No. 78775636 (T.T.A.B. Jan. 14, 2009)

Future First LLC

Trademark Trial and Appeal BoardJan 14, 2009

No. 78775636 (T.T.A.B. Jan. 14, 2009)

Mailed: January 14, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Future First LLC ________ Serial No. 78775636 _______ Larry M. Meyers of Larry Meyers, PC for Future First LLC. Jordan A. Baker, Trademark Examining Attorney, Law Office 102 (Karen Strzyz, Managing Attorney). _______ Before Bucher, Zervas and Walsh, Administrative Trademark Judges. Opinion by Zervas, Administrative Trademark Judge: On December 17, 2005, Future First LLC filed an application to register on the Principal Register the term VIDEO ROCKER (in standard character form) as a trademark for “furniture, chair” in International Class 20.1 The examining attorney finally refused registration of applicant's designation under Trademark Act Section 2(e)(1), 16 U.S.C. § 1052(e)(1), because “the proposed mark 1 Application Serial No. 78775636, claiming first use anywhere and first use in commerce on October 31, 1988. THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Serial No. 78775636 2 merely describes the goods.”2 Additionally, because applicant seeks registration in the alternative under Section 2(f), the examining attorney refused registration because “applicant’s [Section 2(f)] evidence … fails to sufficiently identify that applicant is the known provider 2 In his second non-final Office action, the examining attorney stated; The examining attorney finds the proposed mark incapable of serving as a source-identifier for applicant’s goods because VIDEO ROCKER has become the generic name for applicant’s chair goods. Therefore, the refusal of registration under Section 2(e)(1) is continued, notwithstanding applicant’s claim of acquired distinctiveness under Section 2(f), 15 U.S.C. §1052(f). The examining attorney has attached additional internet-based evidence and LexisNexis evidence showing VIDEO ROCKER to be the generic, common commercial name for applicant’s goods. (Emphasis in the original.) Despite these statements regarding genericness, we do not consider genericness to be an issue in this case because the final Office action stated that “the proposed mark merely describes the goods and may in fact be the generic name for a specific kind of chair goods.” Final Office action at p. 1. Additionally, the examining attorney did not apply the two-part test for genericness articulated by the Federal Circuit, our primary reviewing court, in H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986). Rather, because a generic term is the ultimate in descriptiveness under Section 2(e)(1), it appears to us that the examining attorney is contending that applicant's mark is so highly descriptive that no amount of evidence can serve to establish its acquired distinctiveness. See In re Capital Formation Counselors, Inc., 219 USPQ 916, 918 (TTAB 1983) (“If, on the other hand, we find the mark to be merely descriptive of the services and, in fact, so highly descriptive of them that no amount of evidence could persuade us that the mark has become distinctive, we must affirm the refusal of registration. Similarly, in this situation, we need not consider any of the Serial No. 78775636 3 of a chair good commonly referred to as ‘Video Rocker.’”3 Final Office action at p. 1 (emphasis in the original). Applicant has appealed the examining attorney’s final refusal to register its proposed mark. Both applicant and the examining attorney have filed briefs. We affirm the refusal to register. Is the mark Merely Descriptive under Section 2(e)(1)? “Whether a given mark is suggestive or merely descriptive depends on whether the mark ‘immediately conveys … knowledge of the ingredients, qualities, or characteristics of the goods … with which it is used,’ or whether ‘imagination, thought, or perception is required to reach a conclusion on the nature of the goods.’” In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987), citing In re Quik-Print Copy Shops, Inc., 616 F.2d 523, 205 USPQ 505, 507 (CCPA 1980). The record contains a declaration filed by Rory Scott Dean, applicant's owner, who states that he invented the Video Rocker prior to 1988; that the “Video Rocker is a affidavits or other material made of record by applicant in its Section 2(f) claim of distinctiveness.”); and TMEP § 1212.02(c). 3 For the sake of completeness, and because the record is unclear, we consider applicant as seeking registration under the provisions of Section 2(f) in the alternative. Accordingly, we make clear that we do not consider applicant to have conceded that its proposed mark is merely descriptive. See TMEP § 1212.02(c) (“… the alternative claim does not constitute a Serial No. 78775636 4 legless rocking chair, with a curved bottom, that sits on the floor and rocks back and forth front to back.” See Dean dec., ¶¶ 2 and 3, filed with response to first Office action. The chairs may be used for playing video games. The examining attorney argues as follows at unnumbered pages 3 – 4 of his brief: “[V]ideo rocker” is the common commercial name for a particular kind of curved, legless chair, which possesses rocking qualities and may be used by players of video games. Applicant’s mark describes the nature of the goods. Although the evidence in the record shows this category of chairs to vary moderately in stylization, size, and upholstered material, all of the chairs feature a basic set of characteristics that would allow a consumer to recognize the overall style or form instantly as a chair known as a “video rocker,” and without a single association of source. The evidence does not show that consumers associate the wording “video rocker” specifically with a chair manufactured by applicant, but rather, with a particular style of chair produced by a wide variety of manufacturers and sold under various trademarks or as unbranded goods. To establish a prima facie case of descriptiveness, the examining attorney relies on articles obtained through lexisnexis.com. Excerpts from several of those articles are provided below: • Chicago Tribune, August 5, 2004 “As suggested by one of this summer's hottest anthems, you can ‘lean back’ in comfort in a video concession that the matter sought to be registered is not inherently distinctive.”) Serial No. 78775636 5 rocker, $79.99, from Target. Whether playing a video game, watching TV or just chilling, simply rock away and enjoy.” • Plain Dealer (Cleveland), November 26, 2005 “Tempers flared Thursday at Target in Parma as shoppers competed for a limited number of hot-selling video rockers priced at $19.99, or half off.” • St. Louis Post-Dispatch, May 13, 2006 In discussing various rocking chairs identified as “duo rocker,” “smooth rocker,” “kid rocker,” article discusses “Video rocker: This runner-less chair is made especially for competitions with the X-Box or teen telephone gossip.” • Gale Group, Inc. and Visual Studies Workshop Afterimage, March 1, 2006 “In the other main chamber of the exhibition is Anne- Marie Schleiner's eleven-minute socially critical machinima video, PS2 Diaries (2004). To experience the piece, the viewer sits in a video rocker--a legless gaming chair--and listens to Schleiner's video on headphones.” • Furniture Today, April 27, 2006 “Pittsburgh Steelers sofa covered in Global Textile Alliance Passion Suede, 36 colors, transitional styling with welded legs, $499. Company, which merged with Racing Furniture, is expanding NASCAR licensing to include officially licensed NFL, collegiate and NBA sofas and recliners as well as a kid's recliner and video rockers.” • Furniture Today, April 28, 2006 University Loft also is telling a color story here. Kathy Carlson, national sales manager, said an in- line Mission youth bedroom in a merlot finish has been refinished in white to appeal to girls. The company also is introducing video rockers in greens, blues and yellows - and a Malibu tween-sized sectional series with washable colors in red, green, blue, tan and pink. Serial No. 78775636 6 Additionally, the examining attorney has made of record the following evidence taken from Internet web pages: • target.com - offering numerous “Video Rockers” for sale under the category “Video Rockers,” as a subcategory under “Teen Room,” with the product names, e.g., “Denim Video Rocker,” “Camou Trouper Video Rocker – Gray” and “Beanbag Video Rocker”; • amazon.com - identifying a product as “Modern Contemporary Single Video Rocker/Rocking Chair in Black Metal Frame with Black Fabric Upholstered Seats” and identifying the product features as “New Modern Chaise Video Rocker/Rocking Chair Lounge NR”; • onewayfurniture.com - listing “Video Rocker Chairs” along with “Bunk Beds,” Kids Toy Chests,” “Kids Toy Chests” and “Kids Rocking Chairs” as product categories; • mvp.com - offering “Oakland Raiders Video Rocker” and stating “Get comfortable in this Oakland Raiders soft backed micro fiber suede video rocker, made with a sturdy engineered hardwood frame which is well balanced and sits up straight when not sat in.” No other term for the product appears in the webpage; • lnt.com (Linens-n-Things) - describing a “Folding Video Rocker” as “This oversized, micro fiber suede, video rocker has an adjustable pillow as well as …”; • toysrus.com – stating “Get comfortable in this Phoenix Suns soft backed micro fiber suede video rocker …”; • onepurplefrog.com - listing “Video Rocker/Chair” as a product along with “Chaise Lounger,” “Sports Ball Puffs” and Wedge Lounger”; • beanbags.com – a website offering “Video Rockers” for sale described as “With a supportive scooped shape, plenty of styles, and a lot of cushion, a video rocker is perfect for anyone.” Serial No. 78775636 7 This site also has a “Video Rocker” product category, along with “Bean Bag Chairs,” “Bean Bag Furniture” and “Sports Bean Bag Chairs”; and states “Things To Know about Video Rockers[.] … So comfortable and easily portable, video rockers have become a favorite seat for children, teens, and adults. … We also offer video rockers with build-in speakers.” • floorseating.com – a website offering a “video rocker” stating “Rock away in our video rocker! Perfect for those long marathon movie nites. This video rocker is made of Cotton; Vinyl (base). Cleaning with mild soap and water is recommended. Comes with removable cover and child proof CPSC approved zipper. Filled with recycled shredded foam. Colors for the video rocker available are pink seat/lavender base, navy seat/navy base, and turquoise seat/orange base. The examining attorney has introduced other webpages demonstrating use of “Video Rocker.” With regard to this evidence, because the initial letters in “Video Rocker” are in capital letters, and there are no other readily identifiable trademarks for the goods on such webpages, we cannot discount that the websites are using “Video Rocker” in a trademark manner. See, e.g.: • beanbags.com – listing a chair described as “Boomchair Racer Multimedia Video Rocker”; • homevisions.com - listing a chair as “Vinyl Video Rocker Chair” and stating “This rocker is no slouch! Watch TV, play video games or lounge the day away in the perfect casual rocker for all members of the family”; • touchofclasscatalog.com – identifying a “Video Game Entertainment Rocker Chair” as “Video Rocker,” but also stating “Buy 2 or more (Video Rocker or Ottoman) Serial No. 78775636 8 and receive 10% off each!),” with video rocker used with the generic term “ottoman”; and • walmart.com – offering “Video Rocker, Navy” and identifying product as a “rocker with modern, attractive design.” However, these websites are far fewer in number than the websites and articles using “video rocker” as the name of a type of chair. In considering all of the evidence in the record, we find that the term “video rocker” is a recognized common commercial name for a type of chair. In arriving at our finding, we have considered applicant's arguments that (i) “the word ‘video’ is not normally used together with the word ‘rocker’”; (ii) that the “mark does not provide an actual description of the chair itself, but suggests to the consumer that the rocker is somehow related to videos”; and (iii) that imagination and perception is required in arriving at the meaning of “video rocker.” Brief at p. 6. Such arguments are not persuasive because of the ample evidence of record showing that “video rocker” is a common commercial name for a chair with a rounded base and back and no legs. We therefore find that the mark is merely descriptive of the nature of applicant's “furniture, chair” goods and may not be registered on the Principal Register absent a showing of acquired distinctiveness. Serial No. 78775636 9 Has the Mark Acquired Distinctiveness? It is applicant's burden to establish a prima facie case of acquired distinctiveness. See Yamaha International Corp. v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988). In determining a claim of acquired distinctiveness, the Federal Circuit has offered the following guidance: In determining whether secondary meaning has been acquired, the Board may examine copying, advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, and consumer studies (linking the name to a source). Cicena Ltd. v. Columbia Telecomms Group, 900 F.2d 1546, 1551, 14 USPQ2d 1401 (Fed. Cir. 1990). On this list, no single factor is determinative. A showing of secondary meaning need not consider each of these elements. Rather, the determination examines all of the circumstances involving the use of the mark. See Thompson Med. Co., Inc. v. Pfizer Inc., 753 F.2d 208, 217, 225 USPQ 124 (Fed. Cir. 1985). Finally, the applicant's burden of showing acquired distinctiveness increases with the level of descriptiveness; a more descriptive term requires more evidence of secondary meaning. In re Bongrain Intern. (Am.) Corp., 894 F.2d 1316, 1317, 13 USPQ2d 1727 (Fed. Cir. 1990) (“the greater the degree of descriptiveness the term has, the heavier the burden to prove it has attained secondary meaning”). In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005) (USPQ cites added). To demonstrate that its proposed mark has acquired distinctiveness, applicant relies principally on Mr. Dean’s declaration. However, Mr. Dean did not provide key Serial No. 78775636 10 information such as applicant's advertising expenditures, its sales volume or sales revenues. He also did not provide specifics regarding applicant's advertising and sales activities. He indicates that applicant has manufactured and sold “Video Rockers, under the Video Rocker trademark to furniture stores” in the western United States on a regular basis since 1988, but even if an applicant has used its mark for a long time, it does not necessarily establish that the mark has acquired distinctiveness. In re Interstate Folding Box Co., 167 USPQ 241, 245 (TTAB 1970) (“We are not persuaded by this record that the term ‘INNER-LINED’ has become distinctive of applicant's goods and does in fact serve as an indication of origin for such goods. It may well be that applicant, by reason of its long and continuous use, has acquired a de facto secondary meaning in the term ‘INNER-LINED’ in the sense that some or even many people have come to associate ‘INNER-LINED’ with applicant; but this falls far short of establishing a propriety or a legal or dejure right therein necessary to support registration”). Further, the Wisconsin and Utah trademark registration certificates he submitted are not helpful; state trademark registrations are of relatively little probative value. See, e.g., In re Vico Products Mfg. Co., Inc., 229 USPQ 364, 370 (TTAB 1985), recon. denied, 229 USPQ 716 (TTAB Serial No. 78775636 11 1986) (“While applicant’s design may be registrable under the provisions of California trademark law, it is the federal trademark statute and the cases interpreting it by which we must evaluate the registrability of applicant’s asserted mark.”). Mr. Dean’s statements regarding participation in telethons, and sponsorships of events, teams and race cars, are also of limited probative value because applicant has not provided sufficient information regarding its activities from which we can evaluate the extent, if any, applicant's activities created an association of VIDEO ROCKER with applicant. Additionally, the record is completely devoid of direct evidence that the relevant classes of purchasers of applicant's goods view VIDEO ROCKER as a distinctive source indicator for applicant's goods. Accordingly, even if VIDEO ROCKER is merely descriptive and not generic, given the highly descriptive nature of the designation VIDEO ROCKER, we would need to see a great deal more evidence (especially in the form of direct evidence from customers) than what applicant has submitted in order to find that the designation has become distinctive of applicant's goods. For all of the reasons discussed above, and notwithstanding applicant's unpersuasive arguments to the contrary, we find that VIDEO ROCKER is merely descriptive Serial No. 78775636 12 of applicant's goods in that it directly describes the nature of applicant's chairs and that applicant has not established that it has acquired distinctiveness in VIDEO ROCKER. We find that registration therefore is properly refused under Trademark Act Section 2(e)(1) and applicant has not established acquired distinctiveness. Decision: The refusal to register is affirmed.