Haas Outdoors, Inc.v.Jordan Outdoor Enterprises, Ltd.

Trademark Trial and Appeal Board

Jun 24, 2004

No. 91123413 (T.T.A.B. Jun. 24, 2004)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
Trademark Trial and Appeal Board
____________
Haas Outdoors, Inc.
v.
Jordan Outdoor Enterprises, Ltd.
____________
Opposition Nos. 91123651 and 91123413
To application Serial Nos. 76123118 and 76123158
filed on September 6, 2000
_____________
W. Whitaker Raymer for Haas Outdoors, Inc.
Daniel J. Warren for Jordan Outdoor Enterprises, Ltd.
____________
Before Sams, Hanak and Quinn, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Jordan outdoor Enterprises, Ltd. (applicant) seeks to
register in typed drawing form ADVANTAGE TIMBER HD (Serial
No. 76123118) and REALTREE HARDWOODS HD (HARDWOODS
disclaimed)(Serial No. 76123158) for “printed camouflage
patterns for hard surfaces” (Class 16) and “cotton, wool,
and synthetic fabrics having camouflage patterns” (Class
24). Both intent-to-use applications were filed on
September 6, 2000.
THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE T.T.A.B. 6-24-04
Opp. Nos. 91123651 and 91123413
2
Haas outdoors, Inc. (opposer) filed timely Notices of
Opposition alleging that opposer and applicant are
competitors in the “camouflage industry” and that
applicant’s marks are “merely descriptive, and/or generic.”
While opposer did not make specific reference to Section
2(e)(1) of the Trademark Act, it is clear that this is the
basis for the Notices of Opposition.
Applicant filed Answers which denied the pertinent
allegations of the Notices of Opposition. Both sides filed
briefs. Neither side requested a hearing.
The parties requested that these Oppositions be
consolidated because they involve common questions of law
and fact. In an order dated February 7, 2002, this Board
granted the request of the parties to consolidate.
The record in this case is summarized at pages III-IV
of opposer’s brief and pages 4 and 5 of applicant’s brief.
It consists, in part, of the deposition of Darrell Daigre,
a representative of opposer designated by opposer pursuant
to FRCP 30(b)(6).
At the outset, one matter should be clarified. During
the course of these proceedings, opposer has made it clear
that it is not contending that applicant’s entire marks
ADVANTAGE TIMBER HD and REALTREE HARDWOODS HD are
descriptive or generic for applicant’s Class 16 or Class 24
Opp. Nos. 91123651 and 91123413
3
goods. Rather, as stated at page V of opposer’s brief, the
issue in these proceedings is as follows: “The issue
before the Trademark Trial and Appeal Board in [these]
Opposition[s] is whether the Applicant’s use of the term
‘HD’ is registerable without disclaimer, in the Patent and
Trademark Office, or whether the term is generic or merely
descriptive as an acronym for ‘high definition.’” At page
6 of its brief, applicant concurs with opposer that this is
the issue before the Board in these oppositions.
In their briefs, neither party distinguished between
applicant’s Class 16 and applicant’s Class 24 goods.
Rather, at page 1 of its brief opposer clarified the nature
of the goods in question by stating that they were
“camouflage fabric and patterns for application on hunting
equipment, supplies and outdoor goods.” At page 8 of its
brief, applicant describes the relevant goods as
“camouflage fabric for the hunting industry in general.”
Obviously, the goods listed in applicant’s applications are
“printed camouflage patterns for hard surfaces” (Class 16)
and “cotton, wool and synthetic fabrics having camouflage
patterns” (Class 24). As set forth in the applications,
the identifications of goods are broader than the goods
which were litigated in these oppositions, namely,
“camouflage fabric and patterns for application on hunting
Opp. Nos. 91123651 and 91123413
4
equipment, supplies and outdoor goods.” (Opposer’s brief
page 1). Indeed, as further demonstrated by a reading of
the Daigre deposition, these oppositions have been tried in
connection with an even narrower scope of goods, namely,
camouflage patterns and camouflage products for the hunting
industry (Daigre deposition page 5).
Obviously, applicant’s broadly described Class 16 and
Class 24 goods include the narrower category of goods of
camouflage patterns for the hunting industry. If opposer
can prove that the initialism HD is descriptive or generic
for a subset of the goods as described in the applications,
then it will prevail in these opposition proceedings. In
re Analog Devices, Inc., 6 USPQ2d 1808 (TTAB 1988), aff’d
871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989).
Opposer has established that the term “high
definition” is perhaps descriptive of a new type of
camouflage fabric for use by hunters. For example, one of
applicant’s advertisements reads, in part, as follows:
REALTREE HARDWOODS® “feature our proprietary imaging
process, High Definition™. … High Definition™ (HD) is an
innovative process that combines the latest imaging and
printing technologies. The pattern elements are captured
digitally and individually manipulated; then the colors are
laid out in a totally new way on both fabric and hard
Opp. Nos. 91123651 and 91123413
5
goods.” Opposer has further demonstrated that applicant
uses on its goods a triangular symbol in which there
appears in large lettering HD and then above HD there
appears in smaller lettering HIGH and below HD there
appears in the same smaller lettering DEFINITION™.
On the other hand, Mr. Daigre, a witness selected by
opposer, testified that opposer has never used and has no
plans to use the initialism HD on any of its products or in
any of its advertising. (Daigre deposition page 6).
Furthermore, Mr. Daigre testified that no third-party
competitors used HD in connection with their camouflage
products or in the hunting industry in general (Daigre
deposition page 8) Indeed, Mr. Daigre testified that only
applicant is using the initialism HD. (Daigre deposition
page 8).
Moreover, at Mr. Daigre’s deposition applicant’s
counsel introduced as exhibit 5 a printout from the AF
Acronym Finder showing that the initials HD have over 35
different meanings. At least two of these meanings,
namely, “heavy duty” and “high density” along with the
meaning “high definition” could describe the goods in
question.
In addition, at Mr. Daigre’s deposition applicant’s
counsel made of record as exhibit 2 an advertisement for
Opp. Nos. 91123651 and 91123413
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McKenzie™ HD™ TARGETS. These targets are designed to stop
arrows. The advertisement touts the fact that these
targets consist of “exclusive, self-sealing, high-tech
flexible foam,” and that while they “initially cost more,
they quickly pay for themselves by outlasting other targets
many times over.” At page 9 of his deposition, Mr. Daigre
acknowledged that the use of the initialism HD in this
advertisement could mean a number of different things.
Obviously, while bow and arrow targets and hunter’s
camouflage are different products, they both would be
marketed to the same consumers. Thus, the acknowledgement
by Mr. Daigre that as applied to targets the initialsm HD
could have a number of different meanings is still
pertinent to the issue of whether HD is synonymous with
“high definition.”
Likewise, applicant’s counsel also made of record
exhibit 3 which is an advertisement for a rifle case which
features the following statement: “Super strong, HD
polyethylene shell.” Mr. Daigre acknowledged that this
indeed was an advertisement for a gun case. Furthermore,
he acknowledged that the use of the initialism HD in this
advertisement for a gun case could mean any number of
things such as heavy duty, high density or perhaps high
definition. (Daigre deposition page 11).
Opp. Nos. 91123651 and 91123413
7
The leading case in determining whether initials are
descriptive of the goods on which they are used is Modern
Optics, Inc. v. Univis Lens Co., 234 F.2d 504, 110 USPQ
293, 295 (CCPA 1956) where the Court stated as follows:
“It does not follow, however, that all initials of
combinations of descriptive words are ipso facto
unregisterable. While each case must be decided
on the basis of the particular facts involved, it
would seem that, as a general rule, initials cannot be
considered descriptive unless they have become so
generally understood as representing descriptive words
as to be accepted as substantially synonymous
therewith.” (emphasis added).
The reasoning of Modern Optics has received favorable
reception by other Courts of Appeal. See Anheuser-Busch,
Inc. v. Stroh Brewery Co., 750 F.2d 631, 224 USPQ 657, 659
(8th Cir. 1984)(“We find the reasoning of Modern Optics
persuasive.”). See also G. Heileman Brewing Co. v.
Anheuser-Busch Inc., 873 F.2d 985, 10 USPQ2d 1801, 1808 (7th
Cir. 1989). Of course, this Board would be bound to follow
the rule of Modern Optics regardless of its favorable
reception by other Courts of Appeal.
Applying the law to the facts of this case, we find
that even assuming arguendo that the phrase “high
definition” is descriptive of the goods in question,
opposer has simply failed to prove that the initialism HD
is “substantially synonymous” with the phrase “high
definition.” Opposer has conceded that no one other than
Opp. Nos. 91123651 and 91123413
8
applicant has used the initials HD. Furthermore, when
applicant has used the initials HD, applicant has found the
need to explain that these initials mean “high definition.”
Hence, if the initials HD were substantially synonymous
with the term “high definition” applicant would not have to
include such explanations. Furthermore, the record
demonstrates that the initials HD have a number of
different meanings not only in connection with camouflage
fabric, but also in connection with other products of
interest to hunters.
Decision: The oppositions are dismissed.