McNiderv.VATAX Reclaim Ltd.

Trademark Trial and Appeal Board

Mar 31, 2004

No. 92030582 (T.T.A.B. Mar. 31, 2004)

Mailed:
March 31, 2004
Paper No. 24
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
James S. McNider III
v.
VATAX Reclaim Ltd.
_____
Cancellation No. 92030582
_____
Bruce A. Tassan of Tassan Law Firm for James S. McNider III.
Robert L. Haines of Sherman & Shalloway for VATAX Reclaim
Ltd.
_____
Before Seeherman, Walters and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
VATAX Reclaim Ltd. (respondent), a United Kingdom
company, owns Principal Register Registration No. 2,261,786,
which is of the mark VATAX (in typed form) for “value added
tax recovery and refund consultation services.”1
1 The registration was issued on July 20, 1999, and is based on
use in commerce under Trademark Act Section 1(a), 15 U.S.C.
§1051(a). January 1, 1994 is alleged in the registration as the
date of first use of the mark anywhere and as the date of first
use of the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Cancellation No. 92030582
2
James S. McNider III (petitioner) has petitioned to
cancel respondent’s registration on the ground that the
registered mark is merely descriptive of the services
recited in the registration. Trademark Act Section 2(e)(1),
15 U.S.C. §1052(e)(1). Respondent filed an answer in which
it denied the salient allegations of the petition to cancel.
Petitioner presented evidence at trial, but respondent
did not. Petitioner filed a brief on the case, but
respondent did not. No oral hearing was requested. We deny
the petition to cancel.
The evidence of record in this case consists of the
testimony deposition of petitioner James S. McNider III,
with exhibits, and the testimony deposition of petitioner’s
witness Joel Timothy Winks, who is currently a tax
consultant with Pricewaterhouse Coopers specializing in
Virginia taxes and who formerly was an assistant
commissioner for tax policy with the Virginia Department of
Taxation. (Winks Depo. at 3-4.)2
2 Petitioner also submitted, via notice of reliance, the
affidavit of Maria Hardison, a legal assistant at petitioner’s
counsel’s law firm, with exhibits thereto consisting of printouts
from Internet websites which she accessed and printed out.
However, an affidavit may be submitted as trial testimony only
upon written stipulation of the parties. Trademark Rule
2.123(b), 37 C.F.R. §2.123(b). No such stipulation is of record.
Moreover, the Internet printouts themselves are not printed
publications and they therefore may not be made of record via
notice of reliance. See Trademark Rule 2.122(e), 37 C.F.R.
2.122(e); Plyboo America Inc. v. Smith & Fong Co., 51 USPQ2d
1633, 1634 n.3 (TTAB 1999); Raccioppi v. Apogee Inc., 47 USPQ2d
1368, 1370 (TTAB 1998). Accordingly, Ms. Hardison’s affidavit
Cancellation No. 92030582
3
Petitioner is a lawyer practicing in Hampton, Virginia
who specializes in Virginia tax law and does business under
the trade name Virginia Tax Consultants. (McNider Depo. at
4, 7, 11.) He owns the Internet domain name registration
for “vatax.com.” (Id. at 10 and Exh. C; Winks Depo. at 5-
6.) In an e-mail communication of August 24, 1999,
respondent notified petitioner of respondent’s ownership of
the registration of the mark VATAX involved herein, and
requested that petitioner cease use of the vatax.com domain
name. (McNider Depo., Exh. C.) Based on these facts, we
find that petitioner has standing to petition to cancel
respondent’s registration. See, e.g., Lipton Industries,
Inc. v. Ralston Purina Company, 670 F.2d 1024, 213 USPQ 185
(CCPA 1982).
We turn now to petitioner’s pleaded ground for
cancellation, i.e., mere descriptiveness. A term is deemed
to be merely descriptive of goods or services, within the
meaning of Trademark Act Section 2(e)(1), if it forthwith
conveys an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose or use of the
goods or services. See, e.g., In re Gyulay, 820 F.2d 1216,
3 USPQ2d 1009 (Fed. Cir. 1987), and In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978).
and the exhibits attached thereto have not been properly made of
record, and we give them no consideration herein.
Cancellation No. 92030582
4
Whether a term is merely descriptive is determined not in
the abstract, but in relation to the goods or services for
which registration is sought, the context in which it is
being used on or in connection with those goods or services,
and the possible significance that the term would have to
the average purchaser of the goods or services because of
the manner of its use. In re Bright-Crest, Ltd., 204 USPQ
591, 593 (TTAB 1979).
In essence, it is petitioner’s contention that the
value added tax is commonly abbreviated as VAT and is
referred to descriptively as the “VAT tax,” and that VATAX
is merely a telescoped version of “VAT tax.” According to
petitioner, the omission of the second “t” in “VAT tax” does
not change the commercial impression of the term, and VATAX
therefore is as merely descriptive of respondent’s services
as “VAT tax” is.3 We are not persuaded.
The evidence of record shows that the “value added tax”
recited in respondent’s recitation of services is “a
consumption tax system that has primarily been adopted by
3 Petitioner also contends that VATAX itself has been used
descriptively or generically by third parties as an abbreviation
for “value added tax.” However, the evidence upon which
petitioner relies for this proposition was not properly made of
record and cannot be considered. See supra at footnote 2.
Moreover, even if this evidence had properly been made of record,
it would not aid petitioner’s case. These Internet website
printouts, which show use of VATAX in Europe and elsewhere as an
abbreviation for “value added tax,” at best would suggest that
Europeans may be familiar with the abbreviation; they do not show
that purchasers in the United States understand VATAX to refer to
“value added tax.”
Cancellation No. 92030582
5
European Union countries. It taxes companies and
individuals on items that each consumes.” (McNider Depo. at
4-5.) “It is basically a tax that seeks to tax the value
added at each step in the chain of commerce.” (Winks Depo.
at 4.)
The evidence also establishes that the “abbreviation”4
for “value added tax” is VAT. (McNider Depo. at 6; Winks
Depo. at 5.)
Petitioner contends that the value added tax also is
referred to as the “VAT tax,” but the evidence of record
does not support that contention. The phrase “VAT tax,” as
a synonym for “value added tax,” appears only twice in the
record, and those are petitioner’s own uses of the phrase in
his deposition (at pages 5 and 6), i.e.: “In addition,
there have been a number of legislative proposals that would
implement a more traditional VAT tax within the United
States”; and
Q. What is the abbreviation for value added
tax?
A. VAT.
Q. What does the abbreviation VATAX stand for?
A. The same thing. VAT Tax.
4 In their depositions, both witnesses referred to VAT as an
“abbreviation” of value added tax. It would appear that VAT is
more properly termed an acronym.
Cancellation No. 92030582
6
Elsewhere in the record, however, the value added tax
is referred to merely as VAT, i.e.: “So, if a VAT regime
were adopted here…” (Winks Depo. at 5); “Vatax as a name was
first used in the UK in 1973 as the name of the first VAT
advisory practice. … a specialised company making 8th and
13th Directive VAT reclaims within the European Union…”
(McNider Depo., Exh. C (e-mail from respondent to
petitioner)). The specimen in respondent’s registration
file (which was submitted to the Office as evidence of
respondent’s use of the mark VATAX in commerce in connection
with the recited services) consistently uses VAT, and not
“VAT tax,” to refer to (or as a shortened way of saying)
“value added tax”: “How will a VAT charge arise?”; “There
may be many other situations where a VAT charge qualifying
for deduction may arise. The opportunity for VAT recovery
usually applies to services since goods will generally not
carry a VAT charge…”; “Any business which incurs VAT abroad
can make a claim…”; “Our fees are based on a percentage of
the VAT actually recovered”; “…other national governments,
seeking ways of raising additional revenue, have introduced
versions of VAT, under some guise or other”; “…the credit
mechanism inherent in the making of regular VAT returns”;
“Where VAT is charged by a supplier…”; “‘Foreign’ VAT can be
recovered by using a special claims procedure…”; and
“…obtain refunds of VAT in all territories….”
Cancellation No. 92030582
7
In short, we are not persuaded on this record that the
value added tax is also known as the “VAT tax.” Indeed,
given that VAT stands for “value added tax,” the phrase “VAT
tax” would appear to be repetitive, i.e., “value added tax
tax.” Such a construction seems unlikely, and it is not
supported by the record in any event.
Moreover, even if we were to assume that “VAT tax” is
understood by the relevant class of purchasers in the United
States to refer descriptively to the “value added tax” to
which respondent’s services pertain, the evidence of record
does not support petitioner’s contention that those
purchasers also would immediately perceive or understand
that VATAX is merely a telescoped version of “VAT tax” or
that it otherwise refers to the value added tax.5 There is
no evidence to support petitioner’s contention (at page 4 of
his trial brief) that “when a purchaser is presented with
the use of the term VATAX in association with Registrant’s
services, the mark clearly conveys information concerning a
function, attribute, or feature of Registrant’s services,
namely, that its services relate to a Value Added Tax.”
(Emphasis in original.) The very fact that petitioner has
had to underline certain letters in order to call attention
to them belies petitioner’s contention that purchasers,
5 The evidence of record suggests that VATAX is likely to be
understood by purchasers in the United States to refer to
“Virginia Tax.”
Cancellation No. 92030582
8
unaided by such underlining, immediately would perceive that
VATAX describes a feature of respondent’s services.
For the reasons discussed above, we find that
petitioner has failed to meet his burden of proving that
VATAX immediately and directly informs purchasers of any
feature or characteristic of respondent’s recited services.
That the term might be merely descriptive of petitioner’s
services is not dispositive or even relevant to petitioner’s
pleaded ground for cancellation.
Decision: The petition to cancel is denied.