Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE GRAY, INC., D.B.A. PROTECTIVE EQUIPMENT
Serial No. 507,847
June 29, 1987
Hearing: March 26, 1987
John G. Mills, III and Larry L. Coats for applicant
Donald B. Aiken
Trademark Examining Attorney
Law Office 3
(Myra K. Kurzbard, Managing Attorney)
Before Allen, Simms and Cissel
Before us is an appeal from the Trademark Examining Attorney's refusal of registration of PROTECTIVE EQUIPMENT for 'alarm security and surveillance systems, namely, burglar and fire alarms' (Class 9) and 'burglar and fire alarm surveillance services' (Class 35) on the ground that the term is merely descriptive when applied to applicant's goods and services within the meaning of Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1) (1976), and the evidence to support applicant's claim of acquired distinctiveness under Section 2(f) of the Act is insufficient.
As evidence in support of the refusal, the Examining Attorney has introduced excerpts from Thomas Register (74th ed. 1984), under the headings 'Alarms: Burglar' and 'Fire Alarm Systems'; excerpts from the May 1983, District of Columbia 'Yellow Pages'; and a third-party registration of the mark PROTECTOR SAFETY & Des. for, inter alia, 'safety and protective equipment.' Various dictionary definitions of the terms 'protective' and 'equipment' have also been cited. The evidence in support of the Section 2(f) distinctiveness claim consists of an affidavit by the president of appellant and one by its counsel of record in the case. [FN1]
There is no question, based on the evidence before us, that the words 'protect' and 'protection' are words which are commonly used in association with burglar and fire alarm systems and related equipment to indicate a beneficial characteristic of these products and services, i.e., that by using them one is better able to protect one's person and property against loss or damage due to fire or theft. Some examples are:
'fire protection system' describing a fire alarm system;
'protects before entry' touting burglar alarm equipment;
'marine and industrial fire protection' describing fire and smoke detecting systems and equipment therefor;
'nationwide specialists in residential protection' touting home security systems against burglary, fire, etc.; and
'You don't have to spend a fortune to protect your home or office' touting hold-up and fire protection systems.
Also, in appellant's own literature (one of the specimens in the case), we find these words:
'Do I own anything worth protecting?' At Protective Equipment, every part of our organization concentrates on you . . . on your protection, your security and on your peace of mind.'
*2 We have carefully examined appellant's argument that since the evidence only discloses uses of 'protect' and 'protection,' the term 'protective' only indirectly describes the goods, but find it not persuasive. These terms all have the same meaning, differing only in their form, 'protect' being the verb form, 'protection' the noun form, and 'protective' the adjectival. Merely by converting a term to its adjectival form does not impart trademark or service mark distinctiveness to the term in relation to the goods or services. E.g., In re Lativ Systems, Inc., 223 USPQ 1037, 1039 (TTAB 1984), and cases cited therein. In this regard, appellant's assurance that competitors' fair use of 'protection' would not be impaired by registration misses the mark. The more significant question is whether registration of PROTECTIVE EQUIPMENT on the Principal Register would enable appellant to claim that 'protection equipment' used descriptively in connection with the same kind of goods or services constituted an infringement because of the similarity of the terms 'protective' and 'protection' in the perception of purchasers of those good or services. See, e.g., In re State Chemical Manufacturing Co., 225 USPQ 687, 690 (TTAB 1985). In view of these circumstances, and the evidence before us, we find no error in Examining Attorney Aiken's conclusion that PROTECTIVE EQUIPMENT is a highly descriptive term in relation to appellant's goods and services.
Considering the above, it is clear to us that to support registration of PROTECTIVE EQUIPMENT on the Principal Register a showing considerably stronger than a prima facie statement of five years' substantially exclusive use is required. The showing here does not, in our opinion, meet that higher standard.
Dealing first with counsel's affidavit, we can accord it no probative value whatsoever for at least three reasons. The first is that since the Board is charged with the responsibility of making an independent determination of the ultimate issue based on its evaluation of the evidence adduced, to give weight to counsel's affidavit would have the effect of substituting the opinion of the affiant for those of the Board members assigned to hear the case. In re Capital Formation Counselors, Inc., 219 USPQ 916, 918, note 4 (TTAB 1983). The second is that the position of counsel in soliciting the Office to issue the registration based on acquired secondary meaning means that counsel's statement that the requisite secondary meaning has been acquired is subject to an incredible amount of bias. Finally, to avoid the predicament of a lawyer's having to testify and then having to argue the credibility and effect of his own testimony, both the Code of Professional Responsibility (Rule 5-102) and our own rules, 37 CFR § 10.63 (1986), require an attorney to withdraw as counsel in a case if he learns that he ought to be called as a witness or sign an affidavit to be filed in the case. As counsel here has not withdrawn, it would be improper for us to give any weight to his affidavit on the ultimate issue.
*3 As for the affidavit of appellant's president, except for the more than five years of use, which we reject as a basis for registration of the term PROTECTIVE EQUIPMENT, the following facts are set forth:
$408,000 spent in advertising from 1975 to 1983;
$8,112,000 gross income, received for the goods and services sold from 1975 to 1983;
more than 11,700 installations of burglar and fire alarm systems;
3,800 burglar and fire alarm systems monitored; and sales of goods and services in 13 states.
Without meaning in any way to denigrate the importance of this showing as a measure of the success of appellant's business, we nevertheless agree with Examining Attorney Aiken, brief, 14, and with the previous Examining Attorney, Office letter dated July 19, 1985, that what is lacking, in view of the highly descriptive nature of the mark, is evidence establishing how the mark functions to identify and distinguish appellant's goods and services. In this regard, we find quite apt to the case before us the following portion of Mr. Aiken's analysis (brief, 15-16):
While large scale expenditures in promoting and advertising goods and services under a particular designation are significant to indicate the extent to which a mark has been used, large expenditures in this regard cannot, per se, establish that a term functions as a mark to identify and distinguish goods and services rendered by an Applicant. It is also necessary to consider advertising material upon which the mark appears to determine how the term is being used therein, what is the commercial impression created by such use and what it would mean to purchasers. In re Redken Laboratories, Inc., 170 USPQ 526 (TTAB 1971). In this case, the only evidence of record which illustrates Applicant's use of the mark is contained on the specimens supplied with this application. These specimens consist of equipment labels and five copies of a single promotional brochure used in connection with Applicant's services. As indicated by earlier references to this promotional brochure (see pg. 12), the mark 'PROTECTIVE EQUIPMENT' is highly descriptive of Applicant's goods and services, and this is the significance that the mark will engender to persons exposed thereto.
Decision: The refusal of registration is affirmed.
D. B. Allen
R. L. Simms
R. F. Cissel
Members, Trademark Trial and Appeal Board
FN1. The affidavit by appellant's trademark counsel expresses appellant's position on the ultimate legal conclusion of this case, i.e., that the mark subject of the application has acquired secondary meaning and is indicative of the origin of the goods or services in connection with which it is used. In the 'Remarks' which accompanied its submission, and in his brief, 5, counsel has qualified himself to judge this question based on his twenty-five years of patent and trademark practice and his knowledge of appellant's business.