Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE MEN'S INTERNATIONAL PROFESSIONAL TENNIS COUNCIL
Serial No. 474,262
February 6, 1987
Hearing: September 16, 1986
Hunton & Williams for applicant
Trademark Examining Attorney
Law Office 4
(Thomas Lamone, Managing Attorney)
Before Sams, Allen and Krugman
Applicant, Men's International Professional Tennis Council, seeks reversal of the Trademark Examining Attorney's refusal of registration of MASTERS as a service mark for 'organizing and conducting an annual tennis tournament.' The refusal was based on the ground that the term sought to be registered is merely descriptive of the services in respect of which registration is sought, Trademark Act, Section 2(e)(1), 15 U.S.C. § 1052(e)(1) (1976), and that the evidence submitted by applicant to demonstrate that the term has become distinctive of its services and, hence, was registrable under § 2(f), 15 U.S.C. § 1052(f), id, was insufficient. [FN1] Both appellant and the Examining Attorney have filed briefs and both participated in oral argument of the issue at a hearing held for this purpose. We reverse.
Notwithstanding some confusing statements in the Office correspondence, we think it is clear from the briefs that there is but a single issue in this appeal, and that is the adequacy of appellant's acquired distinctiveness showing. [FN2] In this regard, while the Examining Attorney has attached various labels ('common descriptive word'--April 16, 1985; 'highly descriptive'--December 18, 1985; 'inherently and directly descriptive'--July 14, 1986) to the term MASTERS, the evidentiary support for these characterizations of appellant's mark is wanting. The evidence put in by the Office consists of an undated excerpt from G & C Merriam's WEBSTER'S THIRD NEW INTERNATIONAL DICTIONARY, excerpts from eight newspaper and wire services stories (out of 671 stories retrieved) from a LEXIS/NEXIS search, [FN3] and copies of the two cited (now withdrawn) registrations, supra, note 1.
The only relevant matter in the lengthy dictionary excerpt is one of the general meanings of 'master' (noun form) as 'a person who is highly skilled, ingenious, or dexterous in some area of activity.' Conspicuously absent from this definition are any references to tennis or any other competitive sport as examples of this or any other of the meanings of this word. [FN4] Such generally relevant meanings are not a proper basis for applying a more strict standard to the question of registrability than that ordinarily applied and are frequently insufficient even to satisfy the ordinary standard of descriptiveness which justifies a Section 2(e)(1) refusal. See, e.g., Stix Products Inc. v. United Merchants & Manufacturers, Inc., 295 F. Supp. 479, 160 USPQ 777,785 (S.D.N.Y. 1986); R.J. Reynolds Tobacco Co. v. Brown & Williamson Tobacco Corp., 226 USPQ 169,177-8 (TTAB 1985). Under these decisions and many others, the law is clear that, general meanings notwithstanding, what matters under Section 2(e)(1) is whether a term 'forthwith conveys an immediate idea of the . . . characteristics of the [services]' to the ultimate purchaser (or beneficiary) of them. On this basis, the above cited general dictionary meaning of 'master' is immaterial to the only issue which we have to decide and the absence of any particular reference to tennis in the dictionary probably favors appellant's position that the mark should be published rather than that it should be refused ex parte.
*2 The LEXIS/NEXIS materials also do not support the Examining Attorney's conclusion that the term sought to be registered is highly descriptive of tennis tournaments in United States commerce. All except one of the eight excerpts concern uses of the term 'masters' in reference to tennis events held in countries other than the United States (England, India and Japan) and of the seven stories in this record concerning the foreign events, one was from an English journal (Manchester Guardian Weekly) and six from proprietary news services (Reuters North European Service--3 stories; United Press International--1 story; Associated Press--3 stories). Since it is not possible to assume that the proprietary releases have received any circulation in United States news papers or magazines, [FN5] and it is fair to presume that the Manchester Guardian Weekly has little circulation here, we cannot--absent other evidence--, infer that these foreign uses have had any material impact on the perceptions of the relevant public in this country. See, e.g., R.J. Reynolds Co. v. Brown & Williamson Tobacco Corp., 226 USPQ 169, 173 (TTAB 1985), and cases cited therein. [FN6]
The single exception, an 'E.F. Hutton Masters Challenge,' held sometime after March 11, 1984, apparently in Washington D.C., was not previously known to appellant, probably due to its not having been a very significant event. [FN7] Furthermore, the results of a LEXIS/NEXIS and literature search conducted by appellant and its counsel (Hopper's October 11, 1985 affidavit, Exhibits A-G; Fletcher affidavit) clearly demonstrate that media mentions of MASTERS in reference to appellant's annual tennis tournaments held under that name manifestly dominate the few selected by the Examining Attorney from his NEXIS research. [FN8]
Finally, the fact that MASTERS has been registered on the Principal Register for golf tournaments, albeit not conclusive evidence of the registrability of MASTERS by appellant for different services, tends to rebut the Examining Attorney's characterization of MASTERS as a highly descriptive term. In these circumstances, it seems to us it was the Examining Attorney's burden to show-- if he could--, that MASTERS had also been found highly descriptive of golf tournaments but was nevertheless registered on the principal register because of Section 2(f) evidence more persuasive than that presented by appellant here. [FN9] No such showing was made. [FN10]
Since we conclude that the evidence of record does not support the Examining Attorney's characterization of MASTERS as 'highly descriptive,' the only question is whether the evidence presented by appellant is sufficient to support registrability of this term under Section 2(f) based on the ordinary standard which this section requires. We find that it is clearly sufficient. The tournaments have been held over a period of 15 years and the well documented affidavits put in by appellant provide ample support for its claim of substantially exclusive use as a mark distinguishing source in applicant over that period of time. [FN11]
*3 In his brief 2, the Examining Attorney stresses the need of present and future competitors to use the term 'masters' freely without risk of harassment. However, absent evidence of widespread United States descriptive use in this record, the question of competitive need can only be determined if, in an inter partes proceeding commenced by one with an interest in the matter, an evidentiary showing more adequate and persuasive than that which is now before us can be made out.
Decision: The refusal of registration is reversed.
J. D. Sams
D. B. Allen
G. D. Krugman
Members, Trademark Trial and Appeal Board
FN1. The application had also been refused previously under Section 2(d) based on registrations of MASTERS for similar services in relation to golf tournaments (Registration No. 1,069,545) and TENNIS GRAND MASTERS for 'sponsoring tennis tournaments' (Registration No. 1,008,048). However, the refusal on these grounds was withdrawn in the second action of the Office dated April 16, 1985, the same action in which the Section 2(e)(1) refusal was made final. Although applicant had submitted some evidence prior to final refusal relevant to whether the term had acquired distinctiveness (Hopper's January 18, 1985 affidavit, paragraphs 8-10), a Section 2(f) claim was not specifically raised until applicant requested reconsideration on October 17, 1985, the same date as that on which the notice of appeal was filed.
FN2. The Examining Attorney unquestionably ruled out genericness as an alternative ground in his appeal brief. Thus, the scattered 'highly descriptive' references have to do with the Examining Attorney's view of the degree of descriptiveness of the term MASTERS. This view, if correct, may have an effect on an applicant's burden to demonstrate acquired distinctiveness (brief, 3, first full sentence), but characterizing the term sought to be registered in this manner does not change the ground, nor add one. In this regard, contrary to appellant's view, the Examining Attorney's choice of Section 2(e)(1), rather than §§ 2 (preamble) and 45, as the statutory basis does not automatically rule out genericness as a ground of refusal. Both we and the Court above accept either statutory basis as sufficient. E.g., In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961,962-3 (Fed. Cir. 1985), discussing, with approval, both statutory 'approaches' to a genericness refusal. Accordingly, in determining whether genericness is a ground of refusal it is necessary to consider the language used by the Examining Attorney, not just the statutory section relied upon. If this is a bizarre result, the fault lies with the drafters of the 1946 Act who consciously declined to mention the term 'generic' in Section 2, not the Examining Attorney.
FN3. The search requested all stories in which the word 'tennis' occurred within 5 words of the word 'master(s)' in the entire NEXIS library (150 full-text sources of general news, business and financial information). However, only eight of the stories were printed and sent to applicant.
FN4. The closest example provided is that of a bridge player who is eligible to play in restricted contests. The game of bridge is clearly not analogous to tennis in terms of the question before us.
FN5. Releases by proprietary news services are primarily circulated to newspapers and news journals whose editors select from the releases those stories of sufficient interest to publish. Therefore, their appearance in the NEXIS database only in the form of the proprietary release does not prove that the news release appeared as a story in any newspaper or magazine circulated in this country. Indeed, the absence from the Examining Attorney's showing, of any NEXIS excerpts from stories in United States newspapers or magazines which republished any of the seven news releases can only suggest that they may not have been circulated here.
FN6. The two 'Satellite Masters Tennis Tournaments' (Heston, England and Poona, India) were sanctioned by appellant but it is represented here (Hopper October 11, 1985 affidavit, para. 5) that appellant would not be expected to permit such tournaments to be held under that name in the United States.
FN7. See, Hopper's October 11, 1985 affidavit, para. 5. A copy of a 'cease and desist' letter addressed to the presumed promoter of the E.F. Hutton Tournament on July 18, 1985 is attached as Exhibit F to the Hopper affidavit.
FN8. Based on this evidence, we believe that the Examining Attorney must have also found references to appellant's MASTERS tournaments in the 663 stories retrieved, but not printed. Supra, at note 3. (From the story numbers of the stories printed, it is clear that the Examining Attorney reviewed, at least, 224 of the stories retrieved.) Accordingly, since the printed out stories did not fairly reflect the media uses of MASTERS indicating appellant's tournaments, such results are accorded little probative value for the purpose urged by the Office, i.e. that the term is highly descriptive. We do not suggest that it was necessary for the Examining Attorney to print and mail the entire search. However, at least some reference to the fact that the search also disclosed numerous references to appellant's tournament seemed appropriate so that on reviewing the record we or a reviewing court would not make unjustified assumptions based on the stories that were printed and mailed.
FN9. The soft copy of the golf tournaments registration in the file does not bear any indication that Section 2(f) was invoked. However, the absence of such indication is inconclusive as the Office has not always printed this information on registration certificates.
FN10. We also note that MASTERS was held to have acquired secondary meaning rights for golf tournaments in Augusta National, Inc. v. Northwestern Mutual Life Ins. Co., 193 USPQ 210 (S.D. Ga. 1976). That court found MASTERS had acquired a strong secondary meaning and we find nothing in the reported conclusions of fact or law to support an inference that the term was found to be a highly descriptive term as defendant in the case had urged.
FN11. The four letters from tennis editors of various news organizations expressing enthusiastic support for appellant's claim of exclusivity are given little weight here absent information as to what action on the part of appellant prompted the supportive letters. It is obvious from the content of the letters, all addressed to John Hewig, Director of Communications of appellant, that each was preceded by some sort of request. Without knowing the nature of the request, and whether they were directed only to the four editors whose responses were submitted herein, or also to others whose responses may not have been so favorable, we find the evidence deficient in terms of its reliability. However, we do not find evidence of editorial recognition necessary to appellant's Section 2(f) claim.