Shindaiwa, Inc.

Trademark Trial and Appeal Board

Nov 3, 2003

No. 75552930 (T.T.A.B. Nov. 3, 2003)

Mailed:
November 3, 2003
Paper No. 24
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Shindaiwa, Inc.
________
Serial No. 75552930
_______
Patchen M. Haggerty and Michael A. Cohen of Schwabe
Williamson & Wyatt, P.C. for Shindaiwa, Inc.
Josette M. Beverly, Trademark Examining Attorney, Law
Office 112 (Janice O’Lear, Managing Attorney).
_______
Before Cissel, Hohein and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Shindaiwa, Inc. seeks registration on the Principal
Register of the mark shown below:
as used in connection with “hand held power-operated
sweeping devices consisting of a power-rotated cylinder
having a handle for manual manipulation and exterior fins
that engage and throw loose material to thereby clean
outdoor surfaces such as a sidewalk, driveway or the like,”
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75552930
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in International Class 7.1 The application, as amended,
seeks registration under Section 2(f) of the Trademark Act
(15 U.S.C. §1052(f)) as a result of the mark acquiring
distinctiveness due to substantially exclusive and
continuous use of the mark in commerce since 1993.
The Trademark Examining Attorney has refused
registration under Section 2(e)(1) of the Trademark Act, 15
U.S.C. §1052(e)(1), on the ground that, when used in
connection with applicant’s goods, the term PowerBroom is
at least merely descriptive of, if not generic for, such
goods. In particular, while applicant, in its response to
the refusal on the basis of mere descriptiveness, amended
the application to set forth a claim that the term
PowerBroom has acquired distinctiveness for its hand-held,
power-operated sweeping device and is therefore registrable
pursuant to the provisions of Section 2(f) of the Trademark
Act, 15 U.S.C. §1052(f), such claim has also been refused
as insufficient inasmuch as the term is either generic for
applicant’s goods or, alternatively, it is so highly
descriptive thereof that the evidence offered by applicant
does not suffice to demonstrate acquired distinctiveness.
1 Application Serial No. 75552930 was filed on September 14,
1998, based upon applicant’s allegation of use in commerce since
at least as early as April 15, 1993.
Serial No. 75552930
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Thus, the issues on this appeal are whether the term
PowerBroom is generic for applicant’s goods and, if not,
whether applicant’s showing is sufficient to establish that
such term, although merely descriptive of hand-held, power-
operated sweeping device, has acquired distinctiveness.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney submitted briefs.
Applicant did not request an oral hearing.
It has been repeatedly stated that “determining
whether a mark is generic … involves a two-step inquiry:
First, what is the genus of goods or services at issue?
Second, is the term sought to be registered or retained on
the register understood by the relevant public primarily to
refer to that genus of goods or services?” H. Marvin Ginn
v. International Association of Fire Chiefs, 782 F.2d 987,
228 USPQ 528, 530 (Fed. Cir. 1986). Of course, in a
proceeding such as this, the genus of goods at issue are
the goods set forth in the identification of goods in the
application itself. Magic Wand Inc. v. RDB Inc., 940 F.2d
638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991) [“Thus, a proper
genericness inquiry focuses on the description of [goods
or] services set forth in [the application or] certificate
of registration.”].
Serial No. 75552930
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Moreover, the burden rests with the Trademark
Examining Attorney to establish that the mark sought to be
registered is generic for the goods or services as
described in the application. In re Merrill Lynch, 828
F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1997). It is
incumbent upon the Trademark Examining Attorney to make a
“substantial showing … that the matter is in fact generic.”
Indeed, this substantial showing “must be based on clear
evidence of generic use.” Merrill Lynch, 4 USPQ2d at 1143.
Thus, it is beyond dispute that “a strong showing is
required when the Office seeks to establish that a term is
generic.” In re K-T Zoe Furniture Inc., 16 F.3d 390, 29
USPQ2d 1787, 1788 (Fed. Cir. 1994). Furthermore, any doubt
whatsoever on the issue of genericness must be resolved in
favor of the applicant. In re Waverly Inc., 27 USPQ2d
1620, 1624 (TTAB 1993).
Addressing the first part of the Ginn genericness
inquiry above, we find that the genus of goods at issue in
this case is hand-held, power-operated sweeping devices.
We turn next to the second part of the Ginn
genericness inquiry: whether the matter applicant seeks to
register, PowerBroom, is understood by the relevant public
primarily to refer to the genus of goods at issue, i.e.,
hand-held, power-operated sweeping devices.
Serial No. 75552930
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The Trademark Examining Attorney initially assigned to
this case provided separate dictionary definitions of the
words “power”2 and “broom”3, arguing that “[t]ogether the
terms leave no doubt that the applicant’s goods are merely
power-operated brooms.” (Office action of May 25, 1999).
In support of the refusal, the Trademark Examining
Attorney submitted excerpts of articles retrieved from the
LEXIS/NEXIS database showing “power broom” (and variations
thereof) used in connection with various power-driven
cleaning devices.
In response, applicant argues that the term PowerBroom
is not generic, and that is it not “highly descriptive” as
contended by the Trademark Examining Attorney, but rather
that it should be found to be merely descriptive, and that
the term has acquired distinctiveness when used in
connection with its hand-held, power-operated sweeping
devices. Applicant asserts that the excerpts the Trademark
2 power: … 9. a. The energy or motive force by which a
physical system or machine is operated: turbines turned by steam
power; a sailing ship driven by wind power. b. The capacity of a
system or machine to operate: a vehicle that runs under it own
power. c. Electrical or mechanical energy, especially as used to
assist or replace human energy. d. Electricity supplied to a
home, building or community: a storm that cut off power to the
whole region. … The American Heritage Dictionary of the English
Language, (3rd Ed 1992).
3 broom: 1. A bunch of twigs, straw, or bristles bound
together, attached to a stick or handle, and used for sweeping.
The American Heritage Dictionary of the English Language, (3rd Ed
1992).
Serial No. 75552930
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Examining Attorney has collected from the LEXIS/NEXIS
database fail to support the Office’s position on
genericness, falling into three general categories.
According to applicant, the first category of articles
involves unmistakable references to applicant’s product:
GETTING THE MOUSETRAP TO MARKET
… Ronald Gergman and Paul Sund scoured trade
magazines, joined a trade association and wrote out
a list of potential customers and key decision
makers who might handle their invention – a power
broom to deal with snow, leaves and dirt. They
filmed their own product video and sent out 75
copies. A marketing manager at the Portland, Ore.
Division of Japan-based Shindaiwa Inc. saw the video
and …4
A COOL NEW TOOL THAT’S HARD TO GIVE THE BRUSH-
OFF
…
The implement is called a power broom, and let’s
just say it swept this reviewer off his feet.
Developed by a company called Shindaiwa, the
power broom first began showing up on dealers’
floors about seven years ago….5
Applicant argues this category includes several examples
that probably involve the theft of one of applicant’s
branded products along with other lawn and landscaping
machinery:
POLICE BLOTTER:
A landscaping trailer was entered and two blowers, a
power broom and a hedge clipper were stolen on
August 6 … .6
4 Forbes, October 5, 1998.
5 The Hartford Courant, May 7, 2001.
6 Asbury Park Press (Neptune, NJ), August 19, 1998.
Serial No. 75552930
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POLICE BEAT:
It was reported Hamel Sodding & Landscapes … was
burglarized and a power broom and chain saw were
taken totaling $1,089. The incident occurred
between Aug. 25 and Sept. 1.7
According to applicant, the second category of
LEXIS/NEXIS excerpts references heavy-duty machinery for
sweeping municipal streets and highways or for removing
snow from streets, airports and parking areas:
In other business, the board: ‘Approved Highfield’s
request to purchase a new power broom for road
cleaning. Highfield said he had bids of $2,100 and
$2,800; Mitchel instructed him to get a third bid
and buy from the lowest bidder…’8
Typically, 1,400 to 1,500 tons of sand and salt had
to be removed each spring from the city’s 39 miles
of streets. Power brooms swept spillover from the
sidewalks. Four or five laborers raked layers of
muddy junk from the parkways. Others hand-shoveled
some of the bulky dirt and debris from roadway
gutters and swales. Loaders scraped and scooped the
remaining …9
… Silica (dirt), viscosity and total base number
stayed well within acceptable ranges, too. Hubbard
had established 350 hours as the company’s official
service interval. Only asphalt pavers (because of
the heat) and power brooms (because of the dust)
remain at the 250-hour interval.10
Target streets will be posted with temporary No
Parking signs the day before city employees come
with leaf blowers and rakes to go after litter,
followed by power brooms sweeping the sidewalks and
a checking and cleaning of street catch basins.11
… or see the latest snow-fighting equipment and
learn how to use that equipment more effectively.
7 Telegraph Herald (Dubuque, IA), September 14, 2000.
8 Intelligencer Journal (Lancaster, PA), September 22, 1999.
9 Public Works, December 1998.
10 Construction Equipment, September 1998.
11 The Providence Journal-Bulletin, May 13, 1998.
Serial No. 75552930
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Thus power brooms are now replacing plows at
many airports.
“They sweep down to bare pavement. A plow
leaves a thin film of slush or snow and that can
freeze,” said a representative from a major …12
Jerry Naimoli, general superintendent of Anderson
Construction, remembers an out-of-control driver who
slammed into a power broom on his work site on I-95
… at 3 a.m. in November 2000. The driver was killed
upon impact. His workers just narrowly avoided
injury.13
The final category of uses of the term “Power Broom,”
according to applicant, refers to a vacuum-like device not
unlike the subject of an earlier, subsisting registration
initially cited as a bar to the instant application under
Section 2(d) of the Trademark Act. 14
FULL-FEATURES BREATHE LIFE BACK INTO VACUUM
MARKET:
While full-feature vacuum cleaners are relatively
venerable compared to gadgets like mop vacs and
power brooms, manufacturers have been beefing up
canister features to prevent them from getting
stale…15
THE BENEFITS OF SEAMLESS RUBBER ROOFING:
The application process first requires the
preparation of the existing surface. As the
seamless rubber roofing can be applied over the
existing roofing material, the procedure involves
the removal of any loose aggregate via a power
broom, a vacuum or other means…16
12 The Buffalo News, April 27, 1994.
13 The Philadelphia Inquirer, May 1, 2001.
14 Reg. No. 1114125 for the mark POWER BROOM issued to The
Scott Fetzer Company on February 27, 1979 for “electric vacuum
cleaners.” Section 8 affidavit accepted and section 15 affidavit
acknowledged; renewed. The word “Power” is disclaimed apart from
the mark as shown.
15 Discount Store News, January 14, 2000.
16 Indiana Manufacturer, April 1998.
Serial No. 75552930
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YOUR GINSU KNIFE LIKELY CUT ITS TEETH IN
ARKANSAS:
But company officials want to promote the two-year-
old Readi Vac line, which includes small brush
vacuums, power brooms, wet-dry vacs, portable
canister vacuums and hand-held models, Anderson
said.17
COOL TOOLS:
Sleek and sophisticated, the winner of an appliance
design award, the Quicksilver vacuum is intended to
offer the best features of uprights, canisters,
portable units and power brooms, according to
product manager Doug Barren.18
We also look to the evidence in the record showing how
applicant uses its mark. The designation “the PowerBroom”
is often used as a stand-alone noun (Exhibit K), or writers
have used the term “PowerBrooms,” the pluralized form of
the mark, again as a noun (Exhibit L). Nonetheless,
consistent with the discussion above, we do see the general
categories into which this product falls. For example,
applicant’s patent documents (Patent Nos. 5,161,318 and
5,269,082, Exhibit A) refer to the invention as a “hand-
held, readily portable power sweeping tool” relying upon “a
plurality of pliant fins19 extending radially outwardly”
from “a pair of drums.” Clearly, this machine has none of
the “twigs, straw, or bristles” associated with the
traditional broom. Applicant’s brochures list the
17 The Commercial Appeal (Memphis, TN), August 1, 1992.
18 The San Francisco Chronicle, September 22, 2001.
19 The record does show the option of replacing the fins with
a nylon brush assembly for some applications.
Serial No. 75552930
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specifications of this “gasoline-powered sweeper” (Exhibit
D), they compare its “Whole New Concept in Power Sweeping”
with “conventional sweeping tools” as well as with other
“hand power tools.” (Exhibit J). It is called a “cleanup
tool” (Exhibit I) and a “power sweepers” (Exhibit F).
Based on this entire record, we agree with applicant
that the evidence offered falls short of clearly
establishing genericness. The absence of any third-party
use of the term PowerBroom (or “power broom” or other
similar variations) in connection with hand-held, power-
operated sweeping devices supports a conclusion on this
record that such term is not generic in relation to
applicant’s goods. See In re American Fertility Society,
188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); and In re
Ferrero S.p.A., 24 USPQ2d 1155, 1157 (TTAB 1992) [“if a
term is generic for a type of a product that has been on
the market for decades, evidence of its use by others in the
marketplace should be available”].
By amending the application to set forth a claim of
acquired distinctiveness, applicant has in effect conceded
that the term PowerBroom is merely descriptive of its
goods. Such a claim is tantamount to an admission that the
term PowerBroom is not inherently distinctive and therefore
is unregistrable on the Principal Register, in light of the
prohibition in Section 2(e)(1) against merely descriptive
Serial No. 75552930
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marks, absent a showing of acquired distinctiveness pursuant
to Section 2(f). See Yamaha International Corp. v. Hoshino
Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed.
Cir. 1988) [“Where, as here, an applicant seeks a
registration based on acquired distinctiveness under Section
2(f), the statute accepts a lack of inherent distinctiveness
as an established fact”]. Although the Trademark Examining
Attorney has argued in a largely conclusory fashion that
this mark is “highly descriptive,” in light of our
disposition of this case, it is not necessary for us to
decide that particular question.
Accordingly, we turn to whether applicant has sustained
its burden of proof with respect to establishing a prima
facie case that the merely descriptive term PowerBroom has
in fact acquired distinctiveness in connection with
applicant’s goods. In this regard, applicant has submitted
a variety of types of circumstantial evidence in support of
its claim of acquired distinctiveness.
In addition to applicant’s basic declaration of use
under 37 C.F.R. §2.20 evidencing exclusive and continuous
use of the PowerBroom mark in connection with these goods
for ten years, applicant has submitted ten declarations
signed by distributors and dealers of applicant’s product
stating that they consider PowerBroom to be a source
identifier. Applicant alleges that is has spent more than
$100,000 on promotional activities over the past ten years –
Serial No. 75552930
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on print advertising,20 a videotape for dealers, as well as
brochures, catalogues, posters, etc. The record also shows
various unsolicited articles reviewing and discussing
applicant’s products found in many of the same types of
periodicals where the paid advertisements appeared. Among
these articles, Outdoor Power Equipment Magazine published
an article having a list of readers’ “most requested
products of 2001.” Applicant’s PowerBroom sweeping machine
was ranked as No. 4 in the “Sweepers” category and No. 17 in
the “Snow Removal Equipment” category. Although the
PowerBroom sweeping machine is sold in thirty-nine
countries throughout the Western Hemisphere, Europe, Asia
and Africa, applicant has not provided any evidence as to
the volume of sales. Finally, applicant conducted an
Internet search of “powerbroom” using the Google search
engine, reporting that most of the 203 hits were references
to applicant and its product involved herein.
Whether one concludes that this term is merely
descriptive or highly descriptive, the mere fact that
applicant has a decade of use is not sufficient for us to
find that it has acquired distinctiveness as a trademark.
Hence, we must consider the specific evidence of record.
20 Appearing in periodicals such as Ground Maintenance, Heavy
Equipment News, Construction Site News, Athletic Turf, Ground
Maintenance Equipment Specifier, Turf National, Landscape
Management and Outdoor Power Equipment.
Serial No. 75552930
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As to the form declarations of ten individuals, all
these declarants appear to be distributors or dealers of
applicant’s product. Each declarant states that he/she
considers “PowerBroom to identify the source or
manufacturer of [applicant’s] sweeping tool and is, I
believe, a trademark.”
Although we have considered these form declarations,
they are not the most probative type of evidence in this
situation for several reasons. First, before getting to
the critical conclusory language, these declarants
presumably read through the following tutorial passage.
This “Statement” about the difference between generic
designations and trademarks, as drafted by counsel, makes
it difficult for any literate person to choose the wrong
conclusion:
The company Shindaiwa is soliciting your statement as
concerns your understanding of the term PowerBroom as
applied to Shindaiwa sweeping tools. Your statement
may be used to assist Shindaiwa in its attempt to
register PowerBroom with the U.S. Patent and Trademark
Office.
Shindaiwa markets a sweeping tool that consists of a
drum having fins attached to the periphery of the
drum. A handle extends from the drum and the drum
with radiating fins is rotated by an engine to thereby
perform a sweeping action. Shindaiwa applies the term
PowerBroom to this sweeping tool with the intent to
distinguish the tool as a tool produced by Shindaiwa.
It is assumed that you are familiar with Shindaiwa’s
PowerBroom sweeping tool and only in that event are
you requested to sign this statement.
Serial No. 75552930
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This intended use of PowerBroom as a trademark will
have failed if you consider that the term PowerBroom
merely describes a product type and does not indicate
the source of the product. As an example, the term
“string trimmer” describes a product that is produced
by many manufacturers and is not a trademark. The
term Weed Eater likely indicates to you a string
trimmer produced and sold by a particular company and
is accordingly a trademark. In what category does the
term PowerBroom fit as far as you are concerned.
Similar to “string trimmer” or similar to “Weed
Eater”?
Second, even without this leading tutorial, these dealers
comprise a select population of individuals who likely know
the source of this unique product. See In re Edward Ski
Products Inc., 49 USPQ2d 2001 (TTAB 1999). Given these
individuals’ relationship with applicant, their
declarations play only a minor role in determining public
perception of the mark. More telling is the absence of
declarations or any other direct evidence from applicant
bearing on the perception of ultimate purchasers from among
members of the general public.
As to applicant’s Internet search of “powerbroom,” it
should come as no surprise that most of these Google hits
would be stories about applicant’s product. Applicant’s
search would find only those instances where this
combination of words has a single string of ten-letters
unbroken by a hyphen or a space. Clearly, doing a search
of “power broom” (as the Trademark Examining Attorney did)
would have returned a larger and more meaningful group of
Serial No. 75552930
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hits for the usage of the combined term. The fact that
applicant chose to eliminate the space between these two
words (“power” and “broom”), thereby compressing two words
into a single word, is immaterial to the result under
Section 2(e)(1) of the Lanham Act. Especially in light of
applicant’s special form drawing and repeated textual usage
(as PowerBroom with upper-case letters “P” and “B”),
relevant purchasers will readily interpret applicant’s mark
to be “power broom” in the context of applicant’s goods.
In fact, several NEXIS stories reprinted above that were
provided by the Trademark Examining Attorney referring to
applicant’s sweeping tool displayed the term as two words.
While applicant’s website does list thirty-nine
countries where Shindaiwa has dealerships, for a variety of
reasons, this listing is in no way probative of the
acquired distinctiveness of the term PowerBroom in the
United States. First, there is no information provided as
to annual (or cumulative) sales figures anywhere. Second,
it is not clear that each and every Shindaiwa dealer
carries this sweeping tool. Third, the only relevant
inquiry for our purposes would be the sales volume of
PowerBroom sweeping products within the United States.
Moreover, as to applicant’s promotional activities of
its PowerBroom product, it is not clear whether applicant’s
Serial No. 75552930
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promotional expenditures of $100,000 over a ten-year period
is a total figure for the United States or worldwide. Even
if this expenditure represents promotion limited to the
United States, we note that much of it would appear to be
directed to promotional items for dealers like videotape
and in-store posters. This volume of promotion is not very
persuasive under these circumstances, and clearly is not
sufficient for us to find this term has acquired
distinctiveness as a trademark. In any event, even this
approximation of applicant’s level of promotion
expenditure, like the other figures discussed above, is a
representation of counsel unsupported by a declaration of
applicant.
Finally, we consider the volume of inquiries during
2001 about the products appearing in advertisements and
editorials in the Outdoor Power Equipment magazine. As
shown in the listings, each of the entries begins with the
name of the manufacturer, e.g., Shindaiwa Inc., followed by
the parenthetical notation as to the model number, often
followed by a generic designation, i.e., “snow thrower” or
“sweeper/vacuum.” In some cases, as with the two listings
that applicant has highlighted, this parenthetical notation
includes the manufacturer’s product mark (PB270
PowerBroom). We conclude from this showing that with its
Serial No. 75552930
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ads in this magazine, applicant has been fairly effective
in creating a buzz among such readers over its unique
product. However, even when taken in concert with all the
other evidence of record, we do not find this piece of
evidence to be probative of the distinctiveness of the term
PowerBroom.
Accordingly, after considering all of applicant’s
evidence, we find that applicant has not met its burden of
demonstrating that PowerBroom is entitled to registration
under the provisions of Section 2(f) of the Trademark Act.
Decision: The refusal of registration on the ground
that applicant’s mark is generic is reversed; the refusal
of registration on the ground that applicant’s mark is
merely descriptive of the identified services and has not
acquired distinctiveness as a mark is affirmed.