Lincoln Global, Inc.

Trademark Trial and Appeal Board

Dec 2, 2004

No. 76429068 (T.T.A.B. Dec. 2, 2004)

Mailed: December 2, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Lincoln Global, Inc.
________
Serial No. 76429068
______
Robert V. Vickers of Fay, Sharpe, Fagan, Minnich & McKee,
LLP for Lincoln Global, Inc.
Brian J. Pino, Trademark Examining Attorney, Law Office 114
(Margaret Le, Managing Attorney).
_______
Before Walters, Chapman and Bottorff, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
On July 1, 2002, Lincoln Global, Inc. (a Delaware
corporation) filed an application, based on Section 1(a) of
the Trademark Act, 15 U.S.C. §1051(a), to register the mark
ARCWELD on the Principal Register for various goods
classified by applicant in International Class 9.
Applicant ultimately amended the goods in three classes
with the basis for each class set forth therewith as
follows:
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76429068
2
“welding consumables, namely, welding
fluxes” in International Class 1 (based
on applicant’s assertion of a bona fide
intention to use the mark);
“welding consumables, namely, welding
wire and welding rods” in International
Class 6 (based on applicant’s claimed
date of first use and first use in
commerce of September 2000); and
“electric arc welders, wire feeders,
and welding electrodes” in
International Class 9 (based on
applicant’s assertion of a bona fide
intention to use the mark).
Applicant included in the original application a claim
of acquired distinctiveness under Section 2(f) of the
Trademark Act, 15 U.S.C. §1052(f), based on its claim of
“substantially exclusive and continuous use thereof as a
mark by applicant in commerce … for a substantial time
prior to filing of the application.” Also in the initial
application is applicant’s claim of ownership through a
related company of Registration No. 2554211 issued March
26, 2002 on the Supplemental Register to Lincoln Electric
Company of Canada Limited (a Canada corporation) for the
mark ARCWELD for “welding electrodes and welding wire for
welding applications” in International Class 9.
The Examining Attorney made final his refusal to
register the mark because it is merely descriptive of the
goods in all three classes, and applicant’s proof of
Ser. No. 76429068
3
acquired distinctiveness is insufficient. See Sections
2(e)(1) and 2(f) of the Trademark Act, 15 U.S.C.
§§1052(e)(1) and (f). He also made final his requirement
for full compliance with the request for information under
Trademark Rule 2.61(b).
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested.
Turning first to the Examining Attorney’s requirement
for information under Trademark Rule 2.61(b) in the Office
action dated July 8, 2003, the Examining Attorney
acknowledges that information has been provided, but he
contends that he did not request information in the form of
advertisements or other materials, but rather he requested
direct answers to three specific questions, which he
contends would “help the Examining Attorney place the
existing evidence of record in the proper context.”
(Brief, p. 4.)1
Applicant contends that it has provided significant
information which responds to the questions, albeit not in
1 The Examining Attorney’s three questions to applicant are the
following: (1) “Does ARC WELD have any significance as applied
to the goods or services other than trademark significance?”; (2)
“Does ARC WELD have any significance in the relevant trade or
industry other than trademark significance?”; (3) “Are the goods
used for arc welding?”
Ser. No. 76429068
4
“yes” or “no” form; and that applicant specifically
responded to the third question through its statement that
applicant’s goods “are used in connection with the process
of arc welding by an arc welder.” (Response dated May 15,
2003, p. 2.)
Certainly, the Examining Attorney’s requirement under
Trademark Rule 2.61(b) for additional information about the
goods was appropriate. However, having reviewed this
record, we find that applicant has adequately responded to
the questions asked. Applicant has complied with the
Examining Attorney’s request for information.
We turn to the Examining Attorney’s refusal to
register the mark on the Principal Register under Section
2(f) based on his assertion that applicant has submitted
insufficient evidence of acquired distinctiveness.
“Applicant acknowledges that the mark of this application
is merely descriptive for the recited goods.” (Applicant’s
brief, p. 2.) “Applicant has conceded that ‘arc weld,’ ARC
WELD or ARCWELD is merely descriptive for the goods of this
application.” (Applicant’s reply brief, p. 2.)” Thus,
the issue of mere descriptiveness is not before the Board.
Rather, the only issue before us is whether applicant has
submitted sufficient evidence to establish that the mark
Ser. No. 76429068
5
has acquired distinctiveness under Section 2(f) as to any
or all of the three classes of recited goods.
Applicant has the burden of establishing that its mark
has become distinctive. See Yamaha International Corp. v.
Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1006
(Fed. Cir. 1988).
The question of acquired distinctiveness is one of
fact which must be determined on the evidence of record.
As the Board stated in the case of Hunter Publishing Co. v.
Caulfield Publishing Ltd., 1 USPQ2d 1996, 1999 (TTAB 1986):
[e]valuation of the evidence requires a
subjective judgment as to its sufficiency
based on the nature of the mark and the
conditions surrounding its use.
There is no specific rule as to the exact amount or
type of evidence necessary at a minimum to prove acquired
distinctiveness, but generally, the more descriptive the
term, the greater the evidentiary burden to establish
acquired distinctiveness. See In re Bongrain International
(American) Corp., 894 F.2d 1316, 13 USPQ2d 1727 (Fed. Cir.
1990); and Yamaha, supra at 1008. See also, 2 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition,
§§15:66 and 15:70 (4th ed. 2001).
The Examining Attorney’s position is that he has shown
that the mark is highly descriptive of these goods; and
Ser. No. 76429068
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that applicant’s evidence does not establish acquired
distinctiveness of the mark for the goods.
In support of his position that the mark is highly
descriptive, the Examining Attorney submitted various
evidence, including (i) printouts of pages from applicant’s
related company’s web site; (ii) printouts of pages from
third-party web sites; (iii) excerpts from numerous
patents; (iv) a printout of a third-party registration; and
(v) printouts of the first several pages from a Google
search of the terms “arc weld.”
Examples of the materials submitted by the Examining
Attorney are set forth below:
“Welding Terms …
Arc Welding A welding process where
similar materials are joined with a
heating process caused by an electric
arc. In the most common use, this
process includes the use of filler
metal. …
MIG Welding (Metal Inert Gas) Also
known as wire-free welding, although it
is possible to do wire-feed welding
without the inert gas. Metals that are
difficult to arc weld may be MIG
welded.” …
www.savvyhomeadvice.com;
“Crater: The depression at the
termination of an arc weld.”
www.engineersedge.com;
“The AC-225 is Lincoln’s best selling
arc welder of all time. It has a broad
welding amperage range of 40-225 amps.
The AC-225 produces an extremely smooth
Ser. No. 76429068
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AC arc for welding a wide variety of
materials including carbon, low alloy,
and stainless steels as well as cast
iron. Metals 16 gauge and heavier can
be easily arc welded with the AC-225.”
www.lincolnelectric.com;
“Checkmate communication system
…Platform 22 will be adhered to clip 20
by means of solder, spot-weld or
arcweld, but not necessarily be limited
to this kind of adherence. …”
United States Patent No. 5568786;
“Ladder means and method of production
…After all the parts of the ladder have
been clamped into position, a welding
machine 38 is employed to effect a
plurality of arcwelds (or spotwelds in
the case of sheet metal being used) and
since the flanges of both rungs and
stiles are stiffened by the beads along
the edges, a single weld between each
rung and the stile at each end will
result in a very rigid and reliable
structure. …”
United States Patent No. 4655320;
“Arc Welding Machine
…The advantages resulting from the use
of ceramic or other non-conducting
material covered electrodes in arc-
welding are well established, however,
due to the fact that the covering is
nonconducting, it has not been possible
heretofore to arc-weld with covered
electrodes without a considerable
wastage of electrode material and undue
prolongation of the operating time. …”
United States Patent No. 2019971;
“Pulse Width Modulated Pulsed DC Arc
Welding
…There are many situations where it is
desirable to arc weld together two
pieces of metal. For example, a heat
exchanger for an air conditioning
Ser. No. 76429068
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system may be made from sections of
thin wall aluminum tubing which are
joined to provide a continuous circuit
for the flow of a refrigerant. The
sections must be joined so that there
are no leaks. One method for
accomplishing this is by arc welding.
…”
United States Patent No. 4403135;
“Center for Employment Training
Welding
Trainees will master job related tasks
in the following competency areas:
…Arc Welding Shielded Filler Metal:
Observe and describe methods and
procedures to safely arc weld shielded
filler metal; perform arc welding of
shielded filler metal assignments and
projects under supervision. …”
www.cetweb.org;
“Passive Detector Reference Design
Review
Lawrence Livermore National Laboratory
…While compressed, the steel will be
welded with a semi-automatic arc-weld
tool. The arcweld time is less than 30
seconds, so the operation is quick and
does not produce a great deal of smoke.
…”
www.numi.fnal.gov;
“Manufacturing Talk
Air-cooled MIG torch eases aluminum
welding
Aluminum is notoriously difficult to
arc weld, but a new, air-cooled torch
with a servo-powered wire feeding is
capable of wire speed feeds of over
34m/mm and has a ‘push-pull’ wire
feeder. With manufacturers
particularly in the automotive industry
using more and more aluminum, which is
notoriously difficult to arc weld,
Motoman has developed a new, air-cooled
Ser. No. 76429068
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torch with servo-powered wire feeding
specifically for this application.”
www.manufacturingtalk.com;
“Joining Technologies
Precision Welding Services
First Fully Integrated LASERLATHE
System
…Machine lathes are also utilized to
precisely rotate a cylindrical
workpiece for induction or torch
brazing, cladding, and/or arc weld
[sic--welding?] procedures. …”;
www.joiningtech.com; and
“power supply/controllers for supplying
power to electric arc weld heads and
for supplying power to torches” as the
identification of goods in
International Class 9, United States
Registration No. 2641454.
Applicant contends that although the term ARCWELD is
descriptive of the goods, it is not highly descriptive of
the goods; that the Examining Attorney has not established
the term is highly descriptive;2 and that the evidence
submitted by applicant establishes the mark has acquired
2 In applicant’s brief, p. 15, it requested that documents
attached to the Examining Attorney’s Office action dated February
25, 2004 “be stricken from the record,” arguing that many do not
include sufficient information to determine the origin of the web
page, and that some are from regions outside the United States.
The Board denies applicant’s request because (i) the request to
strike does not identify exactly which documents it wishes to
have stricken and on what specific basis for each one; and (ii)
the Board generally declines to strike evidence timely and
properly introduced into the record, but rather considers it for
whatever probative value it may have. See TBMP §1208 (2d ed.
rev. 2004).
Ser. No. 76429068
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distinctiveness and identifies applicant as the source of
these goods.
With regard to the Examining Attorney’s evidence that
the term ARCWELD is highly descriptive, applicant
essentially contends that there are “millions” of Internet
sites, “millions” of trademark registrations and
applications, and “millions” of issued patents, but only a
very small number of these “millions” of records have been
presented by the Examining Attorney which include the term
“arc weld.” Applicant concludes therefrom that this
“actually shows that the phrase ‘arc weld’ cannot be
considered ‘highly descriptive’ for the goods of this
application.” (Applicant’s request for reconsideration, p.
6.)3
Applicant submitted several scientific publications or
dictionaries (e.g., McGraw-Hill Dictionary of Scientific
and Technical Terms (Sixth Edition), ASTM Dictionary of
Engineering Science & Technology, Dictionary of Mechanical
3 Applicant addressed almost each piece of evidence submitted by
the Examining Attorney, criticizing it on some particular basis.
Applicant also listed the types of evidence “considered useful to
show that a mark is generic or highly descriptive.” (Applicant’s
request for reconsideration, p. 7.) We point out that
applicant’s mark has not been refused registration as the generic
term for these goods. Rather, the Examining Attorney has refused
to register applicant’s mark on the Principal Register under
Sections 2(e)(1) and (f) as he finds the evidence of acquired
distinctiveness insufficient.
Ser. No. 76429068
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Engineering (Fourth Edition), Illustrated Dictionary of
Metalworking and Manufacturing Technology, and Marks’
Standard Handbook for Mechanical Engineers (Tenth Edition)
with information on and definitions of terms such as
“weld,” “arc welding,” “electric arc welding” and “shielded
metal arc welding.” Applicant argues in connection
therewith that it is not attempting to register “arc
welder” or “arc welding” which are terms “used in the
industry to name a machine for welding or to name the
process of welding using an arc welder” and that the
“phrase ‘arc weld’ is not commonly used and is not the
proper use of these terms.” (Applicant’s request for
reconsideration, p. 6.)
In support of its position and its claim of acquired
distinctiveness, applicant submitted two declarations from
applicant’s attorney, Robert V. Vickers (dated May 13, 2003
and January 6, 2004).4 In the first declaration, counsel
avers, inter alia, that “applicant is a leader in the
welding field with hundreds of millions of dollars in sales
and millions of products sold annually in the United
4 The Examining Attorney takes the position (brief, p. 8) that
the declarations of applicant’s attorney are not persuasive,
citing the case of In re Gray Inc., 3 USPQ2d 1558, 1560 (TTAB
1987), and its reference to potential “bias.” Applicant’s
attorney argues in its reply brief (p. 3) that he is “very
qualified in the field of welding.” We have considered the
declarations in deciding this case.
Ser. No. 76429068
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States”; that “applicant has used the ARCWELD mark [of this
application] in connection with over 850,000 sales
transactions in the United States”; that applicant is using
the mark ARCWELD as a secondary house mark with its “famous
LINCOLN house marks” for the goods recited in the
application; that applicant has extensive substantially
exclusive and continuous use of the mark ARCWELD since
September 2000; that applicant has used the mark for the
goods in International Class 6 since September 2000; and
that applicant has a bona fide intention to use the mark on
the goods in International Classes 1 and 9.
In the second declaration of the attorney, Mr. Vickers
avers, inter alia, that “applicant believes that based on
its use of ARCWELD as a secondary house mark with
applicant’s famous LINCOLN house marks alone, ARCWELD has
become distinctive for applicant’s welding products recited
in [its application]”; that its “extensive, substantially
exclusive and continuous use of ARCWELD in commerce since
at least as early as September 2000 has made ARCWELD
distinctive for the goods…”; that applicant has used the
mark “in connection with more than 1.3 million units sold
and more than $3 million dollars [sic] in sales in the
United States”; that during the period from January to
October 2003, applicant has used the mark in connection
Ser. No. 76429068
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with over one-half million units sold and over $400,000 in
sales in the United States; and that “because a package of
consumable electrodes can include dozens of individual
electrodes” whereby the consumer would observe the mark
each time an electrode is removed for use, “as a result,
the consumer has observed the mark of this application more
than 10 million times.” 5 The attachments to the attorney’s
second declaration include pages from the various technical
dictionaries and handbooks, a photocopy of applicant’s
label and a photocopy of its product packaging used in
connection with the goods recited in the application, and
non-United States advertisements and promotional materials
(from, for example, Canada and Singapore).
Having carefully reviewed the evidence of record, we
find that applicant has not established that the term
ARCWELD has acquired distinctiveness as a mark for the
goods identified in any of the three classes involved
herein. We agree with the Examining Attorney that the term
ARCWELD is highly descriptive in connection with the
identified goods. ARCWELD is the legal equivalent of ARC
5 We note that “electrodes” are listed in the International Class
9 identification of goods, which is based not on use, but on
applicant’s assertion of an intention to use the mark in commerce
for those goods. In any event, we agree with the Examining
Attorney that this figure of 10 million, even if honestly
“calculated,” is speculation by applicant.
Ser. No. 76429068
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WELD. See In re Gould Paper, 834 F.2d 1017, 5 USPQ2d 1110
(Fed. Cir. 1987). Contrary to applicant’s arguments, the
evidence quoted previously herein establishes that “arc
welding” is a type of welding, and that the weld produced
by arc welding is called an “arc weld.” Absent any
limitation in applicant’s identifications of goods, we must
presume that the goods are used (or are intended to be
used) in all types of welding, including arc welding to
create arc welds. Thus, ARCWELD is not only merely
descriptive, but indeed is highly descriptive of this key
feature and purpose of the goods.
At this juncture, we reiterate that only International
Class 6 in this application is based on applicant’s claim
of use of the mark in commerce; the other two classes
(International Classes 1 and 9) are based on applicant’s
assertion of a bona fide intention to use the mark in
commerce. Thus, we presume applicant’s information and
evidence regarding use of the mark ARCWELD for the goods
recited in the application relates to “welding consumables,
namely, welding wire and welding rods” in International
Class 6. We begin by considering the question of acquired
distinctiveness of the term ARCWELD with respect to these
identified goods in International Class 6.
Ser. No. 76429068
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Applicant has used the mark for only a few years.
Applicant’s total sales figures for the International Class
6 goods since September 2000 ($3 million, 1.3 million
units) do not appear to be particularly substantial on
their face. Nor do we have any basis for determining
applicant’s market share for such goods, i.e., whether such
share is anything more than de minimis. Applicant failed
to submit evidence of its expenditures for advertising and
promoting the goods sold under the mark. Thus, given the
relatively high degree of descriptiveness of the mark, a
more substantial showing of sales and advertising figures
would be required to establish acquired distinctiveness.
Applicant’s assertion that its use of the mark ARCWELD
as a secondary house mark with its “famous LINCOLN house
mark” is insufficient to establish acquired
distinctiveness. There is no evidence that its house mark
LINCOLN is famous. Even if evidence of the fame of the
mark LINCOLN were of record, there is no basis for
concluding that such fame has contributed in any way to
purchasers’ perception of ARCWELD as a mark, rather than a
merely descriptive term.
In addition, the record is devoid of any direct
information of relevant consumer recognition, such as
declarations (or even form letters) from purchasers and/or
Ser. No. 76429068
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users of applicant’s identified goods. This type of direct
evidence is not required, but is generally more persuasive
than, for example, a few years of sales figures, and an
assertion that the mark is used with a “famous house mark.”
The evidence submitted by applicant does not establish that
the term ARCWELD identifies and distinguishes the goods
offered by applicant in the minds of relevant purchasers
and users. Applicant has provided no evidence at all as to
the relevant public’s perception of the applied-for mark,
nor evidence from which to infer the relevant public’s
perception.6
We note for the record that applicant has not argued
that its ownership through a related company of a prior
registration (No. 2554211) establishes acquired
distinctiveness. Inasmuch as the registration is on the
Supplemental Register, any such argument would have been
unavailing. See Trademark Rule 2.41(b).
We find that applicant’s evidence is insufficient to
establish acquired distinctiveness in the highly
descriptive term ARCWELD for the goods in International
Class 6. See In re Pennzoil Products Co., 20 USPQ2d 1753
6 Applicant submitted several non-United States advertisements
and promotional materials, but those are not probative evidence
as to the perceptions of persons in the United States.
Ser. No. 76429068
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(TTAB 1991); and In re Redken Laboratories, Inc., 170 USPQ
526 (TTAB 1971). That is, applicant has not met its burden
to show that the proposed mark has acquired distinctiveness
as to the International Class 6 goods on which the mark is
in use in commerce.
We turn now to the issue of acquired distinctiveness
of the term ARCWELD in relation to the identified goods in
International Class 1 (“welding consumables, namely,
welding fluxes”) and International Class 9 (“electric arc
welders, wire feeders, and welding electrodes”), which are
based on intent-to-use. The Board stated the following in
the case of In re Rogers, 53 USPQ2d 1741, 1744 (TTAB 1999):
Neither the plain language of [Section
2(f) of] the Act, nor the legislative
history thereof, precludes the filing
of a claim of acquired distinctiveness,
under Section 2(f) of the Act, in an
intent-to-use application prior to the
filing of an amendment to allege use
or a statement of use in the
application.
…
[A]pplicant must establish, through the
appropriate submission, the acquired
distinctiveness of the same mark in
connection with specified other goods
and/or services in connection with
which the mark is in use in commerce.…
[A]pplicant must establish, through
submission of relevant evidence rather
than mere conjecture, a sufficient
relationship between the goods or
services in connection with which the
mark has acquired distinctiveness and
the goods or services recited in the
Ser. No. 76429068
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intent-to-use application to warrant
the conclusion that the previously
created distinctiveness will transfer
to the goods or services in the
application upon use.
In this case, if applicant had established acquired
distinctiveness for the mark ARCWELD for welding wire and
welding rods in International Class 6 (which it has not
done), then applicant could have at least argued that its
use of the mark on those goods and the resulting acquired
distinctiveness therein supports acquired distinctiveness
of the mark for the other goods in International Classes 1
and 9. See generally, TMEP §1212.09(a) (3d ed. 2002).
A fortiori, the evidence is insufficient to establish
acquired distinctiveness in the mark ARCWELD for the goods
in International Classes 1 and 9, both classes being based
on applicant’s assertion of a bona fide intention to use
the mark in commerce in the future thereon.
We conclude that applicant’s evidence is insufficient
to support it Section 2(f) claim, especially given the
highly descriptive nature of applicant’s mark ARCWELD.
Decision: Applicant is deemed to have complied with
the Examining Attorney’s request for information under
Trademark Rule 2.61(b), and the refusal to register based
on non-compliance with this requirement is reversed. The
refusal to register the mark on the Principal Register
Ser. No. 76429068
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under Section 2(e)(1) because applicant has failed to prove
that the applied-for mark has acquired distinctiveness
under Section 2(f) is affirmed for all three classes of
goods.