Trademark Review - Intelligent Quartz, Lakota, and Clorotek (January 2014)

The District Court Finds the TTAB Erred in Refusing to Register INTELLIGENT QUARTZ for Watches

The USPTO refused an application by Timex to register the mark INTELLIGENT QUARTZ for watches on the basis that the mark is merely descriptive. On appeal to the Trademark Trial and Appeal Board, the Board confirmed that INTELLIGENT QUARTZ is merely descriptive as applied to watches. The key to the Board’s ruling, however, was an erroneous finding that the Timex watches actually contain a quartz component controlled by a computer chip.

Rather than appealing to the Federal Circuit, Timex filed a new lawsuit in federal district court. The court found the Board’s ruling was contrary to the evidence of record. In particular, the court found the evidence clearly established that the quartz crystal in the Timex watch is not controlled by a computer chip. Thus, the court found that “INTELLIGENT is not descriptive of the QUARTZ component in a Timex INTELLIGENT QUARTZ watch.”

The court also considered new evidence submitted by both parties to determine if the INTELLIGENT QUARTZ mark is merely descriptive under either the “imagination” test or the “competitive need” test. The court concluded that the mark does not convey any immediate idea of the ingredients, qualities, or characteristics of the goods. The defendant failed to introduce any evidence to show that any watch with technological capabilities is referred to descriptively as an “intelligent quartz” watch. Thus, the court concluded that consumers must use some imagination and mental reasoning to connect the mark with the goods. Further, the court found that the evidence of record supports the conclusion that because “INTELLIGENT does not describe QUARTZ, the descriptive information conveyed by the mark [is] so remote and subtle that it is [un]likely to be needed by competitive sellers to describe their goods or services[.]” The court granted the plaintiff’s motion for summary judgment, reversing the ruling by the Board.

Timex Group USA, Inc. v. Focarino, Commissioner of Patents, case number 1:12-cv-01080, (E.D.VA, December 2013).

The TTAB Affirms Refusal of LAKOTA Due to False Connection with the Native American Lakota People

In a precedential opinion, the Trademark Trial and Appeal Board affirmed a refusal to register the mark LAKOTA for herbal supplements and related goods pursuant to § 2(a) of the Trademark Act, because LAKOTA falsely suggests a connection with the Native American Lakota people.

Section 2(a) prohibits registration of a mark that consists of or comprises matter that may falsely suggest a connection with persons, institutions, beliefs, or national symbols. To establish a false connection under §2(a), the examining attorney must show: (1) the mark is the same as, or a close approximation of, the name or identity previously used by another person or institution; (2) the mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution; (3) the person or institution named by the mark is not connected with the activities performed by the applicant under the mark; and (4) the fame or reputation of the person or institution is such that, when the mark is used with the applicant’s goods or services, a connection with the person or institution would be presumed.

The Examining Attorney presented evidence to establish that LAKOTA identifies members of a certain group of Native Americans. Applicant argued that LAKOTA primarily refers to a dialect; however, the Board found that such a dual meaning does not establish that LAKOTA fails to identify the Lakota people. Applicant also unsuccessfully argued that because LAKOTA is not on the list of federally recognized Indian Entities, it does not identify a Native American tribe and thus, does not identify a person or institution contemplated by §2(a). The Board referred to evidence in the record which recognized LAKOTA as a group of Native Americans.

As to the second factor, Applicant argued that there are numerous third party entities using the term LAKOTA. In view of this, consumers are exposed and well accustomed to such use and LAKOTA does not point uniquely and unmistakably to particular persons or institutions. The Board found this argument unconvincing, noting that evidence of third-party use of LAKOTA on other goods is insufficient to show that Applicant’s use does not point uniquely to the Lakota people. The Board also found that third-party registrations for unrelated goods have no probative value.

As to the third factor, Applicant claimed a connection with the Indian group that speaks the Lakota language because Applicant’s licensee partnered with organizations which promote the preservation of the Lakota language. The Board found that such philanthropic goodwill did not equate to evidence of commercial connection.

Under the fourth factor, the Board found that Lakota people “are of sufficient renown for their business, tourism, and cultural enterprises such that they would be well known not only among residents of the Dakotas, but also to visitors to that area.” Additionally, the Board found that the reputation of the Lakota people extends to healing and traditional medicinal herbal remedies. In sum, the Board held that the evidence established that the reputation of the Lakota people with respect to healing and herbal remedies is of such nature that a connection with them would be presumed by consumers when Applicant’s LAKOTA mark is used on such goods.

Lastly, the Board considered evidence showing Applicant’s intention to identify with Native Americans, namely, the Lakota people, because any evidence of such intent is highly persuasive that the public will make the intended false connection. Applicant’s licensee’s website includes numerous references to Native Americans, creating a false association between his goods and members of the Lakota tribes.

In re Kent Pedersen, Serial No. 85328868 (TTAB, Dec. 2013) [precendential].

The TTAB Confirms that Merely Advertising Goods for Sale is not Use in Commerce

In a precedential opinion, the Trademark Trial and Appeal Board confirmed that mere advertising for a product does not constitute use in commerce under the Trademark Act. Clorox opposed registration of the mark CLOROTEK for “electronic equipment, namely, electrolysis cell for use in the manufacture of various ionic solutions.” Clorox brought a motion for summary judgment solely on the asserted claim that Applicant made no bona fide use of the mark as of the filing date of the use-based application.

The Applicant admitted that he did not use the mark on any product sold in the United States prior to the filing date. Applicant argued instead that as of the filing date, he had advertised and offered the goods for sale on the English version of its website. Applicant further argued that any requirement for the actual sale or transportation of goods such as Applicant’s goods is inequitable and inconsistent with Congress’ intent behind the “use in commerce” requirement. Specifically, Applicant maintained that Congress did not intend the use in commerce requirements to apply in this instance where Applicant sells an average of fewer than one product per year, at prices ranging from two hundred thousand dollars to two million dollars or more, or requiring transportation of an approximately one-ton piece of machinery that is custom- made to a client’s specifications.

The Board found the Applicant’s arguments to be without merit. “The mere use of a trademark in the advertising or promotion of goods in the United States is insufficient to constitute use of the mark in commerce, within the meaning of the Trademark Act, where the advertising or promotion is unaccompanied by any actual sale or transport of the goods in commerce, as is the case here.” Because there was no bona fide use of Applicant’s mark in commerce at the time Applicant filed his use-based application, the Board granted Opposer’s motion for summary judgment and refused registration to Applicant.

The Clorox Company v. Hermilo Tamez Salazar, 108 USPQ2d 1063 (TTAB 2013) [precedential]