Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE DANA CORPORATION
Serial No. 655,454; 655,455; 655,456; 655,457; 656,244; 656,247; 656,248;
July 19, 1989
Hearing: June 6, 1989
Robert M. Leonardi for Dana Corporation
Gerard F. Rogers
Trademark Examining Attorney
Law Office 8
(Sidney Moskowitz, Managing Attorney)
Before Rooney, Krugman and Cissel
Members
Member
Dana Corporation has applied to register the following designations, "5- 469X", [FN1] "5-438X", [FN2] "5-510X", [FN3] "5-515X", [FN4] "5-407X", [FN5] "5-279X", [FN6] "5-218X" [FN7] for couplings, specifically, universal joint couplings for use in drivelines for vehicles. In each case, registration was refused under Sections 1, 2 and 45 of the Trademark Act on the ground that applicant's alphanumeric designations serve merely as model or type designations which are neither inherently distinctive nor have acquired distinctiveness. Applicant has appealed. Because of the identity of the issue in each of the enumerated applications, the question of registrability of each of the alphanumeric terms has been treated in a single decision.
It is well settled that terms used merely as model, style or grade designations are not registrable as trademarks because they do not serve to identify and distinguish one party's goods from similar goods manufactured and/or sold by others. See J. Thomas McCarthy, Trademarks and Unfair Competition, Sec. 11:15 (2d ed. 1984). This is so because such a designation serves as a description of the product, informing one of the quality, size or type of the particular product, rather than serving as an identifier of the source of the goods. If, however, it is shown that the designation in question has attained recognition by the public as a source identifier in addition to any other function it may perform, then it may be registrable as a trademark. See In re Peterson Manufacturing Co., Inc., 229 USPQ 466 (TTAB 1986) and cases cited therein.
There is no question that the alphanumeric designations sought to be registered by applicant are part numbers. Applicant's product literature, submitted January 29, 1988, lists the various designations under the heading "Part Number" and, indeed, applicant concedes that that is what they are. It is applicant's position, however, that there is substantial evidence in the record to prove that the designations have acquired secondary meaning. To that end, applicant has submitted customer letters, a copy of an agreement between applicant and a competitor and a copy of a registration issued to applicant for the designation "5-280X". In addition, subsequent to the filing of the Examining Attorney's brief on the appeal, applicant filed a request under Rule 2.142(d) that the Board consider additional evidence filed therewith, which had not been previously filed and subsequent to filing its reply brief, applicant filed a supplemental reply brief and attached further evidence thereto. [FN8]
*2 Having considered all of the foregoing, we find that applicant has failed to convince the Board that the matter sought to be registered serves a trademark function.
The agreement between Dana Corporation and GMB Universal Joints, Incorporated illustrates only that applicant objected to certain terms used by GMB which applicant said were similar to its "trademarks". The fact that GMB acceded to applicant's claim that its designations are trademarks by entering a settlement agreement is proof of nothing more than that GMB had no wish to risk litigation over the matter. See In re The Wella Corporation, 193 USPQ 585 (TTAB 1977) aff'd 196 USPQ 7 (CCPA 1977). The existence of the agreement does nothing to enhance the registrability of the terms involved herein. With respect to the letter from S & S Truck & Tractor Parts, Inc., we note that the controversy there involved the use by S & S of applicant's part numbers on S & S's boxes to indicate that S & S replacement parts replace the noted Dana parts. Reference all through the letter is to part numbers and it is stated in the letter that
3. The catalog does not indicate Dana registered trademarks as we were not aware that your parts are trademarked.
S & S went on to state that "... we are open to any reasonable suggestion in an effort to avoid unnecessary problems." This, too, appears to be nothing more than an offer to settle to avoid litigation. This letter lends no support to applicant's claim that its part numbers are recognized as trademarks.
The existence of Reg. No. 1,256,778 for the term "5-280X" secured by applicant is of little probative value herein since we do not have the record of that case before us and are, thus, not informed of the basis on which registrability of that designation was determined. By the same token, the consent judgment relied on by applicant was based on applicant's registered trademarks "SPICER" [FN9], "DANA" and design [FN10] and "5-280X" [FN11], none of which is involved in this proceeding.
The remainder of applicant's evidence consists of statements of thirteen of applicant's customer/distributors and a series of documents concerning the manner in which the testimonials were procured. The documents include a copy of the question which was asked of the individuals whose statements were filed and details about how the testimonials were solicited.
On April 14, 1988 an "Intra-Company Communication" was sent to "ALL DSD RM'S and DM'S from Dana Drivetrain Service Division" saying:
We've been asked by the Spicer Universal Joint Division to survey our distributors with the following question:
When you see a part number that resembles 5-___X on a U-Joint Kit, do you recognize it as being the Spicer brand?
If the customer answers in the affirmative, please have him so indicate on their letterhead.
Another memo from Bob Carlucci to Jim Todak says
*3 Attached is "the Questi (remainder illegible) we discussed regarding Spicer U-Joint Kits. For those that answer "yes", can we have the recognition in a statement on the customer letterheads.
Of the thirteen answers submitted, seven answered the question affirmatively. The remaining responses were ambiguous. One respondent indicated he thought mainly of Spicer but also of other manufacturers. Another said, "... we look to Spicer as a leader in the Automotive Industry. We recognize your brand name and your part number to mean high quality". Still another responded that "... if we do use another brand of "U"-Joint it is common to see a number similar to the Spicer Number." Thus, despite the leading nature of the question asked and the instructions regarding affirmative answers only, the results are contradictory. Compare: In re Peterson Manufacturing Co., supra. Moreover, considering the fact that the respondents are customers and/or distributors of applicant who would be expected to be quite familiar with applicant's numbering system, we must conclude that the statements fail to establish distinctiveness of applicant's part numbers. See: In re Semel, 189 USPQ 285 (TTAB 1975).
Finally, we note that even if these letters amounted to a properly conducted survey and contained nothing but affirmative responses, the question asked was whether the respondents recognize a part number resembling "5-___X" on a U-Joint Kit as applicant's brand. Applicant is not seeking to register "5-___ X". It has applied to register the specific designations, "5-469X", "5-438X", "5- 510X", etc. There is no evidence of record directed to establishing that those specific designations function as trademarks.
In view of the foregoing, the refusal to register is affirmed.
G. D. Krugman
R. F. Cissel
Members, Trademark Trial and Appeal Board
FN1. Ser. No. 655,454 filed April 15, 1987 claiming first use as early as December 31, 1986.
FN2. Ser. No. 655,455 filed April 15, 1987 claiming first use as of December 31, 1986.
FN3. Ser. No. 655,456 filed April 15, 1987 claiming first use as of February 28, 1987.
FN4. Ser. No. 655,457 filed April 15, 1987 claiming first use as of December 31, 1986.
FN5. Ser. No. 656,244 filed April 20, 1987 claiming first use as of December 31, 1977.
FN6. Ser. No. 656,247 filed April 20, 1987 claiming first use as of December 31, 1973.
FN7. Ser. No. 656,248 filed April 20, 1987 claiming first use as of December 31, 1973.
FN8. Prior to the oral hearing on this case, applicant had been advised that the evidence which it had filed after the record was closed would not be considered. However, inasmuch as the Examining Attorney discussed this evidence at the oral hearing and did not object to its untimeliness we have considered it to be part of the record. See In re Development Dimensions International, Inc., 219 USPQ 161 (TTAB 1983).
FN9. Reg. No. 679,554 issued June 2, 1959.
FN10. Reg. No. 856,983 issued September 17, 1968.
FN11. Reg. No. 1,256,778 issued November 8, 1983 and now the subject of Can. No. 17,572.