Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE CONSOLIDATED CIGAR CORPORATION
Serial No. 615,543
October 31, 1989
Charles W. Grimes, Gregory J. Battersby, George W. Cooper and Kenneth E. Merklen for applicant
Trademark Examining Attorney
Law Office 2
(R. Ellsworth Williams, Managing Attorney)
Before Sams, Rice and Quinn
An application has been filed by Consolidated Cigar Corporation [FN1] to register the mark WHIFFS for cigars. [FN2]
Registration has been finally refused under Section 2(e)(1) on the ground that the matter sought to be registered is the generic name of the goods. We affirm.
A brief review of the prosecution history of the application is in order given its somewhat unusual nature. Registration initially was refused, in pertinent part, on the ground that the mark WHIFFS was merely descriptive, in the Examining Attorney's words, "of a characteristic of applicant's cigars, namely, the smoke and/or aroma which they emit." This descriptiveness refusal was subsequently withdrawn and action was suspended pending recordation of the merger documents regarding applicant. The Director of the Trademark Examining Operation, on December 3, 1987, issued a memorandum to the Examining Attorney advising him that a letter of protest was filed on the basis that WHIFFS is the apt descriptive name for small cigars and, thus, incapable of functioning as a trademark. See: Sections 1503.03 and 1503.03(a), Trademark Manual of Examining Procedure (1986). The evidence supporting the letter of protest was forwarded to the Examining Attorney for his consideration. Upon review of the evidence, the Examining Attorney refused registration because the mark was considered to be a generic term for the goods. Copies of the Director's memorandum and the evidence submitted with the letter of protest were forwarded to applicant. After consideration of applicant's response, the Examining Attorney issued a final refusal and this appeal ensued. Both applicant and the Examining Attorney have filed briefs.
The Examining Attorney's refusal in this case is based on the evidence accompanying the letter of protest. The Examining Attorney also has relied upon articles from two periodicals (which appear to be foreign publications), found in the NEXIS data base, wherein "whiffs" is used in a generic manner. [FN3]
In support of registrability, applicant essentially argues that the descriptiveness of the term "whiffs" as applied to cigars in Great Britian is irrelevant to registration of the same term in the United States. Applicant likewise argues that the disclaimers of "whiffs" in its prior registrations are irrelevant and that the term is only suggestive when applied to cigars. [FN4] In addition to disputing the Examining Attorney's evidence, applicant has relied upon letters sent from applicant to three alleged infringers of its WHIFFS mark, the letters resulting in these parties' acknowledging that applicant has exclusive rights in the WHIFFS mark. [FN5]
*2 The evidence relied upon by the Examining Attorney consists in part of actual products sold by applicant's competitors in the United States. The packaging bears designations such as "Garcia y Vega Whiffs," "Hofnar Dutch Whiffs" and "Weekend Fresh Whiffs." Two listings in English dictionaries, both published in Great Britain, define, in pertinent part, the term "whiffs" as "variety of small cigar" and "small cigar." References to two periodicals, apparently both published in Great Britain, show use of the term "whiffs" in a generic manner as a name for miniature or small cigars. The term "whiffs," as defined in Tobacco Encyclopedia, a publication originating in West Germany, means "term largely confined to Great Britain describing a small cigar one degree larger than a miniature (which is roughly king-size cigarette size)." The Examining Attorney also has introduced excerpts from the Tobacco Retailers' Almanac (1987), published by the Retail Tobacco Dealers of America, Inc., showing use of "whiffs" as a type of cigar by four manufacturers other than applicant. [FN6] Finally, the Examining Attorney has relied upon a listing under "cigar" in The New Encyclopaedia Britannica (15th ed.) which indicates, in pertinent part, that " [T]he name whiffs, used in Britain, refers to a small cigar open at both ends, about 3 1/2 in. long."
In order to determine whether a term is a generic or common descriptive designation, one must determine whether members of the relevant public primarily use or understand the term to name a genus of goods. See: H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed.Cir.1986). Evidence of the public understanding of the term may be obtained from any competent source, including newspapers, trade journals and other publications. See: In re Analog Devices Inc., 6 USPQ 1808, 1809 (TTAB 1988), affirmed in unpublished opinion, Appeal No. 89-1029 (Fed.Cir. March 23, 1989). The burden of showing that a mark sought to be registered is generic rests upon the Patent and Trademark Office and the Examining Attorney must demonstrate clear evidence of genericness. See: In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed Cir.1987).
We find that the evidence submitted by the Examining Attorney is sufficient to demonstrate that the designation WHIFFS is generic as applied to cigars in this country. While applicant has not conceded that the term "whiffs" is descriptive of any cigar, applicant has stated, in its reply brief, that "[A]pplicant has no doubt and would not deny that the word, in its reference to small cigars, is known to 'those in the tobacco trade' as a term utilized to some extent in Great Britain, but not in the United States" (p. 13). We conclude, however, that "whiffs" is a generic designation, within the guidelines set forth in the Ginn decision, supra, and that the term cannot be exclusively appropriated by a single entity.
*3 We agree with applicant that the evidence relating to generic use of "whiffs" in Great Britain is, by and large, irrelevant to the genericness of the term in the United States. The relevant test is, of course, consumer perception in this country. Thus, we cannot ascribe probative weight to the uses of "whiffs" in Great Britain in our determination of consumer perceptions. [FN7] See: In re Men's International Professional Tennis Council, 1 USPQ2d 1917, 1918 (TTAB 1986); In re Bel Paese Sales Co., 1 USPQ2d 1233, 1235 (TTAB 1986); and Nature's Way Products Inc. v. Nature's Herbs Inc., 9 USPQ2d 2077, 2080 n. 3 (TTAB 1989). We can, however, give probative value to the uses of the term "whiffs" in a generic manner by competitors in this country as shown by exhibits 4 and 5. Moreover, the excerpts from the Tobacco Retailers' Almanac show use of "whiffs" as a type of cigar by four competitors. The fact that three of these manufacturers have acknowledged applicant's exclusive rights in the designation WHIFFS does not convince us that the term functions as applicant's trademark. Evidence that competitors may have agreed to discontinue use of WHIFFS upon threat of legal action by applicant shows a desire by those competitors to avoid litigation, rather than distinctiveness of WHIFFS. See: In re Wella Corp., 635 F.2d 845, 196 USPQ 7, n. 2 (CCPA 1977).
We note that applicant's cigars and the cigars of its competitors sold under the designation "whiffs" are about the same size and comport with the reference in The New Encyclopaedia Britannica to "whiffs" as "a small cigar open at both ends, about 3 1/2 in long." On the record presently before us we cannot say with certainty if there is an equivalent "American English" term for such cigars. No other term has been suggested as the equivalent in the United States. We thus believe that it is entirely reasonable for the term "whiffs" to be imported into the United States as a generic term and, in fact, the term already has developed such a status as shown by the Examining Attorney. This occurrence is, by no means, the first involving a situation where a generic term overseas has the same status in this country. One need look no further than to "petrol" (gasoline) and "telly" (television) to see that such terms with British origins nevertheless have a commonly known and accepted generic significance in this country. Cf. In re Sun Oil Co., 426 F.2d 401, 165 USPQ 718, 719 (CCPA 1970) (Rich, J., concurring) ["All of the generic names for a product belong in the public domain. The product itself, for example, is called gasoline in the United States but petrol in England. Clearly both of those names must remain free of proprietary claims, in either country."] Consumers of cigars in this country, when confronted with the designation WHIFFS as applied to similar cigars emanating from different manufacturers, would, more than likely, ascribe a generic status to the term.
*4 Another factor in our analysis concerns the disclaimers of WHIFFS in applicant's prior registrations. Applicant is straining when it argues that the disclaimers are irrelevant since made by a predecessor in interest. [FN8] To the contrary, applicant is bound by the disclaimer which is an admission, at the very least, of the descriptiveness of the term "whiffs" as applied to cigars. In re Oriental Daily News, Inc., 230 USPQ 637, 638 (TTAB 1986). While applicant is correct in asserting that a disclaimed term may become distinctive, no formal claim of acquired distinctiveness, as noted above, was ever made during prosecution of the application. [FN9]
Applicant's reliance, in its reply brief, on the recent decision in In re Montrachet S.A., ___ F.2d ___, 11 USPQ2d 1393 (Fed.Cir.1989) is misplaced since that case is distinguishable from the instant case. There is no indication in this case that WHIFFS originated as a designation of the source of applicant's cigars; rather, the term "whiffs" was disclaimed in applicant's prior registrations. Moreover, the evidence of record in this case includes examples of actual third-party use in this country of the term "whiffs" for small cigars. Unlike the evidence presented in connection with the mark MONTRACHET, the evidence presently before us does not establish that WHIFFS ever had any trademark significance.
In summary, we find that the term "whiffs" may not be exclusively appropriated but must be left for all to use, as some of applicant's competitors already have done, in its ordinary generic sense.
Decision: The refusal of registration is affirmed.
J. E. Rice
T. J. Quinn
J. D. Sams
FN1. The application originally was filed by MFH Finance Corporation. By way of merger, as reflected by documents recorded in the Office on May 2, 1988 at reel 601, frame 003, the application is now owned by Consolidated Cigar Corporation.
FN2. Application Serial No. 615,543, filed August 19, 1986, claiming first use in 1972. Applicant has claimed ownership of Reg. Nos. 1,369,397 and 1,370,472 of the mark LA CORONA WHIFFS and design wherein the word "Whiffs" was disclaimed apart from the mark as shown in each registration.
FN3. Applicant, in its reply brief, has objected to the Examining Attorney's reliance on the excerpt from The Economist referenced in the Examining Attorney's brief. The basis of the objection is untimeliness. A review of the file shows that the NEXIS data base print-out of this excerpt was attached to the final refusal dated November 18, 1988. Since the Examining Attorney did not specifically refer to this evidence in the final refusal it is possible that a copy of the excerpt inadvertently was not attached to the final refusal mailed to applicant. In view of the above circumstances, this evidence (along with the excerpt from Financial Times, also attached to the final refusal but not mentioned therein) has not been considered in reaching our decision. Even if considered, this evidence, since it comprises foreign publications, would be of little moment in determining the instant issue.
FN4. Applicant, in its appeal brief, alternatively requests that the Board remand the application to the Examining Attorney to permit an amendment of the application to claim the benefits of Section 2(f) of the Trademark Act. Such an amendment is impermissible at this late date and applicant's arguments regarding the acquired distinctiveness of WHIFFS are foreclosed from consideration.
FN5. As to one of the alleged infringers, applicant agreed to that party's continued marketing of products under the designation "Hollco Rohr Dutch Whiffs."
FN6. Three of the four manufacturers listed were contacted by applicant. These three entities, as noted above, subsequently acknowledged applicant's exclusive rights in the WHIFFS mark.
FN7. Notwithstanding that this material does not prove genericness in the United States, we think that the evidence of record establishes the genericness of "whiffs" for a type of small cigar in Great Britain. Although it is conceivable that such term would not have a descriptive or generic status in this country as well, it is the more plausible assumption that the word would. See: G. Heileman Brewing Co. v. Anheuser-Busch, Inc., 10 USPQ2d 1801, 1814 (7th Cir.1989). Cf. Anheuser-Busch, Inc. v. Stroh Brewery Co., 750 F.2d 631, 224 USPQ 657, 673 (8th Cir.1984) (Bright, J., dissenting) ["While I agree.... that the Australian experience is not relevant to a determination of consumer perceptions or the ultimate classification of LA in the United States, I do think that that evidence is relevant to show that Anheuser-Busch exercised no creative effort in arriving at the decision to call its low alcohol beer 'L.A.'.... in this case I believe that Anheuser-Busch should not be granted trademark protection for a term it simply borrowed from other companies in the same industry--albeit in a different country--with the intent to preempt the market."]
FN8. In fact, applicant states in its brief that it "would not have been so foolhardy as to file the subject application if it had made or been responsible for such an admission." (p. 7). We know of no case law, however, that permits a successor in interest to be magically freed from the infirmities of a prior registration by the mere acquisition of that registration.
*5 J. D. Sams
I agree fully with the majority's finding that the evidence in this case proves that "WHIFFS" is being used by applicant's competitors in the United States as a generic designation for the type of cigars to which applicant applies that term and that, as a consequence, purchasers of those cigars in the United States would perceive "WHIFFS" as a generic term.
Where I differ with the majority, in their determination of the Section 2(e)(1) issue in this case, is in the probative value I would assign the evidence of record that "WHIFFS" is a generic term in Great Britain. The majority have discounted this evidence as irrelevant. Their reasoning is that the only relevant evidence in deciding whether a term should be refused registration as generic is evidence of the perception of that term in the United States and that evidence of the perception of the term in Great Britain cannot, presumably as a matter of law, be evidence of perception of the term in the United States.
In following this line of reasoning, the majority appear to have ignored the rationale for the doctrine of foreign equivalents, which doctrine I believe has application here. The doctrine of foreign equivalents holds that a foreign term whose American English language equivalent is generic or descriptive as applied to certain goods or services is unregistrable under the Trademark Act to the same extent the American English language equivalent would be unregistrable. The rationale for the doctrine is that all generic names for a product, in whatever language, belong in the public domain. The doctrine is also justified on occasion by the argument that, to that often substantial number of U.S. purchasers who understand a given foreign language, a generic or descriptive term in that language is as generic or descriptive as its American language equivalent and, for that reason, ought not to be registered. See In re Oriental Daily News, Inc., 230 USPQ 637 (TTAB 1986) [Chinese language characters, whose American English equivalent was "Oriental Daily News," held merely descriptive as applied to newspapers; the Board relied on the doctrine of foreign equivalents and noted that a sizable number of American purchasers were familiar with the Chinese language and would view the mark as merely descriptive of the newspapers to which it was applied].
The record in this case shows that the term "WHIFFS" is a generic designation for applicant's goods in Great Britain. As the majority opinion notes, the evidence of record includes an excerpt from The New Encyclopaedia Britannica, in which the term "whiffs" is described as "a small cigar open at both ends, about 3 1/2 in. long," a perfect description of the cigars to which applicant applies the term "WHIFFS." I see no reason (nor, I presume, do the majority) to discriminate in the application of the doctrine of foreign equivalents solely on the basis that the "foreign" language in which "WHIFFS" is a generic term is British English, rather than a language more obviously "foreign" to American English than is British English. Rather, the majority seem to be hesitant to apply the doctrine of foreign equivalents here because there is, apparently, no precise one- or two-word counterpart (equivalent) in American English to the British English word "WHIFFS." That fact does not bother me. If the tangible articles (cigars) to which applicant applies the term "WHIFFS" would be recognized as and called "whiffs" by that segment of the American public familiar with British English (and I think the record proves that that is so), the doctrine of foreign equivalents should apply and "WHIFFS" should be refused registration on that basis.
*6 I would affirm the refusal to register, therefore, even if the record did not show generic use by applicant's American competitors of the term "whiffs" in connection with cigars. For me, the evidence of the generic use of the term in Great Britain is probative of a Section 2(e)(1) ground for refusal under our Trademark Act, by an ordinary application of the doctrine of foreign equivalents.