Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE DEL E. WEBB CORPORATION
Serial No. 511,571; 511,894
Released: July 9,1990
Issued: March 9,1990
Charles E. Cates for applicant
Dominick J. Salemi
Trademark Examining Attorney
Law Office IV
(Thomas Lamone, Managing Attorney)
Before Sams, Rice and Seeherman
Del E. Webb Corporation has filed two applications for the registration of marks containing the phrase "DEL WEBB'S NEVADA CLUB". Application Serial No. 511,571 is for the mark depicted below for casino services and hotel, restaurant and nightclub services. [FN1]
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
Application Serial No. 511,894, for the mark depicted below, is for casino services and hotel and restaurant services. [FN2]
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
Applicant has claimed that the phrase "DEL WEBB'S NEVADA CLUB" has become distinctive of applicant's services. The Examining Attorney has made final a requirement that the claim of distinctiveness under Section 2(f) of the Trademark Act be limited to the words "NEVADA CLUB" and not to the entire phrase. Applicant has appealed, and because the issue in the two cases is identical, the appeals were consolidated by order of the Board dated September 3, 1987.
A brief history of the examination of the cases will prove useful. In the first Office action the Examining Attorney required a disclaimer of the words "NEVADA CLUB". Applicant responded with a declaration that it or its predecessors in interest had used "The Nevada Club" as part of the name of a casino/hotel since October 1970, and submitted various promotional materials in which references were made to the "NEVADA CLUB", some of which also referred to "DEL WEBB'S NEVADA CLUB". The Examining Attorney interpreted this material as an attempt by applicant to claim that the term "NEVADA CLUB" has acquired distinctiveness. The Examining Attorney directed the applicant's attention to Section 2(f) of the Trademark Act, and stated that this section stipulates that a proper claim of distinctiveness must state that the term has become distinctive as applied to the services as a result of substantially exclusive and continuous use in interstate commerce for the five years next preceding the filing of the application. Applicant thereupon disclaimed rights to the exclusive use of the word "CLUB", and submitted a Section 2(f) declaration with the following sentence:
"Del Webb's Nevada Club" has become distinctive as applied to the services of applicant as a result of substantially exclusive and continuous use in interstate commerce for the five years next preceding the filing date of the application."
The Examining Attorney refused to accept the applicant's Section 2(f) declaration because it stated that the entire phrase "DEL WEBB'S NEVADA CLUB" had become distinctive of applicant's services. The Examining Attorney took the position that since the words "DEL WEBB'S" were inherently distinctive, applicant could claim acquired distinctiveness only for that portion of the mark, namely "NEVADA CLUB", which was not inherently distinctive.
*2 The instant appeal followed.
Before proceeding with our discussion of the central issue in this appeal, we note that the Examining Attorney was in error when he stated that Section 2(f) of the Trademark Act requires that for a proper claim of distinctiveness to be made the term must be in use in interstate commerce for the five years next preceding the filing of the application. In actuality, the statute says that proof of substantially exclusive and continuous use in commerce for the five years next preceding the filing of the application may be accepted as prima facie evidence that the mark has become distinctive. It is very clear from both the case law and the Trademark Rules that five years use is not the only way to prove acquired distinctiveness. See, Trademark Rule 2.41; TMEP § 1212 et seq.
We now turn to the question of whether a claim of acquired distinctiveness under Section 2(f) can be made as to an entire mark or phrase which contains both inherently distinctive matter and matter which is not inherently distinctive. There is no question that the phrase "DEL WEBB'S NEVADA CLUB" contains both types of matter, it being conceded that "DEL WEBB'S" is inherently distinctive.
We find that merely because some portion of a composite mark or phrase is inherently distinctive, this does not prevent an applicant from claiming that the mark or phrase as a whole has acquired distinctiveness. Such a position does not, as the Examining Attorney contends, present a situation where a term which is inherently distinctive is being claimed to have acquired distinctiveness. Rather, the claim of acquired distinctiveness is to the entire phrase, that is, that the phrase as a whole, with both its inherently distinctive and (in this case) its geographically descriptive matter, has acquired distinctiveness as indicating the services of the applicant. [FN3]
We recognize that the situation presented to us in this case is somewhat reversed from the norm, since it is usually the applicant who attempts to maintain a claim that a portion of its mark has become distinctive, and the Examining Attorney who will generally require greater proof of that fact than that the mark as a whole has acquired distinctiveness. Indeed, in this case we have no doubt that the prominence of the words "NEVADA CLUB" in the marks sought to be registered, the promotional materials and newspaper and magazine articles submitted by applicant, and the declaration that the term "The Nevada Club" has been used since 1970, are sufficient to show that this term alone has acquired distinctiveness, and that applicant could have proceeded with a claim of such distinctiveness under Section 2(f) with respect to just these words. [FN4] However, it is also perfectly acceptable for the applicant to claim acquired distinctiveness for the entire phrase "DEL WEBB'S NEVADA CLUB", if that is its preference.
Finally, we note that there is an apparent inconsistency regarding dates, in that applicant's declaration as to the use of the phrase "DEL WEBB'S NEVADA CLUB" states that this phrase has been in use for the five years next preceding the filing date of the application (a period beginning in December 1979, the applications having been filed in December 1984), while applicant's earliest claimed date of first use in commerce is May 26, 1982. [FN5] However, in reviewing the materials submitted by applicant, it appears that applicant purchased the "NEVADA CLUB" casino in January 1979. More important, even if applicant had not made use of the phrase "DEL WEBB'S NEVADA CLUB" for the five years preceding the filing of the application, such evidence, as stated previously, is not the only way to prove acquired distinctiveness. In this case, the evidence of record is sufficient to establish both that "NEVADA CLUB" and the phrase "DEL WEBB'S NEVADA CLUB" as a whole have acquired distinctiveness.
*3 Decision: The Examining Attorney's refusal to accept applicant's claim of acquired distinctiveness under Section 2(f) as to the phrase "DEL WEBB'S NEVADA CLUB" is reversed, and both applications may proceed to publication with an indication that the entire phrase is subject to the provisions of Section 2(f) of the Trademark Act.
J. E. Rice
E. J. Seeherman
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 511,571 was filed December 3, 1984. Applicant asserts a date of first use on August 1, 1984 and first use in commerce on August 22, 1984. Applicant has disclaimed exclusive rights to use of the word "CLUB".
FN2. Application Serial No. 511,894 was filed December 4, 1984. Applicant claims first use and first use in commerce as early as October 3, 1984, with prior use in slightly different forms since May 26, 1982 and use of the "NEVADA CLUB" portion of the mark prior to 1982. Disclaimers of the words "CLUB" and "CASINO & HOTEL" have been entered.
FN3. It is not necessary for us to decide, and we specifically do not do so, whether a claim of acquired distinctiveness under Section 2(f) can properly be made when the entire mark is inherently distinctive.
FN4. While in this case the applicant was able to show that the words "NEVADA CLUB" had been used and promoted separately, it should be noted that it is not necessarily required that the nondistinctive portion of a mark be used alone in order to show that this portion has acquired distinctiveness.
FN5. Applicant may wish to submit a substitute affidavit or an explanation clarifying the record in this regard before the application is forwarded to issue. If applicant chooses to submit a substitute affidavit, it should do so promptly.