Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 BAUSCH & LOMB INCORPORATED
v.
LEUPOLD & STEVENS, INC.
February 26, 1988
Hearing: December 15, 1987
Opposition No. 70,534 to application Serial No. 446,674 filed October 5, 1983.
Bernard D. Bogdon, DeWitt M. Morgan and Howard S. Robbins and Amster, Rothstein & Ebenstein for Bausch & Lomb Incorporated
James Campbell and Klarquist, Sparkman, Campbell, Leigh & Whinston for Leupold & Stevens, Inc.
Before Rice, Seeherman and Hanak
Members
Opinion by Hanak
Member
An application has been filed by Leupold & Stevens, Inc. to register, pursuant to Section 2(f) of the Lanham Trademark Act, the mark shown below
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
for "telescopic sights, rifle scopes, handgun scopes, binoculars and spotting scopes." [FN1]
Registration was opposed by Bausch & Lomb Incorporated on the grounds that (1) the mark sought to be registered serves only as ornamentation and does not identify applicant's goods or distinguish applicant's goods from the goods of others, and that (2) the applicant committed fraud on the United States Patent and Trademark Office during the course of the prosecution of the application.
The record consists of the pleadings; the file history of application Serial No. 446,674; the testimony depositions (with exhibits) of Alfred A. Aiken, Jr. and Donald P. Robertson (employees of the Bushnell Division of Bausch & Lomb Incorporated) and John V. Slack and Gary R. Williams (employees of Leupold & Stevens, Inc.); applicant's answers (with exhibits) to opposer's interrogatories made of record by opposer pursuant to a properly filed notice of reliance; opposer's answers (with exhibits) to applicant's interrogatories made of record by applicant pursuant to a properly filed notice of reliance; and certain United States trademark registrations owned by applicant and properly made of record by applicant.
A review of the prior proceedings in this case is appropriate. On December 6, 1985 opposer moved for summary judgment on its claim of fraud. Applicant contested opposer's summary judgment motion and filed a cross-motion for summary judgment alleging that because applicant owned a prior registration of its gold ring device for "rifle scopes," [FN2] therefore opposer could not be damaged by the registration of the gold ring design for identical and closely related goods, namely, "telescopic sights, rifle scopes, handgun scopes, binoculars and spotting scopes."
In its November 25, 1986 opinion, this Board denied opposer's summary judgment motion based on alleged fraud and granted applicant's cross-motion for summary judgment on the fraud issue holding that there was "no fraud as a matter of law." Bausch & Lomb Inc. v. Leupold & Stevens, Inc., 1 USPQ2d 1497, 1500 (TTAB 1986). However, in the same opinion, this Board otherwise denied applicant's cross-motion "inasmuch as [applicant's] affirmative defense based on a prior registration is unavailable to applicant." (1 USPQ2d at 1500). Accordingly, this Board ordered that the "opposition will proceed to trial on the ornamentation ground only." (1 USPQ2d at 1502). In so doing, this Board made it clear that while "applicant may still introduce its [prior gold ring] registration(s) in evidence during its testimony period ... [that] the registration(s) will have no estoppel effect." (1 USPQ2d at 1500 n. 5).
*2 There is no dispute that applicant's gold ring device is distinctive as applied to applicant's rifle scopes. Opposer readily concedes this point. Moreover, an attack on an incontestable federally registered mark on the ground that it serves only as ornamentation and is not distinctive as applied to the goods specified in that federal registration would be contrary to the mandate of Park 'N Fly v. Dollar Park and Fly, Inc., 469 U.S. 189, 224 USPQ 327 (1985). See also In re Loew's Theaters, Inc., 769 F.2d 764, 226 USPQ 865, 869 (Fed.Cir.1985) ("In the Park 'N Fly case, an attack based on the alleged descriptiveness of a registered mark was declared to be contrary to the 'incontestability' rights which had accrued to the registrant upon compliance with the relevant conditions of the statute after registration."). Applicant's Registration No. 884,610 for its gold ring device for "rifle scopes" has become incontestable. Therefore, opposer could not, even if it wanted to, contend that applicant's gold ring device was not distinctive as applied to "rifle scopes."
In addition, opposer has conceded that applicant's gold ring device is distinctive of applicant's handgun scopes. However, it is opposer's position that applicant's gold ring device has not become distinctive of applicant's spotting scopes and binoculars. [FN3] Indeed, opposer notes that it has made continuous use since 1976 of a gold ring device (also known as a "gold trim ring") on spotting scopes, whereas applicant did not even begin to make continuous commercial use of a gold ring device on its spotting scopes until November 1985. [FN4]
The record demonstrates that since 1964 applicant has sold over 1.9 million rifle scopes bearing the gold ring device, and about 100,000 handgun scopes bearing the gold ring device. However, in contrast, beginning with its first sale in 1982, applicant has sold only 30,000 binoculars bearing the gold ring device, and beginning in November 1985, it has sold only 4,000 spotting scopes bearing the gold ring device. (This does not include the single sale of a single spotting scope bearing the gold ring device by applicant in 1983).
Applicant has conceded that the gold ring device is not inherently distinctive. Indeed, applicant has stated that gold is a "complementary" color and that there is "an implied value to gold." (Slack dep. 65 and 69). Furthermore, applicant has conceded that its comparatively limited use of a gold ring device on binoculars and spotting scopes is not sufficient per se to make the gold ring device distinctive of applicant's binoculars and spotting scopes. Rather, applicant asks this Board to find that because the gold ring device has become distinctive of applicant's rifle scopes and handgun scopes, that hence "this previously-created goodwill and reputation will transfer to new products made by Leupold & Stevens in the sports optic field including binoculars and spotting scopes which are sold to the same consumer customers [as rifle scopes and handgun scopes]." (Applicant's brief page 14). As this Board noted in ruling on applicant's cross-motion for summary judgment, applicant cannot rely on its preexisting registration of the gold ring device for rifle scopes to demonstrate that the gold ring device has become distinctive of applicant's binoculars and spotting scopes. (1 USPQ2d at 1500). Moreover, applicant cannot rely on its registration of the block letter word trademark GOLDEN RING for "telescopic sights, handgun telescopic sights, binoculars and spotting scopes" [FN5] to establish that applicant's gold ring device has become distinctive of its binoculars and spotting scopes. The words GOLDEN RING, while they are used to describe the device, are by no means identical to or substantially identical to the gold ring device trademark. [FN6]
*3 While applicant can rely to some degree on the distinctiveness which its gold ring device has achieved vis-a-vis rifle scopes and handgun scopes to help demonstrate that the gold ring device has become distinctive of applicant's related products (i.e. binoculars and spotting scopes), applicant must nevertheless present some direct evidence showing that its gold ring device has become distinctive vis-a-vis binoculars and spotting scopes. See Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 222 USPQ 939, 942 (Fed.Cir.1984) ("The strength of the tab as a trademark for pants might be relevant if there were evidence establishing public awareness and transference of its trademark function to related goods [shoes]."). See also In re Loew's Theaters, Inc., 769 F.2d 764, 226 USPQ 865, 869 (Fed.Cir.1985) where the Court--in refusing to find that the geographic term DURANGO had become distinctive as applied to chewing tobacco despite a preexisting registration of DURANGOS for cigars--had this to say: "The issue of acquired distinctiveness is a question of fact.... We can not say that a requirement for some additional evidence was unduly burdensome or unreasonable or that the finding that distinctiveness was not established is clearly erroneous."
In this case, applicant has simply failed to carry its burden of establishing that its gold ring device has become distinctive of its binoculars and spotting scopes. As previously noted, sales of applicant's binoculars and spotting scopes bearing the gold ring device have been relatively limited. Applicant has not provided any evidence showing the amount of money it has spent promoting or advertising its gold ring device in connection with binoculars or spotting scopes. Moreover, applicant has presented no survey evidence indicating that the relevant public associates a gold ring device when applied to binoculars and spotting scopes with applicant. Indeed, there is no proof whatsoever that the relevant public associates a gold ring device as applied to binoculars and spotting scopes with applicant. In this regard, it is of interest to note that applicant's witness testified that applicant maintains in the regular course of business letters which it receives from consumers. Applicant placed in the record two of these letters which it contends are representative of the types of letters which it receives. (Leupold & Stevens deposition exhibits 41 and 42). However, a review of these letters indicates that while the consuming public associates the gold ring device as applied to rifle scopes with applicant, nowhere is there even any mention of applicant's binoculars or spotting scopes, much less any mention that the consuming public actually associates a gold ring device with binoculars and spotting scopes emanating from applicant. Finally, while applicant and opposer have been in sharp dispute as to the extent of use by third parties of gold ring devices on binoculars and spotting scopes, it is clear that at the very least opposer has been making use of a gold ring device on spotting scopes since 1976--nine years prior to applicant's continuous commercial use which began in 1985. Moreover, a fair reading of applicant's brief indicates that in addition there have been some third-party uses of a gold ring device on binoculars and telescopes, if not spotting scopes. (Applicant's brief pages 17-18).
*4 Applicant had the burden of establishing that the gold ring device, which it concedes is not inherently distinctive, has become distinctive of applicant's binoculars and spotting scopes. Applicant has simply failed to carry this burden in that it has presented no evidence demonstrating that the public recognizes gold ring devices appearing on binoculars or spotting scopes as indicating that these goods originate with, are sponsored by or otherwise associated with applicant. Applicant's almost total reliance on the distinctiveness which its gold ring device has achieved vis-a-vis rifle scopes and handgun scopes is simply not sufficient by itself to establish that the same gold ring device has become distinctive vis-a-vis binoculars and spotting scopes.
Decision: The opposition is sustained, and registration to applicant is refused.
J. E. Rice
E. J. Seeherman
E. W. Hanak
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 446,674 filed October 5, 1983 alleging a date of first use of January 1964. The following statements are of record: "The drawing is lined for the color gold or yellow. The trademark is an annular ring design of gold or yellow color and the dashed lines in the drawing form no part of the mark."
FN2. Registration No. 884,610, issued to applicant on January 20, 1970 for the device shown below:
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
The drawing for Registration No. 884,610 is lined for the color gold. A Section 8 affidavit was accepted. A Section 15 affidavit was filed.
FN3. The record indicates that the term "telescopic sights" in the description of goods in the pending application is used collectively to refer to both rifle scopes and handgun scopes.
FN4. Opposer does concede that applicant made a single commercial sale of a single spotting scope with a gold ring device in 1983.
FN5. Registration No. 1,328,126 issued to applicant on April 2, 1985.
FN6. Likewise, applicant cannot rely upon its Registration No. 870,081 issued May 27, 1969 for the block letter word trademark GOLDEN RING for "rifle scopes."