Gear Int'l. Trading Co.

Trademark Trial and Appeal Board

Jun 29, 2001

No. 75459797 (T.T.A.B. Jun. 29, 2001)

06/29/01
Paper No.
TEH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Gear International Trading Company
________
Serial No. 75/459,796
Serial No. 75/459,797
_______
Robert J. Schaap for Gear International Trading Company.
Elissa Garber Kon, Trademark Examining Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).
_______
Before Quinn, Hairston and Holtzman, Administrative Trademark
Judges.
Opinion by Holtzman, Administrative Trademark Judge:
Gear International Trading Company has filed applications to
register the marks shown below.
Serial No. 75/459,796 for "sporting goods for ice hockey and
roller hockey, namely, skates, protective pads for shoulders and
elbows, hard shell gloves for hockey, goal keeper pads, blocker
mittens, pucks, sticks, balls, and hockey skate blades."1
1 Filed March 31, 1998; alleging a bona fide intention to use the mark
in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. Nos. 75/459,796 and 75/459,797
2
Serial No. 75/459/797 for "clothing primarily for roller hockey
and ice hockey, namely, pants and hockey shell pants worn about
body protective pieces, and jerseys shirts and boots."2
In each application, applicant has claimed ownership of
Registration No. 2,103,998 for the mark set forth below for
"clothing, namely, roller hockey pants, jerseys, t-shirts,
sweatshirts and pants" in Class 25; and for "sporting goods for
roller hockey, namely, protective shoulder pads, elbow pads, goal
keeper pads, skates, catching mitts, goal pads, blocker mitts,
roller hockey gloves, pucks, sticks and balls" in Class 28. The
registration includes a disclaimer of "GEAR ROLLER HOCKEY."3
The Trademark Examining Attorney refused registration under
Section 2(e)(1) of the Trademark Act on the ground that the
proposed mark, GEAR in a non-distinctive background design, is
generic for applicant’s ice and roller hockey equipment and
clothing; and if not, that GEAR in a non-distinctive background
2 Filed March 31, 1998; alleging a bona fide intention to use the mark
in commerce.
3 Issued October 7, 1997.
Ser. Nos. 75/459,796 and 75/459,797
3
design is descriptive of the goods, and that the evidence is
insufficient to show that the proposed mark has acquired
distinctiveness.
When the refusal in each case was made final, applicant
appealed. Briefs have been filed. Applicant filed a request for
an oral hearing but the request was later withdrawn. Because the
issues in these two applications are substantially the same, the
appeals have been consolidated and are being treated in a single
decision.4
As a preliminary matter, we find the positions taken by
applicant with respect to some of the issues in this case to be
somewhat confusing. We therefore find it necessary to clarify
what we perceive as the relevant issues before us and some of the
facts bearing on those issues.
The proposed mark in each application consists of the word
GEAR displayed against a background design consisting of a solid,
smooth-edged oval with a white border. The Examining Attorney
maintains, as indicated above, that the proposed mark is not
registrable because the word GEAR is generic and the background
4 Applicant is also the owner of four other related applications
currently on appeal before the Board, which in view of the additional
issues presented by those cases, are being decided in separate
opinions. Two of those cases involve the words GEAR ROLLER HOCKEY
displayed in what applicant variously refers to as a "mechanical gear"
and "toothed round disk" design and the two others involve the wording
GEAR HOCKEY in a rectangular design. The request for an oral hearing,
which was subsequently withdrawn, was for a consolidated hearing on all
six cases.
Ser. Nos. 75/459,796 and 75/459,797
4
design is not distinctive. Applicant argues in response that the
proposed mark is registrable because the word GEAR is only
suggestive of its goods. However, the confusion stems from
applicant's apparent contentions regarding the distinctiveness of
the background design in its proposed mark. Applicant has taken
issue with the Examining Attorney's characterization of the
background design as "a common geometric shape" contending
instead that the oval "is embellished to make it look like a
gear, a mechanical gear...." (Applicant's brief, p. 13). It
might seem, at first blush, that applicant intended to direct
this argument only to the applications which actually contain the
so-called "toothed round disk"/"mechanical gear" designs. (See
footnote 3). However, because applicant at no time argues that
the smooth-edged oval, that is, the background design in these
cases, is distinctive, inherently or otherwise, applicant's
actual intentions in this regard are entirely unclear.
Thus, to the extent, if any, that applicant is arguing that
this smooth-edged oval design either is, or would be perceived as
a "mechanical gear" or "toothed round" design, the argument is
factually and legally meritless because the smooth-edged oval in
the proposed mark herein is clearly not such a design and
moreover, there is no evidence of record that it would somehow be
perceived as a "toothed" design, let alone a "toothed" design
that is round in shape. Therefore, we have given this
Ser. Nos. 75/459,796 and 75/459,797
5
argument no consideration. To the extent, however, that
applicant argues that the word GEAR, with or without the present
background design, would be perceived as a "toothed" or
"mechanical gear" design, the argument will be addressed in our
decision.
Furthermore, because applicant has not argued that the
background design for which registration is sought is inherently
distinctive, and since, in any event, we agree with the Examining
Attorney that the design consists of a common geometric shape and
that it functions merely as a background carrier for the word
portion of the proposed mark, we conclude that the design is not
inherently distinctive. See, for example, In re Raytheon Co.,
202 USPQ 317 (TTAB 1979) and American Can Company v. Marcal Paper
Mills, Inc. 152 USPQ 772 (TTAB 1967). In fact, applicant's own
evidence shows that a similar oval background design is used by
at least one of applicant's competitors on its own hockey
equipment.5
To be clear, then, the issues are as follows. If the term
GEAR is found to be generic for applicant's goods, then the
proposed mark will not be entitled to registration on the
Principal Register without a showing that at least the background
oval design has acquired distinctiveness for the identified
5 See exhibit 5 accompanying the declaration of Dennis Wu, infra, which
is an advertisement appearing in Unite magazine for "Mission" hockey
skates.
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6
goods, and even then only with a disclaimer of the word GEAR. If
the word GEAR is not generic but descriptive of the goods, then
the mark will not be registrable without a showing of acquired
distinctiveness as to the entire mark, or at least the GEAR
portion thereof. We note in this regard that applicant is not
expressly seeking registration of the mark under Section 2(f)
only as to the portion of the mark comprising the word GEAR.
Nevertheless, since a significant portion of applicant's evidence
and argument relates solely to that portion of the mark, we will
address the issue of whether the word GEAR, alone, has acquired
distinctiveness for applicant's goods.
We turn then to the Examining Attorney's arguments and
evidence on these issues. The Examining Attorney contends that
GEAR is the generic name for clothing and equipment used in the
sports of ice hockey and roller hockey, and that such goods would
be understood by the relevant purchasers to be "hockey gear." In
support of her position, the Examining Attorney has submitted a
dictionary definition of "gear" as meaning
Equipment, such as tools or clothing, used for a particular
activity; paraphernalia: fishing gear;...clothing and
accessories.6
Additional dictionary listings submitted by the Examining
Attorney define "gear" as "clothing, garments;...equipment,
6 The American Heritage Dictionary of the English Language, (3rd ed.
1992); electronic version.
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7
paraphernalia (fishing gear)"7 and as "miscellaneous articles
needed for a particular operation or sport etc."8
In addition, the Examining Attorney has made of record over
thirty excerpts of articles from the NEXIS database showing use
of "gear" in connection with hockey equipment and related
articles of clothing. Representative excerpts are reproduced
below (emphasis added).
He grew up watching his dad run a sporting goods store that
specialized in repairing hockey gear and now he's the owner
of Maximum Lacrosse, an equipment-making company he runs
from a production plant in surrey, B.C. The Buffalo News
(February 27, 1999).
"I love the whole idea of being the goalie," she says. "I
tell everyone, 'Hey, I'm an ice hockey goalie.' The five-
foot Bongen,...doesn't fit the image of a hulking hockey
player. Her short stature and size send her to the junior
section to buy her hockey gear. The Indianapolis News
(February 25, 1999).
Several players work part-time jobs to help pay for their
expensive roller hockey gear, which can cost from $600 to
$1000. The Press-Enterprise (Riverside, CA) February 2,
1999.
HEADLINE: Fan's soccer practice turns into target
practice....Now most folks are probably acquainted with the
type of protective gear a hockey goalie wears: the mask,
pads, helmet. Well here's how much protection a goalie in
soccer gets: ...A stinking pair of gloves. The Detroit News
(November 27, 1998).
This year, with some money left over from 1997, the Stewarts
are sponsoring junior golf at Franklin Park and paying for
all the equipment in a youth hockey program, the gear to be
7 WWWebster Dictionary, http://www.m-w.com, searched December 6, 1999.
8 WordNet 1.6 (1997), http://www.dictionary.com, searched December 6,
1999.
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cleaned and refurbished by the Riddell Co. of Somerville.
The Boston Globe (July 30, 1998).
Huge equipment bags covered the floor. It takes a lot of
gear to play hockey. Skates are the most expensive item,
perhaps $ 200 for a good pair. Up to $ 400 to $ 500 more
can be spent on sticks, a helmet, pants, jersey, socks and
pads for hips, shoulders, knees, shins and elbows. St.
Petersburg Times (June 17, 1998).
Expect New York Islanders Mariusz Czerkawaski to be the
first man at team events in the future...."I wasn't late,"
Czerkawski said. "I just wasn't early enough."....His coach
was angry that he was still in street clothes while the rest
of the team was in hockey gear ready to go. The Ledger
(Lakeland, FL) (January 31, 1999).
Further, the Examining Attorney has submitted copies of
twelve third-party registrations issued on the Supplemental
Register, eight of which are for various articles of clothing,
and one which is for sporting goods. The word "gear" has been
disclaimed in each of these registrations. Two of these
registrations are described below.
THE ORIGINAL BASEBALL GEAR is registered for "clothing;
namely, knit and woven tops, bottoms, shorts, and
nightshirts." The wording BASEBALL GEAR is disclaimed. 9
EXTRAORDINARY CLIMBING GEAR for "climbing equipment, namely
carabiners, slings, belay and rappel devices..." The
wording CLIMBING GEAR is disclaimed.10
The record also includes fifteen third-party registrations,
examples of which follow, for hockey equipment wherein each
9 Registration No. 1,785,041; issued July 27, 1993; Section 8
accepted.
10 Registration No. 1,914,355; issued August 22, 1995; Section 8
accepted.
Ser. Nos. 75/459,796 and 75/459,797
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registrant has used the word "gear" in its identification of
goods.
MISSION (owned by Mission Hockey Company Corporation) for
hockey equipment, namely, ice, in-line, and roller hockey
skates; wheels for in-line or roller skates; protective
gear, namely, shoulder, knee, shin, hand or elbow pads;
mouth guards; and sticks.11
NHL ROLLER HOCKEY NATIONAL HOCKEY LEAGUE (and design)(owned
by National Hockey League) for in-line roller skates and
parts therefor; in-line roller skating gear; namely, elbow
pads, shin pads, knee pads, protective head gear, roller
hockey sticks and pucks, goalie masks, and protective
gloves.12
SHARKS (stylized) (owned by San Jose Sharks LP) for hockey
gear; namely, ice and street hockey sticks and pucks, hockey
gloves, hockey masks and goalie masks; golf accessories;
namely golf club head covers, golf balls and golf bags; in-
line roller skating gear; namely, in-line roller skates,
elbow pads, shin pads, knee pads, protective head gear and
protective gloves;...13
Applicant essentially contends that the word GEAR is
suggestive of its goods and that the Office has failed to meet
its burden of showing that GEAR is generic or even descriptive of
those goods. Applicant states that it primarily sells high-end
roller and ice hockey equipment and clothing, and claims that the
purchasers of these goods "usually know the equipment and
clothing by the name 'Gear' or 'Gear Roller Hockey' or 'Gear
Hockey'." (Applicant's brief, p.3). Applicant maintains that
there is nothing in the dictionary definitions of "gear" to show
11 Registration No. 2,211,348; issued December 15, 1998.
12 Registration No. 1,956,733; issued February 13, 1996.
13 Registration No. 1,796,012; issued September 28, 1993; Sections 8 and
15, accepted and filed, respectively.
Ser. Nos. 75/459,796 and 75/459,797
10
that the word is associated with sporting goods used specifically
in the sport of hockey. Moreover, the fact that "there are
references to a few newspaper articles which refer to the
clothing and equipment in the roller hockey field as 'gear'" and
that "a few" of applicant's competitors "have attempted to use
the 'gear'" (applicant's reply brief, p.6) do not, according to
applicant, establish that the term is generic or descriptive for
the goods, particularly in light of what applicant considers
substantial evidence that the term is not generic or even
descriptive of the goods.
Applicant argues alternatively that even if GEAR is deemed
merely descriptive of its goods, applicant's evidence is
sufficient to show that the term has acquired distinctiveness for
those goods.14 In support of its claim of acquired
distinctiveness and to "refute" the argument that GEAR is
generic, applicant has submitted evidence consisting of two
declarations (with exhibits) of applicant's president, Dennis Wu;
the declarations of four individuals who, according to applicant,
are "experts in the field" (applicant's reply brief, p.10); and
eight third-party registrations on the Principal Register wherein
the word "GEAR" is not disclaimed.
14 As we noted earlier, although applicant has not specifically sought
registration under Section 2(f) as to the GEAR portion of its mark, we
have construed applicant's argument as such.
Ser. Nos. 75/459,796 and 75/459,797
11
In his initial declaration, Mr. Wu states that applicant
first used "the mark identified in our existing trademark
registration" in 1995.15 According to Mr. Wu, the annual sales of
equipment "under the 'Gear' related marks" totaled $78 thousand
in 1995; $1.1 million in 1996; and $2.2 million in 1997; and the
annual promotional expenditures for "gear related marks" totaled
$152 thousand in 1996 and $168 thousand in 1997.16
Mr. Wu also states that "GEAR" has become widely known as
the result of, and as evidenced by, its advertisements in trade
magazines and newsletters; its sponsorship of a team "[known as
Team Gear] that traveled around the country and promoted
[applicant's] name and mark"; its sponsorship of professional
hockey tournaments, such as the "Anaheim Bull Frogs" in 1998,
whose games were shown on ESPN2 and who wear and use applicant's
equipment and clothing; the appearance of GEAR equipment in an
advertisement by Kryptionics, another sporting goods company; and
its promotion of the "GEAR" name on non-sport promotional items.
The exhibits accompanying this declaration include an
advertisement appearing in Unite magazine by Kryptionics Company,
featuring a hockey player in "GEAR" clothing and equipment;
15 Mr. Wu is apparently referring to the same registration claimed in
the application.
16 Although it is not at all clear from the declarations themselves, it
appears from the accompanying exhibits that "gear related marks" may
include the word GEAR alone, the "toothed" design with or without the
word GEAR or other wording, the phrase "GEAR ROLLER HOCKEY" with or
without an accompanying design, and the phrase "GET INTO GEAR."
Ser. Nos. 75/459,796 and 75/459,797
12
advertisements by two of applicant's competitors, Bauer of Canada
and Mission of Santa Ana, California, appearing in that magazine;
an advertisement by applicant in that same magazine for
applicant's hockey equipment and clothing; portions of
applicant's product catalog; and product information sheets
distributed by applicant at trade shows.17
Mr. Wu states in his supplemental declaration that the
roller and ice hockey equipment offered by applicant is only sold
in "pro shops," that is, "shops dealing with professional end
equipment or so-called 'high end' [equipment]." This equipment
and clothing, according to Mr. Wu, would typically sell for a
much higher cost than equipment found in general sporting goods
stores or chains of those stores. Mr. Wu also states that there
are only about eight companies which produce high-end roller and
ice hockey equipment and clothing, including the Mission and
Bauer companies, and that applicant "is no less prominent in the
industry than Bauer and Mission." Mr. Wu asserts that "a
purchaser of high end roller hockey or ice hockey equipment
almost inevitably knows the type of equipment offered merely by
knowing the name of the manufacturer." Continuing, Mr. Wu states
that
17 The exhibits consisting of a photograph of a sponsored team member
wearing a "Team Gear" patch and photographs of the "non-sports"
promotional items (exhibits 1 and 11), are missing from each of these
applications as well as from the files of the four related
applications.
Ser. Nos. 75/459,796 and 75/459,797
13
...Gear Roller Hockey is recognized as a company and when
one interested in purchasing high end roller hockey or ice
hockey equipment asks for this equipment, he or she knows
fully well that Gear is the name of a particular company...
Mr. Wu adds that he
[has] spoken with numerous retailers of high end ice hockey
and roller hockey equipment and they inform me that
essentially no one requests such equipment by use of the
term "Gear." People will typically refer to the items used
in a game of ice or roller hockey as "equipment" but rarely,
if ever, is the term "Gear" ever used to refer to those
items. Thus, the people who purchase gear hockey equipment
recognize that equipment by virtue of the name "Gear."
Applicant has also submitted four essentially form
declarations from Randy Exelby, Ryan Bailey, Nicholas Boyarski,
and Theodore Brenner, managers and operators, or former
operators, of sporting goods stores located in the Mesa, Tucson
or Phoenix areas in Arizona. All four declarants state that they
are aware that applicant "operates under the name of 'Gear Roller
Hockey'" and that "Gear Roller Hockey is probably one of the top
known names in the field of high end roller and ice hockey
equipment" and that "essentially no one in the field of
hockey...refers to the equipment as 'gear'." The declarants
further assert that "sports enthusiasts typically know[] the
equipment manufacturer by name and will frequently ask for a
particular brand as, for example, Mission equipment or Gear
equipment." Only three of the four declarants state that they
are familiar with the purchasing habits and purchasers of ice
hockey and roller hockey sporting equipment and clothing, but all
Ser. Nos. 75/459,796 and 75/459,797
14
four declarants state that
People will frequently come into a sporting goods
store....They may frequently ask for "hockey equipment", but
rarely, if ever, do they ask for "hockey gear" or "gear."
Applicant has also made of record eight third-party
registrations on the Principal Register for marks in which the
word "GEAR" has not been disclaimed (including GEAR in stylized
form for tennis packs and racket bags, registered under Section
2(f); GEAR for Christmas tree ornaments; FAN GEAR for belts and
suspenders; FIFTHGEAR and design for footwear; and GET IN GEAR
for clothing and footwear). Applicant claims that these
registrations show that the Office does not "merely treat the
term 'Gear' as being generic with respect to a line of items in a
particular activity."
Applicant contends that "[w]hether or not [the toothed disk]
is...part of the mark, the perception of the public as to the
meaning of the term 'Gear' is important" and that in this case
"the purchasing public perceives...the mark in that fashion."
(Applicant's brief, p.20). Applicant maintains that the
purchasing public associates the "toothed disk" design with the
term GEAR "because of [applicant's] earlier registration" and
because applicant has "actively promoted this name and mark
Ser. Nos. 75/459,796 and 75/459,797
15
'Gear' in association with the actual design of a gear almost
since its very inception." (Applicant's reply brief, p.8).
DECISION
The test for determining whether a mark is generic involves
a two-step inquiry. The first step is to identify the genus
(category or class) of goods at issue. The second step is to
determine whether the term sought to be registered is understood
by the relevant public primarily to refer to that genus (category
or class) of goods. See In re American Fertility Society, 188
F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999) citing H. Marvin Ginn
Corporation v. International Association of Fire Chiefs, Inc.,
782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).
The general category of goods in these cases can be
described as equipment, including clothing, used for sports
activities. The particular sports activities identified in these
applications are forms of hockey, that is, roller hockey and ice
hockey. The category of applicant's goods is not limited in
these applications to the "high end" market or purchasers for
such goods.
The question, then, is whether GEAR is generic as applied to
those goods. The test for making this determination turns upon
how the term is perceived by the relevant public, that is, the
primary significance of the mark to the relevant public. Magic
Wand, Inc. v. RDB, Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir.
Ser. Nos. 75/459,796 and 75/459,797
16
1991); In re Recorded Books Inc., 42 USPQ2d 1275 (TTAB 1997); and
In re Leatherman Tool Group Inc., 32 USPQ2d 1443 (TTAB 1994).
The relevant public in this case consists of the general
consuming public for sports equipment.
The Office has the burden of proving genericness by "clear
evidence" of the public's understanding thereof. In re Merrill
Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141
(Fed. Cir. 1987). Evidence of the public's understanding of a
term may be obtained from any competent source including consumer
surveys, dictionary definitions, newspapers and other
publications. In re Northland Aluminum Products, Inc., 777 F.2d
1556, 1559, 227 USPQ 961, 963 (Fed. Cir. 1985).
We have considered all the evidence of record bearing on
purchaser perception of the word "gear," including applicant’s
evidence of acquired distinctiveness. See In re Recorded Books
Inc., supra and In re The Paint Products Co., 8 USPQ2d 1863 (TTAB
1988). In doing so, we find that the evidence submitted by the
Examining Attorney establishes that the primary meaning of the
"gear" is generic in relation to the identified goods.
To begin with, the dictionary references submitted by the
Examining Attorney demonstrate that the word "gear" is
essentially interchangeable with the word "equipment" when
referring to the paraphernalia, including clothing, which is used
in connection with particular sports activities. An additional
Ser. Nos. 75/459,796 and 75/459,797
17
listing even shows that "gear" is used as a synonym for
"equipment."18 None of the definitions specifically mention "ice
hockey" and use, instead, the sport of "fishing" to illustrate a
typical use of the word in context, i.e., "fishing gear."
Nevertheless, it is obvious that these definitions contemplate
the use of "gear" to identify the equipment used for other sports
activities as well, including equipment associated with ice
hockey and roller hockey. Thus, we agree with the Examining
Attorney that when the word "gear" is considered in relation to
hockey, the name of the sport, purchasers would understand the
class or category of goods to be hockey equipment or equipment
for hockey.
The third-party registrations submitted by the Examining
Attorney for marks incorporating the word "GEAR" and covering
related goods provide further evidence that purchasers would
attribute the ordinary dictionary meaning of "gear" to sports
equipment and clothing. See, e.g., Tektronix, Inc. v.
Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976) and In
re Melville Corp., 18 USPQ2d 1386 (TTAB 1991) [Third party
registrations may be used to show that there is well-known and
18 "Equipment –SYN. 1. apparatus, paraphernalia, gear,..." (emphasis
added). Webster’s Encyclopedic Unabridged Dictionary of the English
Language (1996). The Board can take judicial notice of dictionary
definitions. University of Notre Dame du Lac v. J.C. Gourmet Food
Imports Co., 213 USPQ 594 (TTAB 1982), aff'd, 701 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983).
Ser. Nos. 75/459,796 and 75/459,797
18
commonly understood meaning of a word and that a mark has been
chosen to convey that meaning.].
Moreover, the NEXIS evidence made of record by the Examining
Attorney confirms the generic meaning of "gear" in relation to
hockey equipment and clothing. Each article shows use of the
word "gear" to designate hockey equipment. In fact, some of the
articles use "gear" to refer to the precise items of hockey
equipment and clothing, including the mask, pads, and helmet as
well as pants, jerseys, and socks, offered by applicant.
Applicant "admits" that there are a "few" newspaper
articles referring to the clothing and equipment in the roller
hockey field as "gear." Applicant maintains, however, that
"these few bits of evidence" do not establish that "gear" is
generic. As noted by the Board in In re Audio Book Club Inc.,
52 USPQ2d 1042 (TTAB 1999), the use of a term in a generic
manner in a variety of general circulation newspapers is a
strong indication that the general public views the term as the
generic name. In this case, the appearance of "hockey gear" or
similar phrases in over thirty NEXIS articles from a variety of
news sources cannot be considered just a few aberrant uses of
the word "gear" in relation to hockey equipment. The term
appears to be used consistently in these articles in the same
way the word "equipment" might be used to name these goods. To
the extent that applicant is contending that the word "gear"
Ser. Nos. 75/459,796 and 75/459,797
19
would have to be used in each article in the specific context of
ice hockey or roller hockey in order for the evidence to be
persuasive, the argument fails. There is no logical reason why
the meaning of "gear" for hockey equipment should depend on the
nature of the hockey game. In addition, as in surname cases,
there is no "magic number" of articles or, in applicant's words,
"bits of evidence" which would be required to show that a term
is generic.19 The important consideration is the quality and
character of the evidence, that is, whether the evidence of
generic usage is "clear." The NEXIS articles in these cases
provide clear evidence of generic usage of "gear" in the
relevant field.
We note applicant's statement that "where all of your
competitors use the same term...within their marks that the mark
is obviously generic" and applicant's contention that "this mark
is not used by competitors to identify their goods." However,
the critical question is not necessarily whether competitors use
the same term "within their marks" but whether competitors would
use the same term to refer to their goods by name. The fifteen
third-party registrations made of record by the Examining
Attorney showing that others in the industry, including Mission,
19 Cf. In re BDH Two Inc., 26 USPQ2d 1556 (TTAB 1993) ["There is no
magic number of listings which is probative to show that a term is
primarily merely a surname."] and In re Industrie Pirelli Societa per
Azioni, 9 USPQ2d 1564 (TTAB 1988).
Ser. Nos. 75/459,796 and 75/459,797
20
one of the very competitors identified by Mr. Wu in his
declaration, have used the word "gear" to generically refer to
their own hockey equipment. The Office requires that goods be
described in the application by their common commercial names and
"using terminology which is generally understood" and presumably
these registrants have done that. See TMEP § 804.01. This
evidence indicates that applicant's direct competitors and others
in the field use "gear" as a generic designation for their own
hockey equipment and clothing.
By the evidence made of record by the Examining Attorney,
the Office has met its burden of proving the genericness of
"gear." The evidence clearly demonstrates that the purchasing
public would understand that "gear" identifies the sports
equipment itself rather than the source of the equipment.20
Moreover, applicant's evidence, taken as a whole, fails to show
that "gear" is perceived as an indication of source by the
relevant public.
With respect to applicant's declarations from individuals
"in the field," our concern is not so much with the form of those
20 We also note that at least one published case has held the word
"gear" to be generic for "clothing." See Gear Inc. v. L.A. Gear
California Inc., 670 F.Supp. 508, 4 USPQ2d 1192 (SDNY 1987). The
decision and the findings in that case were later vacated by the Court
in view of a subsequent settlement agreement of the parties, not as the
result of any further fact-finding by the Court.
Ser. Nos. 75/459,796 and 75/459,797
21
declarations as with their substance.21 These individuals are
attesting not only to their own perception of "GEAR," but also to
the perception of customers, and apparently the entire "hockey
industry" as well. To begin with, the asserted references in the
declarations to the recognition of "GEAR" as a mark, as opposed
to, for example, a company name, are somewhat ambiguous.
Nevertheless, to the extent these individuals do claim that
"Gear" is recognized as a mark by purchasers and those in the
industry, the evidence is not very persuasive. Applicant has
failed to establish that these individuals are "experts in the
field" and that they are therefore qualified to speak on behalf
of the entire hockey industry, high-end or otherwise. In fact,
their experience in the retail field seems somewhat limited and
there is no reason to believe that their knowledge of "industry"
perception extends beyond the confines of their respective
stores. The declarations indicate that Mr. Exelby has owned
three sporting goods stores in Phoenix for five years, Mr.
Brenner has owned a sporting goods store in Tucson for two years,
and Mr. Bailey, currently the manager of a hockey stadium owned
by applicant and the owner of a hockey league of "youth teams and
adult teams," was the manager of a sporting goods store in
Tucson, Arizona for one year. Mr. Boyarski's experience in the
21 The fact that these are form declarations does not, in and of itself,
render the evidence invalid or unpersuasive. In re Data Packaging
Corp., 453 F.2d 1300, 172 USPQ 396 (CCPA 1972) and In re Benetton Group
S.p.A., 48 USPQ2d 1214 (TTAB 1998).
Ser. Nos. 75/459,796 and 75/459,797
22
field is not revealed. We also note that none of these
individuals have even indicated how long they have sold
applicant's equipment or, with the exception of Mr. Exelby,
whether they ever sold GEAR products in their stores.
In any event, the relevant question in determining
genericness is the perception of the mark by purchasers, not that
of the industry. In this regard, we have no direct evidence of
how the purchasing public would view the designation. We have
only these four retailers' claims regarding consumer perception
and, to the extent, if any, that these retailers are even
qualified to speak for the buying public, their generalized
comments are not particularly persuasive. Each declarant seems
to claim that the entire universe of relevant purchasers of
hockey products (or high-end hockey products) recognizes GEAR as
a mark for those products. This sweeping claim is not credible.
Moreover, even assuming that the declarants are only referring to
the perception of the customers of their own stores, as opposed
to customers in general, the evidence is still not particularly
meaningful. It is likely that those customers, and more
specifically those customers who allegedly do recognize GEAR as a
mark, do not represent a significant portion of the buying public
in general.
Thus, these declarations, at best, establish that only a
very small number of people recognize GEAR as a mark. The
Ser. Nos. 75/459,796 and 75/459,797
23
evidence is insufficient to demonstrate that the relevant public
in general recognizes GEAR as a mark even if the relevant public
is considered to be purchasers of so-called "high end" hockey
equipment. See In re Audio Book Club Inc., supra and In re
Recorded Books Inc., supra.
We also note these retailers' assertions that "no one" in
the field of hockey "refers to the equipment as 'gear'" and that
while customers may ask for hockey "equipment," they "rarely, if
ever," ask for "hockey gear" or "gear."22 However, a product may
have more than one generic name. In re Sun Oil Co., 426 F.2d
401, 165 USPQ 718, 719-720 (CCPA 1970) (Rich, J., concurring)
["Because one merchandiser has latched onto one of the
descriptive terms does not mean it can force its competitors to
limit themselves to the use of the other.... All of the generic
names for a product belong in the public domain." (Emphasis in
original.)]. Thus, the fact that there may be other generic
terms for the goods such as "equipment," or even if the word
"equipment" is the more established term for these goods does not
overcome the perception of "gear" as an additional generic word
for the goods. See S.S. Kresge Co. v. United Factory Outlet,
Inc., 598 F.2d 694, 202 USPQ 545 (1st Cir. 1979) ["The
22 We also note Mr. Wu's statement that he "[has] spoken with numerous
retailers of high end ice hockey and roller hockey equipment and they
inform me that essentially no one requests such equipment by use of the
term 'Gear'." Mr. Wu has not identified any of these retailers or
whether, for example, they are the same retailers whose declarations
are already of record.
Ser. Nos. 75/459,796 and 75/459,797
24
question...is not whether a term is more frequently chosen
colloquially than any of its synonyms, but whether it still
retains its generic meaning."]. Thus, although purchasers may
also use other words to ask for these goods, the evidence in this
case shows that the relevant public still understands that "gear"
is a term which refers to this class of goods, even if they would
use the term less frequently.
The eight third-party registrations made of record by
applicant fail to support its position that "gear" is perceived
as a mark. As indicated earlier, third-party registrations may
be used to show the ordinary dictionary meaning of a term.
However, the weight to be given these registrations depends upon,
among other considerations, the nature of the marks therein and
whether the goods covered by the registrations are in related
fields. If the respective marks and goods are not similar, the
registrations will be inadequate to show meaning in connection
with the relevant field. One of the registrations identified by
applicant is for Christmas tree ornaments, goods which are
unrelated to those at issue. The goods in six of the other
registrations are arguably related to these goods but the marks
in those registrations are not at all similar to the mark in
these cases. The use of the word GEAR in different contexts and
combined with other wording is not evidence that the word "GEAR"
alone is not generic for the identified goods. Moreover, two of
Ser. Nos. 75/459,796 and 75/459,797
25
those six registrations have been cancelled by the Office and are
therefore not evidence of anything. The remaining registration
is for the stylized word GEAR for containers for carrying tennis
equipment. The mark is registered under Section 2(f) and
therefore admittedly descriptive of the registrant's goods.23 In
addition, the existence of a single registration is not
persuasive evidence that GEAR is not generic for applicant's
goods, nor does it reflect general Office practice with respect
to the registrability of this term.
In determining whether "GEAR" is generic we have also
considered applicant's evidence of "acquired distinctiveness"
including the length of use, volume of sales and advertising
expenditures, and applicant's other evidence of public exposure
of its "gear related marks." However, this evidence is not
persuasive. Applicant's promotional efforts may be indicative of
applicant's attempts to convince the public that GEAR is a mark,
but not the success of those attempts. Moreover, applicant's
sales may reflect the popularity of the products rather than the
purchasers' recognition of GEAR as a mark.24 See In re Bongrain
International (American) Corp., 894 F.2d 1316, 13 USPQ2d 1727,
23 See Yamaha International Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d
1572, 6 USPQ2d 1001 (Fed. Cir. 1988).
24 For example, the appearance of one of applicant's "GEAR" designations
in a Kryptionics advertisement where the focus of the advertisement is
not the "GEAR" designation is not evidence of that company's
recognition of the designation as a mark.
Ser. Nos. 75/459,796 and 75/459,797
26
1729 (Fed. Cir. 1990) and In re Leatherman Tool Group Inc.,
supra.
Furthermore, applicant’s ownership of an existing
registration for GEAR ROLLER HOCKEY in a "toothed disk" design is
of no persuasive value in determining whether the term "GEAR"
either by itself or on a different background design is
inherently distinctive. The presumption of validity of a
registered mark, including the presumption that the subject mark
is inherently distinctive for the identified goods, does not
extend to individual components of the mark, let alone
disclaimed, and therefore admittedly descriptive, components of
the mark. See In re National Data Corp., 753 F.2d 1056, 1059,
224 USPQ 749, 752 (Fed. Cir. 1985) ["The registration affords
prima facie rights in the mark as a whole, not in any
component."]; and see also Kellog Co. v. Pack'Em Enterprises,
Inc., 14 USPQ2d 1545 (TTAB 1990), aff'd, 951 F.2d 330, 21 USPQ2d
1142 (Fed. Cir. 1991) and In re Dura Corporation, 189 USPQ 210
(TTAB 1975). Under the circumstances, the registration provides
no evidence of the validity of the present mark.25 See also,
25 Applicant, citing In re American Sail Training Association, 230 USPQ
879 (TTAB 1986), appears to argue that in view of the existence of
applicant's prior registration for GEAR and design, the Office is
estopped "from refusing to register" the word GEAR in this application.
For the above reasons, applicant's argument is without merit and
applicant's reliance on that case is misplaced.
Ser. Nos. 75/459,796 and 75/459,797
27
Goodyear Tire & Rubber Co. v. Vogue Tyre & Rubber Co., 47 USPQ2d
1748 (TTAB 1998).
Applicant's claims regarding the perception of the word GEAR
as a "mechanical gear" are wholly unsupported on this record.
Applicant maintains that GEAR would be perceived in this manner
"[w]hether or not [the "mechanical gear" design] is part of the
mark." (Applicant's brief, p.20). First, the connotation of a
mark is not determined in the abstract but in relation to the
goods for which registration is sought. See, for example, In re
Abcor Development Corp., Inc., 588 F.2d 811, 200 USPQ 215 (CCPA
1978). The connotation of GEAR in relation to applicant's hockey
products is "equipment" not machine parts. Moreover, there is
nothing in the present mark which would evoke the image of a
mechanical gear or any meaning other than the one typically
associated with this word in relation to the identified goods.
Certainly, the mere existence of a registration for the "toothed
disk" design, even if that mark is strong and well known, cannot,
in itself, establish that purchasers will perceive the word
"gear" when seen alone, or in a totally different context, that
is, without the accompanying disk design, as a "mechanical gear."
We conclude that the record as a whole establishes that the
word GEAR is perceived as a generic term for applicant's goods.
Thus, the generic word GEAR on a non-distinctive background
design is incapable of identifying applicant's goods and
Ser. Nos. 75/459,796 and 75/459,797
28
distinguishing them from those of others. Given the generic
meaning of GEAR, the recognition of the term as a trademark by a
small group of people must be deemed no more than a de facto
recognition, entitled to no legal effect. See, In re Recorded
Books, supra, and cases cited therein, and In re Audio Books
Inc., supra.
Although we have determined that GEAR is generic, for
purposes of a complete record, we will decide the issue of
whether the mark is descriptive and applicant's alternative claim
that the mark has acquired distinctiveness.
If GEAR is not generic, then the term is certainly highly
descriptive of those goods. When considered in relation to
applicant's goods, purchasers would immediately, and without the
exercise of any imagination, understand that the nature of
applicant's goods are clothing and equipment used in the sport of
hockey. The burden is on applicant to show acquired
distinctiveness, and the more descriptive the term, the heavier
that burden. Yamaha International Corp. v. Hoshino Gakki Co.,
supra. In considering all of the evidence, and the highly
descriptive nature of this term, we find that applicant has not
met this burden.
First, the evidence of acquired distinctiveness must relate
to the specific mark for which registration is sought. See In re
K-T Zoe Furniture Inc., 16 F.3d 398, 29 USPQ2d 1787 (Fed. Cir.
Ser. Nos. 75/459,796 and 75/459,797
29
1994) and In re Failure Analysis Associates, 1 USPQ2d 1144 (TTAB
1986). As we noted earlier in this decision, applicant has
submitted no evidence whatsoever bearing on the distinctiveness
of the mark as a whole, that is, the mark for which registration
is sought. Moreover, to the extent that applicant is seeking
registration under 2(f) (in part) as to the word "gear" alone, or
even if we consider the oval background design so insignificant
that proof of acquired distinctiveness as to the entire mark is
not required, the evidence still falls short.
Applicant may be attempting to base its claim of acquired
distinctiveness of either the entire mark or the word "gear,"
alone, on its ownership of the registration identified in its
application. Either way, the evidence fails because the applied-
for mark is not the "same mark," that is, the "legal equivalent"
of the mark in the claimed registration.
Trademark Rule 2.41 provides that, in appropriate cases,
"ownership of one or more prior registrations on the Principal
Register...of the same mark may be accepted as prima facie
evidence of distinctiveness." As set forth in In re Dial-A-
Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812
(Fed. Cir. 2001), a proposed mark is the "same mark" as a
previously-registered mark for the purpose of Trademark Rule
2.41(b) if it is the "legal equivalent" of such mark. A mark is
the legal equivalent of another if it creates the same,
Ser. Nos. 75/459,796 and 75/459,797
30
continuing commercial impression such that the consumer would
consider them both the same mark. See In re Dial-A-Mattress
Operating Corp., supra. Therefore, a minor difference in the
marks, such as mere pluralization or an inconsequential
modification or modernization of the later mark, would not
preclude a finding that the marks are legal equivalents. See In
re Loew's Theatres, Inc., 223 USPQ 513 (TTAB 1984) aff'd, 769
F.2d 764 (Fed. Cir. 1985) and In re Flex-O-Glass, Inc., supra.
On the other hand, the fact that two marks may be confusingly
similar does not necessarily mean that they are legal
equivalents. Van Dyne-Crotty, Inc. v. Wear-Guard Corp., supra,
and Pro-Cuts v. Schilz-Price Enterprises Inc., 27 USPQ2d 1224
(TTAB 1993). In this case, the two marks are not legal
equivalents as they contain striking visual differences and
clearly do not convey the same meaning or commercial impression.
Applicant's evidence of acquired distinctiveness based on
actual use of its "gear related marks" is insufficient to show
that GEAR has acquired distinctiveness. While applicant is
correct that a showing of acquired distinctiveness can be based
on evidence of less than five years use, as noted above, the
sufficiency of the evidence is based on the nature of the mark
and the conditions surrounding its use. See Hunter Publishing
Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986). As
the Board in that case pointed out, while some terms may acquire
Ser. Nos. 75/459,796 and 75/459,797
31
such significance in a relatively short period of time, sometimes
even less than five years, others, depending on the nature of the
mark, require longer use and may never acquire distinctiveness no
matter how long they have been used. In this case applicant's
"gear related marks" have been in use for a very short period of
time, only three years as of the date the application was filed,
with $3 million in sales for the entire three-year period, and
two years of promotional expenditures totaling $300 thousand. In
addition, the specific "gear related marks," to which these
figures apply, have not been identified. For example, applicant
does not indicate whether some or any portion of its advertising
expenditures relate to promotion of the "oval toothed" design
which does not even contain the word "gear."
Even if we consider the sales volume and advertising
expenditures to be substantial for this short period of time,
this evidence is still insufficient to establish acquired
distinctiveness. There is no proof that the commercial success
of applicant's products, such as it is, is due to recognition of
GEAR as a mark, as opposed to the popularity of the equipment or
even the fact that there are so few companies from which to
purchase at least "high-end" hockey equipment. There is also no
proof that the efforts made by applicant to achieve acquired
distinctiveness, including applicant's promotional activities and
expenditures and its other evidence of public exposure to "gear
Ser. Nos. 75/459,796 and 75/459,797
32
related marks," have been successful. See In re Recorded Books
Inc., supra.
Acquired distinctiveness is an association in the consumer's
mind between the mark and the source of the goods or services.26
While we can assume from applicant's evidence of use as well as
its declarations of purchaser recognition of the term as a mark,
that a few people have actually come to associate GEAR with the
source of applicant's goods, the evidence is far from sufficient
to establish that the average purchaser makes this association.
See Roselux Chemical Co. v. Parsons Ammonia Co., 299 F.2d 855,
132 USPQ 627 (CCPA 1962) ["... proof of distinctiveness requires
more than proof of the existence of a relatively small number of
people who associate the asserted mark with the producer."]. See
also In re Audio Books Inc., supra and In re Recorded Books Inc.,
supra.
Therefore, assuming that GEAR could function as a mark, in
view of the highly descriptive nature of that term, far more
evidence than we have of record would be required to show that
the term has acquired distinctiveness. See In re Recorded Books
Inc., supra; and, e.g., In re Andes Candies Inc., 478 F.2d 1264,
178 USPQ 156, 158 (CCPA 1973) ["Because of long use, large sales
and advertising, it may be assumed that some persons might
26 See, for example, In re Brass-Craft Manufacturing Co., 49 USPQ2d 1849
(TTAB 1998) citing In re Semel, 189 USPQ 285 (TTAB 1975).
Ser. Nos. 75/459,796 and 75/459,797
33
recognize a mark as designating origin, but that alone is not
enough."]; and In re Pennzoil Products Co., supra [applicant's 36
years and very substantial advertising and sales, product
revenues and position of sales leadership in motor oil
declarations from nine of applicant's customers, fail to prove
that the term "MULTI-VIS" is either promoted as a trademark or
perceived as one by the purchasing public].
Decision: The refusal to register is affirmed.