Gear Int’l. Trading Co.

Trademark Trial and Appeal Board

Jun 29, 2001

No. 75463291 (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. 75/463,242
Serial No. 75/463,291
_______
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. The term ROLLER HOCKEY has been
disclaimed in each application.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser Nos. 75/463,242 and 75/463,291
2
Serial No. 75/463,242 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
Serial No. 75/463,291 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,
1 Filed April 6, 1998; alleging dates of first use on September 11,
1995.
2 Filed April 6, 1998; alleging dates of use on September 11, 1995.
Ser Nos. 75/463,242 and 75/463,291
3
roller hockey gloves, pucks, sticks and balls" in Class 28.3 The
registration includes a disclaimer of "GEAR ROLLER HOCKEY."
The Trademark Examining Attorney required a disclaimer of
GEAR ROLLER HOCKEY under Section 6 of the Trademark Act
essentially on the ground that the wording is generic for
applicant’s ice and roller hockey equipment and clothing; and if
not, that the wording is descriptive of the goods, and that the
evidence is insufficient to show that the wording has acquired
distinctiveness.
When the requirement 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
3 Issued October 7, 1997.
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 HOCKEY in a
rectangle design and the two others involve GEAR in an oval design.
Ser Nos. 75/463,242 and 75/463,291
4
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."
The Examining Attorney additionally notes that ROLLER HOCKEY is
the common name for the sport of roller hockey and maintains that
the average purchaser of applicant's goods would understand the
words, taken together, to refer to "gear for roller hockey" or
"roller 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.5
Additional dictionary listings submitted by the Examining
Attorney define "gear" as "clothing, garments;...equipment,
paraphernalia (fishing gear)"6 and as "miscellaneous articles
needed for a particular operation or sport etc."7
In addition, the Examining Attorney has made of record over
thirty excerpts of articles from the NEXIS database showing use
The request for an oral hearing, which was subsequently withdrawn, was
for a consolidated hearing on all six cases.
5 The American Heritage Dictionary of the English Language, (3rd ed.
1992); electronic version.
6 WWWebster Dictionary, http://www.m-w.com, searched December 6, 1999.
7 WordNet 1.6 (1997), http://www.dictionary.com, searched December 6,
1999.
Ser Nos. 75/463,242 and 75/463,291
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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
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
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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.8
EXTRAORDINARY CLIMBING GEAR for "climbing equipment, namely
carabiners, slings, belay and rappel devices..." The
wording CLIMBING GEAR is disclaimed.9
The record also includes fifteen third-party registrations,
examples of which follow, for hockey equipment, wherein each
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.10
NHL ROLLER HOCKEY NATIONAL HOCKEY LEAGUE (and design)(owned
by National Hockey League) for in-line roller skates and
8 Registration No. 1,785,041; issued July 27, 1993; Section 8
accepted.
9 Registration No. 1,914,355; issued August 22, 1995; Section 8
accepted.
10 Registration No. 2,211,348; issued December 15, 1998.
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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.11
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;...12
Applicant does not dispute the generic meaning of ROLLER
HOCKEY but essentially contends that GEAR or the phrase GEAR
ROLLER HOCKEY is suggestive of its goods and that the Office has
failed to meet its burden of showing that either GEAR or GEAR
HOCKEY 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 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
11 Registration No. 1,956,733; issued February 13, 1996.
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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 further argues that in view of the accompanying
design, which applicant variously refers to as a "toothed round
disk" and "mechanical gear," the word GEAR would be perceived as
referring to a "mechanical gear" rather than to sports equipment.
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.13 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.
12 Registration No. 1,796,012; issued September 28, 1993; Sections 8 and
15, accepted and filed, respectively.
13 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. 75/463,242 and 75/463,291
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In his initial declaration, Mr. Wu states that applicant
first used "the mark identified in our existing trademark
registration" in 1995.14 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 1997.15
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;
14 Mr. Wu is apparently referring to the same registration claimed in
the application.
15 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. 75/463,242 and 75/463,291
10
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.16
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
16 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. 75/463,242 and 75/463,291
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...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
Ser Nos. 75/463,242 and 75/463,291
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hockey and roller hockey sporting equipment and clothing, but all
four declarants state [essentially] 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 the purchasing public associates the
term GEAR with the "toothed round disk" and "mechanical gear"
design appearing in its proposed mark "because of [applicant's]
earlier registration" for the same mark and because applicant has
"actively promoted this name and mark 'Gear' in association with
the actual design of a gear almost since its very inception."
(Applicant's reply brief, p.8).
Ser Nos. 75/463,242 and 75/463,291
13
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 roller hockey and ice hockey. The category of
applicant's goods is not limited in these applications to the
"high-end" market or to purchasers for those 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 term to the relevant public. Magic
Wand, Inc. v. RDB, Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir.
1991); In re Recorded Books Inc., 42 USPQ2d 1275 (TTAB 1997); and
In re Leatherman Tool Group Inc., 32 USPQ2d 1443 (TTAB 1994).
Ser Nos. 75/463,242 and 75/463,291
14
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 "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 "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
listing even shows that "gear" is used as a synonym for
Ser Nos. 75/463,242 and 75/463,291
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"equipment."17 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 the games
of ice hockey and roller hockey. Thus, we agree with the
Examining Attorney that when the word "gear" is combined with
"roller hockey," the name of the sport, as in applicant's
proposed mark, purchasers would understand the class or category
of goods to be "roller hockey equipment" or "equipment for roller
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
17 "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. 75/463,242 and 75/463,291
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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"
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17
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.18 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,
18 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. 75/463,242 and 75/463,291
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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.19
Moreover, we find that 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
19 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. 75/463,242 and 75/463,291
19
declarations as with their substance.20 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
20 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. 75/463,242 and 75/463,291
20
Tucson, Arizona for one year. Mr. Boyarski's experience in the
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.
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.
Ser Nos. 75/463,242 and 75/463,291
21
Thus, these declarations, at best, establish that only a
very small number of people recognize GEAR as a mark. The
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."21 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 others.... 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
21 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. 75/463,242 and 75/463,291
22
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
question...is not whether a term is more frequently chosen
colloquially than any of its synonyms, but whether it still
retains its generic meaning."]. 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. We noted earlier that 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 identified registrations 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.
Ser Nos. 75/463,242 and 75/463,291
23
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 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.22 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 themselves
22 See Yamaha International Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d
1572, 6 USPQ2d 1001 (Fed. Cir. 1988).
Ser Nos. 75/463,242 and 75/463,291
24
rather than the purchasers' recognition of GEAR as a mark.23 See
In re Bongrain International (American) Corp., 894 F.2d 1316, 13
USPQ2d 1727, 1729 (Fed. Cir. 1990) and In re Leatherman Tool
Group Inc., supra.
Furthermore, applicant’s ownership of an existing
registration for the same mark is of no persuasive value in
determining whether the term GEAR by itself or the disclaimed
wording GEAR ROLLER HOCKEY as a whole 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, obviously cannot extend to disclaimed, and
therefore, admittedly descriptive, components of the registered
mark. See Kellogg Co. v. Pack'Em Enterprises Inc., 14 USPQ2d
1545 (TTAB 1990), aff'd, 951 F.2d 330, 21 USPQ2d 1142 (Fed Cir.
1991) and, e.g., In re Dura Corporation, 189 USPQ 210 (TTAB
1975). Under the circumstances, the prior registration provides
no evidence of the validity of the wording in the present mark.24
23 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 GEAR as a mark.
24 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. 75/463,242 and 75/463,291
25
See also, Goodyear Tire & Rubber Co. v. Vogue Tyre & Rubber Co.,
47 USPQ2d 1748 (TTAB 1998).
Nor are we persuaded by applicant's claim that, based on the
design in the mark, the word GEAR would convey the arbitrary
meaning of a "mechanical gear." 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 no
evidence in this record that purchasers would even view the
design itself as a "mechanical gear." We also note in this
regard that while it is a "toothed" design, applicant admits that
mechanical gears are generally round as opposed to oval.
(Applicant's brief, p.16). Finally, even if purchasers were to
perceive the design as a mechanical gear, there is no evidence
that purchasers would ascribe that same meaning to the word GEAR.
In fact, they would be unlikely to ascribe any meaning other than
the one typically associated with this word in relation to the
identified goods.
We conclude that the record as a whole establishes that GEAR
is perceived as a generic term for applicant's goods. Thus, the
generic word GEAR in association with the generic term ROLLER
HOCKEY on a non-distinctive background design, is incapable of
Ser Nos. 75/463,242 and 75/463,291
26
identifying applicant's goods and 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.
We turn then to the question of whether the wording GEAR
ROLLER HOCKEY is generic. Applicant maintains that the words
comprise a unitary expression having no generic meaning. We
disagree. First, we do not believe that GEAR ROLLER HOCKEY would
be perceived as a unitary phrase. A mark is unitary if it
creates a single, distinct commercial impression. See Dena Corp.
v. Belvedere International, Inc., 950 F.2d 1555, 21 USPQ2d 1047
(Fed. Cir. 1991). The commercial impression is determined by
factors including the visual characteristics of the mark and the
meaning of the terms in the mark in relation to each other. See
Dena Corp. v. Belvedere International, Inc., supra and In re
Taylor & Francis [Publishers] Inc., 55 USPQ2d 1213 (TTAB 2000).
Visually, the term GEAR is physically separated from ROLLER
HOCKEY and is depicted in large, bold, block letters. The visual
impression created by ROLLER HOCKEY is much weaker. The term is
substantially smaller than GEAR in size and prominence and it is
shown in a different style of lettering, all of which serves to
separate the two terms rather than to join them. Further,
Ser Nos. 75/463,242 and 75/463,291
27
although each word GEAR and ROLLER HOCKEY has a distinct meaning,
the combined term, GEAR ROLLER HOCKEY, makes no sense as a
unitary phrase. See, e.g., In re Taylor & Francis [Publishers]
Inc., supra. The lack of any coherent meaning in the phrase as a
whole further reinforces the perception of GEAR ROLLER HOCKEY as
two separate terms. See also, e.g., Dena Corp., supra at 1052
["...mere proximity of EUROPEAN FORMULA to the unrelated design
feature does not endow the whole with a single, integrated, and
distinct commercial impression."]. Applicant has submitted no
evidence that GEAR ROLLER HOCKEY is promoted as a unitary phrase,
and apart from the statements of the four retailers discussed
earlier, there is no evidence that purchasers would perceive the
term as a unitary phrase. We also find it interesting that the
"TM" designation in applicant's promotional materials follows the
term GEAR in the mark, not ROLLER HOCKEY.
Thus, we conclude that GEAR HOCKEY does not create a unitary
impression, and that instead, each term retains its own separate,
generic meaning.
Even assuming GEAR ROLLER HOCKEY to be unitary, we would
still find that the phrase, as a whole, is generic. While as
applicant points out, a purchaser would probably not use the
wording "gear roller hockey" to request the goods, the question
is, as always, how that term would be perceived by purchasers and
what they would understand that phrase to mean when they view the
Ser Nos. 75/463,242 and 75/463,291
28
designation under normal marketing conditions. Based on the
evidence in this case, we have no doubt that the public
understands the generic meaning of both the phrase "roller hockey
gear" and the individual terms "roller hockey" and "gear" in
relation to applicant's goods. Reversing the order of these
terms does not result in a new term with a different meaning but
rather just an awkward combination of two familiar terms. See In
re Vasco Metals Corporation, 154 USPQ 191, 192 (TTAB 1967) ["The
mere transposition of words is generally insufficient to create
trademark rights in an otherwise recognizable common descriptive
term or designation."]. The term as a whole still signifies
"gear for roller hockey" no matter how the two words are
arranged.
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. 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 roller hockey. The
burden is on applicant to show acquired distinctiveness, and the
more descriptive the term, the heavier that burden. Yamaha
Ser Nos. 75/463,242 and 75/463,291
29
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.
Applicant seeks to base its claim of acquired
distinctiveness of GEAR on its ownership of the registration
identified in its application. 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." This is
not an "appropriate" case. Applicant has expressly disclaimed
GEAR in the prior registration and, as noted earlier, a
disclaimer is essentially an admission of the merely descriptive
nature of such term and the lack of an exclusive right therein at
the time of the disclaimer. In re Interco Inc., 29 USPQ2d 2037
(TTAB 1993) and Kellogg Co. v. Pack'Em Enterprises Inc., supra.
Thus, the disclaimer of GEAR is not evidence that GEAR has
acquired distinctiveness, it is evidence that GEAR is
descriptive.
Applicant's evidence of acquired distinctiveness based on
actual use of its "gear related marks" is also 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
Ser Nos. 75/463,242 and 75/463,291
30
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
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
Ser Nos. 75/463,242 and 75/463,291
31
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
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.25
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 small group of 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
25 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. 75/463,242 and 75/463,291
32
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
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 requirement for a disclaimer of GEAR is
affirmed. Nevertheless, pursuant to Trademark Rule 2.142(g),
this decision will be set aside and applicant's mark will be
published for opposition if applicant, no later than thirty days
from the mailing date hereof, submits an appropriate disclaimer
of GEAR. An appropriate disclaimer of the wording in the mark
should read: No claim is made to the exclusive right to use GEAR
and ROLLER HOCKEY apart from the mark as shown.