Reel Efx, Inc.

Trademark Trial and Appeal Board

Aug 25, 2004

No. 76095249 (T.T.A.B. Aug. 25, 2004)

Hearing:
May 25, 2004 Mailed: August 24, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Reel Efx, Inc.
________
Serial No. 76095249
_______
James C. Wray, of Law Offices of James C. Wray for Reel
Efx, Inc.
Teresa Rupp, Trademark Senior Attorney, Law Office 106
(Mary Sparrow, Managing Attorney).
_______
Before Seeherman, Chapman and Holtzman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
On July 24, 2000, Reel Efx, Inc. (a California
corporation), filed an application to register the mark
REEL EFX on the Principal Register for goods and services
ultimately amended to read as follows:
“scientific and electronic apparatus
for producing special effects in the
advertising and entertainment
industries, namely, computer controlled
stop action motion picture camera
arrays” in International Class 9;
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76095249
2
“apparatus for producing special
effects for the entertainment and
advertising industries, namely, lights,
lighting, hazers, fluids for hazers,
portable cooling systems, fans and
inflatable and collapsible bodies sold
as units with fans” in International
Class 11;
“providing mechanical special effects
for the advertising industry” in
International Class 35; and
“providing mechanical special effects
for the entertainment industry” in
International Class 41.1
Registration has been finally refused as to all four
classes of goods and services under Section 6(a) of the
Trademark Act, 15 U.S.C. §1056(a), on the basis of
applicant’s failure to comply with a requirement to
disclaim the term “EFX.” Such term, according to the
Examining Attorney, is merely descriptive of applicant’s
goods and services within the meaning of Section 2(e)(1) of
the Trademark Act, 15 U.S.C. §1052(e)(1), and therefore
must be disclaimed.
Registration has also been finally refused on the
basis that the specimens submitted in support of the
1 Application Serial No. 76095249, filed July 24, 2000. All
classes of goods and services are based on applicant’s claimed
date of first use and first use in commerce of 1984.
Ser. No. 76095249
3
International Class 9 goods are not acceptable specimens
therefor.2
Applicant has appealed, and briefs have been filed.
Applicant’s attorney and the Examining Attorney were
present at an oral hearing held before the Board on May 25,
2004.
We turn first to the Examining Attorney’s requirement
for acceptable specimens for the International Class 9
goods. She contends that the specimens for goods submitted
with the original application support use of the mark for
the International Class 11 goods, but not the International
Class 9 goods; that the substitute specimen for the
International Class 9 goods is not an acceptable specimen
because (i) it is an advertisement which may promote the
sale of the goods, but does not support trademark use of
the mark REEL EFX for the goods, and (ii) the term is not
used as a trademark for these goods (MULTICAM is used as
the trademark for the camera arrays) but is used only as a
trade name.
2 The appeal originally included a third issue--whether
applicant’s identification of the International Class 11 goods
was acceptable. Following the oral hearing on this appeal,
applicant submitted a proposed amendment to the International
Class 11 identification of these goods. The Board remanded the
application to the Examining Attorney, and she accepted that
identification.
Ser. No. 76095249
4
Applicant contends that the catalog sheets submitted
with the original application “evidenced use of the mark in
all of the classes.” (Reply brief, p. 2.)
It is clear from a review of the specimens of record
that the original specimens for goods all relate to
specific items of goods ultimately classified in
International Class 11 (e.g., fans, hazers, cooling
systems). Applicant did not point to any specific original
specimen that it believed supported use for the
International Class 9 goods, and we find none.
With regard to the substitute specimen, we agree with
the Examining Attorney that the use of REEL EFX thereon is
in the nature of a trade name (i.e., “REEL EFX INC. * 5539
Riverton Avenue * North Hollywood, CA 91601 …”) or as
identifying the company rather than as the trademark for
camera arrays (e.g., “Reel EFX has been working with still
camera arrays since 1996. MULTICAM is the result of those
years of work.”).
We find that the specimens of record do not support
use of the mark REEL EFX on or in connection with the
identified goods in International Class 9.
Turning to the Examining Attorney’s requirement for a
disclaimer of the term “EFX,” it is the Examining
Attorney’s position that the term “EFX” means “special
Ser. No. 76095249
5
effects” in relation to the involved goods and services;
and that “EFX” merely describes the function of applicant’s
goods (the goods being used to produce special effects),
and it merely describes the services, namely, providing
mechanical special effects to the entertainment (e.g.,
movies) and advertising industries. The Examining Attorney
argues that when the mark REEL EFX is viewed in its
entirety, the term “EFX” is an unregistrable component of
an otherwise registrable mark.
As evidence in support of this position, the Examining
Attorney submitted (i) printouts of several excerpted
stories retrieved from the Nexis database; (ii) printouts
from various Internet web pages (including applicant’s);
(iii) copies of several third-party registrations which
contained a disclaimer of the word “effects”; and (iv) the
online “Acronym Finder” showing four definitions of “EFX,”
the first of which is “Effects (as in motion picture
special effects; sometimes just FX).” In addition, the
Board takes judicial notice of the Acronyms, Initialisms &
Abbreviations Dictionary (33rd Edition 2004) definition of
“EFX” as “special effects.”3 (The only other appearance of
3 See The University of Notre Dame du Lac v. J.C. Gourmet Food
Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983). See also, TBMP §704.12 (2d
ed. rev. 2004).
Ser. No. 76095249
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“EFX” in this dictionary is as the NY Stock Exchange symbol
for Equifax, Inc.)
Some of the excerpted stories retrieved from Nexis to
show that “EFX” is commonly understood in the relevant
industries to mean “special effects” are set forth below:
HEADLINE: Springfield Joins ‘EFX’
…‘EFX,’ which stands for ‘special
effects’ in a show that offers fire-
breathing dragons and spaceship
landings, has proven an adaptable
vehicle each time it has been revamped
to fit the talents of a new star. …
“Las Vegas Review-Journal,” December 6,
2000;
HEADLINE: Entering Their 15th Year,
LH&A Announces Four New Accounts
…Representing the agency’s first
association with an entertainment
account, LH&A will launch the
introduction of celebrated nine-time
Tony award winner Tommy Tune in ‘EFX’
at the Las Vegas MGM Grand. The
critically acclaimed ‘EFX’ takes its
name from the stage and film
industries, in which ‘EFX’ stands for
the special effects that give a
production its magical punch. … “PR
Newswire,” January 11, 1999;
HEADLINE: Grand Illusions; Vegas
Musical a Dazzling Display of Smoke and
Lasers…
…Even those cynical of Vegas
productions admit it lives up to its
techno-lingo title – “EFX,” as in
special effects. “The Salt lake
Tribune,” June 8, 1997; and
HEADLINE: Centura Bank’s ‘Lazy Dollar’
Advertising Campaign Takes Top Honors
At Charlotte Addy Awards
Ser. No. 76095249
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…Charlotte-based Price/McNabb created
the advertisements with the help of the
same Hollywood company that brought
dinosaurs to life in the movie
“Jurassic Park.” KNB EFX Group Inc., a
special effects company headquartered
in California, spent more than 100
hours building a sophisticated
mechanized puppet for the spots. … “PR
Newswire” January 31, 1995.
Applicant does not dispute that “special effects”
would be merely descriptive of its goods and services.
However, applicant argues that the mark REEL EFX is a
unitary mark and thus the disclaimer is not necessary;4 that
the term “EFX” acts as a source indicator as is shown even
in the Examining Attorney’s evidence (i.e., a Las Vegas
show); that the Examining Attorney’s evidence does not
establish that “EFX” is merely descriptive, but rather, to
the contrary, her evidence shows that “EFX” is used by
applicant and others as a trademark or service mark and is
not a descriptive term; and that because the Examining
Attorney’s Acronym Finder definition shows that there are
several meanings for “EFX,” the term “is capable of
different commercial impressions, especially when combined
4 Applicant also argues that when considered as whole and not
dissected, the mark REEL EFX is not merely descriptive. The
Examining Attorney correctly pointed out that she has not held
the mark as a whole to be merely descriptive. Rather, she is
requiring a disclaimer of the term “EFX” because that term is
merely descriptive in relation to the identified goods and
services. See e.g., the Examining Attorney’s brief, footnote 1;
and the October 23, 2002 Office action, unnumbered page 3.
Ser. No. 76095249
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with another word such as ‘REEL’” (applicant’s brief, pp.
2-3).
Because we are dealing in this case with the Examining
Attorney’s requirement for a disclaimer of three letters as
an acronym, we start with the guidance of the predecessor
of our primary reviewing Court in Modern Optics,
Incorporated v. The Univis Lens Company, 234 F.2d 504, 110
USPQ 293, 295 (CCPA 1956):
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.
See also, Avtex Fibers Inc. v. Gentex Corporation, 223 USPQ
625 (TTAB 1984), and cases cited therein.
It is well settled that a term is considered merely
descriptive of goods or services, within the meaning of
Section 2(e)(1), if it immediately conveys information
concerning a significant ingredient, quality,
characteristic or feature thereof, or if it directly
conveys information regarding the nature, function, purpose
or use of the goods or services. See In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
Moreover, whether a term is merely descriptive is
Ser. No. 76095249
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determined in relation to the goods or services for which
registration is sought. See In re Bright-Crest, Ltd., 204
USPQ 591 (TTAB 1979). See also, In re Consolidated Cigar
Co., 35 USPQ2d 1290 (TTAB 1995); and In re Pennzoil
Products Co., 20 USPQ2d 1753 (TTAB 1991).
The Examining Attorney has established that “efx” is
readily understood to refer to “special effects,” which is
what applicant provides through its identified goods and
services. That is, “EFX” is substantially synonymous with
“special effects.” On the record before us, we hold that
“EFX” is a merely descriptive term in the relevant fields
of providing special effects to the advertising and
entertainment industries, and also in relation to the goods
used to produce the special effects (e.g., camera arrays,
fans, hazers). See In re The Yacht Exchange, Inc., 214
USPQ 406 (TTAB 1982)(letters “MLS” held merely descriptive
of applicant’s listing services for yachts and boats). See
generally, In re Omaha National Corporation, 819 F.2d 1117,
2 USPQ2d 1859 (Fed. Cir. 1987)(Court affirmed the Board’s
decision requiring a disclaimer of the merely descriptive
term “FirsTier” for banking services); In re IBP, Inc., 228
USPQ 304 (TTAB 1985) (requirement for a disclaimer of the
merely descriptive term “select trim” for pork affirmed);
and In re Truckwriters Inc., 219 USPQ 1227 (TTAB 1983),
Ser. No. 76095249
10
aff’d unpubl’d Appeal No. 84-689 (Fed. Cir., November 1,
1984) (requirement for a disclaimer of the merely
descriptive term “writers” for insurance agency services
affirmed).
Nor do we agree with applicant’s argument that its
mark REEL EFX is a unitary mark and thus a disclaimer is
unnecessary. As explained by the Court of Appeals for the
Federal Circuit in Dena Corp. v. Belvedere International
Inc., 950 F.2d 1555, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991):
A unitary mark has certain observable
characteristics. Specifically, its
elements are inseparable. In a unitary
mark, these observable characteristics
must combine to show that the mark has
a distinct meaning of its own
independent of the meaning of its
constituent elements.
We find that the mark REEL EFX is not unitary, but
rather the relevant purchasers would perceive the “EFX”
portion as a separable element, referring to “special
effects.” See also, In re Taylor & Francis [Publishers]
Inc., 55 USPQ2d 1213 (TTAB 2000).
Decision: The refusal to register the mark for the
International Class 9 goods on the basis that none of the
specimens shows use of the mark on or in connection with
those identified goods is affirmed. The requirement under
Section 6 of the Trademark Act for a disclaimer of the term
Ser. No. 76095249
11
“EFX” apart from the mark as a whole is proper, and the
refusal to register the mark in the absence of this
disclaimer is affirmed as to all four classes of goods and
services (International Classes 9, 11, 35 and 41).
However, the refusal of registration based on the
disclaimer requirement will be set aside and the mark
published for opposition as to International Classes 11, 35
and 41, if applicant, no later than thirty days from the
mailing date hereof, submits an appropriate disclaimer.
See Trademark Rule 2.142(g). (The submission of such a
disclaimer will not, however, affect the affirmance of the
refusal to register the mark for the goods in International
Class 9 on the specimen requirement.)