard Dictionary of Electrical &
Electronics Terms (2nd ed. 1977)” (brief, p. 3); that
“‘dynamotors’ were once part of the mobile-radio reality,”
but “they are hardly used in the field of power electronics
anymore” and “the current edition of the Standard Handbook
for Electrical Engineers (13th ed. 1993), no longer
includes an entry for dynamotors” (brief, p.4); and that
applicant does not make dynamotors, but sells an electric
motor which is a “machine that converts electric energy
into mechanical energy by utilizing forces produced by
magnetic fields on current-carrying conductors. Standard
Ser. No. 75260248
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Handbook for Electrical Engineers (5th ed. 1994) (brief, p.
4). (Applicant made of record (i) several scientific
dictionary definitions and (ii) a one-page printout from
“www.wps.com” discussing “dynamotors.”)
Applicant specifically contends with regard to
deceptive misdescriptiveness that the prefix “dyna” is
wholly arbitrary with respect to applicant’s goods; that
applicant uses the mark as “DynaMotors” as shown on the
specimen submitted with applicant’s Statement of Use1; that
even if the mark misdescribes applicant’s goods in that
they are not dynamotors, it is not deceptively
misdescriptive of the goods because “prospective purchasers
of applicant’s electric motors and electronic controls,
i.e., those in the power electronics field, are not likely
to believe that they are purchasing dynamotors” (brief, p.
7); and that applicant’s goods and dynamotors are used in
different situations for different purposes.2
1 Applicant’s specimen shows use of “DynaMotors, Inc.” and
“dynamotors.com.”
2 Applicant stated in its reply brief (p. 2), without specifying
either the classes of potential consumers or the trade channels
for its goods and without submitting evidence in support thereof,
that “there is not a close relationship in the minds of
knowledgeable persons who purchase or use such products between
electric motors and dynamotors. These products are used in
entirely different situations for entirely different purposes.
Such consumers are not apt to be confused. Customers do not
simply buy these products on the shelf of the local hardware
store. Customers must buy the proper motor for each
application.”
Ser. No. 75260248
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Finally, applicant contends that even if one of
applicant’s products could lead a purchaser seeking
electric motors to believe that the product may be a
dynamotor, the record fails to show that such a
misrepresentation would materially affect the decision to
purchase applicant’s goods; and that the third-party
registrations and other materials do not show that
purchasers are likely to believe the “misdescription”
actually describes the goods.
The test to be applied in determining whether or not a
term is deceptively misdescriptive under Section 2(e)(1) is
set forth as follows: (1) whether the term misdescribes a
characteristic, quality, function, composition or use of
the goods, and (2) if so, whether prospective purchasers
are likely to believe the misdescription actually describes
the goods. See In re Berman Bros. Harlem Furniture Inc.,
26 USPQ2d 1514 (TTAB 1993); and In re Quady Winery, Inc.,
221 USPQ 1213 (TTAB 1984).
If the issue is whether or not the term is deceptive
under Section 2(a), a third part is added to the test,
namely, (3) if purchasers are likely to believe the
misdescription actually describes the goods, whether the
misdescription is likely to affect the decisions of
purchasers to buy the goods. See In re Budge Manufacturing
Ser. No. 75260248
9
Co. Inc., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988),
aff’g 8 USPQ2d 1790 (TTAB 1988).
The third element, i.e., the materiality of the
misdescription to the purchasing decision, has been
addressed as follows by the Board in the case of Bureau
National Interprofessionnel Du Cognac v. International
Better Drinks Corp., 6 USPQ2d 1610, 1615 (TTAB 1988):
If the mark misdescribes the goods, and
purchasers are likely to believe the
misrepresentation, but the
misrepresentation is not material to
the purchasing decision, then the mark
is deceptively misdescriptive (citation
omitted)….
According to Professor McCarthy, the difference
between Section 2(a) deceptive and Section 2(e)(1)
deceptively misdescriptive is the “materiality” test. That
is, “would the misdescription ‘move’ the purchaser to
purchase the goods or services.” “The ‘materiality’ test
focuses upon the question of whether purchasers care
whether the product contains the misdescribed quality… .
If they do not care, the misdescription comes within §2(e)
and not §2(a).” As he succinctly states, “the probable
reaction of buyers is the key issue.” 2 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition,
§§11:58 and 11:60 (4th ed. 2001).
Ser. No. 75260248
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The record establishes that there exists a product
which is a combination motor/generator known as a
“dynamotor”; and that applicant does not sell that product
under its mark DYNAMOTORS, but rather applicant sells
“electric motors for machines and electric controls
therefor, sold as a unit,” which do not include a
generator. Thus, the term is misdescriptive of applicant’s
goods.
The record also establishes that potential purchasers
are likely to believe this misdescription. One of the
dictionary definitions quoted above expressly states that a
“dynamotor” is a single unit and gives the appearance of “a
simple motor,” thus, purchasers would not necessarily be
aware that applicant’s electric motor is not a dynamotor.
While some of the evidence tends to show that
“dynamotor” may be an antiquated term, nonetheless, we have
evidence that the term is still in use. This evidence
includes the scientific and standard English dictionaries
dated 1993, 1997 and 1999; the Nexis stories which included
use of the term “dynamotor(s)”; and the recently issued
(2002) third-party registration. Thus, there is evidence
that the term “dynamotor(s)” is still utilized and is
encountered by purchasers and potential purchasers. We
find that the prospective purchasers are likely to believe
Ser. No. 75260248
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that the misdescription actually describes applicant’s
goods. See R. Neumann & Co. v. Bon-Ton Auto Upholstery,
Inc., 326 F.2d 799, 140 USPQ 245 (CCPA 1964) (VYNAHYDE held
deceptive and deceptively misdescriptive of plastic film
and plastic film made into furniture slip covers); R.
Neumann & Co. v. Overseas Shipments, Inc., 326 F.2d 786,
140 USPQ 276 (CCPA 1964) (DURA-HYDE held deceptive and
deceptively misdescriptive of plastic material of
leatherlike appearance made into shoes); In re Berman
Bros., supra (FURNITURE MAKERS held deceptively
misdescriptive of retail furniture store services, not
including the manufacture of furniture); In re Woodward &
Lothrop Inc., 4 USPQ2d 1412 (TTAB 1987) (CAMEO and design
held deceptively misdescriptive of jewelry, namely
earrings, necklaces and bracelets, not inclusive of cameos
or cameo-like elements); In re Quady Winery, supra
(ESSENSIA held deceptively misdescriptive of wines); and
The American Meat Institute et al. v. Horace W. Longacre,
Inc., 211 USPQ 712 (TTAB 1981) (BAKED TAM held deceptively
misdescriptive when applied to a chopped, formed turkey
meat product). Cf. In re Automatic Radio Mfg. Co., Inc.,
404 F.2d 1391, 160 USPQ 233 (CCPA 1969) (AUTOMATIC RADIO
held not deceptively misdescriptive of ignition systems,
antennas and air conditioners); In re Lyphomed Inc., 1
Ser. No. 75260248
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USPQ2d 1430 (TTAB 1986) (P.T.E. held not deceptively
misdescriptive of pediatric mixture of injectable trace
element additives for intravenous nutrition); and In re
Econoheat, Inc., 218 USPQ 381 (TTAB 1983) (SOLAR QUARTZ
held not merely descriptive or deceptively misdescriptive
of electric space heaters).
Accordingly, we hold that the term DYNAMOTORS used on
“electric motors for machines and electric controls
therefor, sold as a unit,” which are not dynamotors because
they do not include generators, is deceptively
misdescriptive under the Section 2(e)(1) of the Trademark
Act.
This brings us to consideration of the refusal to
register under Section 2(a) of the Trademark Act. Having
found the term DYNAMOTORS, for the reasons stated above, to
be deceptively misdescriptive of applicant’s “electric
motors for machines and electric controls therefor, sold as
a unit,” the determinative issue for the purpose of whether
such term is also unregistrable as deceptive is whether the
misdescription is likely to affect the decision to purchase
the goods.
On this point the Examining Attorney essentially
argues that “dynamotor” refers to a small motor-generator;
that the term would be encountered by prospective customers
Ser. No. 75260248
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who wish to purchase a motor or motor/generator; that the
classes and types of purchasers are not limited in
applicant’s identification of goods; that the additional
generator function of a dynamotor is a desirable feature
and an essential element of the product; that applicant’s
mark, when used on applicant’s goods, misrepresents an
essential and material element of the goods and is
materially false; and that because of this difference
between motors and dynamotors, the misdescription would be
likely to affect the purchasers’ decisions to buy. (Brief,
pp. 10-11.)
In addition to the evidence outlined above, we note
that the Examining Attorney has also submitted excerpted
stories retrieved from the Nexis database to show that the
relevant public is accustomed to seeing the term “motor”
used to mean both a motor and a generator.
Applicant argues that applicant’s electric motors for
machines and motor/generators (dynamotors) are completely
different products and thus it is illogical to think of one
as superior or more desirable than the other; and there is
no evidence that the decision to purchase applicant’s
electric motors is affected by the fact that “dynamotors”
refers to other products, especially because the term
refers to outdated products.
Ser. No. 75260248
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There is no doubt applicant’s goods do not include
generators. However, the Examining Attorney offers only
speculation and conclusory statements that the additional
generator function of a dynamotor is a desirable feature in
relation to electric motors for machines.
Considering all of the evidence of record, we find the
Examining Attorney has not made a prima facie showing that
the purchaser’s decision to buy applicant’s goods is likely
to be affected by the use of the term DYNAMOTORS as
applicant’s trademark for electric motors for machines.
That is, although the record shows that the term DYNAMOTORS
misdescribes applicant’s goods and that purchasers are
likely to believe the misdescription actually describes the
goods, there is simply no evidence that the misdescription
is likely to affect the decision to purchase. The facts
that there is a difference between an electric motor and a
dynamotor, and that the misdescriptive term is used on
electric motors certainly establishes the term is
deceptively misdescriptive under Section 2(e)(1). These
facts, however, do not establish that the use of the term
is likely to affect purchasers’ decisions to buy
applicant’s products. See U.S. West Inc. v. BellSouth
Corp., 18 USPQ2d 1307 (TTAB 1990) (THE REAL YELLOW PAGES
(stylized lettering) held not deceptive or merely
Ser. No. 75260248
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descriptive or deceptively misdescriptive of classified
directories). Cf. In re Budge Manufacturing Co. Inc.,
supra (LOVEE LAMB held deceptive of automobile seat covers
made from synthetic fibers); In re Organik Technologies,
Inc., 41 USPQ2d 1690 (TTAB 1997) (ORGANIK held deceptive of
clothing and textiles made from cotton that is neither from
an organically grown plant nor free of chemical processing
or treatment); and In re Shapely, Inc., 231 USPQ 72 (TTAB
1986) (SILKEASE held deceptive of clothing not made of
silk).
Decision: The refusal to register on the ground that
the mark is deceptive under Section 2(a) of the Trademark
Act is reversed, and the refusal to register on the ground
that the mark is deceptively misdescriptive under Section
2(e)(1) is affirmed.