Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 BELLSOUTH CORPORATION
PLANUM TECHNOLOGY CORPORATION, ASSIGNEE, BY MERGER AND CHANGE OF NAME OF CYNEX
August 15, 1988
Hearing: June 14, 1988
Opposition No. 71,740 to application Serial No. 459,417 filed January 3, 1984
Jones, Askew & Lunsford for BellSouth Corporation
Abraham Goodman, Perry Teitelbaum and Goodman, Teitelbaum & Lieb for Planum Technology Corporation
Opinion by Simms
BellSouth Corporation, a Georgia corporation, has opposed the application of Planum Technology Corporation, the successor of Cynex Manufacturing Corp. by way of merger and change of name, to register the mark PHONE FORWARD for automatic telephone call diverters. [FN1] As grounds for opposition, opposer asserts that it is a regional company established as a result of the divestiture of American Telephone and Telegraph Company (AT&T); that it is the successor in interest to AT&T as the parent and holding company for two former operating companies, namely, Southern Bell Telephone and Telegraph Company and South Central Bell Telephone Company; that opposer and its predecessors have previously used the term 'Call Forwarding' in interstate commerce for telecommunications services including the service whereby incoming telephone calls are automatically forwarded from one telephone to another; that applicant's mark PHONE FORWARD is merely descriptive because it immediately conveys the impression to a prospective customer that applicant's devices automatically forward phone calls and that registration to applicant will inhibit opposer and others who sell telephone call diverters or 'offer telephone call forwarding services' (Notice of Opposition, ¶7) from using the term 'forward' to describe their goods or services; that, alternatively, as a result of extensive promotion and advertising, opposer has acquired valuable goodwill in the mark Call Forwarding and the public has come to know and identify this term as a symbol identifying a telephone communications service originating from one of the companies that is the successor to AT&T; and that applicant's mark PHONE FORWARD so resembles that previously used mark as to be likely to cause confusion. In its answer, applicant has denied the essential allegations of the opposition.
The record of this case consists of discovery responses of both parties submitted by way of notices of reliance; dictionary definitions relied upon by applicant's notice; stipulated testimonial affidavits of witnesses of both parties filed pursuant to Trademark Rule 2.123(b); and the application file.
The record shows that since 1968, Southern Bell and South Central Bell have continuously offered and sold a telecommunications service called Call Forwarding (whereby an incoming telephone call is automatically transferred from one telephone exchange number to another) with this service now being offered to approximately seventy percent of all of opposer's customers. Comprising one of opposer's Custom Calling services, [FN2] Call Forwarding services have been extensively advertised and promoted by Southern Bell and South Central Bell, with approximately $4 million spent on television advertising of these Custom Calling services in 1985 alone. Opposer's services are offered to all classes of telephone communication customers including residential and commercial users.
*2 Applicant manufactures and sells automatic telephone call diverters, which are devices which redirect incoming calls to a remote telephone number. Applicant's devices provide essentially the same function as opposer's Call Forwarding service. According to the testimony of one of applicant's employees, applicant was the first manufacturer to develop a consumer-oriented call diverter whose price was in the $100.00 range. Applicant sells its goods through mail order companies, retail stores, department stores and independent telephone companies to ultimate end users such as doctors, dentists, lawyers, answering services and sales persons. Applicant has realized sales in 1985 of approximately $400,000 and advertising expenditures per year are around $30,000, including trade show expenses (but excluding cooperative advertising expenses).
With respect to the issue of mere descriptiveness, opposer has offered little other than argument that the term 'PHONE' is descriptive and has been disclaimed by applicant and that the accompanying term 'FORWARD' is descriptive of the diverter feature of applicant's goods.
In the present context, the word 'Phone' describes what is being operated on--a telephone call. The word 'Forward', when used in association with an automatic call diverter, describes sending the telephone call ahead to the pre-designated telephone number.
Opposer's brief, 11.
While we agree with opposer that applicant in its promotional literature has used its trademark (perhaps unwisely) as a verb ('Why miss important calls when you can Phone ForwardTM them!'), it seems to us that applicant's mark is a somewhat incongruous combination of words and requires a modicum of imagination or thought before one is able to determine the nature of applicant's product. That is to say, because there is no evidence that purchasers or users refer to applicant's devices as 'phone forwards' or that the words 'phone forward' are used, otherwise, in a descriptive sense by the trade or by customers, we believe that a multi-stage reasoning process (i.e., substituting the word 'call' for the word 'phone' used as a verb) is necessary in order to ascertain the nature or function of applicant's goods. At worst, applicant's mark is highly suggestive of a feature or function of the product. Moreover, according to the affidavit of one of applicant's employees, who is familiar with telephone systems and accessories of competitors, the most common name used in the industry for a product such as applicant's is 'call diverter.' This statement is supported by exhibits evidencing third-party use of this nomenclature. Contrary to opposer's argument, registration of applicant's mark will not deprive others of the right to inform their customers that their products or services forward telephone calls. See In re Reynolds Metals Co., 480 F.2d 902, 178 USPQ 296, 297 (CCPA 1973).
Accordingly, because the meaning conveyed by applicant's mark is not immediate and direct and because there is no evidence of actual use by competitors or a need to use these words, we find that opposer has failed to prove this ground. See, for example, In re The Noble Company, 225 USPQ 749 (TTAB 1985) (NO BURST held suggestive of liquid antifreeze designed to prevent the bursting of pipes in hot water heating systems), In re C. J. Webb, Inc., 182 USPQ 63 (TTAB 1974) (BRAKLEEN held suggestive for a brake cleaner) and In re Pennwalt Corp., 173 USPQ 317 (TTAB 1972) (DRIFOOT held suggestive of anti-perspirant foot deodorant). [FN3]
*3 With respect to the remaining ground, that of likelihood of confusion, opposer's case must also fail. Opposer argues that if it is found that applicant's designation is a trademark, then the merely descriptive term 'Call Forwarding', as a result of opposer's extensive use and advertising, has acquired a secondary meaning indicating origin in opposer, and that applicant's mark so closely resembles this designation that confusion is likely for these related goods and services.
It is applicant's position, on the other hand, that the term 'Call Forwarding' is the generic or common descriptive term of opposer's services and that therefore opposer's Section 2(d) claim must fail. We agree. There is persuasive evidence of record to demonstrate that the phrase 'call forwarding' is the generic name for the telecommunications exchange services whereby an incoming telephone call is transferred from one telephone to another. For example, in a brochure of a competitor of applicant (Exhibit 10) promoting a call diverter, the product (MK-10) is described as follows:
The MK-10 also includes a BRIDGE switch which permits manual call forwarding and 3-way conference calls.
An advertisement for the Alphadial 200 telephone system in the Spring 1987 Sync catalog indicates that this telephone includes a 'Call forward built in.' An advertisement for the Teledial phone system indicates that it includes 'features like call forwarding to a specific location.' The user's guide for the Electra 16/48 made by NEC Telephones, Inc. indicates that one of the features of this telephone system is 'CALL FORWARDING.' The instructions describing the use of this feature add: 'The HOLD LED will be steadily lit when call forwarding is set.' A button on that telephone bears the designation 'CALL FORWARD.' Portions of a catalog from COMCOR reveal an advertisement for a product referred to as a 'Call Forwarding Controller' 'For Those Who Use The Phone Company To Forward Their Calls.' Other evidence of record indicates generic use of the words 'call forward' in reference to a feature of a telephone system. The stipulated testimonial affidavit of one of applicant's employees, who attests to familiarity with telephone systems and accessories of other companies and who has attended trade shows, conventions and regularly reads trade magazines and catalogs, indicates that, in his opinion, the term 'call forward' or 'call forwarding' is commonly used to describe a feature of large telephone systems such as the Private Branch Exchange Systems. Opposer's own promotional literature also helps demonstrate how this term will be perceived by customers. ('You can have your calls forwarded to another number where you can be reached.' '[A]ll calls then will automatically be forwarded to the number you've designated.')
Finally, we take judicial notice that the term 'call forwarding' is defined in The Random House Dictionary of the English Language (2d ed. Unabridged 1987) as:
a telephone service feature whereby, when a customer chooses, all calls coming in to one number are automatically rerouted to another, designated number.
*4 Similarly, The Morrow Book of New Words, N.H. and S.K. Mager (1982), defines these words as follows:
system for relaying incoming telephone calls to another number for any period of time.
Opposer itself in its pleading and its main brief (p. 13) has referred to its services as 'telephone call forwarding services.'
While opposer argues that the question of whether the term 'call forwarding' is a service mark is 'substantially irrelevant' (brief, 15) to the question of likelihood of confusion, we have held that if a party's alleged trade designation does not in fact identify source, then there is no basis upon which to predicate a finding of likelihood of confusion. NASA v. Bully Hill Vineyards Inc., 3 USPQ2d 1671, 1676 (TTAB 1987). That is, a likelihood of confusion cannot be recognized where one claimed to be aggrieved by that confusion does not have a right superior to his opponent's. Otto Roth & Co., Inc. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43, 44, 45 (CCPA 1981). Because this record fully supports the conclusion that the term 'call forwarding' is used and understood by the public and the trade as referring to a category of services (H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986)), opposer has no protectible interest in that term. Accordingly, the opposition grounded upon alleged proprietary rights must fail.
Decision: The opposition is dismissed with prejudice.
J. D. Sams
L. E. Rooney
R. L. Simms
Members, Trademark Trial and Appeal Board
FN2. The other telecommunications services are Call Waiting, Three Way Calling and Speed Calling.
FN3. Applicant's argument, raised for the first time in its brief, that, even if its mark is merely descriptive, the mark has become distinctive was neither pleaded nor tried.
September 6, 1988
Erma S. Brown
Ann J. Lieb, Perry Teitelbaum and Goodman, Teitelbaum & Lieb.
November 1, 1988
Erma S. Brown
The Board's action dated September 6, 1988, is amended as follows:
Page 1, paragraph 1, line 2 the word "applicant" should be substituted for the word "opposer."