This Opinion is not a Precedent of the TTAB

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1 Case: Document: 1-2 Page: 5 Filed: 07/07/2016 (6 of 24) Mailed: May 17, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board In re Modern Woodmen of America Serial No Thomas J. Moore of Bacon & Thomas PLLC for Modern Woodmen of America. Kristina Morris, Trademark Examining Attorney, Law Office 116 (Christine Cooper, Managing Attorney). Before Cataldo, Taylor and Greenbaum, Administrative Trademark Judges. This Opinion is not a Precedent of the TTAB Opinion by Cataldo, Administrative Trademark Judge: Applicant, Modern Woodmen of America, has applied to register on the Principal Register the term FRATERNAL FINANCIAL (in standard characters) as a mark for annuity underwriting; banking; financial administration of retirement plans; financial advice; financial analysis and consultation; financial forecasting; insurance agencies in the field of life insurance; insurance agency and brokerage; investment advisory services; issuance and administration of annuities; life insurance underwriting in International Class Application Serial No was filed on November 21, 2013 under Section 1(a) of the Trademark Act, 15 U.S.C. 1051(a), based upon Applicant s allegation of use of the mark anywhere and in commerce since January 1, 2008.

2 Case: Document: 1-2 Page: 6 Filed: 07/07/2016 (7 of 24) The application includes a claim that FRATERNAL FINANCIAL has acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. 1052(f), as a result of Applicant s substantially exclusive and continuous use in commerce for at least five years immediately before the date of this statement. 2 Applicant also claims ownership of U.S. Registration Nos and ; however, these registrations do not form a basis for Applicant s claim of acquired distinctiveness. 3 The Trademark Examining Attorney refused registration under Section 2(e)(1) of the Trademark Act on the ground that Applicant s mark is merely descriptive of a feature or quality of Applicant s services, and that Applicant s showing of acquired distinctiveness under Section 2(f) is insufficient. In addition, the Examining Attorney required applicant to disclaim FINANCIAL apart from the mark as shown. Applicant presented arguments in response to the Examining Attorney s refusal to register and submitted the required disclaimer of FINANCIAL. The Examining Attorney subsequently issued a final Office action on the ground that the proposed mark is merely descriptive under Section 2(e)(1) and that Applicant s showing under Section 2(f) is insufficient. 4 Applicant requested reconsideration and filed an appeal. After the Examining Attorney denied the request for reconsideration, the appeal was 2 November 21, 2013 application at 2. Citations to the briefs refer to TTABVUE, the Board s online docket system, by page number. Citations to the examination record refer to the Trademark Office s online Trademark Status and Document Retrieval system (TSDR), by page number. 3 Neither Applicant nor the Examining Attorney made of record copies of these registrations, and the Board does not take judicial notice thereof. UMG Recordings Inc. v. O Rourke, 92 USPQ2d 1042, 1046 (TTAB 2009). 4 The issue of the registrability of the applied-for mark on the Supplemental Register is not before us

3 Case: Document: 1-2 Page: 7 Filed: 07/07/2016 (8 of 24) resumed. Applicant and the Examining Attorney filed briefs and presented arguments on the issue under appeal at an oral hearing held before this panel on March 15, Issue on Appeal Applicant, having filed the involved application seeking registration under Section 2(f), has conceded that the mark is merely descriptive under Section 2(e)(1). See Yamaha International Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988); The Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626 (Fed. Cir. 2009). Thus, the sole issue on appeal is whether Applicant has carried its burden of establishing, by a preponderance of the evidence, a prima facie case that its merely descriptive designation has acquired distinctiveness as a mark indicating source under Section 2(f). See Yamaha, 6 USPQ2d at 1005; In re Rogers, 53 USPQ2d 1741 (TTAB 1999). Applicant argues in its reply brief that the burden of proof and the burden of persuasion should be on the Examining Attorney given the decision in B & B Hardware, which includes: The Eighth Circuit likewise erred by concluding that Hargis bore the burden of persuasion before the TTAB. B & B, the party opposing registration, bore the burden, see 37 C.F.R (b); TTAB Manual (a), just as it did in the infringement action. 135 S.Ct. at The Court has instructed that the burden of persuasion should be on the party opposing registration, which in the present appeal is the Examining Attorney TTABVUE

4 Case: Document: 1-2 Page: 8 Filed: 07/07/2016 (9 of 24) The Supreme Court in B & B Hardware, Inc. v. Hargis Industries, Inc., 135 S.Ct. 1293, 113 USPQ2d 2045 (U.S. 2015), found this tribunal s decision in an inter partes opposition proceeding to have preclusive effect in a later infringement action involving the same parties. However, the application involved herein is subject to an ex parte refusal of registration. Applicant cites to no authority, either in the Supreme Court s decision in B & B Hardware or otherwise, for its apparent position that the Examining Attorney in an ex parte appeal of a refusal to register stands in the position of a plaintiff in an inter partes proceeding before this tribunal. To the contrary, our primary reviewing Court recently held that, unlike an inter partes proceeding before the Board, there is no suggestion in B&B Hardware that an examiner s decision to register a mark or to refuse registration satisfies the traditional requirements of issue preclusion. In re Cordura Restaurants, Inc., (Fed. Cir. May 13, 2016) n2, citations omitted. Furthermore, Applicant does not point to any language in the B & B Hardware decision or elsewhere that shifts the burden of persuasion on the issue of acquired distinctiveness in an ex parte appeal from Applicant to the Examining Attorney. Indeed, Applicant acknowledges the Federal Circuit precedence to the contrary. 6 As a result, we find that it remains Applicant s burden of demonstrating that a proposed mark has acquired distinctiveness under Section 2(f). 7 6 Id. at 6. 7 We further observe that acquired distinctiveness of a designation under Section 2(f) is not a static target, and an adverse decision by the Board on the issue of acquired distinctiveness does not preclude an applicant from the opportunity to later show that its proposed mark has acquired distinctiveness under Section 2(f) at a future date on a different record

5 Case: Document: 1-2 Page: 9 Filed: 07/07/2016 (10 of 24) Acquired Distinctiveness A mark which is merely descriptive of the identified goods may nonetheless be registered if it has acquired distinctiveness. Trademark Act 2(f). To establish acquired distinctiveness, applicant must show that the primary significance of the [mark] in the minds of consumers is not the product but the producer. In re Ennco Display Sys. Inc., 56 USPQ2d 1279, 1284 (TTAB 2000). As discussed above, Applicant bears the burden of demonstrating that its mark has acquired distinctiveness. See Yamaha, 6 USPQ2d at 1006; and In re Hollywood Brands, Inc., 214 F.2d 139, 102 USPQ 294, 295 (CCPA 1954) ( [T]here is no doubt that Congress intended that the burden of proof [under Section 2(f)] should rest upon the applicant ). [L]ogically that standard becomes more difficult as the mark s descriptiveness increases. Yamaha, 6 USPQ2d at Acquired distinctiveness may be shown by direct or circumstantial evidence. Direct evidence includes actual testimony, declarations or surveys of consumers as to their state of mind. Circumstantial evidence is evidence from which consumer association might be inferred, such as years of use, extensive amounts of sales and advertising, and any similar evidence showing wide exposure of the mark to relevant consumers. We determine whether a mark has acquired distinctiveness on the basis of all competent evidence, including advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, and consumer studies (linking the name to a source). In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)

6 Case: Document: 1-2 Page: 10 Filed: 07/07/2016 (11 of 24) There is no fixed rule for the amount of proof necessary to demonstrate acquired distinctiveness; the evidence required is in proportion to the degree of nondistinctiveness of the mark at issue. Yamaha, 6 USPQ2d 1001 at The greater the degree of descriptiveness the term has, the heavier the burden to prove it has attained secondary meaning. In re Bongrain Int l Corp., 894 F.2d 1316, 13 USPQ2d 1727, 1728 n.4 (Fed. Cir. 1990) (citing Yamaha, 6 USPQ2d 1001 at 1008). Thus, even long periods of substantially exclusive use may not be sufficient to demonstrate acquired distinctiveness when the term in question is highly descriptive. In support of her position that the applicant s mark is highly descriptive of the identified services, 8 and thus requires a greater evidentiary showing to demonstrate acquired distinctiveness, the Examining Attorney made of record the following dictionary definitions: fraternal belonging to brothers, or between brothers, between friends or people who share the same interests or opinions fraternal feelings, fraternal organizations are formed by people who share the same interests a fraternal association/order; 9 and financial involving money banks and other financial institutions TTABVUE 5. 9 March 14, 2014 first Office action at 5, retrieved from Macmillandictionary.com/dictionary/american. 10 Id. at 7, retrieved from Macmillandictionary.com/dictionary/british. We note that the American English definition is identical

7 Case: Document: 1-2 Page: 11 Filed: 07/07/2016 (12 of 24) In further support of her position, the Examining Attorney made of record evidence from various third-party Internet websites: 11 Thrivent Financial Our Organization We are a Fortune 500 financial services organization with a unique blend of financial expertise, shared values and steadfast service that truly sets us apart. We re a faith-based organization, called to care for others. We are the largest fraternal benefit society in the United States. As such, we have a unique ability to work with and through our members to carry out our mission of improving lives All highlights reproduced below appeared in the original postings or were supplied by the Examining Attorney. 12 Id. at 11. Thrivent.com/aboutus/ourorganization 13 Id. at fraternalalliance.org/benefit-society - 7 -

8 Case: Document: 1-2 Page: 12 Filed: 07/07/2016 (13 of 24) About Modern Woodmen of America (Applicant) Modern Woodmen of America is a member-owned fraternal financial services organization. We secure futures with financial guidance and products. We touch lives with fraternalism. Since 1883, Modern Woodmen has brought people together, supported families and 14 Id. at 14. Catholicfinanciallife.org 15 Id. at 16. Foresters.com - 8 -

9 Case: Document: 1-2 Page: 13 Filed: 07/07/2016 (14 of 24) strengthened communities nationwide. 16 The Ohio Masonic Home Testimonials 17 South Dakota: Financial Services Representative. Pierre: South Dakota Department of Labor has issued the following job announcement: Openings: 1 Description: Employer is one of the nations largest fraternal financial services providers. They are looking for self motivated sales people with or without experience in the Madison and surrounding areas. 18 Catholic United Financial We are a not-for-profit, fraternal benefit company serving more than 84,000 members in Minnesota, North Dakota, South Dakota, Wisconsin and Iowa. 19 Catholic Order of Foresters 16 October 6, 2014 final Office action at 5. Modern-woodmen.org 17 Id. at 7-8. Ohiomasonichome.org 18 Id. at 9. News.advisen.com 19 Id. at 11. Catholicunitedfinancial.org - 9 -

10 Case: Document: 1-2 Page: 14 Filed: 07/07/2016 (15 of 24) 20 Polish Falcons of America The Strong, Friendly, Family Fraternal Id. at 12. Catholicforester.org 21 Id. at 16. Polishfalcons.org 22 Id. at 14. Gleanerlife.org

11 Case: Document: 1-2 Page: 15 Filed: 07/07/2016 (16 of 24) 23 In this case, Applicant s proposed mark is FRATERNAL FINANCIAL for various financial and insurance services. The Examining Attorney s record evidence demonstrates that fraternal benefit societies provide financial services as part of their core mission. Thus the relevant consumers including those seeking financial services from fraternal benefit societies would immediately understand FRATERNAL FINANCIAL to describe a feature or characteristic of such services, 23 Id. at 22. Wflains.org

12 Case: Document: 1-2 Page: 16 Filed: 07/07/2016 (17 of 24) namely, that they are financial services provided by fraternal benefit societies. As to such services, Applicant s proposed mark is, if not highly descriptive, at best merely descriptive. To demonstrate that its mark has acquired distinctiveness, Applicant introduced with its September 12, 2014 communication the following declaration of its Counsel, Peter C. Doyle:

13 Case: Document: 1-2 Page: 17 Filed: 07/07/2016 (18 of 24) 24 With its April 6, 2015 request for reconsideration, Applicant submitted the following second declaration of Peter C. Doyle, with an attached exhibit: 24 September 12, 2014 communication at

14 Case: Document: 1-2 Page: 18 Filed: 07/07/2016 (19 of 24) 25 Mr. Doyle s second declaration was accompanied by the following exhibit: 25 April 6, 2015 request for reconsideration at

15 Case: Document: 1-2 Page: 19 Filed: 07/07/2016 (20 of 24) Id. at

16 Case: Document: 1-2 Page: 20 Filed: 07/07/2016 (21 of 24) Included in the September 12, 2014 and April 6, 2015 declarations of Mr. Doyle are statements that Applicant s mark has acquired distinctiveness as a result of use since January 1, However, the statute does not say that a declaration of five or more years use must be considered prima facie evidence of distinctiveness; the statute explicitly invests the USPTO with the discretion to accept or reject such a declaration as prima facie evidence of distinctiveness. And in practice, a mere claim of five years use will often be insufficient proof that a descriptive mark has acquired distinctiveness. In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262 (Fed. Cir. 2015) (the statute does not require the USPTO to accept five years use as prima facie evidence of acquired distinctiveness). See also TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) (October 2015) and authorities cited therein. Mr. Doyle s April 6, 2015 declaration includes the additional statement that Applicant s mark has been in prominent use on its Internet website since January 1, 2008, and an evidentiary printout in the form of a webpage from the website. However, neither the additional statement nor the copy of Applicant s webpage contains supplementary information to support Applicant s claim of acquired distinctiveness. Applicant submitted no additional evidence of acquired distinctiveness. 27 Applicant argues that its use of FRATERNAL FINANCIAL as a mark since 2008 establishes the acquired distinctiveness thereof. However, Applicant did not submit any evidence of sales or marketing figures, examples of advertisements placed in 27 We observe that Applicant s specimen of record, submitted with its application, does not contain information that would support Applicant s Section 2(f) claim

17 Case: Document: 1-2 Page: 21 Filed: 07/07/2016 (22 of 24) magazines or newspapers, marketing at trade shows or direct marketing to its members, or any evidence of recognition by third parties of FRATERNAL FINANCIAL as a mark. Moreover, there is no evidence to put any such marketing efforts into context, i.e., to indicate Applicant s market share or the proportion of relevant consumers exposed to Applicant s mark. Similarly, Applicant s evidence in the form of a printout from its own website is hardly probative of whether the consuming public has come to recognize FRATERNAL FINANCIAL as a source identifier for Applicant s services. The only third-party website evidence of record was submitted by the Examining Attorney, and this evidence, as discussed above, certainly does not establish that FRATERNAL FINANCIAL has acquired distinctiveness as a mark. In light of the foregoing, we find that Applicant s evidence falls short of establishing that FRATERNAL FINANCIAL has acquired distinctiveness as a mark used in connection with the recited financial and insurance-related services under Section 2(f). Decision: The refusal to register under Trademark Act Section 2(e) (1) on the ground that the mark is merely descriptive of the services and has not acquired distinctiveness is affirmed