Wenger S.A.

Trademark Trial and Appeal Board

May 14, 2021

85157939 (T.T.A.B. May. 14, 2021)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: May 14, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Wenger S.A.
_____

Serial No. 85157939
_____

David I. Greenbaum of Rimon, P.C.,
for Wenger S.A.
Matthew Galan, Staff Attorney, Law Office 100,
Robert Lavache, Supervisor, Legal Policy Office.1
_____

Before Wellington, Dunn and Lebow,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Applicant, Wenger S.A., applied to register the standard character mark SWISS
MILITARY on the Principal Register for “watches of Swiss origin,” in International
Class 14.2 The application is based on a claim that the mark has acquired

1 Laura Gorman Kovalsky was the Trademark Examining Attorney originally assigned to
this case and she filed the USPTO’s brief on appeal. 27 TTABVUE. Following Applicant’s
subsequent request for remand, the Office assigned responsibility of the application to Staff
Attorney Matthew Galan. 46 TTABVUE. We refer to Ms. Kovalsky when discussing the
Office’s arguments in its appeal brief.
2 Application Serial No. 85157939, filed October 21, 2010, based on Applicant’s allegation of
first use of the mark in commerce in 1989, under Section 1(a) of the Trademark Act, 15 U.S.C.
§ 1051(a).
Serial No. 85157939
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distinctiveness under Section 2(f) of the Trademark Act (“the Act”), 15 U.S.C. §
1052(f).
Applicant’s mark has ultimately been refused registration under Sections 1, 2, and
45 of the Act, 15 U.S.C. §§ 1051-1052, and 1127, on the ground that it is generic and
therefore incapable of indicating source.
For the following reasons, we reverse the refusal.
I. Background and Application Prosecution
Applicant is a watch manufacturer from Switzerland. Victorinox AG owns
Applicant, along with Applicant’s sister companies Victorinox Swiss Army, Inc.
(“VSAI”) and Victorinox Swiss Army Watch, S.A.3 VSAI is Applicant’s exclusive
distributor in North America for SWISS ARMY and SWISS MILITARY-branded
products, including watches, made by Applicant and its sister companies.4
Applicant first used SWISS MILITARY on watches in the U.S. in 1989.5 Applicant
owns a registration for the mark WENGER SWISS MILITARY, in standard
characters with a disclaimer of SWISS MILITARY, for “watches of Swiss origin” on
the Principal Register,6 as well as several registrations for SWISS ARMY-formative
marks for different goods, such as knives, watches, luggage, apparel, etc., including

3 11 TTABVUE 12 (Gold Dec. ¶ 2).
4 Id.
5 7 TTABVUE 141 (Eskridge Dec. ¶ 12).
6 Registration No. 473046, issued May 19, 2015; 7 TTABVUE 142 (Eskridge Dec. ¶ 13).
Serial No. 85157939
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the standard character mark SWISS ARMY for watches on the Principal Register,
without a disclaimer or claim of acquired distinctiveness under Section 2(f).7
Applicant filed the involved application on October 21, 2010. Since that time,
numerous Office Actions have issued raising various statutory refusals. We provide
some general history for the application before addressing the merits of the
genericness refusal.
The application, as filed, was first refused on the grounds that SWISS MILITARY
is merely descriptive and primarily geographically descriptive of watches, under
Sections 2(e)(1) and 2(e)(2) of the Act, 15 U.S.C. §§ 1052(e)(1) and 1052(e)(2).8 The
Examining Attorney also advised Applicant that the mark “appears to be generic”
and thus incapable of functioning as a source-identifier.9 In addition, the Examining

7 Registration No. 1734665, issued November 24, 1992. Id. Copies of Applicant’s registrations
are attached at Eskridge Exh. 1. Applicant makes several references in its appeal brief to the
SWISS MILITARY mark being “part of a family of marks.” See, e.g., 25 TTABVUE 12. The
existence of a family of marks sharing a common element may assist an Applicant in
establishing the distinctiveness of a new mark that also shares that common element. See In
re LC Trademarks, Inc., 121 USPQ2d 1197 (TTAB 2016). However, although there are
several registrations for a SWISS ARMY mark, this is but one other mark, not a family. See
Consolidated Foods Corp. v. Sherwood Medical Instruments Inc., 177 USPQ 279, 282 (TTAB
1973) (Ownership of a large number of registrations insufficient, per se, to establish
recognition of a family of marks.); and Daltronics, Inc. v. H. L. Dalis, Inc., 158 USPQ 475,
480 (TTAB 1968) (Family of marks argument not available to party that, as of relevant date,
was using only one mark.). In any event, upon review of Applicant’s evidence, including the
declaration of Marc Eskridge with related exhibits, Applicant has not established that
consumers have come to associate SWISS ARMY-branded goods, including knives, with
SWISS MILITARY-branded watches. In particular, although Eskridge Exh. 4 includes copies
of advertisements for such branded goods alongside each other, they are relatively few, the
extent of their circulation is unclear, and it is not always clear that they originate from the
same source. Cf. J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d
1889, 1891-92 (Fed. Cir. 1991) (discussion of evidence required for an assessment that a
common feature provides consumers with a recognition that the marks are of common origin).
8 March 22, 2011 Office Action.
9 Id.
Serial No. 85157939
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Attorney identified and attached copies of three prior-filed applications for marks
that, if registered, may serve as bases for refusal on the ground of likelihood of
confusion, under Section 2(d) of the Act, 15 U.S.C. § 1052(d).10
Applicant responded to the initial Office Action by arguing the mark is registrable
and, particularly, that the mark is not generic for watches.11 The application was
suspended pending the outcome of the three prior-filed applications.12
After four years of suspension, during which time the three prior-filed applications
went abandoned, the Examining Attorney resumed examination by issuing an Office
Action making final the merely descriptive and primarily geographically descriptive
refusals.13 In response, Applicant amended the application to seek registration based
on a claim that the mark has acquired distinctiveness, under Section 2(f) of the Act.14
The Examining Attorney acknowledged Applicant’s acquired distinctiveness claim
and refused registration on the genericness ground; this refusal was subsequently
made final.15 The Examining Attorney also rejected Applicant’s acquired
distinctiveness claim and maintained the finality of the merely descriptive and
primarily geographically descriptive refusals.16

10 Id. The Examining Attorney also raised a few other administrative requirements that were
later satisfied.
11 September 22, 2011, Response.
12 October 18, 2011, Office Action (Suspension Letter).
13 April 4, 2016 Office Action.
14 October 4, 2016, Response.
15 See October 26, 2016 and May 18, 2017 Office Actions.
16 Id.
Serial No. 85157939
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Applicant appealed and filed two requests for reconsideration that were denied by
the Examining Attorney.17 Applicant’s appeal was fully briefed on the issues of
genericness and, alternatively, acquired distinctiveness and mere descriptiveness.18
In her brief, the Examining Attorney withdrew the primarily geographically
descriptive refusal.19
Approximately three months after Applicant filed its appeal reply brief, the
application file was remanded to the Examining Attorney, at her request, so that an
additional refusal to registration could be made under Section 2(d) of the Act based
on a likelihood of confusion with the registered certification mark, SWISS, for goods
that include watches.20 On remand, the Examining Attorney issued Office Actions
that: made final the likelihood of confusion refusal based on the SWISS certification
mark, “reinstated” the finality of the primarily geographically descriptive refusal,
maintained the finality of the genericness refusal and rejection of the acquired
distinctiveness claim, and withdrew the merely descriptive refusal.21

17 See 1 TTABVUE (Applicant’s notice of appeal); 7 and 11 TTABVUE (Applicant’s requests
for reconsideration); and 4-6, 9 and 13-22 TTABVUE (Examining Attorney’s denials of the
requests for reconsideration).
18 25 TTABVUE (Applicant’s brief), 27 TTABVUE (Examining Attorney’s brief), and 31
TTABVUE (Applicant’s reply brief).
19 27 TTABVUE 19.
20 38 TTABVUE (Examining Attorney’s request for remand); 40 TTABVUE (Board Order
remanding jurisdiction of application back to the Examining Attorney). The SWISS
certification mark (Reg. No. 3047277) is for “horological and chronometric instruments,
namely, watches, clocks and their component parts and fittings thereof,” issued on January
24, 2006, and has been renewed. A copy of the registration was attached to the February 1,
2019 Office Action, TSDR p. 1-2.
21 February 1, 2019 and September 11, 2019 Office Actions.
Serial No. 85157939
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Applicant then filed a request for remand of the application to the Examining
Attorney for consideration of a letter from the Federation of the Swiss Watch Industry
(the “Federation”), owner of the cited SWISS certification mark.22 In the letter, the
Federation states that “Applicant, through its mother company . . . and sister
company . . . is itself a member of . . . ‘the Federation,’” and that the Federation
“consents to the use and registration by [Applicant] of the mark SWISS MILITARY
in connection with watches of Swiss origin.”23 In response to this request for
reconsideration, the Staff Attorney currently assigned responsibility for the
application expressly withdrew the likelihood of confusion and primarily
geographically descriptive bases for refusal, while asserting only the genericness
refusal as a basis for refusal being “maintained and continued.”24 Proceedings were
resumed.
In sum, and as noted at the outset of this decision, the sole issue before us now on
appeal is whether Applicant’s mark is generic.
II. Genericness - Applicable Law
Section 2 of the Act provides for registration on the Principal Register of marks
“by which the goods of the applicant may be distinguished from the goods of others.”
15 U.S.C. § 1052. “Generic terms do not so qualify.” In re Emergency Alert Sols. Grp.,
LLC, 122 USPQ2d 1088, 1089 (TTAB 2017). “A generic name--the name of a class of
products or services--is ineligible for federal trademark registration.” U.S. Patent &

22 44 TTABVUE. A copy of the letter is attached to Applicant’s request.
23 Id. at 7.
24 46 TTABVUE.
Serial No. 85157939
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Trademark Office v. Booking.com B.V., 140 S. Ct. 2298, 2020 USPQ2d 10729, *1
(2020). See also Royal Crown Cola v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d
1041, 1045 (Fed. Cir. 2018); H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc.,
782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986). The reason being that generic
terms “are by definition incapable of indicating a particular source of the goods or
services.” In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807,
1810 (Fed. Cir. 2001).
When the USPTO refuses to register a proposed mark on the ground that it is a
generic term, the examining attorney bears the burden of proving genericness. In re
Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016). The
Federal Circuit has set forth a two-step inquiry to determine whether a mark is
generic: First, what is the genus (category or class) of goods or services at issue?
Second, does the relevant public understand the term at issue primarily to refer to
that genus of goods? H. Marvin Ginn, 228 USPQ 530. “The critical issue in
genericness cases is whether members of the relevant public primarily use or
understand the term to be protected to refer to the genus of goods or services in
question.” Royal Crown, 127 USPQ2d 1046 (quoting Marvin Ginn, 228 USPQ at 530).
A. The Genus of Applicant’s Goods
Our first task is to determine the proper genus of the goods at issue. In defining
the genus, we commonly look to the identification of goods in the application. In re
Reed Elsevier Prop. Inc., 482 F.3d 1376, 82 USPQ2d 1378, 1380 (Fed. Cir. 2007);
Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991)
Serial No. 85157939
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(a proper genericness inquiry focuses on the identification set forth in the application
or certificate of registration); In re Serial Podcast, LLC, 126 USPQ2d 1061, 1063
(TTAB 2018) (proper genus is generally “set forth by the recitation of services in [the]
subject application.”). The Examining Attorney and Applicant agree that the
identification of goods in the application appropriately sets forth the genus of goods
at issue—”watches of Swiss origin.”25 We concur.
B. Relevant Public Understanding of SWISS MILITARY
Turning to the second part of the genericness test, we consider whether the
relevant public understands SWISS MILITARY to primarily refer to watches of Swiss
origin. In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1638 (Fed. Cir.
2016). “The relevant public for a genericness determination is the purchasing or
consuming public for the identified goods.” Frito-Lay N. Am., Inc. v. Princeton
Vanguard, LLC, 124 USPQ2d 1184, 1187 (TTAB 2017) (citing Magic Wand, 19
USPQ2d at 1553). See also Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d
1341, 1351 (TTAB 2013). In this case, there are no restrictions or limitations to the
channels of trade and we therefore construe the relevant purchasing public to be
purchasers, including prospective purchasers, of watches of Swiss origin.
“Evidence of the public’s understanding of the term may be obtained from any
competent source, such as purchaser testimony, consumer surveys, listings in

25 25 TTABVUE 14 (Applicant, in its brief, states “[t]he class, or genus, of goods at issue is
‘watches of Swiss origin”); 27 TTABVUE 5 (the Examining Attorney states “the application
identifies the goods as ‘watches of Swiss origin,’ which adequately defines the genus at
issue”).
Serial No. 85157939
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dictionaries, trade journals, newspapers and other publications.” Merrill Lynch,
Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987);
see also Cordua Rests., 118 USPQ2d at 1634. In some cases, dictionary definitions
and an applicant’s own description of its goods may suffice to show genericness. In re
Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1112 (Fed. Cir. 1987); see also In
re Am. Fertility Soc’y, 188 F.3d 1341, 51 USPQ2d 1832, 1836 (Fed. Cir. 1999).
We have reviewed and considered all evidence submitted.26 In view of the refusals
made and withdrawn during the long prosecution of this application, we do not
recount all submissions or necessarily discuss each piece of evidence. Rather, the
following is a discussion of some of the evidence we find pertinent to the genericness
refusal, along with arguments presented by the Examining Attorney and Applicant.
1. The Examining Attorney’s Arguments and Evidentiary Support
The Examining Attorney contends that the evidence “clearly indicates that both
the terms SWISS and MILITARY, as well as the composite term SWISS MILITARY,
are generic for watches.”27 In particular, she asserts “Applicant’s own use of the term
‘Swiss’ in its identification and the existence of [the Federation] clearly evidences the

26 Specifically, we note the Examining Attorney attached evidence to: March 22, 2011 Office
Action, TSDR pp. 2-53; April 4, 2016 Office Action, TSDR pp. 2-38; October 26, 2016 Office
Action, TSDR pp. 2-59; May 18, 2017 Office Action, TSDR pp. 2-94; January 6, 2018 Office
Action, TSDR pp. 2-38; April 30, 2018 Office Action, TSDR pp. 2-119; and February 1, 2019
Office Action, TSDR pp. 2-86.
Applicant submitted evidence with its responses (including requests for reconsideration or
remand) filed on: September 22, 2011, TSDR pp. 5-12; April 26, 2017, TSDR pp. 9-31;
November 20, 2017 (at 7 TTABVUE 49-456); April 2, 2018 (at 11 TTABVUE 9-34); and
October 16, 2019 (44 TTABVUE 7).
27 27 TTABVUE 5.
Serial No. 85157939
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common use and understanding in the watch industry of the generic term ‘Swiss’ as
related to watches.”28 Referring to the Federation’s SWISS certification mark, she
argues that “[t]he term ‘Swiss’ is not capable of serving as a single source indicator;
it is only capable of serving as a certification of the Swiss origin of watches.”29 The
Examining Attorney also argues that “military” is generic for watches, relying on
evidence that “includes numerous retail store offerings of watches referred to both as
a category (‘military watches’) and with the term ‘military watch’ following a brand
name.”30 With respect to the composite mark, SWISS MILITARY, she concludes that
the evidence “shows professional watch dealers, large retailers and consumers use
and understand the common, generic term ‘Swiss military.’”31
a. Evidence of Public Understanding of the Individual Terms: SWISS
and MILITARY
SWISS is defined as an adjective as “of, relating to, or characteristic of
Switzerland or the Swiss.”32 This term is used in the identification of goods, which is
the agreed-upon genus of goods, namely, “watches of Swiss origin.” Use in the

28 27 TTABVUE 6.
29 February 1, 2019 Office Action, TSDR p. 6.
30 Id.
31 Id. at 8.
32 We take judicial notice of this definition from the online Merriam-Webster dictionary
website. https://www.merriam-webster.com/dictionary/Swiss (accessed 16 Mar. 2021). The
Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C.
Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983), including online dictionaries that exist in printed format or regular fixed
editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
The Examining Attorney also submitted the following definition: “[adjective] 1. Someone who
is Swiss is from Switzerland. 2. Relating to Switzerland or its culture,” from online MacMillan
Dictionary (www.macmillandictionary.com), October 26, 2016 Office Action, TSDR p. 41.
Serial No. 85157939
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identification of goods is probative on the issue of genericness. See In re Johanna
Farms, Inc., 222 USPQ 607, 609 (TTAB 1984) (“The term ‘yogurt’ is concededly the
name of the goods. That fact is uncontrovertible where, as here, the same term has
been used in the identification of goods for which registration is sought.”). While it is
perhaps common knowledge, there is also evidence showing that, in the context of
watches, Switzerland is renowned for watchmaking. The Examining Attorney
submitted printouts from the Wikitravel website wherein Switzerland is described as
“famous for a few key goods,” listing “watches” first.33 Indeed, the article describes,
“Switzerland [as] the watch-making capital of the world, and ‘Swiss Made’ on a watch
face has long been a mark of quality.”34
To further show the significance of the term SWISS in connection with watches,
the Examining Attorney submitted printouts from the website of the Federation,
owner of the SWISS certification mark for watches that gave consent to Applicant’s
use of SWISS in its mark for watches of Swiss origin.35 She argues that the

33 February 1, 2019 Office Action, TSDR p. 72.
34 Id.
35 See note 14. The Federation also owns the certification mark SWISS MADE for watches
(Registration No. 3038819, issued January 10, 2010). A copy of the registration was
submitted by the Examining Attorney with the February 1, 2019 Office Action, TSDR p. 83.
We further note that the Federation successfully defended the SWISS and SWISS MADE
registrations against a genericness claim in a cancellation proceeding. See Swiss Watch Int’l
Inc. v. Federation of the Swiss Watch Ind., 101 USPQ2d 1731 (TTAB 2012). In that decision,
the Board ultimately held “the evidence shows that the geographic connection between
watches and Switzerland is very strong, and that when the terms SWISS and SWISS MADE
are used in connection with watches, consumers will understand that they signify the
geographic origin of the goods, and will not regard the marks as generic terms.” Id. at 1744.
We hasten to add that neither Applicant nor its applied-for mark were party to or the subject
of that proceeding, and the decision was based on a different record; thus, that decision is not
binding in this appeal.
Serial No. 85157939
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information on the website shows “the descriptive quality implication of calling a
watch, ‘Swiss.’”36 Specifically, the Examining Attorney relies on the website to
“indicat[e] that there is, in fact, a Swiss watch industry” and that the Federation is
engaged in “stopping the production and sale of counterfeit Swiss watches.”37 The
following is an excerpt from the website:38
.

36 27 TTABVUE 6.
37 Id.
38 April 4, 2016 Office Action, TSDR p. 1.
Serial No. 85157939
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The Federation’s consent letter further states that the SWISS “certification mark
is used exclusively by Swiss watchmakers, provided their watches meet [the
Federation’s] certification standards.”39
The Examining Attorney also relies on printouts from the Best Reviews Guide
website providing the following lists: “10 Best Swiss Watch Brands,” “10 Best Swiss
Made Watches,” and “10 Best Swiss Watches.”40 The Examining Attorney argues that
these lists constitute “further evidence of the generic nature of the term ‘Swiss’ in
relation to watches.”41. Applicant does not offer evidence on how the relevant public
perceives the term SWISS for watches, merely stating “[t]he term ‘Swiss’ taken alone
might describe a quality of certain watches as being of Swiss origin.”42
Based on this record, we find the term “SWISS” is clearly a geographically
descriptive term, meaning that Swiss watches are perceived by the relevant public as
watches from Switzerland, and not a type of watch that would originate elsewhere.
The evidence further shows that, because Switzerland is renowned for watchmaking,
the term SWISS is likely to carry significant weight and play an important role in the
minds of the relevant consumer, including prospective purchasers, of watches of
Swiss origin. We acknowledge that some of the evidence shows use of the term SWISS
in connection with watches, or watch accessories, without any additional reference to

39 44 TTABVUE 7.
40 April 30, 2018 Office Action, TSDR pp. 13-21.
41 Id., p. 1.
42 25 TTABVUE 17.
Serial No. 85157939
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the goods coming from Switzerland.43 That evidence is treated as neutral in our
analysis because it does not clearly establish that the term has a non-geographic
meaning; it merely shows use of the term without its explicit geographic connection.
To be clear, although a geographic term may be generic for goods, the record does
not establish that this is the case with SWISS for watches of Swiss origin. See, e.g.,
Int’l Dairy Foods Ass’n v. Interprofession du Gruyère and Syndicat Interprofessionnel
du Gruyère, 2020 USPQ2d 10892, at *9 (TTAB 2020). In Interprofession du Gruyère,
the Board found the applicant’s proposed certification mark, GRUYERE, is generic
for cheese because the record showed that consumers understand the term “as a
designation that primarily refers to a category within the genus of cheese that can
come from anywhere,” and not just from the Gruyère region of Switzerland and
France. The Board in that case relied on dictionary definitions of “gruyere cheese,”
frequent third-party use of “gruyere” in lowercase letters to refer to a type of cheese,
as well as evidence showing that “gruyere” cheese originates from other geographic
regions, like Wisconsin.
Indeed, one can easily think of several other geographic terms that, when used on
or in the context of certain goods, lose their geographical connotation, e.g., “french”
or “russian” for salad dressings, “swiss” for “swiss cheese,” etc. In other words, french
dressing is a type of salad dressing and does not necessarily describe a salad dressing

43 For example, the Walmart website advertises a Technosport-branded watch described as
“Men’s World Timer GMT Swiss Chronograph Military Green Watch” and having an
“International Warrant,” but gives no indication of the watch’s country of origin. January 6,
2018 Office Action, TSDR pp. 7-9. Amazon also lists a watch (or watch strap) for sale that is
advertised as “LsvtrUS Men’s Sport Style Swiss Military Army Pilot Fabric Strap Watch,”
again with no country of origin information. Id. at p. 13.
Serial No. 85157939
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from France. In contrast, the record in this case does not show that SWISS clearly
refers to a type of watch or that it has a non-geographical meaning. Rather,
consumers of watches of Swiss origin will primarily understand the term as
describing the country of origin of the watches. Again, although the term SWISS may
play an important role in a consumer’s purchasing decision and may connote a watch
of higher quality because of the country’s reputation for watchmaking, the evidence
in this case does not establish that it describes a type or genus of watch.
With respect to the term MILITARY and in support of her argument that it is
“also clearly identified as a generic term for a type of watch,”44 the Examining
Attorney submitted a significant amount of Internet evidence, including
advertisements for watches where the term “military watch” is preceded by a brand
name, retail websites categorizing or listing different “military watches” for sale,
online discussion forums for “military watches,” and articles reviewing “military
watches” and their attributes. Some examples from the record are:
 Printouts from the Watchismo retail website listing a variety of different
branded watches for sale under the banner “military watches,” with some
watches including the term “military” after the brand name. For example:45

44 27 TTABVUE 6.
45 April 4, 2016 Office Action, TSDR pp. 17, 19, and 29 (printout excerpts from
www.watchismo.com website).
Serial No. 85157939
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.
 Printouts from an online discussion forum called “The Military Watch
Resource (MWR)” describing itself as a “site for enthusiasts of military
timepieces” and stating that “[a]ll discussions related to military timepieces,
and watches in general are welcome.”46

 A Google shopping search for “military watches” lists the following watches for
sale from various online sites:47

46 Id., p. 6.
47 March 22, 2011 Office Action, TSDR p. 12.
Serial No. 85157939
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 Printouts from watch manufacturer, MTM, describing itself on its website as
“the internationally recognized leading manufacturer of tactical military
watches” and one watch model as “the most durable and innovative military
watch[].”48

 An article from the “Worn and Wound” website—”Time Spec: A Primer on
Military Watches” describing a “military watch” as “[s]trictly utilitarian . . .
made popular by their simple yet functional design, sturdy construction” and
there being “a world of military watch collecting.”49

In view of this evidence, we reject Applicant’s assertion that “The Examiner has
provided no evidence to suggest that consumers refer to a type of watch as
‘military.’”50 On this record, we find the term “MILITARY” is generic for, and
commonly understood by the relevant public to refer to, a type or category of watch.
b. Evidence of Public Understanding of the Composite: SWISS
MILITARY
In addition to her contention that each word in Applicant’s mark is generic, the
Examining Attorney argues that the composite, SWISS MILITARY, is understood as
a “common, generic term used in the watch industry.”51 She states “the record
actually consists of a multitude of evidence of usage of the wording ‘Swiss military’

48 Id., p. 15.
49 October 26, 2016 Office Action, TSDR pp. 45-59.
50 25 TTABVUE 17. Applicant submitted the declaration of James Lamdin, a collector of
watches, freelance journalist, and watch retailer, who averred that “there is no specific,
unique type of watch that is referred to as a ‘military watch,’ nor is ‘military watch’ a
designation for a particular style of watch, as in the case of ‘diving watch’ or ‘chronograph’
…” 11 TTABVUE 10. Although we consider Lamdin’s testimony somewhat probative overall,
we regard Lamdin’s conclusory statement about “military watches” with some skepticism in
view of the amount and type of evidence showing the term “military” to indeed refer to a
category or type of watch.
51 27 TTABVUE 8.
Serial No. 85157939
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when referring to watches of various manufacturers,”52 and points to Internet
evidence showing “Swiss military,” or the component words in proximity to one
another on or in connection with watches. The following are some examples of
watches advertised on retail websites:
 A Marathon-branded watch advertised on Amazon, described as a “Swiss Made
Military Field Army Watch . . .” and “Swiss made authentic military watch”:53

 A Dueber-branded pocket watch on Amazon, described as a “Dueber Swiss,
Military Style Pocket Watch, Black Dial, Luminous Hands, Satin Steel”54

 A watch advertised on a Delta Kappa Epsilon fraternity gear website,
described as “DKE Commander Watch. DKE Swiss military style with
calendar, stainless steel case….”55

 An advertisement on Amazon for 3 watches described as “LsvtrUS Men’s Sport
Style Swiss Military Army Pilot Fabric Strap Watch[es].”56

52 Id.
53 May 18, 2017 Office Action, TSDR p. 6.
54 Id., p. 31.
55 Id., p. 85.
56 January 6, 2018 Office Action, TSDR p. 13.
Serial No. 85157939
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 An advertisement on Amazon for watches described as “Vavna Luxury Brand
NAVIFORCE Fashionable Japan Movement Swiss Military Men’s Sports
Watches 30M Waterproof Nylon Strap Watch-Red.”57

 A bulk (“100 pieces … Min. Order”) watch purchase offering for watches from
China advertised as “weijieer men swiss military style watch” on the
Alibaba.com website.58

There is also evidence of use by other entities of SWISS MILITARY as a particular
brand, collection name or model. Specifically, the evidence shows that in addition to
Applicant, a handful of different watch companies, such as Hanowa, Chrono, and CX
Swiss Military (Montres Charmex), use SWISS MILITARY in a manner consistent
with use as a mark, sub-brand, or identifying a line for their watches. For example:

57 January 6, 2018 Office Action, TSDR p. 19.
58 May 18, 2017 Office Action, TSDR p. 86. We note that “Alibaba.com” touts itself as a “Global
trade” website and the price for the watches is in “US $.” We thus conclude that the target
audience includes U.S. consumers. In re Bayer AG, 488 F.3d 960, 82 USPQ2d 1828, 1835
(Fed. Cir. 2007) (“Information originating on foreign websites or in foreign news publications
that are accessible to the United States public may be relevant to discern United States
consumer impression of a proposed mark.”)
Serial No. 85157939
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59

60 61

59 April 30, 2018 Office Action, TSDR p. 110.
60 Id., p. 111.
61 Id., p. 112.
Serial No. 85157939
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.62

As shown in the aforementioned examples, Applicant, and the three other
watchmaking entities, use the term “Swiss Military” prominently (top center) on the
actual watch faces.63
Additional evidence shows “Swiss Military,” by itself, without any accompanying
house mark, as brand—for example, the Ashford retail website lists the following
watches:

62 Id., p. 82.
63 With respect to the “CX Swiss Military Watch 1947,” it is not possible to read any of the
written terms on the watch due to the quality of the printout. However, “Swiss Military” does
appear on the watch that appears alongside it (described as “Swiss Military by Charmex
Infantry Men’s”), and these two watches are from the same entity -- Charmex.
Serial No. 85157939
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.64

In addition to being listed as one of the retail site’s “brands,” the collection of
SWISS MILITARY-branded watches offered on the Ashford retail website are
accompanied by an explanation that “Swiss Military Watches is a brand” for “Swiss
made timepieces, thoroughly rugged . . . created to meet the most rigorous military
requirement as well as appeal to the leisure and pleasure seeking consumer. … The
tradition of precision Swiss timekeeping and impeccable craftsmanship is well very
represented in this brand.”65 (Emphasis added). These watches also have “Swiss
Military” prominently placed top center on the watch face.
On another retail website, JOMASHOP.COM, there are eleven different
“Collection[s]” of “Swiss Military [Sealander, Freedom, Dreamland . . .] Watches”
listed for sale.66 Both “Swiss Military” and “Wenger Swiss Military” (Applicant) are
listed as watch brands on this website.67

64 October 26, 2016 Office Action, TSDR p. 31.
65 Id., p. 35.
66 March 22, 2011 Office Action, TSDR pp. 34-36.
67 Id.
Serial No. 85157939
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The Examining Attorney also relies on printouts from the Overstock website
containing question and answer information in the form of “FAQs About Swiss
Military Watches.”68 We regard this evidence, however, as inconsistent and confusing
in its treatment of the term SWISS MILITARY. On the one hand, as the Examining
Attorney points out, the term “Swiss military” appears a couple times with a
lowercase letter “m” and is used to describe watches that are “generally marketed to
outdoor enthusiasts” and “also fashionable, making them the perfect wristwatch for
daily wear.”69
On the other hand, the Overstock guide primarily displays and uses the term
“Swiss Military” in a manner consistent with that of a brand name. Specifically, the
guide explains that “watches from Swiss Military are meant to be highly functional.
… Sport watches from Swiss Military are perfect for women and men with active …
Swiss Military produces watches in a variety of price categories.”70 Indeed, aside from
the two instances already mentioned, the letter “M” in “Swiss Military” is capitalized
throughout the guide, thus reflecting an intent of the author to convey its perception
as a brand name, which may thus indicate how readers’ will perceive the term. See
In re Country Music Ass’n Inc., 100 USPQ2d 1824, 1831 (TTAB 2011) (“[I]n the

68 April 30, 2018 Office Action, TSDR pp. 2-6.
69 Id.
70 Id., pp. 3-4. We further note the guide states that “Swiss Military watches are produced by
three different sub-brands: Wenger, Hanowa and CX Swiss Military Watch.” Id. This
statement is nonsensical. A “sub-brand” refers to an extension or added brand to an already
existing brand as used by the same entity. Given they are three separate entities and
Applicant has opposed applications involving Hanowa and Charmex (“CX Swiss Military
Watch”), the “sub-brand” is simply not plausible and incorrect.
Serial No. 85157939
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English language, initial capitalization of a term or phrase is generally used to
designate a brand name, as opposed to a generic term.”) See also Plyboo Am, Inc. v.
Smith & Fong Co., 51 USPQ2d 1633, 1638 (TTAB 1999) (Board found in
descriptiveness opposition that evidence showed that applicant’s “term ‘plyboo’ is
clearly used as a trademark for applicant’s goods--in that the first letter of such term
(like a proper noun or proper adjective) is capitalized … and the term is followed (or
preceded) by generic terminology for the goods ... .”) (emphasis in original).
Furthermore, the plain language “watches from Swiss Military” and “Swiss Military
produces watches” reinforces an understanding that “Swiss Military” is identifying a
source or brand of watches, rather than a type of watch.
The Examining Attorney further points to a printout from the Cabela’s retail store
website informing consumers that they can “[c]hoose men’s watches, wrist watches
and Swiss military watches that [have different features] . . . from leading brands
including Luminox wrist watches, Timex watches, Wenger Swiss military watches
and much more from Cabela’s.”71 The Examining Attorney argues that “by its lack of
capitalization of ‘military’ when referring to [A]pplicant’s watches--Wenger® is the
brand, and ‘Swiss military watches’ is generic for the goods.”72 However, we note that
“Swiss military” does not appear in the “By Type” menu of watches on the Cabela’s

71 March 22, 2011 Office Action, TSDR pp. 14-20.
72 27 TTABVUE 10.
Serial No. 85157939
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website73 and appears only once more as “Swiss Military” (with a capitalized “M”) in
a listing for one of Applicant’s watches.74
2. Applicant’s Arguments and Evidence
Applicant argues that “[e]ven if the word ‘military’ or the ‘military watch’ has
significance in the watch industry . . . SWISS MILITARY is—as a unitary phrase—a
proper adjective as a whole, which is used as a brand of watch.”75 As to the evidence
submitted by the Examining Attorney, Applicant contends that it “shows use of
‘Swiss’ and ‘military’ in close proximity, but simply not as SWISS MILITARY [or in]
other cases, SWISS MILITARY is being used by third party infringers.”76 Applicant
acknowledges other watchmakers have used “Swiss Military” as a mark, or part of a
mark, and specifically identifies the companies Chrono, Montres Charmex, and
Hanowa as purported “infringers.”77 Applicant, however, argues that consumers have
had “very little exposure to the watches offered by infringers.”78 Applicant also points
to what it calls “successful” enforcement actions, referencing opposition proceedings
it instituted against the prior-filed applications for the marks CX SWISS MILITARY
WATCH and SWISS MILITARY HANOWA.79

73 March 22, 2011 Office Action, TSDR p. 15.
74 Id. at p. 18.
75 31 TTABVUE 6.
76 Id. at 7.
77 26 TTABVUE 11-12.
78 Id. at 12.
79 Id. at 11; the Examining Attorney acknowledged these proceedings stating that she made
“a quick review of Opposition Nos. 91198547 and 91177749, filed by applicant” (27 TTABVUE
15). However, as the Examining Attorney points out, these proceedings were terminated
Serial No. 85157939
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In addition, Applicant relies on the following evidence.
a. Survey
Applicant commissioned a “Teflon” style survey with a stated purpose of
determining whether SWISS MILITARY for watches of Swiss origin is understood by
relevant consumers to be a generic term or a brand name.80 Applicant argues that
this survey shows that “the primary significance of the mark SWISS MILITARY is
that of a specific brand name of a watch, and not as a common or class name for
watches of Swiss origin.” The survey consisted of 200 respondents and was conducted
over a two week period in November 2017 using a “Teflon” format whereby the
respondents were first provided with instructions and examples of “brand” and
“common” names and then tested to ensure that they understood the difference and
can properly identify what they believed to be brand and common names.81 The
respondents were screened to only include only those who either “purchased a watch
in the past two years and had either purchased a watch of Swiss origin in the past
two years or considered purchasing a watch of Swiss origin” or “were likely to
purchase a watch in the coming 12 months and would consider a watch of Swiss

without any adjudication on the merits or determination of rights in a SWISS MILITARY
mark.
80 7 TTABVUE 76-104. This includes the declaration and “Expert Report of Hal Poret,” signed
under penalty of perjury by Hal Poret, President of Hal Poret, LLC, a survey research and
survey consulting firm. Copies of the survey questions and results are also attached.
The “Teflon” survey is so named after a style of consumer survey introduced in E.I. DuPont
de Nemours & Co. v. Yoshida Int’l., Inc., 393 F. Supp. 502, 185 USPQ 597 (E.D.N.Y.1975),
involving a determination of whether the term “Teflon” was a valid trademark and not a
generic name for a non-stick coating.
81 Id. at 77, 80.
Serial No. 85157939
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origin.”82 The demographics of the respondents were spread across different age
groups above the age of 21, geographic region, and sex.83
After a short tutorial on the differences between “brand” and “common” names,
the qualified respondents were given a test to see if they could correctly answer
whether certain terms were a brand or a common name. If they answered correctly
and remained qualified,84 the respondents were asked about 7 different terms (all
displayed in uppercase bold lettering and in randomized order): SWISS MILITARY,
CHRONOGRAPH, ZENITH, TAG HEUER, STAINLESS STEEL, MONT BLANC,
and DIVE WATCH. The respondents were asked:
“Do you think this is a …

1. Brand name
2. Common name
3. Don’t know”

[“Brand name” and “Common name” response choices were rotated evenly].
With regard to SWISS MILITARY, the respondents’ answers were as follows:
57% Brand name
35% Common name
8% Don’t know.85

82 Id.
83 Id. at 80-81; 55/45 % of those identifying as male/female; 33/44/23 % in age groups (21-
34)/(35-54)/(55 or older); and
84 Before the survey was administered, other control measures were taken. For example, the
survey was terminated if the respondent stated they were under the age of 21, or worked in
advertising or market research, or did not understand the directions, etc.
85 The results for the other terms, given in percentages and order of “brand/common
name/don’t know” were: MONT BLANC—94/1/5; TAG HEUER—91/3/6; Zenith—91/5/4;
CHRONOGRAPH—17/76/7; DIVE WATCH—20/71/9; and STAINLESS STEEL—4/96/0.
Serial No. 85157939
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The survey report provides that “the clear majority of relevant prospective
purchasers of swiss watches (57%) understood SWISS MILITARY to be a brand name
and only a minority (35%) answered that SWISS MILITARY is a common (generic)
term.”86 Mr. Poret concludes in the report that “[b]ased on the survey results it is my
opinion that the primary significance of the term SWISS MILITARY in the context of
watches of Swiss origin is as a brand name and not a generic term.”87
We find no fatal or inherent flaws with the methodology in which the survey was
conducted88 or any other reason to disregard the survey evidence. While the level of
awareness of SWISS MILITARY as a brand name falls below that attributed to the
other brands of watches in the survey (see Note 85), a clear majority of survey
respondents identified SWISS MILITARY as a brand, not a common name, and this
favors a finding that term is not generic. Moreover, although the survey is not
overwhelming in the number of persons interviewed, 200 respondents who passed the
hurdles to qualify as members of the relevant purchasing public is not an
insignificant number.
As already noted, a consumer survey is one possible type of evidence that can be
considered in determining the public’s understanding of the term. Merrill Lynch, 4
USPQ2d at 1143. Indeed, we keep in mind the Federal Circuit’s admonition to the

86 7 TTABVUE 81.
87 Id.
88 We do note, however, that one question in the survey asks, “Do you or does anyone in your
household work for a company or store that makes or distributes watches?” 7 TTABVUE 104.
It is not clear if the survey was terminated if the answer was “yes,” and the results of the this
question were not provided. Without more information, we consider this a potential flaw in
the survey, but not fatal.
Serial No. 85157939
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Board that it cannot “disregard the results of survey evidence without explanation”
and “must give appropriate consideration to the proffered survey evidence.” Princeton
Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 USPQ2d 1827, 1834 (Fed.
Cir. 2015). We are also mindful of the Supreme Court’s guidance, in determining
whether BOOKING.COM was generic, that the question of genericness “depends on
whether consumers in fact perceive that term as the name of a class or, instead, as a
term capable of distinguishing among members of the class” and that in general,
“[s]urveys can be helpful evidence of consumer perception but require care in their
design and interpretation.” USPTO v. Booking.com B.V., ___ U.S. ___, 140 S. Ct. 2298,
2020 USPQ2d 10729, *7 and *16 n. 6 (2020).89
We are also aware of the limitations of Teflon surveys in the context of genericness
determinations, particularly in situations where a party asserting ownership of a
mark previously did not control the term at issue as a coined or arbitrary term. See,
e.g., Frito-Lay, 124 USPQ2d at 1202-03 (discussion of the relevance and probative
value of surveys).90 On remand from the Federal Circuit, the Board in Frito-Lay not

89 We further note that Professor McCarthy opines on the subject by stating that it would be
“clearly erroneous” to maintain a “strict view” that surveys are irrelevant unless the
contested designation was once a coined or arbitrary trademark. 2 J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition § 12:17.25 (5th. Ed.). In Professor
McCarthy’s view, the “message of the Supreme Court [in Booking.com] was that genericness
depends upon public perception” and a survey “can be valuable evidence to prove or disprove
whether a term is perceived by the relevant public as a generic name.” Id.
90 The Board’s Frito-Lay decision reached in 2017 was the culmination of an earlier Board
decision that was appealed to the Federal Circuit and remanded back to the Board. See
Princeton Vanguard, 114 USPQ2d 1827. The Frito-Lay proceeding is currently before the
U.S. District Court for the Western District of North Carolina, pursuant to a 15 U.S.C. §
1071(b) request for review of the Board’s 2017 decision. See Snyder’s-Lance, Inc.; Princeton
Vanguard, LLC v. Frito-Lay North America, Inc., 991 F.3d 512 (4th Cir. 2021) (reversing and
remanding decision back to district court).
Serial No. 85157939
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only found that the defendant’s proposed mark PRETZEL CRISPS was not inherently
distinctive, but also relied on evidence showing “at least three citations to the term
‘pretzel crisps’ in a descriptive manner by third-parties” before the defendant attested
to first use of mark. Id. Based on those circumstances and relying on the Weiss Noodle
Co. v. Golden Cracknel and Specialty Co., 290 F.2d 845, 129 USPQ 411 (CCPA 1961)
decision, the Board in Frito-Lay found that the survey results concerning PRETZEL
CRISPS were “not relevant, and instead merely reflect[ed] … ‘de facto secondary
meaning,’” a term used to describe the situation of a party “by advertising, [seeks] to
convert common descriptive names, which belong to the public, to their own exclusive
use.” Frito-Lay, 124 USPQ2d 1203 (internal description of ‘de facto secondary
meaning’ from Weiss Noodle, 129 USPQ at 414).
While the circumstances in this appeal are in some respects similar to those in
Frito-Lay—e.g. involving double-word marks, with the first word in each mark that
is used in the identification of goods—they are dissimilar in other respects. For
instance, the type and amount of evidence adduced by the parties in the Frito-Lay
opposition differs significantly from the record in this ex parte appeal. Specifically,
the Board found “many instances in the record where the term ‘pretzel crisps’ is set
forth in lower case, with no apparent reference to the term as a brand, or to
Defendant, indicating an understanding by the relevant public that the term ‘pretzel
crisps’ refers to a product rather than to a single producer thereof.” Frito-Lay, 124
USPQ2d 1190. The Board pointed to more than 20 different instances, many from
known publications, where the term “pretzel crisps” was used in this manner. Id. In
Serial No. 85157939
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contrast, the record before us now consists of very few instances where “Swiss
military” (letter “m” in lower case) is used in the same manner.
In addition, the record in Frito-Lay included three expert surveys, two from
defendant and one from plaintiff, and the Board noted that “[u]nsurprisingly, the
surveys reached differing results on the question of whether the term PRETZEL
CRISPS is generic in relation to ‘pretzel crackers,’ and each party has criticized the
survey conducted by its adversary.” Id. at 1195. In this proceeding, we have a single
survey before us that, as discussed, supports a finding that the mark is not generic.91
By seeking registration based on a Section 2(f) claim of acquired distinctiveness,
Applicant acknowledges that SWISS MILITARY is not an inherently distinctive
term. See Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92
USPQ2d 1626, 1629 (Fed. Cir. 2009). However, unlike Frito-Lay where there was
significant evidence of third-party use of the term PRETZEL CRISPS prior to the
applicant’s adoption, here there is no evidence of third-party use of the term SWISS
MILITARY in connection with watches, either descriptively or in a trademark
manner, prior to Applicant’s attested first use of the term in commerce in 1989.92

91 We keep in mind the practicalities of an ex parte appeal and that resources available to
USPTO examining attorneys are limited. See, e.g., In re Pacer Tech., 338 F.3d 1348, 67
USPQ2d 1629, 1632 (Fed. Cir. 2003). For example, examining attorneys do not commission
their own surveys to rebut the results of surveys conducted at the behest of applicants.
92 In addition to Applicant’s attestation of first use of SWISS MILITARY on watches since
1989, the record shows Applicant’s actual use at least as early as 1996. See, e.g., Eskridge
Exh. 2-4 (comprising advertisements, including nationally distributed magazines, for
Applicant’s watches under the brand “Swiss Military”). 7 TTABVUE 326-360.
Serial No. 85157939
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For the foregoing reasons, we find the facts in this case distinguishable from those
in Frito-Lay and thus consider the survey to have some probative value. In other
words, on the record before us, we cannot conclusively label the survey result for the
term SWISS MILITARY as merely a reflection of Applicant’s acquisition of rights in
a common term that was already in use, i.e., obtaining “de facto secondary meaning.”
We caution that our comparison of the record in this proceeding with that in Frito-
Lay is purely for sake of instruction and should not be construed as setting forth any
requirement for a certain type of evidence to support a finding of genericness. Indeed,
we point out that we would reach the same conclusion in this appeal with or without
Applicant’s survey evidence. That is, we do not find the standard of proof in this ex
parte appeal has been met—by establishing “clear evidence” of generic use that
SWISS MILITARY will be perceived by the relevant consumers primarily as a
common name for watches of Swiss origin. See In re Hotels.com LP, 573 F.3d 1300,
91 USPQ2d 1532, 1533 (Fed. Cir. 2009); Merrill Lynch, 4 USPQ2d at 1143.
b. Declarations
Applicant submitted six declarations to rebut the Examining Attorney’s evidence,
including two declarations from individuals not affiliated with Applicant or its related
companies. One such declaration is from Gary Girdvainis, Publisher and Editorial
Director of iW Magazine and other watch-related publications, who avers that he has
27 years of experience working and covering the watch industry and that he is
“particularly familiar with Swiss-made watches sold” in the U.S.93 According to

93 7 TTABVUE 423-456 (Girdvainis Dec. with exhibits).
Serial No. 85157939
- 33 -
Girdvainis, watches sold under the marks SWISS MILITARY BY CHRONO, CX
SWISS MILITARY WATCH and SWISS MILITARY HANOWA “are not sold in the
United States in any substantial number;” that he does not know of any U.S.
distributors or agents that offer those watches; and that although “there may be some
sales online, based on my knowledge and experience in the marketplace in the United
States, these sales are insignificant and insubstantial.”94
Another such declaration is that of James Lamdin, a collector of watches for over
15 years, freelance journalist who has contributed to various watch journals, and
Founder of Analog/Shift LLC (a “leading retailer of timepieces with a global online
presence and boutique in New York”).95 Lamdin states that he is “intimately familiar
with the terminology customarily used in the watch industry by consumers to
describe watches, watch components, and types of watches,” and based on his
expertise, “there is no specific, unique type of watch that is referred to as ‘Swiss
military,’ nor is ‘Swiss military’ a designation for a particular watch style, as in the
case of ‘diving watch’ or ‘chronograph.’”96
The remaining declarations submitted by Applicant are from four employees of
Applicant’s sister company and its exclusive U.S. distributor, VSAI.97 The testimony
from these declarants includes statements that VSAI is responsible for customer

94 Id. at 424.
95 11 TTABVUE 9-10.
96 Id. at 10.
97 11 TTABVUE 12-34 (declarations of VSAI employees: Marc Gold, Christopher Davanzo,
Jackeline Rodriguez, and Joy Tecci).
Serial No. 85157939
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service for Applicant’s Swiss Military-branded watches and that, while the
“overwhelming majority of returns are genuine” products of Applicant’s, it is not
“uncommon” to receive non-genuine products.98 Since 2015, VSAI has records show
that it has received 31 non-genuine watches “bearing the brand[] ‘Swiss Military,’”99
and the declarants state that, based on their experience and communications with
the customers, that it is their “understanding that these customers sent [VSAI] these
watches because when they see the term[] ‘Swiss Military’ …, they think” it is one of
Applicant’s watches.100
III. Conclusion
The Examining Attorney is correct in arguing that a compound word mark may
be held generic if the constituent words are proven to be generic, and that the
separate words retain their generic significance when joined. In re Gould, 5 USPQ2d
1111–12 (SCREENWIPE held generic as applied to cloths or wipes for cleaning
computer and television screens because mark has “a meaning identical to the
meaning common usage would ascribe to those words as a compound”). As discussed,
the evidence shows that MILITARY is a common name for a type of watch. However,
on this record, we find that SWISS is perceived as geographically descriptive for
watches of Swiss origin; it has not been shown to be generic. Thus, unlike
SCREENWIPE, we do not find Applicant’s mark is the combination of two generic

98 Id. at 13.
99 Id.
100 Id. at 14, 25, 29, and 33.
Serial No. 85157939
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terms and Gould is not applicable here.
As to mark in its entirety, and upon review of all of the evidence, we do not find
the record supports a conclusion that the relevant public primarily understands
SWISS MILITARY to refer to watches of Swiss origin or any subgenus thereof.
Indeed, much of the evidence shows SWISS MILITARY used as a source identifier
and that the relevant consuming public perceives it as such.
Although we need not rely on Applicant’s survey evidence, we find it helps
corroborate a finding that consumers’ primary perception of SWISS MILITARY is not
that of a common name for watches of Swiss origin. That is, a majority (57%) of
respondents believe that SWISS MILITARY is a brand for watches of Swiss origin.
We do not discount the fact that 35% of respondents stated that they believed it is a
common name for watches of Swiss origin—this is not an insignificant number.
Nevertheless, the survey provides some direct evidence that helps indicate that the
primary significance of SWISS MILITARY in the minds of the relevant purchasing
community is that of source identifier, and not as a common name.
We also find the Girdvainis and Lamdin declarations, signed under 18 U.S.C. §
1001,101 to be relevant and probative overall. Mr. Lamdin’s statements that he is
“intimately familiar with the terminology used in the watch industry and by

101 Specifically, both declarations contain the following language:
The signatory being warned that willful false statements and the like are
punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that
such willful false statements and the like may jeopardize the validity of the
application or submission or any registration resulting therefrom, declares that
all statements made of his/her own knowledge are true and all statements made
on information and belief are believed to be true.
Serial No. 85157939
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consumers,” and that “there is no specific, unique type of watch that is referred to as
‘Swiss military,’” are probative in this regard.
With respect to the evidence showing different watchmakers, and not just
Applicant, using SWISS MILITARY as a mark or incorporated into a mark, this does
not necessarily show that Applicant’s mark is generic. As noted, Applicant
characterizes the other users as “infringers” and submitted some evidence that it has
attempted to police or prevent others from using or registering SWISS MILITARY in
marks on watches. We have also considered Girdvainis’ statement in his declaration
that sales of these watches are “insignificant and insubstantial.” We have also
carefully reviewed all evidence showing use of “Swiss military” not as a brand.
However, that evidence is limited and, as discussed, often inconsistent as to what
“Swiss military” or “Swiss Military” is identifying. The Board resolves any reasonable
doubt in this regard in favor of the applicant “on the theory that any person who
believes that he would be damaged by the registration will have an opportunity ... to
oppose the registration of the mark and to present evidence, usually not present in
the ex parte application, to that effect.” In re Gourmet Bakers, Inc., 173 USPQ 565
(TTAB 1972). See also In re Trek 2000 Int’l Ltd., 97 USPQ2d 1106 (TTAB 2010); In re
DNI Holdings Ltd., 77 USPQ2d 1435, 1437 (TTAB 2005).
In sum, we cannot conclude that Applicant’s mark SWISS MILITARY is generic
and thus unregistrable.
Decision: The refusal to register Applicant’s SWISS MILITARY mark on the
Principal Register on the ground that it is generic is reversed.