Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE ANTON/BAUER, INC.
Serial Nos. 595,494 & 595,497
April 19, 1988
Hearing: August 20, 1987
Barry Kramer, Allen D. Brufsky, Barry R. Lipsitz and Jamie Johnson for applicant
Gerald T. Glynn
Trademark Examining Attorney
Law Office III
(Myra Kurzbard, Managing Attorney)
Before Sams, Rice and Krugman, Members
Members
Member
Anton/Bauer, Inc. has appealed from the Trademark Examining Attorney's final refusal to register the parallelogram design mark shown below for 'interchangeable rechargeable electrical battery packs and batteries, battery chargers, AC power supplies, battery evaluation units, battery discharge equalizers, power cables, battery holders and mounting brackets, camera control units for use in the video industry' (in International Class 9) and 'portable lights and light filter assemblies' (in International Class 11). [FN1]
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Applicant also appeals from the Trademark Examining Attorney's final refusal to register a second parallelogram design mark, reproduced below, for goods described as 'interchangeable rechargeable electrical battery packs and batteries, battery chargers, AC power supplies, battery evaluation units, battery discharge equalizers, power cables, battery holders and mounting brackets, camera control units for use in the video industry.' [FN2]
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In each case, the Examining Attorney refused registration on the ground that the matter asserted for registration serves only as a background design for presentation of the word mark 'ANTON/BAUER' and, as such, does not function as a trademark for the goods recited in the application. In both applications, applicant submitted, as specimens of use, photographs of batteries bearing the two designs it seeks to register. One such photograph is reproduced below:
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Because these appeals present the same issue and because the evidence submitted in the two cases is virtually identical, the appeals were consolidated (after a hearing was held in connection with application Ser. No. 595,494), upon request of applicant, and we are deciding both appeals with a single opinion.
Where, as in these two cases, an applicant seeks to register a background design that is used in connection with a word mark, that design may be registered as a trademark only if it creates a commercial impression separate and apart from the word mark in conjunction with which it is used. 1 J.T. McCarthy, Trademarks and Unfair Competition, 200 (2d ed. 1984). If the background design is inherently distinctive, it may be registered without evidence that it is recognized as a trademark (i.e., without proof of secondary meaning); if it is not inherently distinctive, such proof is essential. In re E. J. Brach & Sons, 256 F.2d 325, 327, 118 USPQ 308, 310 (CCPA 1958). In particular, common geometric shapes such as circles, ovals, triangles, diamonds and stars, when used as backgrounds for the display of word or letter marks, are not regarded as trademarks for the goods to which they are applied absent evidence of distinctiveness of the design alone. See In re Raytheon Co., 202 USPQ 317 (TTAB 1979) and cases cited there; cf. In re Chemical Dynamics Inc., ___ F.2d ___, 5 USPQ2d 1828, 1829 (Fed. Cir. 1988). Applicant's parallelogram designs fall into this category of background design.
*2 In each of its applications, applicant has claimed that the design it seeks to register has become distinctive through use in commerce and has made a claim to that effect under Section 2(f) of the Trademark Act. In support of its Section 2(f) claim in each case, applicant submitted a declaration by its vice president, Anton Wilson. Mr. Wilson's declaration states that the parallelogram designs were first used in connection with applicant's goods as early as December 20, 1982. The declaration states, in addition, that there has been extensive use of each mark since its first use, as shown by exhibits attached to the declaration. These exhibits are advertisements bearing the 'ANTON/BAUER' word mark with the background parallelogram designs; some of the advertisements also show photographs of applicant's products bearing the 'ANTON/BAUER' mark in the two parallelogram designs. The declaration included an estimate of gross sales and advertising expenditures for applicant's products bearing the 'ANTON/BAUER' mark on the parallelogram background designs. In the period 1982 to 1986, applicant's gross sales amounted to more than $20 million and its advertising expenditures amounted to approximately $595,000. As additional support for its Section 2(f) claim, applicant offered letters from four of its customers. The letters are from: Thomas L. Beal, President, Video Communications Corporation (California); (first name illegible) Reiter, Victor Duncan, Inc. (Texas); Philip M. Dubs, Vice President of Sales & Marketing, Florida Video Systems (Florida); and David K. Barnes, President, Midwest Communications Corporation (Kentucky). The four letters are virtually identical in format, varying only in the recitation of the number of units of electronic equipment purchased from applicant (1,000 units, 1,000 units, 500 units and 2,800 units, respectively). Each letter contains a statement that the writer of the letter regards the parallelogram designs of applicant 'as indicating that those battery packs and battery chargers originate with Anton/Bauer.'
Applicant also argues that its gross sales and advertising expenditures must be read in context--namely, that the dominant manufacturers and suppliers in the video industry have modified their products to adapt to applicant's electronic goods and, therefore, that its marks have had unusually wide exposure through association with the dominant manufacturers and suppliers in the electronics industry.
The evidence of distinctiveness offered by applicant in support of its applications to register its two parallelogram background designs is insufficient to persuade us that these two asserted marks have become recognized as trademarks for the goods to which they are applied. A case upon which applicant relies in arguing that its mark is entitled to registration is In re Esso Standard Oil Co., 305 F.2d 495, 134 USPQ 402 (CCPA 1962). At issue in that case was the background design reproduced below:
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*3 The background design mark consisted of a label with four horizontal colored bands, two oval frames, and four dots. The Court found the background design inherently distinctive because of its 'distinctive proportions and arrangement of elements.' Applicant's mark, by contrast, has no such distinctive 'arrangement of elements'. The Esso case is, therefore, not persuasive authority, because applicant's marks are not inherently distinctive background designs.
Applicant points also to In re Raytheon Co., supra. The Raytheon case is a precedent more relevant to the present case than is Esso, in that Raytheon involved a background design that was not inherently distinctive but for which a claim of acquired distinctiveness had been made. The background design sought to be registered in that case is reproduced below:
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In Raytheon, the Board found the background design distinctive, based primarily on (i) an affidavit to the effect that, for a period of some nine years, applicant had sold more than 45 million electron tubes bearing the word 'RAYTHEON' on the background design shown above and (ii) results of a survey, in which a significant number of respondents recognized the background design, standing alone, as an indication of Raytheon Company as the source of products bearing such a design. In its brief on the present appeals, applicant criticizes the construction of the survey submitted by applicant in the Raytheon case. Without addressing applicant's criticisms of the survey, we note that, whatever its design weaknesses, the survey was evidence that the Board found persuasive in allowing registration of the background design mark asserted by the applicant in that case. Evidence of that sort is absent in the present cases.
Another case in which the Board was obliged to consider evidence of distinctiveness offered in support of registration of a background design was In re Haggar Co., 217 USPQ 81 (TTAB 1982). In that case, applicant sought to register, as a mark for clothing, the background design reproduced below:
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The Board found that the applicant in Haggar had established that its background design had acquired distinctiveness. The evidence that convinced the Board to accept the claim under Section 2(f) included the following: (i) use of the background design for eight years in the from sought to be registered and for many more years in a form slightly different from that sought to be registered, (ii) evidence of substantial advertising and sales of products with the 'HAGGAR' mark applied to the background design, (iii) a finding that the background design mark sought to be registered, while not inherently distinctive, was more than a more common geometric shape such as a rectangle, circle, etc., (iv) the absence of evidence that the shape sought to be registered was used by others in applicant's product field as a background display for word marks, (v) the fact that the design mark, when used on applicant's clothing goods, was readily discernible on those goods from a distance, (vi) evidence that applicant had used a much-enlarged version of the label as a point-of-sale display and that, when the point-of-sale display was suspended above an area of the selling floor where applicant's products were sold, the word mark 'HAGGAR' appeared on only one side of the display hanging over the products, such that a person approaching the display from the back side of the suspended mark saw the trademark design, without a word mark printed thereon, and (vii) evidence that the background design, while always used with the word 'HAGGAR,' might also be used with additional matter printed on it and/or with the word 'HAGGAR' printed at different angles and in different sizes across the background design. All of these facts convinced the Board that the background design had become recognized as a mark.
*4 In the present cases, contrasted with the Haggar case, applicant's use has been of relatively short duration--namely, less than four years as of the filing date of its applications. Moreover, applicant's parallelogram background designs are more ordinary in nature than was the background design involved in Haggar. In addition, applicant has offered no evidence, of the sort offered in the Haggar case, to show promotion of its background designs in a way that would set those designs apart from the word mark for which they serve as background.
In view of the nature of applicant's marks, the letters from four of applicant's clients and its recitation of sales and advertising expenditures for a five-year period are simply insufficient facts for us to find that applicant's background designs have come to be recognized as trademarks for the goods recited. (We note, in particular, that, with respect to its goods in International Class 11, the letters from customers fail to mention that they view applicant's marks as indicating origin of the class 11 portable lights and light filter assemblies.) To state the matter differently, proof of distinctiveness requires more than proof of the existence of a relatively small number of people who associate the parallelogram designs with applicant. Distinctiveness means that the primary significance of the designs in this field of products is an designations of source rather than as mere backgrounds to the presentation of applicant's word mark. See Roselux Chemical Co. at al. v. Parsons Ammonia Co., Inc., 299 F.2d 855, 132 USPQ 627 (CCPA 1962). Applicant has simply failed to show that its background designs function primarily as indicators of source.
Decision: The refusal to register, in each case, is affirmed.
J. E. Rice
G. D. Krugman
Members, Trademark Trial and Appeal Board
FN1. Serial No. 595,494, filed April 28, 1986.
FN2. Serial No. 595,497, filed April 28, 1986.