Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE LEATHERMAN TOOL GROUP, INC.
Serial No. 74/092,273
July 18, 1994
Stephen J. Jeffries
Trademark Examining Attorney
Law Office 9
(Sidney I. Moskowitz, Managing Attorney)
Before Simms, Cissel and Hohein
Administrative Trademark Judges
Opinion by Hohein
Administrative Trademark Judge
Leatherman Tool Group, Inc. has filed an application to register "POCKET SURVIVAL TOOL" as a trademark for goods identified as "a compact folding tool comprising knife, pliers, and multiple blades, and leather and fabric sheaths therefor". [FN1]
Registration has been finally refused under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the basis that, when used in connection with applicant's goods, the mark is merely descriptive of them. Specifically, the Examining Attorney contends that the evidence of acquired distinctiveness submitted by applicant is insufficient since "POCKET SURVIVAL TOOL" is a generic designation for applicant's goods and thus is incapable of registration. [FN2]
Applicant has appealed. Briefs have been filed, [FN3] but an oral hearing was not requested. We affirm the refusal to register.
Preliminarily, we observe that when the application was filed, applicant stated that registration was being sought under the provisions of Section 2(f) of the Trademark Act on the basis that "the mark has become distinctive as a result of substantially exclusive and continuous use in ... commerce ... for a period of more than five years immediately preceding this application for registration." The claim of acquired distinctiveness, however, in effect constitutes a concession by applicant that the designation it seeks to register is at least merely descriptive of, although not generic for, its goods since, as correctly noted by the Examining Attorney, such is tantamount to an admission that the designation is not inherently distinctive and therefore is unregistrable in the absence of a showing of acquired distinctiveness. See, e.g., In re Cabot Corp., 15 USPQ2d 1224, 1229 (TTAB1990) and In re Professional Learning Centers, Inc., 230 USPQ 70, 71 (TTAB1986) at n. 2. The issues presented for our consideration are accordingly whether the designation "POCKET SURVIVAL TOOL" is generic for applicant's goods and, alternatively, if such designation is not regarded as generic, whether it has acquired distinctiveness. As to the former, the Patent and Trademark Office has the burden of proving genericness by "clear evidence" thereof, while in the latter instance applicant has the burden of proof with respect to establishing a prima facie case of acquired distinctiveness. See, e.g., In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed.Cir.1987) and Yamaha International Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1006 (Fed.Cir.1988).
*2 Turning first to the issue of genericness, both the Examining Attorney presently in charge of this case and the one previously assigned thereto have made of record the results of various searches of the "OMNI" file of Mead Data Central, Inc.'s "NEXIS" library. The information retrieved from such database, of which the following representative newspaper, magazine and wire-service excerpts are considered to be the most pertinent, plainly establishes that the term "pocket tool" is used to describe any compact or pocket-sized, hand-held implement, including a specialized combination of a knife and other blades known as a "survival tool" (emphasis added):
... a small pocket tool with pliers, chisel, hole punch, file, stapler, two kinds of screwdrivers, measuring tape and scissors.--L.A. Times, April 8, 1990, § L (Travel), at 5, col. 1;
This mostly male audience of do-it-yourselfers spent $17 for the Handyman "21 in 1" pocket tool from national television advertising.--DM News, September 1, 1989, at 72;
The Swiss Army knife is one of those products that keeps finding a new market--from GIs in the foxhole to yuppie campers on a weekend in the wild.
And that's good news for a small Connecticut company that had the good sense to promote the handy pocket tool from forgotten sideline to bestseller.--Chicago Tribune, July 25, 1988, Business, at 9;
Leatherman [Tool Group, Inc.] was credited with selling precision pocket tools in more than 30 countries.--United Press International, May 25, 1988;
Folding pocket tool and knife. Patent No. 4,648,145.--Washington Post, April 20, 1987, Financial, at F28;
Many of his [knife] products, Kershaw said, aren't used for hunting or fishing, but as collectors' items, showpieces and occasionally as pocket tools.
Still Kershaw pays attention to its outdoor-oriented customers. For example, the company has just come out with a new survival knife. The 13-inch knife with a six-inch saw and knife blade includes a hollow handle stuffed with a survival kit--fish hooks, waterproof matches and more. Enclosed in a black Cordura sheath are a compass and five small cards jam-packed with survival tips.--Business Journal-Portland, June 10, 1985, § 1, at 1;
The [watch] chain has a heavy gold ornamental anchor on the other end that turns out to be a multipurpose pocket tool.--United Press International, July 29, 1983;
The Pipe Magician pocket tool offers multiple use capability.--Oil & Gas Journal, August 28, 1982, at 148;
A mechanical engineer in Portland, Ore., got patent 4,238,862 this week for a pocket tool that he calls Mr. Crunch. Timothy S. Leatherman thinks hunters, campers and cyclists will find it convenient.
*3 The tool can be folded to pocketknife size. The handles that control pliers contain knife blades, screwdrivers, scissors, a file, a can opener and even a small ruler. One part made of grindstone material may be used for sharpening fish hooks.--N.Y. Times, December 20, 1980, § 2, at 41, col. 6;
Another contractual requirement for the F-16 radar is that any of its six line-replaceable units must be capable of being replaced with minimal pocket tools in no more than 5 min.--Aviation Week & Space Technology, May 3, 1976, Avionics, at 85;
Older youngsters will find the Survival Tool a nifty gadget for their trail packs. Packed in its slender leather case are folding knife, scissors, magnifying lens, cap opener, screwdriver, wrench, can opener, nail file, ruler and sharpening stone.--San Francisco Chronicle, December 16, 1991, Sports, at C13;
A genuine conversation piece is the matchbook-sized Survival Tool ($9.85), which claims to work as a knife, nail puller, can opener, signal mirror, chisel, bottle opener, screwdriver, saw, etc.--Boston Globe, December 9, 1990, Travel, at B9
Magellan's also sells a matchbook-size, all-purpose survival tool that combines a knife, nut wrench, screwdriver, saw, chisel, file and signal mirror for $9.85....--L.A. Times, November 25, 1990, § L (Travel), at 1, col. 1;
The Survival Tool from Troika sells for just Pounds 12.95 and has 12 steel tools--pliers, wire cutters, 8" ruler/saw, four screwdrivers, file, awl/punch, can/bottle opener, and a sharp 2 1/2 in. blade. It is very streamlined, is only 4 in. long and weighs just 5 oz.--Financial Times, February 24, 1990, Weekend FT, at XI
Phrobis, founded in 1982 by Charles (Mickey) Finn, does not manufacture knives or anything else, but conducts research and development on a variety of survival tools and weapons.--L.A. Times, December 20, 1989, Business, at 2, col. 6;
That's the price of the Basic Survival Tool. ....
Survival is a basic human drive.... Eight-fifty for it sounded like a good deal, even though the Basic Survival Tool turned out to be nothing more than short strips of flint and magnesium glued to a handle made of elk antler. The thing looked like a derringer.--San Francisco Chronicle, November 8, 1989, Daily Datebook, at E10;
You might be able to get away without a decent pack and shoes, but don't ever go on a hike without a Swiss Army knife. It is the ultimate survival tool.--Washington Post, August 20, 1987, Style, at C5;
"I always carry a knife," Davidlow says. "It's one of the best survival tools available. You can shape wood, start fires, make traps, build shelters." He also packs a survival kit which contains rope, a compass, maps, his trip timetable, a small first aid kit and a bandana.--United Press International, June 25, 1985; and
*4 New York's sixth annual custom-knife show opens today, and its promoters note with delight that among the blades exhibited will be those closely resembling the survival knife used by Sylvester Stallone in his starring role in the motion picture "First Blood."
The original knife was created by the Arkansas knifemaker Jimmy Lile at Mr. Stallone's request. Mr. Lile ... did not ... design a knife that would merely photograph well. His goal ... was to make one that was truly functional, multipurpose, stainless-steel survival tool that would have, among other things: a 9-inch blade with a real saw on its back; a compass; a hollow, watertight handle to hold matches and other small essentials; and a handle that would also, because it is hollow, enable one to insert a pole into it to make a spear.--N.Y. Times, November 11, 1983, § A, at 29, col. 1.
With respect to the designation "pocket survival tool," the evidence from the same database reveals the following usages (emphasis added):
My vote for neatest gadget of the year is the Pocket Survival Tool. Made of a flat piece of stainless steel 2 1/4 inches by 1 1/4 inches, it is designed to open bottles and cans, turn screws, measure, file and saw. The maker says it is weakly magnetized and, when hung from a string outdoors, will point north. It is $10 plus shipping from Animal Town....--N.Y. Times, November 26, 1989, § 5, at 3, col. 1, which article also appears to have been reprinted in the Chicago Tribune, December 10, 1989, Travel, at 18;
It was then that I remembered that in a burst of self-indulgence I had recently acquired a so-called "Pocket Survival Tool" manufactured by Leatherman, whose innards include several screwdriver blades, a knife blade, a file, a leather punch and needle-nose pliers with a wire cutter. It is a good tool and did the job, and my only criticism of it is that the steel in the cutting edges of the pliers is too soft.--N.Y. Times, July 1, 1985, § C, at 8, col. 1; and
This toolbox-on-your-belt acts a lot like an industrial-quality Swiss army knife, but with one major difference: it can bite. The pliers/wire cutter jaws enable you to deal with situations that require nabbing and twisting.... I was unable to deform the jaws, nor could I persuade any of the several screwdriver blades to part company with the stainless steel handles. Other blades include an effective can opener ..., a sturdy knife blade, an awl, and a file.... All the blades lock open. Closed up, the whole kaboodle rides in a leather case not noticeably larger than its Swiss rival.--Whole Earth Review, May 1985, at 70, which is headlined: "Pocket Survival Tool".
In addition to the foregoing, a search of the "ALL" file in the "LEXPAT" library of Mead Data Central, Inc.'s computerized database retrieved the following excerpt from U.S. Patent No. 5,102,360, issued on April 7, 1992 for a shipboard container for survival equipment (emphasis added):
*5 While it is possible to vary the amount and types of survival equipment selected and stored in the container ..., a particularly effective set of contents ... is as follows:
28. 1 handy pocket survival tool.
The Examining Attorney contends that the above "excerpts from the LEXIS/NEXIS database ... demonstrate that each component of Applicant's proposed mark comprises an apt or common descriptor for Applicant's goods identified as compact tools comprising knife, pliers and multiple blades" and that the combination "POCKET SURVIVAL TOOL" is a "generic composite" which forms "an 'apt descriptive name' for the goods." The Examining Attorney further maintains that his conclusion is likewise supported by certain of the sales catalog evidence furnished by applicant (discussed below), which assertedly shows generic usage of the terms "pocket tool," "survival tool" and "pocket survival tool" by various third parties. Thus, and even excluding the "NEXIS" stories in which reference to applicant's products is clearly being made, the Examining Attorney insists that the evidence of record demonstrates that the purchasing public would perceive the designation "POCKET SURVIVAL TOOL" as a generic name for the type of goods offered by applicant.
Applicant, in response to the refusal to register, has made of record the declaration, with exhibits, of its president, Timothy S. Leatherman. Among other things, Mr. Leatherman states that applicant "has been using the mark POCKET SURVIVAL TOOL continuously and exclusively in connection with the goods recited in the application since 1983"; that since that time "applicant has sold in excess of one million tools (with gross sales exceeding $20,000,000) in connection with the mark POCKET SURVIVAL TOOL"; that applicant "has spent approximately $200,000 for advertisements which display applicant's mark ... in many well-known catalogs of national distribution such as L.L. Bean, The Sharper Image, Brookstone, Eddie Bauers [sic], Cabella's, and Neiman Marcus"; that "applicant's mark is also publicized in ... magazine articles such as new product releases contained in well-known magazines such as Popular Science, Sports Afield, and Outdoor Life" and in newspaper articles like the July 1, 1985 N.Y. Times story cited by the Examining Attorney and one which mentions applicant's goods in the following manner (emphasis added):
THE HOTTEST ITEM for men is the Pocket Survival Tool. It's the size of a pocket knife. Unfolds into pliers and wire cutter. The handle contains a knife, three sizes of screwdrivers, a bottle opener, file and a lot of other goodies. It's a man's toy.--San Francisco Examiner, February 8, 1985;
that "[u]ntil approximately 1985, the mark was actually stamped upon the tool itself" as shown by an advertisement from a Gander Mountain, Inc. catalog which is reproduced below;
Mr. Leatherman's declaration additionally indicates that with respect to the "NEXIS" evidence submitted by the Examining Attorney, "two of the three entries ... which mention the words POCKET SURVIVAL TOOL in combination are referring to applicant's product"; and that applicant "considers the third Nexis entry for 'Pocket Survival Tool' to be an infringement of applicant's common law rights in the mark," but that such use apparently "is no longer continuing" inasmuch as applicant's attempt "to contact Animal Town at the number given in the Nexis Report [was] to no avail" and it was advised by "Directory Assistance ... that there was no listing" for such party. Mr. Leatherman further notes, however, that "use of the name POCKET SURVIVAL TOOL by this party has caused confusion with applicant" in that, as shown by a copy of the document pertaining thereto, one of applicant's customers returned an Animal Town "Pocket Survival Tool" to applicant for a credit on the customer's account. According to Mr. Leatherman, the customer, who was "familiar with our product and trademark, sent this product to us in the mistaken belief that it was our product because it employed our POCKET SURVIVAL TOOL mark." Lastly, Mr. Leatherman notes that his declaration is accompanied by "a representative letter from a [different] customer wherein the customer refers to our product as the 'Pocket Survival Tool' " and observes that "[w]hile applicant has not conducted an exhaustive search of its records," he "know[s] from personal recollection that such a reference to this product as a POCKET SURVIVAL TOOL is not uncommon."
Sample catalog advertisements and magazine new-product reviews, which accompany the Leatherman declaration, are depicted below:
Applicant argues that in light of the above, the designation it seeks to register would not be perceived by the relevant public as a generic term for its goods. In particular, applicant points out that except for a story about a different product marketed by Animal Town, which respectively appeared in the N.Y. Times and the Chicago Tribune on November 26, 1989 and December 10, 1989, the articles and advertisements which mention a "POCKET SURVIVAL TOOL" plainly refer to applicant or its specific product. Applicant also insists that many of the reviews and advertisements of record contain a generic description of its product, such as "compact tool," "All-in-one tool," "Multipurpose Tool," "Pocket Multi-Tool" or "pocket tool box," in contrast to trademark use of the designation "POCKET SURVIVAL TOOL". Moreover, applicant notes, such designation is often used with quotation marks, an initial capitalization of each word, a "TM" symbol, and in other ways, including an association with applicant's "LEATHERMAN(R)" mark, so as to set the designation apart from the verbiage with which it appears and to indicate that it is applicant's mark. The use of "POCKET SURVIVAL TOOL" by Animal Town, applicant insists, is not only an infringing use which appears to have ceased, but the return of one such item to applicant by one of its customers demonstrates trademark rather than generic significance for the designation at issue. Finally, with respect to use of such designation in a recent patent, applicant contends that (underlining by applicant):
*7 When the reference, "one handy pocket survival tool," is read in the context of the list of shipboard survival equipment, there is a strong impression that the list is referring to a specific product, not merely a type of product. The patent application was filed in 1990, which is consistent with applicant's opinion that the entry refers specifically to applicant's product.
The test for determining whether a designation is generic, as applied to the goods set forth in an application or registration, turns upon how the term is perceived by the relevant public. See Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 UDPQ2d 1551, 1552-53 (Fed.Cir.1991) and cases cited therein at 1553. Such perception is the primary consideration in a determination of genericness. See Loglan Institute Inc. v. Logical Language Group Inc., 962 F.2d 1038, 22 USPQ2d 1531, 1533 (Fed.Cir.1992). As Section 14(3) of the Trademark Act, 15 U.S.C. § 1064(3), makes clear, "[a] ... mark shall not be deemed to be the generic name of goods ... solely because such mark is also used as a name to identify a unique product ..."; instead, "[t]he primary significance of the ... mark to the relevant public rather than purchaser motivation shall be the test for determining whether the ... mark [is or] has become the generic name of goods ... on or in connection with which it has been used." Consequently, if the designation sought to be registered is understood by the relevant public primarily to refer to the class or genus of goods at issue, the term is generic. See H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., supra. Evidence of the relevant public's understanding of a term may be obtained from any competent source, including newspapers, magazines, dictionaries, catalogs and other publications. See In re Northland Aluminum Products, Inc., 777 F.2d 1566, 227 USPQ 961, 963 (Fed.Cir.1985).
On the present record, we concur with the Examining Attorney that the designation "POCKET SURVIVAL TOOL" is a generic term for any pocket-sized survival implement, including the compact folding tool comprising a knife, pliers and multiple blades marketed by applicant. [FN5] The "NEXIS" excerpts, as noted previously, clearly establish that "pocket tool" and "survival tool" are generic designations for, respectively, a compact or pocket-sized hand tool and a specialized hand tool which combines a knife and a multiplicity of other types of blades. Plainly, a compact or pocket-sized version of a survival tool is aptly named by the designation "pocket survival tool" and, as shown by many of the catalog advertisements and magazine new-product reviews made of record by applicant, such designation would be so perceived by the relevant public, which comprises buyers and potential purchasers of Swiss army knives and other small hand tools suitable for use as survival tools.
*8 In this regard, we observe that not only are applicant's goods identified as a type of compact folding tool, but we judicially notice that The Random House Dictionary of the English Language (2d ed. 1987) defines "pocket" at 1492 as an adjective meaning "small enough or suitable for carrying in the pocket: a pocket watch" [FN6] and lists "survival" at 1916 as an adjective meaning "of, pertaining to, or for use in surviving, esp. under adverse or unusual circumstances: survival techniques". The relevant public would thus readily understand that, when joined to form the phrase "POCKET SURVIVAL TOOL," the individual words have a meaning identical to the meaning which ordinary usage would ascribe to those terms in combination. There is nothing unique or incongruous about the combination nor would it have any meaning other than generically signifying a "pocket survival tool" when used in connection with a pocket-sized, hand-held survival implement such as applicant's compact, folding knife with pliers and multiple blades. "POCKET SURVIVAL TOOL" consequently serves only to designate the class or genus of goods to which applicant applies such designation. In short, the evidence of record, including that furnished by applicant and relied upon by the Examining Attorney, is sufficient to meet the burden of proof upon the Patent and Trademark Office of establishing that the designation "POCKET SURVIVAL TOOL" is generic and thus incapable of registration. See, e.g., In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1112 (Fed.Cir.1987) ["SCREENWIPE" for a "premoistened, antistatic cloth for cleaning computer and television screens" incapable of being registered].
Applicant's arguments with respect to the evidence of record are not persuasive of a contrary result. Specifically, as to the various methods asserted by applicant as demonstrating the trademark significance of the designation "POCKET SURVIVAL TOOL," we note that the use of the "TM" symbol in connection therewith cannot make an otherwise unregistrable term a trademark. See, e.g., In re General Foods Corp., 177 USPQ 403, 404 (TTAB 1973) at n. 1 and In re Nosler Bullets, Inc., 169 USPQ 62, 64 (TTAB 1971). Similarly, the initial capitalization of the words comprising the designation "POCKET SURVIVAL TOOL" is not persuasive of trademark significance in this case since not only is such term also used in some catalogs in an undifferentiated manner in the same advertisement, [FN7] but a number of catalog ads and magazine articles initially capitalize a word or words which applicant points to as being generic terms for its product. [FN8] Moreover, using quotation marks, as is the case in a few newspaper articles about applicant's goods, adds little more to set off the initially capitalized words "Pocket Survival Tool" than does such capitalization alone, as is apparent from the excerpts mentioning the same goods which appeared in the N.Y. Times and Chicago Tribune in late 1989.
*9 Furthermore, while there is no question that a product may bear more than one mark, provided that each mark serves to identify and distinguish the product from the like goods of others, the association of the mark "LEATHERMAN(R))))" with the designation "POCKET SURVIVAL TOOL" is such that the relevant public would perceive only the former as a trademark for applicant's product and view the latter as a generic term for the item. [FN9] In addition, the single incident of a return to applicant by one of its customers of an Animal Town pocket survival implement does not evidence trademark significance for the designation it seeks to register inasmuch as the customer was a dealer familiar with applicant and, hence, would be expected to know to whom to return a "POCKET SURVIVAL TOOL" product, in accordance with applicant's 25-year guarantee, even if it were not a version of the product which had been sold by the dealer.
Lastly, the sales and advertising figures provided by applicant's president fail to convince us of the alleged trademark significance of the designation "POCKET SURVIVAL TOOL" since, in addition to the demonstrated use thereof on the goods and in instructional guides and various promotional materials in a manner which, in essence, constitutes generic usage, [FN10] the designation itself aptly names the type of goods sold by applicant. Absent, therefore, anything to link applicant's gross sales of over $20 million and advertising expenditures of $200,000, which were generated and spent in connection with its marketing of in excess of one million tools during a nearly ten-year period, with use in contexts which would condition customers to react to or recognize the designation "POCKET SURVIVAL TOOL" as an indication of source rather than as a description of a category of product, there is no convincing basis for finding that such designation functions other than as a generic name for a type of compact folding tool, consisting of a knife, pliers and multiple blades, which is sold by applicant for survival purposes. See, e.g., In re Behre Industries, Inc., 203 USPQ 1030, 1033 (TTAB 1979).
We therefore conclude on this record that consumers and prospective customers of applicant's product would not regard the designation "POCKET SURVIVAL TOOL" as a trademark. Instead, the relevant public would attribute to such designation the ordinary, plain meaning provided by its component words and its demonstrated manner of use, namely: pocket survival tool. The designation "POCKET SURVIVAL TOOL" is thus a generic name for applicant's product and is incapable of registration. See, e.g., In re Pennzoil Products Co., 20 USPQ2d 1753, 1757-60 (TTAB 1991).
Nevertheless, even if we had not found the designation which applicant seeks to register to be a generic name for its goods, we would affirm the refusal to register on the ground of mere descriptiveness because the evidence submitted by applicant in support of its claim of acquired distinctiveness is insufficient to show that the designation "POCKET SURVIVAL TOOL" has become distinctive of its goods in commerce. As pointed out in Yamaha International Corp. v. Hoshino Gakki Co. Ltd., supra at 1008, the greater the degree of descriptiveness which a term possesses, the heavier is the burden of proving that it has become distinctive of the applicant's goods. Here, given the high degree of descriptiveness of such designation and that it has essentially been used in the manner of a name for applicant's goods rather than as a trademark therefor, we simply are not convinced by the sales and advertising figures furnished by applicant with respect to a period of time of almost ten years that the purchasing public for small multiple-blade knives and other compact survival implements has come to view the terminology "POCKET SURVIVAL TOOL" as a trademark. See Truckstops Corp. of America v. C-Poultry Co. Ltd., 223 USPQ 143, 146 (M.D.Tenn.1983) [defendant's outstanding sales record and advertising expenses do not prove secondary meaning].
*10 Instead, the evidence provided by applicant of its sales figures may, at most, be said to demonstrate the apparent popularity or commercial success of its goods, but such evidence alone does not suffice to establish that the designation "POCKET SURVIVAL TOOL" has acquired distinctiveness. See, e.g., In re Bongrain International (American) Corp., 894 F.2d 1316, 13 USPQ2d 1727, 1729 (Fed.Cir.1990) [growth in sales may be indicative of popularity of product itself rather than recognition of a term as denoting origin] and WLWC Centers, Inc. v. Winners Corp., 221 USPQ 701, 707 (M.D.Tenn.1983) [popularity in sales alone cannot establish secondary meaning]. In a similar manner, while applicant's expenditures of approximately one percent of its gross sales on advertising and promotion for its goods is indicative of its efforts to develop distinctiveness for the designation it seeks to register, such outlays are not determinative of the success of those attempts. See, e.g., In re Semel, 189 USPQ 285, 287 (TTAB 1975) ["in evaluating the significance of advertising figures ..., it is necessary to consider not only the extent of advertising but also whether the use of the designation therein has been of such nature as to create in the minds of the purchasing public an association of the designation with the user and/or his goods"] and Ralston Purina Co. v. Thomas J. Lipton, Inc., 173 USPQ 820, 824 (S.D.N.Y.1972) [promotional expenditures indicate efforts to establish secondary meaning, but do not determine the success thereof].
Thus, viewing the totality of the evidence of record, and assuming that the designation "POCKET SURVIVAL TOOL" could function as a trademark, we find that applicant has failed to meet its burden of establishing a prima facie case of acquired distinctiveness. This is because the high degree of descriptiveness inherent in the designation "POCKET SURVIVAL TOOL" and the manner of its use as a name for applicant's goods are simply more persuasive as evidence bearing on the issue of acquired distinctiveness than are the sales and advertising figures experienced by applicant during nearly ten years of use. In short, more evidence than that which has been offered by applicant, especially including proof of (i) long-standing and extensive promotion of the designation "POCKET SURVIVAL TOOL" as a trademark for applicant's goods and (ii) consumer recognition thereof, would be necessary in order to show that such designation has in fact acquired distinctiveness. See, e.g., In re Pennzoil Products Co., supra at 1760-61, and In re Stanbel Inc., 16 USPQ2d 1469, 1472 (TTAB 1990).
Decision: The refusal to register is affirmed.
Administrative Trademark Judges, Trademark Trial and Appeal Board
FN1. Ser. No. 74/092,273, filed on August 29, 1990, which alleges dates of first use of May 5, 1983.
FN2. Such refusal was expressed in the Office Action of July 6, 1992 as follows:
Refusal of [r]egistration under Trademark Act Sections 2(e)(1) and 2(f) is continued and made final because the proposed mark, POCKET SURVIVAL TOOL, appears to comprise the apt or common commercial name for applicant's goods.
The examining attorney does not recommend conversion of this application to seek registration on the Supplemental Register.
While, as indicated in In re Capital Formation Counselors, Inc., 219 USPQ 916, 917 (TTAB1983) at n. 2, the insufficiency of a showing pursuant to Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), is not a statutory basis for refusal of registration on the Principal Register, the failure to make a sufficient showing of acquired distinctiveness precludes registration of terms otherwise barred by the "merely descriptive" prohibition of Section 2(e)(1). Moreover, in the case of merely descriptive terms which are generic, no showing of acquired distinctiveness would suffice for purposes of registration on the Principal Register. See, e.g., H. Marvin Ginn Corp. v. International Ass'n of Fire Chiefs, Inc., 728 F.2d 987, 228 USPQ 528, 530 (Fed.Cir.1986) and authority cited therein ["A generic term ... can never be registered as a trademark because such term is 'merely descriptive' within the meaning of § 2(e)(1) and is incapable of acquiring de jure distinctiveness under § 2(f). The generic name of a thing is in fact the ultimate in descriptiveness"].
FN3. With its initial brief, applicant has submitted an appendix of evidentiary materials which includes, as Exhibit E, copies of two pages from the Spring 1985 catalog of L.L. Bean, Inc. Applicant concedes that such exhibit "was not part of the original record" and the Examining Attorney, in his brief, has properly objected to the introduction thereof as untimely under Trademark Rule 2.142(d). Accordingly, while we have not further considered Exhibit E in our decision of this case, it should be noted that even if such evidence were properly of record, it would make no difference in the result which we reach.
FN5. Similarly, leather and fabric sheaths therefor are generically described as pocket survival tool sheaths.
FN6. Likewise, Webster's Third New International Dictionary (1976) defines "pocket" at 1747 as an adjective meaning "1 a : small or flat enough to be carried in the pocket <a dictionary> <a flask>.
FN7. For instance, the REI 1991 Catalog refers to the "Leatherman Pocket Survival ToolTM" as the "first pocket survival tool with full-size pliers," while the Dunn's Late Fall 1988 Catalog mentions both the "Pocket Survival Tool TM" and the "Mini Pocket Survival ToolTM" as "POCKET SURVIVAL TOOLS".
FN8. For example, besides the reference in the Gander Mountain, Inc. catalog to a "Pocket Multi-Tool" and the designation in the L.L. Bean, Inc. Spring 1990 Catalog of a "Pocket Survival Tool with Sheath," the review in the May 1984 issue of Popular Science refers to both an "All-in-one tool" and "the stainless-steel Pocket Survival Tool," while the article in the May 1986 edition of Outdoor Life mentions both a "Multipurpose Tool" as well as "Tim Leatherman's Pocket Survival Tool".
FN9. This would especially be the case with applicant's User Guide, which utilizes the phrase "LEATHERMAN(R) TOOL" to refer to the goods along with the terminology "LEATHERMAN(R) POCKET SURVIVAL TOOL(R)" and "POCKET SURVIVAL TOOL(R)".
FN10. We do, however, concur with applicant that the appearance of the term "pocket survival tool" in a recently issued patent is not a basis for concluding that such term is generic. When read in context, the reference is ambiguous since, we observe, some terms which would seem to be trademarks (e.g., "rubbermaid") are either not plainly indicated as such or are used generically.