Nissan Jidosha Kabushiki Kaisha

Trademark Trial and Appeal Board

May 24, 2001

No. 75531337 (T.T.A.B. May. 24, 2001)

5/24/01
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Nissan Jidosha Kabushiki Kaisha, T/A Nissan Motor Co.,
Ltd.
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Serial Nos.: 75/531,326 SUT
75/531,325 NISSAN SUT
75/531,337 FRONTIER SUT
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Manuel A. Abascal of Latham & Watkins for Nissan Jidosha
Kabushiki Kaisha, T/A Nissan Motor Co., Ltd.
Khanh Le, Trademark Examining Attorney, Law Office 104
(Sidney I. Moskowitz, Managing Attorney).
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Before Hanak, Walters and Drost, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
On August 5, 1998 Nissan Jidosha Kabushiki Kaisha, T/A
Nissan Motor Co., Ltd. (Nissan or applicant) filed three
applications seeking to register the following three marks
for “motor vehicles, namely vehicles which combine a sport
utility vehicle-like passenger compartment with a cargo bed,
and structural parts therefor”: SUT; NISSAN SUT; and
FRONTIER SUT. In each case, Nissan claimed that it had a
bona fide intention to use mark in commerce.
With regard to the application to register SUT, the
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. Nos. 75/531,326 et al
examining attorney has refused registration pursuant to
Section 2(e)(1) of the Trademark Act on the basis that said
mark is merely descriptive of applicant’s goods. With
regard to the applications to register NISSAN SUT and
FRONTIER SUT, the examining attorney, citing Section 6 of
the Trademark Act, has refused registration because
applicant has not disclaimed the SUT portion of the mark,
which the examining attorney contends is merely descriptive
of applicant’s goods.
When the refusals to register were made final,
applicant appealed to this Board. Applicant and the
examining attorney have filed briefs. Applicant did not
request a hearing.
While the records in these three cases are not
identical, they are substantially the same. Moreover, the
legal issue in each of the three cases is the same, namely,
whether the initialism SUT is merely descriptive of “motor
vehicles, namely, vehicles which combine a sport utility
vehicle-like passenger compartment with a cargo bed, and
structural parts therefor.” Accordingly, we will decide all
three cases in one opinion.
The issue in this case is not whether the phrase “sport
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utility truck” is merely descriptive of applicant’s goods.
Rather, the issue is whether the initialism SUT is merely
descriptive of applicant’s goods. The test for determining
whether a series of initials is merely descriptive was
established by the predecessor to our primary reviewing
Court in Modern Optics, Inc. v. Univis Lens Co., 234 F.2d
504, 110 USPQ 293 (CCPA 1956). This test is 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. 110 USPQ at 295 (emphasis added).
The Modern Optics rule for determining whether initials
are merely descriptive has been favorably received by other
Courts of Appeal. See Anheuser-Busch, Inc. v. Stroh Brewery
Co., 750 F.2d 631, 224 USPQ 657, 659 (8 Cir. 1984) (“We find
the reasoning of Modern Optics persuasive.”); G. Heileman
Brewing Co. v. Anheuser-Busch Inc., 873 F.2d 985, 10 USPQ2d
1801, 1808 (7 Cir. 1989). Of course, this Board would be
bound to follow the rule of Modern Optics regardless of its
favorable reception by other Circuits.
As previously noted, there are some slight variances in
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the evidentiary records in these three cases. However, the
same attorneys representing Nissan and the PTO have handled
all three cases, and accordingly, we will consider all of
the evidence in each of these three cases in determining
whether the initials SUT are merely descriptive of “motor
vehicles, namely, vehicles which combine a sport utility
vehicle-like passenger compartment with a cargo bed and
structural parts therefor.”
At the outset, we note that Nissan has made of record
literally hundreds of full text articles taken from
magazines and newspapers which discuss, at least in part,
motor vehicles combining a sport utility passenger
compartment with a cargo bed. Nissan argues that its
evidence demonstrates that the phrase “sport utility truck”
is at most suggestive, and not descriptive, of the
aforementioned vehicles. In this regard, Nissan has made of
record approximately 175 full text articles from various
magazines and newspapers which discuss sport utility
vehicles with cargo beds, but which make no mention of the
term “sport utility truck” or the initials SUT. In the
August 29, 1999 edition of the Chicago Tribune there appears
the following sentences: “Sport Trac ... is a four-door
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[Ford] Explorer sport-utility vehicle with a four-foot long
pickup truck cargo bed behind the passenger cabin. Ford’s
Lincoln luxury division will go Sport Trac one better when
it brings out the Lincoln Blackwood early in the 2001
calendar year, a four-door full-size Navigator with a pickup
bed behind the passenger cabin.” In the foregoing article,
there is no reference to the term “sport utility truck” or
the initials SUT. However, this article is clearly
discussing the type of vehicle described in Nissan’s three
applications, namely, vehicles which combine a sport utility
vehicle-like passenger compartment with a cargo bed.
Another article submitted by Nissan is from the August 9,
1999 edition of The Wall Street Journal, and it contains the
following sentence: “General Motors Corporation will offer
an all-plastic pick up-truck cargo bed and tailgate as an
option next autumn on the 2001 model extended-cab Chevrolet
Silverado.” Nissan has submitted these approximately 175
full text articles in an effort to demonstrate that writers
for such major publications as the Chicago Tribune and The
Wall Street Journal do not use the term “sport utility
truck” to describe vehicles which clearly fall within
Nissan’s description of goods. Nissan contends that the
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absence of the term “sport utility truck” in these 175
articles demonstrates that “the words ‘sport utility truck’
are suggestive, not descriptive because it requires thought
to understand that they represent a combination of a sport
utility vehicle and a truck.” (Nissan’s brief page 15).
Nissan also made of record 206 full text articles
involving motor vehicles wherein the term “sport utility
truck” or the initials SUT or both appeared. Of these 206
articles, only 38 (18%) used the initials SUT. Of these 38
articles, all but 4 (1.9% of 206; 10.5% of 38) used the
initials SUT solely in a trademark manner to refer to
Nissan’s brand of vehicles.
The examining attorney has not disputed Nissan’s
evidence. Indeed, throughout his brief the examining
attorney has made reference to it. Moreover, the examining
attorney has even conceded that “the majority of the
articles do not use the letters SUT in a descriptive
manner.” (Examining attorney’s brief page 5). Rather, the
examining attorney had simply found three additional
articles which use the initials SUT in connection with
vehicles not made by Nissan.
In its reply brief, Nissan argues that the examining
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attorney’s evidence in no way establishes that the initials
SUT are “generally understood as representing descriptive
words.” Modern Optics, 110 USPQ2d at 295. In this regard,
Nissan makes two points. First, Nissan points out that in
the total of 7 articles wherein the initials SUT are used to
refer to vehicles other than those manufactured by Nissan,
the writers included an explanation that these initials
stood for “sport utility truck.” Nissan argues that if the
initials SUT were so generally understood as representing
descriptive words, then the authors would not have had the
need to explain what these initials meant. Second, Nissan
points to the following sentences relied upon by the
examining attorney taken from the December 30, 1999 issue of
The Chicago Daily Herald:
Acronym spinoffs from SUV crossover vehicles
inflict acronymophobia (the pretentious word defining
fear of excessive use of acronyms), not to be confused
with acrophobia, the fear of heights (OK to roll your
eyes and yawn here.) Prime examples are SAV (sport-
activity vehicle), SUT (sport-utility truck), HUV
(high-utility vehicle), LUV (luxury-utility vehicle),
MAV (multiactivity vehicle), and SSU (your guess is as
good as mine).
If that isn’t baffling enough, Honda has
reportedly developed an Accord engine that meets CARB
(California Air Resources Board) and, I kid you not,
SULEV (super ultra-low emissions vehicle) standards.
Being environmentally friendly, I wonder if it comes
equipped with a SDPS (super-duper-pooper-scooper)?
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Nissan makes the point that one of the very articles
relied upon by the examining attorney refers to these
various initials, including SUT, as “baffling.” Obviously,
if certain initials are “baffling,” it can hardly be said
that they are generally understood as representing
descriptive words.
One final matter merits discussion. The examining
attorney attached for the first time to his brief what he
describes as an except from “an on-line acronym dictionary.”
The examining attorney requests that this Board take
judicial notice of this “dictionary.” (Examining attorney’s
brief page 4). This “dictionary” lists 9 definitions for
the initials SUT, the fifth definition being “Sport Utility
Truck.”
In its reply brief, Nissan strenuously objects to our
taking judicial notice of this “dictionary.” Nissan
“visited” this on-line Acronym Finder and attached as
Appendix A to its reply brief the preface to this on-line
resource. The preface makes it clear that anyone can submit
an acronym to be included in this “dictionary.” In
addition, the unidentified “authors” of this on-line Acronym
Finder state that they take no responsibility for the
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accuracy of the information contained therein, and indeed,
they specifically include the following warning: “Use
information from this site at your own risk.”
In view of the foregoing, we find that this on-line
Acronym Finder is not the type of material which is reliable
enough for us to take judicial notice. According, we have
accorded no weight to this Acronym Finder. Moreover, we
note that Nissan attached to its reply brief photocopies of
very recent mainline, printed dictionaries, none of which
define the initials SUT as meaning sport utility truck.
These reference works include Acronyms, Initialisms &
Abbreviations Dictionary (28th ed. 2000); The Oxford
Dictionary of Abbreviations (2d ed. 1998); Abbreviations
Dictionary (1999); Merriam-Webster’s Collegiate Dictionary
(1998); The Oxford American Dictionary of Current English
(1999); The Oxford Dictionary of New Words (1997); Random
House Webster’s College Dictionary (1999) and five other
recent dictionaries.
In sum, we cannot say that based upon this particular
evidentiary record, the examining attorney has established
that the initials SUT are “generally understood as
representing descriptive words.”
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Decision: The refusals to register are reversed.
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