Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE BERMAN BROS. HARLEM FURNITURE, INC.
Serial No. 74/083,758
February 22, 1993
David J. Marr of Trexler, Bushnell, Giangiorgi & Blackstone, Ltd. for applicant
Trademark Examining Attorney
Law Office 8
(Thomas Lamone, Managing Attorney)
Before Sams, Rooney and Simms
Opinion by Rooney
An application was filed to register the term FURNITURE MAKERS for retail furniture store services, not including the manufacture of furniture. [FN1] Applicant has alleged a bona fide intention to use the term in interstate commerce. Registration has been refused under Section 2(e)(1) of the Trademark Act on the ground that, when used in connection with applicant's services, the term, FURNITURE MAKERS, is deceptively misdescriptive thereof. Applicant has appealed.
Applicant argues that the Examining Attorney has ignored the declaration of applicant's secretary, Ronald Berman, submitted as applicant's evidence of the fact that the mark is not deceptively misdescriptive. The Berman declaration states that applicant sells the furniture of well-known manufacturers, most of which bear the manufacturers' trademarks and/or other indicia; that if the proposed mark is used for the sale of furniture that is manufactured by lesser-known companies and/or which does not bear the manufacturer's trademark, measures would be taken to indicate that the furniture was not manufactured by the applicant such as statements that the furniture is "custom made for ..." or "designed and crafted for ..."; and, that applicant is not a manufacturer of furniture and does not intend to manufacture its own furniture.
It is applicant's position that, since the furniture sold in connection with the proposed mark will be clearly identified as to manufacturer, applicant's use of that proposed mark cannot be deemed deceptive; and that, moreover, purchasers of furniture are likely to be sophisticated because furniture is generally expensive and not purchased on impulse. The applicant asserts that it is clearly evident that use of the mark in the manner in which the applicant has stated shall eliminate the possibility of deceiving customers as to the manufacturing source of the furniture and quash any chance that any misrepresentation would materially affect the decision to purchase.
The test applied in the determination of whether or not a term is deceptively misdescriptive under Section 2(e)(1) of the Trademark Act is twofold. First, it must be determined whether the proposed mark misdescribes a characteristic, quality, function, composition or use of the goods or services. If so, we reach the second part of the test, which is whether the misdescription is deceptive, or, in other words, whether prospective purchasers are likely to believe that the misdescription actually describes the goods or services. See In re Budge Manufacturing Co. Inc. 857 F.2d 773, 8 USPQ2d 1259 (Fed.Cir.1988). [FN2]
*2 The burden is on the Examining Attorney to submit sufficient evidence to establish that the term sought to be registered falls within the proscription of the statute. As the court said in the Budge case, the PTO has limited facilities for acquiring evidence. Therefore, it cannot be expected that the Examining Attorney will be able to amass a large body of evidence. In the case of In re Gould Paper Corporation, 834 F.2d 1017, 5 USPQ2d 1110 (Fed.Cir1987), the court said that the PTO may satisfy the evidentiary burden [FN3] by means of dictionary definitions showing that "the separate words joined to form a compound have a meaning identical to the meaning common usage would ascribe to those words as a compound". In this case, the Examining Attorney has done just that by citing the definitions of the separate words of the term sought to be registered, as follows. (Webster's Ninth New Collegiate Dictionary 1983).
Furniture: b: movable articles used in readying an area (as a room or patio) for occupancy or use.
Maker: one that makes ...
We refer, in addition, to the definitions provided by Webster's 3rd New International Dictionary 1976, as follows. [FN4]
Furniture: d: articles of convenience or decoration used to furnish living quarters, offices, public and private buildings usu. used of movable articles (as tables and chairs) ...
Maker: one that makes: as ... f. manufacturer
These definitions make it clear that the two words used in a compound signify a person or a company which makes furniture. Applicant has stated that it does not make or manufacture furniture but sells furniture manufactured by others. Since the term FURNITURE MAKERS is descriptive of one who makes furniture and applicant's services include no furniture of its own manufacture, the term is misdescriptive as applied to applicant's services. Moreover, we see no reason to assume that prospective purchasers would not reach the logical conclusion to be drawn from the term FURNITURE MAKERS and believe that applicant is a furniture maker and offers furniture of its own manufacture as a part of its services.
Despite applicant's arguments, it does not appear that the Examining Attorney ignored applicant's declaration. Rather, it appears that the Examining Attorney correctly concluded that applicant's statements therein would have no persuasive effect on the outcome of this appeal. See In re Budge, supra, wherein the court indicated that the inclusion of "... explanatory statements in advertising or on labels which purchasers may or may not note and which may or may not always be provided ..." does not negate the misdescriptiveness of a term. The court went on to state that "(T)he statutory provision bars registration of a mark comprising deceptive matter. Congress has said that the advantages of registration may not be extended to a mark which deceives the public. Thus, the mark standing alone must pass muster, for that is what the applicant seeks to register, not extraneous explanatory statements."
*3 For the foregoing reasons, we believe that the refusal to register on the ground that the term FURNITURE MAKERS is deceptively misdescriptive was proper.
Our decision in this case--holding "deceptively misdescriptive" a mark that has not yet been used--should not be seen as inconsistent with the Board's decision in Eastman Kodak Co. v. Bell & Howell Document Management Products Inc., 23 USPQ2d 1878 (TTAB1992), about which case we wish to make a few additional comments.
In Eastman Kodak, the Board dismissed an opposition filed against the marks, 6200, 6800, and 8100, for microfilm readers/printers. The applications to register these marks had been filed under the intent-to-use provisions of Section 1(b) of the Trademark Act, and none of the marks had yet been used. The opposition had been brought on the grounds that the applicant intended to use each of these designations as a model designation and that model designations were, per se, descriptive and unregistrable. Each party had filed a motion for summary judgment.
Citing relevant case law, the Board found that opposer's legal premise was wrong--that, contrary to opposer's assertion, numerical model designations were not, per se, merely descriptive, within the meaning of Section 2(e)(1) of the Trademark Act; that a numerical designation might function as both a model designation and a trademark; that the determination of descriptiveness depended on how the designation was used on the goods in commerce; that, because applicant had not yet begun to use its marks in commerce, opposer obviously could not, at trial, prove the marks had been used and were perceived by purchasers merely as model designations; and that, therefore, applicant was entitled to judgment on the issue of descriptiveness in the opposition proceeding. The Board's opinion added that the dismissal of the opposition (judgment for applicant) was without prejudice to opposer. That is to say, after applicant began using its marks and after registrations of the marks issued, the dismissal of the opposition would not prevent opposer from filing a cancellation proceeding on the basis that applicant's marks were being used merely as model designations and were so perceived by purchasers.
Eastman Kodak does not, and was not intended to, place any limits on the Board's jurisdiction to decide, in the context of an ex parte appeal or opposition, issues of descriptiveness or misdescriptiveness where an intent-to-use application is involved. Moreover, cases like Eastman Kodak, where the Board entered a judgment without res judicata effect on the issue of descriptiveness, should be relatively rare. Indeed, had the facts in Eastman Kodak been a bit different--had opposer, let us say, pleaded and proved that the numerical designations 6200, 6800, and 8100 were descriptive of the storage capacity or physical size of the microfilm readers/printers in connection with which applicant intended to use those designations--the Board could have entered, in opposer's favor, a final judgment with res judicata effect, even though applicant had not yet used any of the numerical designations.
Members, Trademark Trial and Appeal Board
FN1. The exclusion was added by amendment following the initial refusal to register under Section 2(e)(1) of the Trademark Act.
FN2. The test contains three parts in cases where the term sought to be registered is claimed to be deceptive under Section 2(a). In the third part of the deceptiveness test, the question is whether the misdescription is likely to materially affect the decision to purchase the product or services. Here, where the refusal is that the term is deceptively misdescriptive, we do not reach the third part of the test.
FN3. In the Gould case, the Examining Attorney was attempting to prove that the term sought to be registered was generic as applied to the goods.