Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 M. POLANER, INC.
THE J.M. SMUCKER COMPANY
Cancellation No. 20,188
July 21, 1992
Before Sams, Rice and Hohein
By the Board:
J.D. Sams, J.E. Rice and G.D. Hohein
As grounds for cancellation, petitioner alleges that it is a leading producer of jams, jellies, preserves, and fruit spreads, including a fruit spread product sweetened only with natural fruit juice; that the term "Simply Fruit" is merely descriptive as applied to respondent's goods; and that continued registration of "Simply Fruit" may impair petitioner's ability, as a producer of competitive products, to use the term on or in connection with its goods.
An answer has not yet been filed.
This case now comes up on respondent's motion to dismiss the petition for cancellation pursuant to Fed.R.Civ.P. 12(b)(6). Petitioner has filed a brief in opposition thereto.
In support of the motion to dismiss, respondent asserts that because its registration issued under Section 2(f) of the Trademark Act, petitioner's allegation that the term "Simply Fruit" is merely descriptive, in the absence of an allegation that the term has not acquired distinctiveness, fails to set forth a claim upon which relief may be granted.
Petitioner, on the other hand, maintains that in order to withstand a motion to dismiss, it need only plead its standing and a statutory ground for cancellation of respondent's registration; that the petition is to be construed in the light most favorable to petitioner; that petitioner has pleaded facts which show its standing; that it has also pleaded a ground for cancellation, namely that the term "Simply Fruit" is merely descriptive under Section 2(e) of the Trademark Act; and that petitioner is not required to plead that "Simply Fruit" has not acquired distinctiveness. However, if the Board finds the motion to dismiss to be well taken, petitioner seeks leave to amend the petition for cancellation.
There is no question that petitioner has pleaded facts which, if proved, would establish that petitioner has standing to seek to cancel respondent's registration. Moreover, we find that petitioner's allegation that the term "Simply Fruit" is merely descriptive as applied to respondent's goods sets forth a claim upon which relief may be granted. An allegation that "Simply Fruit" has not acquired distinctiveness is unnecessary.
Where a petitioner seeks to cancel a registration which has issued under Section 2(f) of the Trademark Act and the petitioner alleges that the respondent's mark is merely descriptive, we believe it is implicit in such allegation that the mark has not acquired distinctiveness (because if it had, it would no longer be merely descriptive). Petitioner, therefore, is not required to allege specifically that the mark has not acquired distinctiveness.
*2 In order for a plaintiff to prevail in a proceeding involving a claim by defendant of acquired distinctiveness, it must appear from the record that the defendant's merely descriptive mark has not become distinctive of its goods, or stated differently, that the primary significance of the term remains the original, descriptive significance. See Sunbeam Corporation v. Battle Creek Equipment Company, 216 USPQ 1101 (TTAB 1982).
Similarly, as stated by the Board in Omnicon Inc. v. Open Systems, Inc., 19 USPQ2d 1876, 1878 (TTAB 1989), "the core of the issue to be decided in a case involving a mark which is the subject of a Section 2(f) application or registration always remains the merely descriptive character of the mark and whether such merely descriptive character has been replaced through use, with trademark meaning."
In Yamaha International v. Hoshino Gakki, 840 F.2d 1572, 6 USPQ2d 1001 (Fed.Cir.1988), the Court of Appeals for the Federal Circuit discussed in detail the burden of proof in a proceeding involving a claim of distinctiveness. The plaintiff has the burden to present a prima facie case of no acquired distinctiveness by rebutting the applicant's prima facie case of acquired distinctiveness made to the Examining Attorney, and the defendant has the ultimate burden of persuasion to prove acquired distinctiveness. However, the Court went on to state that once the plaintiff established its prima facie case, the only relevant issue is which party should prevail on the entire record.
Since the central issue in a case involving a claim of distinctiveness always remains whether the mark is merely descriptive as applied to defendant's goods, we find that an allegation that the mark is merely descriptive is sufficient. [FN2]
In view of the foregoing, it is the Board's view that the petition for cancellation states a claim upon which relief can be granted. Respondent's motion to dismiss the petition for cancellation is accordingly denied. Respondent is allowed until August 7, 1992 to file an answer to the petition for cancellation.
Members, Trademark Trial and Appeal Board
FN1. Registration No. 1,493,340 issued June 21, 1988 under Section 2(f).
FN2. However, it would not be enough to allege that the mark was not distinctive when adopted, in the absence of an allegation that the mark has not become distinctive.