Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 OMNICOM, INC.
OPEN SYSTEMS, INC.
Opposition No. 72,367
Cancellation No. 16,177
April 28, 1989
Before Sams, Krugman and Seeherman
Opinion by Krugman
The Board, in a ruling issued January 17, 1989, granted opposer/petitioner's motion for summary judgment on the issue of opposer/petitioner's standing and granted applicant/respondent's cross motion for summary judgment on the issue of the genericness of the term "OPEN SYSTEMS." The motions were otherwise denied, leaving for trial the remaining issues of whether "OPEN SYSTEMS" is merely descriptive and, if so, whether said term has acquired a secondary meaning. Trial dates were then reset.
This case now comes up on opposer/petitioner's request for reconsideration of the Board's January 17, 1989 ruling. Opposer/petitioner asserts that the application opposed herein was refused registration on the ground that the mark was merely descriptive; that applicant then amended its application to seek registration pursuant to Section 2(f) of the Act and that this amendment to Section 2(f) constitutes an admission that the term sought to be registered is merely descriptive and a concession that the term is not inherently distinctive. Opposer/petitioner concludes that there is no need to decide the issue of whether applicant/respondent's mark is merely descriptive since descriptiveness has already been admitted by applicant/respondent and that the only issue remaining for trial is whether the term has acquired secondary meaning. Opposer/petitioner requests that the Board's January 17, 1989 ruling be modified so as to grant opposer/petitioner's motion for summary judgment on the question of whether "OPEN SYSTEMS" is merely descriptive as used in connection with the services of applicant/respondent.
The Board has carefully considered opposer/petitioner's remarks made in its request for reconsideration but remains of the view that the Board's January 17, 1989 ruling is correct and free of error. Where, as here, a plaintiff opposes registration of a mark and seeks to cancel the registration of a mark on the basis that those marks are merely descriptive (Section 2(e)(1)), that is to say, that said marks are not inherently distinctive and have not acquired distinctiveness, the plaintiff's burden of proving that the marks are not entitled to registration is the same whether or not the application or registration included a claim of distinctiveness under Section 2(f) of the Trademark Act. If the application was published and the registration issued with no reference to Section 2(f), the plaintiff has the burden of making a prima facie showing that the marks are not entitled to registration by virtue of their descriptive character as applied to the goods or services. If the plaintiff meets this burden, the defendant then must overcome plaintiff's showing by demonstrating either that the marks are not, in fact, merely descriptive or that they have acquired distinctiveness. The Board would then decide the mere descriptiveness/acquired distinctiveness issue based on the entire record presented.
*2 Similarly, where, as here, a mark published pursuant to Section 2(f) is opposed on the ground that said mark is merely descriptive and has not acquired secondary meaning, the plaintiff must come forward with evidence to establish, prima facie, that the defendant did not satisfy the acquired distinctiveness requirement of Section 2(f). What this must necessarily consist of is evidence that the mark is merely descriptive of the goods or services and that it has not acquired distinctiveness as a trademark of defendant's. Defendant's claim of the benefits of Section 2(f) may, of course, be considered as a piece of evidence that the mark in question was, at the time of its adoption, merely descriptive of the goods or services in connection with which it was adopted (or evidence, at least, that defendant so believed). The existence of a Section 2(f) claim does not, on the other hand, pre-empt consideration of the descriptiveness issue. Indeed, because the statutory ground for opposing or cancelling the registration of a mark that is asserted to be merely descriptive and/or not distinctive is Section 2(e)(1), and not Section 2(f), it is somewhat illogical to maintain that the issue of mere descriptiveness "drops out" when a mark is allowed publication pursuant to Section 2(f). Section 2(f) is defendant's shield, not plaintiff's sword. The core of the issue to be decided in these cases always remains the merely descriptive character of the mark and whether such merely descriptive character has been replaced, through use, with trademark meaning. We must decide these issues on the entire evidentiary record presented and, in our view, plaintiff has the same evidentiary burden of establishing a prima facie case of descriptiveness, regardless of the presence in the record of a claim under Section 2(f). See, generally, Yamaha International v. Hoshino Gakki, 840 F.2d 1572, 6USPQ 2d 1001 (Fed.Cir.1988).
The request for reconsideration is denied. Trial dates are reset as shown in the accompanying trial order.
Members, Trademark Trial and Appeal Board
FN1. Applicant/respondent implies in its brief that there is some question as to whether or not the application was prosecuted pursuant to Section 2(f), comparing this case to the one in Congoleum Corp. v. Armstrong Cork Co., 218 USPQ 528 (TTAB 1983). However, it is quite clear that the application involved herein was amended to one seeking registration pursuant to Section 2(f) and that the application was published with a Section 2(f) notation. This was specifically acknowledged by applicant/respondent in the supplemental affidavit of John Cifford filed on November 18, 1988.