Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 NEAPCO INC.
Cancellation No. 17,572
August 30, 1989
Before Simms, Seeherman and Hanak
Opinion by Hanak
This cancellation proceeding is before us on a motion for summary judgment filed by petitioner, Neapco Inc. ("Neapco"). Neapco's grounds for summary judgment are as follows: "(i) that Dana's [registrant's] registered mark [5- 280X], at the time of registration, consisted of a term which, when applied to Dana's goods, was merely descriptive in the sense that the mark was merely the part number that described a specific universal joint kit for use in drive lines for vehicles; and (ii) that Dana's registration was obtained fraudulently by concealing from the Examiner that this term was a part number." (Neapco's brief pages 1 and 2).
Neapco's motion for summary judgment has been opposed by the registrant, Dana Corporation ("Dana"). Dana also filed a cross-motion for summary judgment on the fraud issue.
Before discussing the merits of the respective motions, we will clarify the legal standard to be applied in a cancellation proceeding when the claim is that the registered mark was merely descriptive and was devoid of secondary meaning (i.e. acquired distinctiveness). [FN1] In most cases, the time period of primary concern is the time when the registration issued. If a petitioner can establish that at that time, the registered mark was merely descriptive, then it is incumbent upon the registrant to establish that prior to the issuance of the registration, the registered mark had acquired a secondary meaning in the sense that its primary significance was that of a source indicator of goods emanating from registrant. Harsco Corp. v. Electrical Sciences, 9 USPQ2d 1570, 1571-72 (TTAB 1988). [FN2] See also Homemakers Home Service v. Chicago Home for Friendless, 484 F.2d 625, 627-28, 179 USPQ 389, 391 (7th Cir.1973); Oromeccanica, Inc. v. Ottmar Botzenhardt, 226 USPQ 996, 999-1000 (C.D.Cal.1985). Thus, even if there is agreement that, at present, the registered mark possesses secondary meaning, the petitioner would nevertheless prevail if it is established that as of the time of registration, the mark was merely descriptive and was devoid of secondary meaning.
Of course, in an effort to establish that the registered mark had acquired a secondary meaning as of the time of registration, the registrant is not limited to evidence that was submitted to the Patent and Trademark Office during the application process. Rather, in a cancellation proceeding, the registrant may rely upon all evidence which establishes that as of the time of registration, the registered mark had acquired a secondary meaning. Such evidence could include material that came into being after the date of registration provided that such material tended to show that as of the time of registration, the mark had acquired a secondary meaning. For example, present day deposition testimony to the effect that as of the date of registration, the deponent considered the registered mark to be a source indicator of goods emanating from the registrant would be permissible.
*2 We should also add that it is permissible for the petitioner to also plead that the registered mark currently is merely descriptive and that the mark currently lacks a secondary meaning. If the petitioner were to so plead and were to establish that the registered mark is currently inherently merely descriptive, then the burden would be on the registrant to show that the mark currently has a secondary meaning in the sense that it functions primarily as a source indicator of goods emanating from the registrant.
In sum, if it is established either that as of the time of registration, the registered mark was merely descriptive and lacked a secondary meaning, or that as of the present time, the mark is merely descriptive and lacks a secondary meaning, the cancellation petition would be granted. Of course, in the majority of cases, it is unlikely that a petitioner who is unable to make out a case of mere descriptiveness based on matters as they stood at the time of registration would be able to make out a case based on matters as they presently stand. This is because as the registrant makes more use of its mark with the passage of time, it is likely that secondary meaning will only increase, not decrease.
In this case, Neapco's petition for cancellation uses the present tense in stating that the registered mark "is merely descriptive." However, Neapco's motion for summary judgment states that the "registered mark [5-280X], at the time of registration, consisted of a term which, when applied to Dana's goods, was merely descriptive." Given the fact that Neapco's motion for summary judgment is more recent and more expansive than its petition for cancellation, we will treat the petition for cancellation as if it is alleging that as of the time of registration, the registered mark was merely descriptive and lacked a secondary meaning.
Turning to the merits of Neapco's motion for summary judgment on the issue of mere descriptiveness and lack of secondary meaning, the motion must be denied because there exists a genuine dispute as to material facts. Sweats Fashions v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1799 (Fed.Cir.1987). The facts in dispute concern not only whether at the time of registration the registered mark 5-280X had acquired a secondary meaning (assuming arguendo that 5-280X was initially inherently merely descriptive), but also whether at the time of registration, the mark, as used by the registrant Dana, was indeed inherently merely descriptive of Dana's goods. Neapco assumes that because the registered mark 5-280X serves as a model or part number, that therefore it must automatically be considered merely descriptive. Such a conclusion would be appropriate if registrant's alphanumeric designation was used merely as a model or part number. In re Petersen Manufacturing Co., Inc., 229 USPQ 466, 468 (TTAB 1986). However, Dana has submitted evidence tending to show that from the very beginning, its mark 5-280X has been used not only as a model or part number, but also as a source indicator. Depending upon the nature and manner of use, it is possible for an alphanumeric designation, which functions only in part to designate model or grade, to be inherently distinctive, and hence not require a showing of secondary meaning in order to be protected as a trademark. Cf. In re Clairol Inc., 457 F.2d 509, 173 USPQ 355, 356 (CCPA 1972).
*3 As for the issue of fraud on the Patent and Trademark Office, we concur with both parties that the material facts are not in dispute, and that this issue is ripe for summary judgment. As noted, Neapco claims that Dana, during the application process, concealed from the Trademark Examiner the fact that the designation 5-280X was a part number.
Of course, there is no factual dispute as to the contents of the application file itself. In response to the Trademark Examiner's question as to whether the term 5-280X had any significance or meaning, Dana's attorney honestly reported the reasonably held belief of his client, namely, that the "5" and "X" portions of the mark 5-280X served as source indicators for universal joints emanating from Dana. See the application file and the unchallenged declaration of Robert M. Leonardi, the attorney who prepared the 5-280X application. The fact that Dana's attorney did not verbally disclose to the Trademark Examiner the fact that, in addition to serving as a source indicator (i.e. trademark), 5-280X also served as a model or part number does not, under the facts of this case, constitute a false representation, which, of course, is a requirement for a finding of fraud. Of particular importance is the fact that the specimen submitted by Dana in connection with its application depicted 5-280X in association with the prominent marks DANA and SPICER in a manner such that the Trademark Examiner was or should have been put on notice that 5-280X may also function as a part or model number. W.D. Byron & Sons, Inc. v. Stein Bros. Mfg. Co., 377 F.2d 1001, 153 USPQ 749, 750-51 (CCPA 1967). See generally 2 J. McCarthy, Trademarks and Unfair Competition, § 31:21 at page 608 (2d ed. 1984).
In summary, Neapco's motion for summary judgment is denied. Dana's motion for partial summary judgment on the fraud issue is granted. The case will proceed in accordance with the attached schedule. [FN3]
R. L. Simms
E. J. Seeherman
E. W. Hanak
Members, Trademark Trial and Appeal Board
FN1. Of course, pursuant to Section 14 of the Lanham Trademark Act (15 U.S.C. § 1064), a petition to cancel a registered mark on the basis that it was merely descriptive and lacked secondary meaning must be filed within five years from the date of the registration of the mark, as was done in this case.
FN2. The holding in American Velcro, Inc. v. Charles Mayer Studios, Inc., 177 USPQ 149, 154-55 (TTAB 1973) that a cancellation petitioner cannot prevail merely by showing that as of the time of registration, the registered mark was merely descriptive and was devoid of secondary meaning, no longer reflects the Board's position.
FN3. In view of our ruling, Dana's motion to strike Neapco's supplemental brief in support of Neapco's motion for summary judgment is deemed moot. In reaching our decision, we considered the supplemental brief.