Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 RACINE INDUSTRIES, INC.
March 21, 1995
Date released for publication: August 25, 1994
Opposition No. 86,567 to application Serial No. 73/810,781, filed July 5, 1989
Before Hanak, Quinn & Hohein
Administrative Trademark Judges
Opinion by Hohein
Administrative Trademark Judge
Bane-Clene Corp., dba Professional Cleaners' Association, has filed an application to register "PCA" as a collective membership mark "to indicate membership in an association of carpet cleaners". [FN1]
Registration has been opposed by Racine Industries, Inc. on the basis that " 'PCA' is unregistrable under Section 2(e)(1) of the Trademark Act because it is an abbreviation or acronym of 'Professional Cleaners' Association,' a merely descriptive or generic term when used to indicate membership in an association of professional carpet cleaners". In particular, opposer alleges in the notice of opposition that it "is and has been engaged in the business of providing carpet cleaning services and selling carpet cleaning products"; that "[d]uring the past several years, Opposer has used the abbreviation 'PCA' in a descriptive capacity as an abbreviation for the language 'PROFESSIONAL CLEANERS' ASSOCIATION' to advertise carpet cleaning services by its certified members"; that "the services in connection with which the Applicant seeks registration of the mark 'PCA' are substantially similar to the services rendered by Opposer" and "are advertised in the same types of media and are directed to the same class of customers"; that applicant "is not entitled to exclusive use of the term 'PCA' because it is merely descriptive or generic"; that such term "is generally used in a descriptive capacity by members of the carpet cleaning industry to describe a professional cleaners' association"; and that, as an example of the use by others of "the term 'PCA' as an abbreviation for the language 'Professional Cleaners' Association'," opposer "is aware of" the use, prior to applicant's claimed dates of first use, of such term by the Mid-South Professional Cleaners' Association, which "refers to itself as 'MSPCA' and has operated using such name since the mid-70's".
Applicant, in its answer, admits that opposer "has been engaged in the business of providing carpet cleaning services and selling carpet cleaning products"; that "the services rendered to the public by the respective parties to this proceeding are related services and are advertised in the same types of media and are directed to the same class of customers"; and that "an association known as Mid-South Professional Cleaners['] Association apparently refers to itself by the acronym MSPCA". Applicant also admits that opposer "has used PCA," but asserts that such use "has been and is ... in conjunction with [[[the term] 'host', i.e.[,] HOST PCA[,] as a certification mark to identify carpet cleaning services by its certified members, with the PCA portion of the mark being an acronym for the language 'Professional Cleaners [[['] Association' ". Applicant denies the remaining salient allegations of the notice of opposition, including the averments that its mark is merely descriptive or generic.
5. In furtherance of this long held belief, Opposer filed one application for federal registration of PCA as a certification mark to identify carpet cleaning services, that application being Serial No. 73/799,640 filed May 12, 1989, and a second application for federal registration of PCA and Design as a certification mark to identify carpet cleaning services, that application being Serial No. [74/]029,010 filed in the Patent and Trademark Office on February 14, 1990.
6. Opposer's PCA application Serial No. 74/799,640 was approved for publication and was duly published in the Official Gazette on September 25, 1990 and was opposed by Applicant herein on the basis of its earlier use of PCA, Opposition No. 83,928. Racine Industries, Inc. (Opposer herein) thereupon abandoned its said application without the consent of Bane-Clene Corp. (Applicant herein) following which judgment was entered against Racine Industries, Inc. (Opposer herein) with the opposition being sustained and registration to Racine Industries, Inc. being refused. For the first time, Opposer herein, having lost its efforts to register PCA, conveniently resorted to a case of "cerebral reversal" and reversed its position and now alleges in this Opposition proceeding that PCA is a merely descriptive or generic term incapable of exclusive use by anyone. Applicant denies such allegations leaving Opposer to its proof.
7. Applicant further avers as proof of Opposer's long held belief that PCA is a valid and proper mark capable of exclusive use, that in the Oath of its two separate federal applications heretofore identified, its officer swore that he believed that "... no other person firm, corporation or association has the right to use the mark in commerce ...". Yet Opposer, in this proceeding, after losing out to Applicant in its efforts to register PCA, alleges that everyone has the right to use the mark, and that no one has the right to the exclusive use of it.
The record in this proceeding includes the pleadings; the file of the opposed application; the testimony, with exhibits, of opposer's chairman, J. Frederic Rench, which was submitted as part of opposer's case-in-chief; and the testimony, with exhibits, of applicant's vice president for operations, William E. Yeadon, [FN2] which was furnished as part of applicant's case-in-chief. Opposer, as part of its case-in-chief, also filed a notice of reliance upon applicant's responses to a particular interrogatory and certain requests for admission served by opposer. Applicant, as part of its case-in-chief, likewise submitted a notice of reliance upon opposer's responses to certain interrogatories and requests for admission served by applicant. [FN3] Opposer, as its rebuttal, filed a notice of reliance upon copies of a form letter referred to in the testimony of Mr. Yeadon and a letter from applicant's counsel to opposer's attorney stating that such letter was produced pursuant to a request by opposer's attorney during Mr. Yeadon's deposition. [FN4] Briefs have been filed, but an oral hearing was not requested.
*3 The primary issues for our consideration in this case are whether the initialism "PCA," when used to indicate membership in an association of carpet cleaners, is a generic or merely descriptive term and, if the latter, whether such term has acquired distinctiveness. [FN5]
According to the record, opposer and applicant are competitors in the carpet cleaning industry. Opposer manufactures and markets what are known as "dry extraction" carpet cleaning products and equipment, while applicant produces and sells chemical agents and equipment to steam clean carpets. Moreover, as adjuncts to their businesses, each party has organized a professional association, with membership therein available to those cleaning professionals who utilize its particular cleaning systems and products. Both parties acknowledge, furthermore, that in the carpet cleaning industry, acronyms are commonly used to identify various organizations and associations which have sprung up to meet the marketing and professional needs of those in the trade.
Opposer sells its products and equipment to carpet stores and home centers; to institutions and buildings which have their own carpet cleaning crews; to building service crews, called "BSCs" by opposer, which provide maintenance services (including carpet cleaning) on a contractual basis; and to professional cleaners, referred to as "PCs" by opposer, which specialize in cleaning carpets. Opposer, when dealing with its distributors who sell to building service contractors and professional cleaners, uses the acronyms "BSC" and "PC" to differentiate those respective segments of the carpet cleaning industry and has continuously done so since the late 1950s or early 1960. One consequence thereof is that for opposer, speaking of "PC's would be professional cleaners and PCA would be an association of professional cleaners". (Rench dep. at 8.) However, the record shows that opposer's witness conceded that most of opposer's uses of the term "PC" are in connection with its interoffice (internal) correspondence, while its uses of the initialism "PCA," which it employs as an acronym for "Professional Cleaners' Association," are principally in conjunction with the term "HOST," which serves as opposer's trademark and service mark for its carpet cleaning products, equipment and related training provided with respect thereto.
Opposer, in 1989, established a professional cleaners' association known as "HOST PCA". The organization, which had over 300 charter members, was founded by opposer for the benefit of the professional carpet cleaners which use its "HOST" dry extraction carpet cleaning systems to render their services. Typically, opposer uses such mark, in the format shown below,
on the quarterly newsletters it sends to the members of its organization who, in turn, use such logo in their advertising. In the first issue of its United States newsletter [FN6] the term "P.C.A" also appeared separately on the masthead, but the vast majority of the references to opposer's "HOST Professional Cleaners' Association" utilized the terminology "HOST PCA". While opposer has made occasional uses of just the acronym "PCA," such as in a June 15, 1989 letter featuring the salutation "Dear PCA Member," which was signed by its "PCA Coordinator," and on a business card so identifying one of its employees, such documents respectively bear either opposer's "HOST PCA" logo or its "HOST" mark. In addition, mention of opposer's "HOST Professional Cleaners' Association (PCA)" has been made in the trade magazine Clean Facts.
*4 Although opposer, on May 12, 1989, filed an application to register the term "PCA" as a certification mark for "carpet cleaning services, [FN7] opposer subsequently submitted a withdrawal of such application, which had been opposed by the applicant herein on the ground of priority of use and likelihood of confusion, on March 22, 1991. In the withdrawal, which was submitted without the written consent thereto of the applicant herein, [FN8] opposer stated that (underlining in original):
Withdrawal is appropriate for at least two reasons. For both of these reasons, set forth below, Applicant's "PCA" and Opposer's "PCA" are unregistrable.
"PCA" is unregistrable because, as [A]pplicant is now aware, the claimed mark is generic or completely descriptive. The term "PCA" is an abbreviation of a generic or completely descriptive term which is recognized as such (i.e., recognized as an abbreviation of such a term).....
Ample evidence is available that "PCA" is recognized as an abbreviation for "Professional Cleaners['] Association." It is indisputable that "PCA," as used by Opposer and as used by Applicant, is recognized as an abbreviation for such generic or highly descriptive term.
Applicant's counsel has recently been informed that "PCA" has been used by parties other than Applicant and Opposer, and that such use has been continuous since a time well before the first use dates alleged by Opposer and Applicant. In particular, Midsouth [sic] Professional Cleaners Association, which frequently refers to itself as MSPCA, has operated using such name and letters at least since the mid-70's. MSPCA is frequently referred to in national journals such as Cleanfax and Installation and Cleaning Specialists Magazine.....
At trial herein, opposer's witness testified that at the time opposer filed its application, it was not aware of applicant's use of "PCA" or the use by any third party of such term. Opposer accordingly believed that its organization was the only industry group using the designation "PCA". The opposition brought by applicant prompted opposer to search for others in the carpet cleaning industry who were using the term "PCA" and led opposer to discover the organization known as Mid-South Professional Cleaners Association, which uses the acronym "MSPCA" and has done so since the mid-1970s. Mr. Rench conceded, however, that MSPCA has never used the term "PCA" by itself; instead, such use has been as part of the acronym "MSPCA," with the "PCA" portion referring to part of that organization's name and not to other organizations. Likewise, Mr. Rench admitted that when opposer uses the term "PCA," its use is part of the designation "HOST PCA" rather than as a reference to other organizations. The general public, Mr. Rench testified, would not know, for the most part, what the acronym "PCA" stands for, but he maintains that in the carpet cleaning industry: "Everybody understands what PCA means". (Rench dep. at 34.)
*5 The record reveals that, counting MSPCA and the HOST PCA run by opposer, there are about 20 different carpet cleaning organizations in addition to the PCA group operated by applicant. Such organizations, which are commonly referred to by their abbreviations because, as the parties agree, most people do not know what the acronyms stand for, include the following trade associations, which are listed by name and initialism: International Institute of Carpet and Upholstery Certification--IICUC; Association of Cleaning Technicians--ACT; Association of Specialists in Cleaning and Restoration-- ASCR; [FN9] Carpet Cleaners Institute--CCI; Carpet Cleaners Institute of the Northwest--CCINW; Midwest Association of Professionals--MAP; New England Institute of Restoration & Cleaning--NEIRC; New York Rug Cleaners Institute-- NYRCI; Ontario Professional Carpet Cleaners Association--OPCCA; Professional Carpet and Upholstery Cleaners Association--PCUCA; Society of Cleaning Technicians--SCT; Southwest Carpet Cleaners Association--SWCCA; and United Carpet Cleaners Institute--UCCI. None of these associations, or any other organization with the exceptions of MSPCA, HOST PCA and PCA, use the term "PCA" as an acronym or abbreviation for "Professional Cleaners(') Association".
Applicant uses the term "PCA" as an acronym for an organization which is presently known as the Professional Cleaners' Association. [FN10] Originally organized in the mid-1970s as the Steam Carpet Cleaners' Association ("SCCA"), such organization changed its name in 1978 to Bane-Clene Owners' Association ("BCOA") and, in 1982, became known by its present name and initialism. In order for a professional cleaner to join the PCA group, which currently has about 400 members in 40 states, a prospective member must first do the following: attend applicant's carpet cleaning school and pass a test upon completion thereof; purchase applicant's carpet cleaning equipment and sign an agreement to use applicant's cleaning products exclusively; and become part of applicant's advertising program. Membership in applicant's PCA and opposer's HOST PCA is therefore mutually exclusive since belonging to the latter likewise involves an agreement to use only opposer's products. Members of applicant's PCA and opposer's HOST PCA may, however, belong to one or more of the same trade associations, since such groups are not sponsored by or affiliated with applicant or opposer.
Members of applicant's organization display the term "PCA" on shoulder patches on their uniforms, on decals affixed to their trucks and/or places of business, and in advertisements of their carpet cleaning services. Such patches and decals, as well as camera-ready artwork for use in media advertising, are supplied by applicant to PCA members. In addition, applicant prints and distributes brochures bearing the mark "PCA," which is frequently displayed in the format shown below,
and places yellow pages advertising for PCA members which prominently features such logo. The "PCA" logo is also used on the organization's stationery and certificates of membership. The logo additionally appears in advertisements run by applicant to promote the organization in trade magazines, such as Installation & Cleaning Specialist, Cleanfax, Floor Covering Weekly and Floor Covering News, and in applicant's house organ, The Bane-Clene Professional Cleaning Digest. [FN11]
*6 Like applicant, opposer advertises its HOST PCA organization in the same trade journals and both parties attend and exhibit at some of the same trade shows. Applicant, in particular, has had a booth at such shows as the Atlanta Floor Covering Market, the Dalton Floor Covering Market, and Surfaces, and at trade shows sponsored by such carpet cleaning industry groups as UCCI, MAP and ASCR. Virtually every piece of literature distributed by applicant at its trade show booth displays the "PCA" logo.
As to applicant's knowledge of the use of the term "PCA" by others, applicant's witness testified that the only such use of which he is aware is opposer's use of the designation "HOST PCA," which Mr. Yeadon learned of in early 1991 when he "saw it on a business card" that was handed to him. (Yeadon dep. at 51.) While applicant is also aware that MSPCA uses the initials "PCA" in the acronym of its name to stand for the words "Professional Cleaners Association," Mr. Yeadon testified that, during the five or six years he has been familiar with MSPCA, he has never known MSPCA to use the term "PCA" alone to refer to itself. Mr. Yeadon consequently maintains that applicant has no objection to MSPCA's use of the initials "PCA". Moreover, while Mr. Yeadon conceded that various carpet cleaning organizations use acronyms for their names in which the letters "P," "C" and "A" respectively represent the words "Professional," "Cleaners" and "Association," the term "PCA" by itself specifically connotes applicant's Professional Cleaners' Association and no other entity.
Turning first to the issues of whether the mark "PCA" is a merely descriptive or generic term, we note that as stated in In re Association of Energy Engineers, Inc., 227 USPQ 76, 77 (TTAB 1985):
Section 4 of the Trademark Act specifically provides that the registration of collective [membership] marks is "... subject to the provisions relating to the registration of trademarks...." Accordingly, the analysis regarding descriptiveness or genericness of a collective membership [mark] is the same as that with respect to a trademark or service mark.
See also In re National Association of Legal Secretaries (International), 221 USPQ 50, 52 (TTAB 1983). Thus, just as it is well settled that a term is considered to be merely descriptive of goods or services, within the meaning of Section 2(e)(1) of the Trademark Act, if it immediately describes a quality, characteristic or feature thereof or directly conveys information regarding the nature, function, purpose or use of the goods or services, see In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978), the same would be the case with respect to a term which describes a significant aspect of an organization or association. Such a term, in the context of a collective membership mark, need not describe all attributes of the organization or association; rather, it is sufficient for purposes of mere descriptiveness that the term immediately convey a meaningful idea or information about the group, such as its composition or membership. Moreover, whether a term is merely descriptive of a organization or association is determined not in the abstract but, as always, in relation to the particular organization involved, the context in which the term is used by the group's members, and the possible significance that the term would have to the average person because of the manner of its use by members of the group. Cf. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Opposer, in this regard, has the burden of establishing that the term "PCA" is merely descriptive of applicant's professional carpet cleaners' association, while applicant, if the former is shown by opposer, bears the burden of proof with respect to making out a prima facie case of acquired distinctiveness so as to be entitled to registration under the provisions of Section 2(f) of the Trademark Act. See Yamaha International Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 U.S.P.Q.2d 1001, 1006 (Fed.Cir.1986).
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.
Again, just as in the case of goods or services, the test for determining whether a term is a generic designation, as applied to an organization or association, depends upon how the term is perceived by the relevant public. Cf. Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 U.S.P.Q.2d 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 U.S.P.Q.2d 1531, 1533 (Fed.Cir.1992). As Section 14(3) of the Trademark Act makes clear, "[a] ... mark shall not be deemed to be the generic name [of an organization or association] ... solely because such mark is also used as a name to identify a unique [organization or association] ..."; 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 [an organization or association] ... 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 organization or association at issue, the term is generic. Cf. 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 trade magazines, yellow pages directories, and other publications. See In re Northland Aluminum Products, Inc., 777 F.2d 1566, 227 USPQ 961, 963 (Fed.Cir.1985). Opposer, as the party contending that the designation "PCA" is a generic term for applicant's professional carpet cleaners' association, bears the burden of proof thereof. See In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 U.S.P.Q.2d 1141, 1143 (Fed.Cir.1987).
Opposer, noting both applicant's admission that the term "PCA" stands for the language "Professional Cleaners' Association" and the undisputed fact that acronyms are customarily used in the carpet cleaning industry, argues that (emphasis by opposer):
As demonstrated by the evidence introduced by the Opposer in this case, the acronym "PCA" is well-known in the industry as meaning "Professional Cleaners [ [ ['] Association"--not Applicant's particular association but any professional cleaners['] association.
*8 In essence, opposer maintains that because the membership of applicant's association is composed of professional cleaners and the relevant public recognizes the initials "PCA" as signifying a professional cleaners' association, the term "PCA" is generic or, at the very least, merely descriptive.
We agree with applicant, however, that opposer has failed to present any evidence that the term "PCA" has been used in a generic or other nonsource-identifying fashion. Irrespective of whether the relevant public is limited to those in the carpet cleaning industry, as urged by opposer, or is viewed as consisting of the ultimate purchasers of carpet cleaning services, as advocated by applicant, the record is devoid of any documentary or other evidence which, when considered in context, demonstrates that the term "PCA" primarily signifies or merely describes any professional cleaners' association in the carpet cleaning industry. As stated by the court in Modern Optics, Inc. v. Univis Lens Co., 234 F.2d 504, 110 USPQ 293, 295 (CCPA 1956):
[I]t is possible for initial letters to become so associated with descriptive words as to become descriptive themselves..... It does not follow, however, that all initials of combinations of descriptive words are ipso facto unregistrable. While each case must be decided on the basis of the particular facts involved, it would seem that, as a general rule, initials cannot be considered descriptive unless they have become so generally understood as representing descriptive words as to be accepted as substantially synonymous therewith.
There is no question that, in the present case, the language "professional cleaners' association" merely describes, and in fact would be a generic designation for, any organization or association whose membership consists of professional cleaners of any sort, such as professional carpet cleaners. Nevertheless, as pointed out by applicant, the evidence is simply lacking that the acronym "PCA" is understood by the relevant public, regardless of however narrowly or broadly such public is defined, to refer generally to any of the trade associations or other membership groups in the carpet cleaning industry. The interoffice communications introduced by opposer, which typically use the abbreviation "PC" rather than the acronym "PCA," are obviously internal memos which would not be seen by any member of the relevant public. While opposer's HOST PCA newsletter, the advertisements and other mentions thereof in trade journals, and the use of the title "PCA Coordinator" on business cards plainly reach at least some carpet cleaning professionals, it is clear that in context, the term "PCA" refers to and signifies opposer's HOST PCA organization and not merely a professional cleaners' association. Similarly, in applicant's advertising and house organ, references to the term "PCA," whether appearing in a logo or otherwise, clearly would be understood to mean the particular organization known as the Professional Cleaners' Association and would not be taken as just a reference to a professional cleaners' association.
*9 Opposer places heavy reliance upon the use by Mid-South Professional Cleaners Association of the acronym "MSPCA" as demonstrating third-party use of the term "PCA" in a generic or at least merely descriptive manner. We concur with applicant that such evidence is entitled to little weight and that, when considered with the other evidence of record, there is no competent proof that the relevant public recognizes the term "PCA" as being descriptive of a professional cleaners' association. In each instance, the demonstrated usage of the acronym "MSPCA" is that of a source-indicative term and there is no evidence that Mid-South Professional Cleaners Association has ever used the term "PCA" alone. Rather, MSPCA's use of such term (the three documented instances of which all occurred after the filing date of the application involved in this proceeding) invariably include the prefix "MS" and, other than testimony that MSPCA has been in existence since the mid-1970s, there is no evidence as to the extent of its use of the acronym "MSPCA". [FN12] Moreover, the testimony offered by the parties' witnesses is that most members of the carpet cleaning industry do not even know what words the acronyms used by various industry associations and trade groups stand for; instead, such organizations are simply referred to by their particular initialisms or abbreviations. Furthermore, Mr. Rench admitted on cross-examination that none of the documentary evidence presented by opposer showed use of the term "PCA" as a general reference to professional cleaners' associations, while Mr. Yeadon testified that he was unaware of any industry organization, other than those sponsored by applicant and opposer, that uses the letters "PCA" alone to signify a professional cleaners' association. Thus, even though Mr. Yeadon conceded on cross-examination that other carpet cleaning organizations have words like "Professional," "Cleaners" and "Association" in their names and use the letters "P," "C" and "A" as abbreviations for those words, the evidence shows that none of the third-party organizations uses the term "PCA" as such, and all use their acronyms as source identifiers rather than in a generic or descriptive way.
We also note, as a final consideration, applicant's assertion that this proceeding "appears to be a classic case of 'cerebral reversal' " by opposer. Specifically, applicant contends that opposer's "prior attempt to register PCA constitutes an admission against interest that PCA is not generic or merely descriptive" in the carpet cleaning industry. While we concur with opposer that its filing of a application to register the term "PCA" as a certification mark for carpet cleaning services does not rise to the level of an admission against interest, [FN13] such action is relevant and competent to the limited extent of being "merely illuminative of shade and tone in the total picture confronting the decision maker". Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 154 (CCPA 1978). Viewed in such light, the attempt by opposer to register the term "PCA" is indicative that such term, contrary to the position which opposer now asserts, was not in widespread usage in the carpet cleaning industry as a designation signifying a professional cleaners' association. Consequently, on the record before us, opposer has failed to satisfy its burden of proof that the term "PCA" is either generic or at least merely descriptive.
*10 Nevertheless, in the event that we are reversed on appeal with respect to the holding that the term "PCA" is not merely descriptive, we agree with opposer that applicant has failed to show that such term has acquired distinctiveness. [FN14] Although applicant has introduced samples of the ways in which the term "PCA" has been advertised and promoted since use thereof began in 1982, the extent of the use of such term, other than circulation figures for advertisements on behalf of its members which appeared in its own bi-monthly publication, has not been established. More importantly, the fact remains that opposer, since 1989, has also used the term "PCA," most often as part of the phrase "HOST PCA" but sometimes singly, in connection with the professional carpet cleaners' association which it operates. In light of such use, which applicant has not challenged, [FN15] the use of the term "PCA" by the members of applicant's association, while continuous, cannot additionally be said to have been substantially exclusive. See, e.g., Levi Strauss & Co. v. Genesco, Inc., 840 F.2d 1579, 222 USPQ 939, 940-41 (Fed.Cir.1984) ["When the record shows that purchasers are confronted with more than one ... independent users of a term or device, an application for registration under Section 2(f) cannot be successful, for distinctiveness upon which purchasers may rely is lacking under such circumstances."]. The record accordingly fails to persuade us that as used by the members of applicant's organization, the term "PCA" has become distinctive as a collective membership mark if such term is otherwise regarded as merely descriptive.
Decision: The opposition is dismissed.
Administrative Trademark Judges, Trademark Trial and Appeal Board
FN1. Ser. No. 73/810,781, filed on July 5, 1989, which alleges dates of first use of September 4, 1984.
FN2. Mr. Yeadon is also the executive director of applicant's Professional Cleaners' Association.
FN3. Although applicant, by such notice, also relies upon copies of various printed publications and official records, its reliance thereon is superfluous since the copies thereof were previously introduced as exhibits to its testimony deposition of Mr. Yeadon.
FN4. While the notice of reliance also includes a copy of a portion of Mr. Yeadon's testimony, reliance thereon is redundant inasmuch as Mr. Yeadon's deposition already formed part of the record in this case and his testimony could therefore be referred to in either of the parties' briefs for whatever probative value a particular portion thereof may be said to have. Moreover, while the letters are not proper subject matter for a notice of reliance, since applicant in its brief indicates that it regards them as part of the evidence herein, the letters are deemed to have been stipulated into the record pursuant to Trademark Rule 2.123(b).
FN5. Although opposer, in its initial brief, asserts that the issues to be determined include the question of whether applicant lacks "priority" in the sense that it cannot be the owner of generic term, we have treated opposer's arguments with respect thereto as part of its argument that "PCA" is regarded by the relevant public as a generic designation for any type of professional cleaners' association.
FN6. Although opposer has also used its "HOST PCA" designation and logo on a separate newsletter it publishes for its membership in Great Britain, such use is irrelevant for present purposes since the issue in this proceeding is the meaning of the term "PCA" to the relevant public in the United States.
FN8. In consequence thereof, the opposition was sustained pursuant to Trademark Rule 2.135.
FN9. The record also reveals that such term appears in the collective membership mark "Member ASCR Association of Specialists in Cleaning and Restoration" and design, which issued on the Principal Register on July 16, 1985 as Reg. No. 1,350,093 for "indicating membership in a trade association of companies in the business of cleaning maintenance, repairing, restoration of [[[sic] dyeing of such items as carpet, draperies, upholstered furniture, rugs, tapestries, and the like". Furthermore, except for the term "ASCR," all wording in the registration is disclaimed.
FN10. Applicant also uses the term "PCA" as a designation for the "powdered cleaning agent" which it sells as part of its line of carpet care products.
FN11. The average circulation of such bimonthly publication is 20,000 copies, although some issues, such as those distributed at trade shows, have a circulation of about 50,000 copies.
FN12. The fact that Mr. Rench testified that he had not even heard of MSPCA until shortly before opposer, following its investigation of the use of the term "PCA" in the carpet cleaning industry, elected to abandon its application for the certification mark "PCA," suggests that the usage of "MSPCA" was not well known in such industry.
FN13. As observed by opposer in its reply brief, it "is not precluded from arguing that the mark is a generic or [merely] descriptive term" since, as the testimony of its witness demonstrates, it previously was unaware of the use of the term "PCA" by anyone else in the carpet cleaning field.
FN14. In this regard, we have given no weight to the collection of letters submitted by applicant as Exhibit 13 to Mr. Yeadon's deposition. While such letters purport to attest to the understanding in the trade of the term "PCA" as signifying applicant's particular organization of professional carpet cleaners, we agree with opposer that the evidence is unreliable since it was solicited by applicant though the use of a form letter which requested the letters and told the respondents precisely what applicant wanted them to state in their letters.
FN15. While we note that applicant opposed registration of opposer's application for "PCA" as a certification mark, there is no indication in the record that, although applicant's witness testified that it objects to opposer's use of the term "PCA," applicant has ever sought to stop such use.