From: Vallillo, Melissa
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`Sent: 1/4/2010 3:08:38 PM
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`To: TTAB EFiling
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`CC:
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`Subject: U.S. TRADEMARK APPLICATION NO. 76679933 - LOCK BACK - N/A
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`*************************************************
`Attachment Information:
`Count: 1
`Files: 76679933.doc
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` SERIAL NO:
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`76/679933
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`*76679933*
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`GENERAL TRADEMARK INFORMATION:
`http://www.uspto.gov/main/trademarks.htm
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`TTAB INFORMATION:
`http://www.uspto.gov/web/offices/dcom/ttab/index.html
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` MARK: LOCK BACK
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` Great Neck Saw Manufacturers, Inc.
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` CORRESPONDENT ADDRESS:
` JOSEPH J. PREVITO
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` COLLARD & ROE, P.C.
` 1077 NORTHERN BLVD
` ROSLYN, NY 11576-1614
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` APPLICANT:
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` CORRESPONDENT’S REFERENCE/DOCKET NO:
` N/A
` CORRESPONDENT E-MAIL ADDRESS:
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`EXAMINING ATTORNEY'S APPEAL BRIEF
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`ON APPEAL
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`LOCKBACK
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`Joseph J. Previto
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`Applicant: Great Neck Saw Manufacturers, Inc.
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`Trademark:
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`Serial No.: 76679933
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`Attorney:
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`Address:
`Collard & Roe, P.C.
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`1077 Northern Boulevard
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`Roslyn, NY 11576-1614
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`EXAMINING ATTORNEY’S APPEAL BRIEF
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`INTRODUCTION
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`The applicant has appealed the examining attorney’s final refusal to register the
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`proposed mark, LOCKBACK, for “[a] foldable utility knife comprising a handle and a
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`blade holder with the blade holder having a removable blade and being foldable within
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`the handle.” Registration was refused on the Principal Register pursuant to Section
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`2(e)(1) of the Trademark Act, 15 U.S.C. Section 1052(e)(1), on the ground that the mark
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`sought to be registered is generic as applied to the goods.
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`STATEMENT OF FACTS
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`On July 26, 2007, the applicant filed an application under Section 1(a) of the
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`Trademark Act to register the mark LOCK BACK for “folding utility knife” and “folding
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`carpet knife.” On November 8, 2007, the examining attorney issued an Office action
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`refusing registration pursuant to Section 2(e)(1) of the Trademark Act, issuing an
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`advisory with respect to the Supplemental Register, requiring the applicant to submit a
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`specimen that matches the drawing or to amend the drawing to match the specimen and
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`requiring the applicant to submit a standard character claim. On November 30, 2007, the
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`applicant submitted a claim of acquired distinctiveness based on the evidence pursuant to
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`Section 2(f) of the Trademark Act,1 presented arguments in response to the
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`descriptiveness refusal and submitted a new drawing.
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`On February 5, 2008, the examining attorney issued an Office action indicating
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`that the evidence submitted by the applicant is insufficient to establish acquired
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`distinctiveness, maintaining the descriptiveness refusal and the requirements with respect
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`to the drawing-specimen disagreement and the standard character claim and withdrawing
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`the advisory with respect to the Supplemental Register. On July 28, 2008, the applicant
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`submitted a claim of acquired distinctiveness based on five years’ use pursuant to Section
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`2(f) of the Trademark Act, submitted a standard character claim and a new drawing and
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`presented arguments as to the sufficiency of its previous claim of acquired
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`distinctiveness.
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`On August 22, 2008, the examining attorney issued an Office action continuing
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`the Section 2(e)(1) refusal notwithstanding the claim of acquired distinctiveness on the
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`1 In its response, applicant indicated that the claim of acquired distinctiveness was submitted in accordance
`with the examining attorney’s suggestion. However, it must be noted that the examining attorney did not
`advise applicant to submit a claim of acquired distinctiveness.
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`ground that the mark is generic as applied to the goods and indicating that the evidence of
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`acquired distinctiveness remains insufficient due to the highly descriptive nature of the
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`mark. On February 23, 2009, the applicant amended the recitation of goods and
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`presented additional arguments with respect to its claim of acquired distinctiveness. On
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`March 17, 2009, the examining attorney issued a final refusal to register under Section
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`2(e)(1) of the Trademark Act on the ground that the mark is generic as applied to the
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`goods and maintained that the applicant’s evidence in support of its claim of acquired
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`distinctiveness remains insufficient.
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`On September 16, 2009, the applicant filed a Notice of Appeal. On November 12,
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`2009, the applicant filed its appeal brief. On November 16, 2009, the applicant’s brief
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`was forwarded to the examining attorney.
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`ISSUES
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`The issues on appeal are: 1) whether the proposed mark LOCKBACK2 is generic
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`as applied to “[a] foldable utility knife comprising a handle and a blade holder with the
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`blade holder having a removable blade and being foldable within the handle” pursuant to
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`Section 2(e)(1) of the Trademark Act, 15 U.S.C. Section 1052(e)(1) and 2) in the
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`alternative, if the proposed mark LOCKBACK is not generic as applied to the goods,
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`whether the statement of five years’ use and the evidence submitted by the applicant are
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`sufficient to support a claim of acquired distinctiveness pursuant to Section 2(f) of the
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`Trademark Act, 15 U.S.C. Section 1052(f).
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`2 In its appeal brief, applicant indicates that the applied-for mark is LOCK BACK. However, in response to
`the examining attorney’s requirement with respect to the drawing-specimen disagreement, applicant
`amended the drawing to LOCKBACK in the response dated July 28, 2008. Therefore, the correct mark is
`LOCKBACK.
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`ARGUMENTS
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`I.
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`THE MARK LOCKBACK IS GENERIC AS APPLIED TO THE GOODS
`AND IS THEREFORE INCAPABLE OF FUNCTIONING AS A MARK
`FOR THE GOODS
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`Generic terms are terms that the relevant purchasing public understands primarily
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`as the common or class name for the goods. TMEP §1209.01(c); see In re Dial-A-
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`Mattress Operating Corp., 240 F.3d 1341, 1344, 57 USPQ2d 1807, 1810 (Fed. Cir.
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`2001); H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989, 228
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`USPQ 528, 530 (Fed. Cir. 1986). Generic terms are, by definition, incapable of
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`indicating a particular source of the goods, and cannot be registered as trademarks; doing
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`so “would grant the owner of the mark a monopoly, since a competitor could not describe
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`his goods as what they are.” In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d
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`1567, 1569, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987); see TMEP §1209.01(c).
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`A two-part test is used to determine whether a designation is generic:
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`(1) What is the class or genus of goods at issue?; and
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`(2)
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`Does the relevant public understand the designation primarily to refer to
`that class or genus of goods?
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`H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 990, 228 USPQ
`528, 530 (Fed. Cir. 1986); TMEP §1209.01(c)(i).
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` In this case, the applicant seeks to register the mark LOCKBACK for “[a]
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`foldable utility knife comprising a handle and a blade holder with the blade holder having
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`a removable blade and being foldable within the handle.” As the dictionary entries
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`featured on Pages 9-12 of the Office action dated November 8, 2007 indicate, “lock” is
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`defined as “to shut or make secure” and “back” is defined as “being in a backward
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`direction.” The evidence featured on Page 7 of the Office action dated November 8,
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`2007 indicates that “a ‘lockback’ is a type of folding knife that locks open.” It also
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`provides an illustration of how lockbacks open and shows that lockbacks feature blades
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`that fold closed within the handle.
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` On Page 9 of the applicant’s response dated November 30, 2007, the applicant
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`provides an illustration of the mechanism by which its knives open. This mechanism is
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`identical to that which is illustrated on Page 7 of the Office action dated November 8,
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`2007. That is, the applicant’s knives are also folding knives which feature blades that
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`lock open. Additionally, as the recitation of goods indicates, the applicant’s knives also
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`feature blades that fold closed within the handle.3 Therefore, the applicant’s knives are
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`“lockback” knives, and the mark LOCKBACK identifies the class or genus of the goods
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`listed in the application.
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` That the applied-for mark identifies the class or genus of the listed goods is
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`supported by the evidence of record. The evidence attached in the Office actions dated
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`February 5, 2008, August 22, 2008 and March 17, 2009, wherein knives are identified as
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`“lockbacks” or “lockback knives,” should be noted. Of particular note are the following:
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`From the Office action dated February 5, 2008:
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`1) Page 2: features a knife identified as a “lockback knife”
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`2) Page 7: features goods identified as comprising a “lockback knife set”
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`3) Page 11: features goods identified as “lockback knives” and a “lockback knife
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`container”
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`3 It must be noted that the blade featured in the illustration on Page 7 of the Office action dated November
`8, 2007 differs from the blade featured in the applicant’s response. However, as illustrated by the evidence
`featured on Pages 2-11 in the Office action dated August 22, 2008, lockback knives feature a variety of
`blade shapes and sizes, including those similar to the applicant’s.
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`4) Pages 15-19: features printouts of U.S. Registration Nos. 2054816 and
`2294307 from the USPTO’s X-Search database which lists goods that include
`“folding lockback knives”
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`5) Pages 20-21: features a printout of Application Serial No. 78887158 from the
`USPTO’s X-Search database which lists good that include “folding lock-back
`knives”
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`From the Office action dated August 22, 2008:
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`1) Pages 2-11: features goods identified as “lockback knives”
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`2) Pages 12-13: features knives identified as a closed lockbacks
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`3) Pages 14-15: features a knife identified as a “lockback knife”
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`4) Pages 26-30: features a patent application for a lockback knife
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`5) Page 64: features a knife identified as a “coffin handle lockback”
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`6) Page 73: features a printout of U.S. Registration No. 1284998 from the
`USPTO’s X-Search database which lists goods identified as “Lock-Back,
`Folding Knives”
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`7) Pages 74-77: features printouts of U.S. Registration Nos. 1725084, 1978794
`and 2185555 from the USPTO’s X-Search database which includes goods
`identified as “lock back knives”
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`8) Pages 78-80: features a printout of U.S. Registration No. 2674226 from the
`USPTO’s X-Search database which includes good identified as “knives,
`namely….lockback”
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`9) Pages 81-86: features printouts of U.S. Registration Nos. 2932383 and
`2912402 from the USPTO’s X-Search database which includes good identified
`as “lock-back knifes[sic]”
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`10) Pages 87-88: features a printout of U.S. Registration No. 3153979 from the
`USPTO’s X-Search database which
`includes a knife
`identified as a
`“Lightweight, folding lockback knife.”
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`1) Page 2: features a knife identified as a “folding lockback”
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`2) Page 9: indicates that Colt manufactures or provides “folding lockbacks”
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`From the Office action dated March 17, 2009:
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`3) Page 11: features a profile of a company that is said to offer “folding
`lockbacks”
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`4) Page 13: features a knife identified as a “lockback”
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`5) Page 23: features knives identified as “folding lockbacks”
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`The evidence of record also demonstrates that the relevant public understands that
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`the term “lockback” is a designation that refers primarily to the goods for which
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`registration is sought. For example, the evidence referenced above features a number of
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`websites describing, selling or featuring goods such as the applicant’s (i.e., folding knives
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`that lock open) and identifying such goods as “lockbacks” or “lockback knives.” The
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`evidence referenced above also features a number of registrations and a pending
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`application which include “lockbacks” or “lockback knives” among the list of goods.
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`Furthermore, the evidence of record demonstrates that the relevant public refers to
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`folding knives that lock open as “lockbacks” or “lockback knives.” For example, a user
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`review featured on Page 18 of the Office action dated August 22, 2008 discusses a
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`particular knife. The reviewer states, “I am lucky enough to own two Gerber 650
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`lockback knives.” Additionally, in an article about knife collecting featured on Page 4 of
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`the Office action dated March 17, 2009, the author indicates, “Mostly, I collect fixed
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`blades, lockbacks and unusual knives although I do have a few pocket knives.” On Page
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`20 of the same Office action, James “Hoot” Gibson, a member of the Florida
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`Knifemakers’ Association discusses the knives he makes, and indicates that the first
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`knives he made were “large folding lockbacks.”
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`The applicant contends that its mark is not generic because it is already registered
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`on the Supplemental Register and indicates that this prior registration is a “precedent set
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`by the United States Patent and Trademark Office.” This argument is unpersuasive in
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`that the registration of a mark cannot be said to be a precedent by which other examiners
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`are bound. Rather, it is well settled that prior decisions and actions of other trademark
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`examining attorneys in registering different marks have little evidentiary value and are
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`not binding upon the Office. TMEP §1207.01(d)(vi). Each case is decided on its own
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`facts, and each mark stands on its own merits. See AMF Inc. v. Am. Leisure Prods., Inc.,
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`474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973); In re Int’l Taste, Inc., 53
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`USPQ2d 1604, 1606 (TTAB 2000); In re Sunmarks, Inc., 32 USPQ2d 1470, 1472 (TTAB
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`1994).
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`The applicant also indicates that the goods featured in the examining attorney’s
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`attached evidence differ from the applicant’s goods, as described in the recitation. This
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`argument is also unpersuasive in that, as noted above, a “lockback” is defined as “a type
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`of folding knife that locks open” and features a blade that folds closed within the handle.
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`The applicant’s goods are folding knives that also lock open and feature blades that fold
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`closed within the handle. Therefore, contrary to applicant’s assertions, the lockback
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`knives featured in the evidence of record identify the types of knives listed in the
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`application.
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`The applicant also contends that its use of the mark shows that the public is aware
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`that its mark is a trademark. This argument is also unpersuasive in that, as the previously
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`referenced evidence indicates, “lockback” identifies the common commercial name for
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`folding knives that lock open. In addition, the evidence shows use of the term
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`“lockback” as a generic designation rather than as a trademark. That is, the term
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`“lockback” or “lockback knife” is often used after the trademark or source-indicator by
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`which the goods are identified. For example, Page 39 of the Office action dated August
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`22, 2008 features the Schrade Imperial AP1 Apex keychain lockback knife, Page 41
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`features the Kutmaster lockback knife, Page 46 features the Case Hammerhead, Shark
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`Tooth and Mako lock back knives and Page 52 features the Jeep lockback knife. In such
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`examples, the wording “Schrade Imperial AP1 Apex,” “Kutmaster,” “Case
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`Hammerhead,” “Shark Tooth,” “Mako” and “Jeep” are depicted in capital letters and
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`identify the source-indicators for the goods while the wording “lockback knife” is
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`presented in small letters and identifies the generic name for the goods.
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`The applicant also contends that its mark is not generic because of a judgment in
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`Civil Action No. 2:06-cv-03691 (attached on Pages 5-8 of the response dated July 28,
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`2008). Applicant indicates that the lawsuit specifically found that the mark LOCK
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`BACK is a valid and enforceable trademark. This argument is unpersuasive in that the
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`issue in the civil action is not whether the applicant owns a valid and enforceable
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`trademark. Rather, the decision relates to a trademark and patent infringement case
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`between the applicant and a third party. Such a decision is of little import in this inquiry
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`because the issue in the instant case does not relate to the validity of a previous
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`registration. Rather, this case focuses upon the generic nature of the mark LOCKBACK
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`as it relates to the goods. Moreover, as noted above, decisions of past examiners are not
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`binding on the Office, and the registrability of each mark is determined on its own merits.
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`Lastly, it is well settled that trademark rights are not static, and eligibility for registration
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`must be determined on the basis of the facts and evidence in the record at the time
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`registration is sought. In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1344, 213
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`USPQ 9, 18 (C.C.P.A. 1982); In re Thunderbird Prods. Corp., 406 F.2d 1389, 1391, 160
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`USPQ 730, 732 (C.C.P.A. 1969).
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`Because the applied-for mark identifies the class or genus of the goods for which
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`registration is sought, and because the relevant public understands the term LOCKBACK
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`to refer to the class or genus of the goods for which registration is sought, the mark is
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`generic as applied to the goods. In the alternative, if the applied-for mark is ultimately
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`determined not to be generic by the Trademark Trial and Appeal Board, then the
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`examining attorney respectfully requests that the refusal to register because the applied-
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`for mark is merely descriptive of the applicant’s goods be affirmed for the reasons
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`specified above. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP
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`§§1209.01(b), 1209.03 et seq.
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`II. ALTERNATIVELY, IF THE PROPOSED MARK IS NOT GENERIC AS
`APPLIED TO THE GOODS, NEITHER THE STATEMENT OF FIVE
`YEARS’ USE NOR THE EVIDENCE SUBMITTED IN SUPPORT OF THE
`CLAIM OF ACQUIRED DISTINCTIVENESS IS SUFFICIENT TO
`ESTABLISH DISTINCTIVENESS
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`The applicant asserts a claim of acquired distinctiveness based on five years’ use.4
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`Section 2(f) of the Trademark Act and 37 C.F.R. §2.41(b) state that reliance on a claim of
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`five years’ use to establish acquired distinctiveness “may” be acceptable in “appropriate
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`cases.” Whether a claim of five years’ use will be deemed acceptable to establish that the
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`mark has acquired distinctiveness depends largely on the nature of the mark in relation to
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`the specified goods. See TMEP §1212.05. If the mark is highly descriptive the goods
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`named in the application, the statement of five years’ use alone will be deemed
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`insufficient to establish acquired distinctiveness. See In re Noon Hour Food Products,
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`4 It must be noted that the applicant did not support this claim with a signed declaration. However, a
`declaration was not required of the applicant because the claim was not accepted.
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`Inc., 88 USPQ2d 1172 (TTAB 2008) (despite applicant’s claim of use in commerce for
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`almost one hundred years, as well as an “inadvertently cancelled” seventy-year old
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`registration for the mark BOND-OST for cheese, the Board deemed current evidence
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`clearly showed the mark was generic for the goods, and assuming arguendo that BOND-
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`OST is not generic, that applicant had failed to establish acquired distinctiveness of the
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`highly descriptive mark). See TMEP §1212.05.
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`In this case, the examining attorney has submitted evidence that the mark
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`LOCKBACK is used as the common commercial name for the goods. This evidence
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`includes a definition of the
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`term “lockback” as used in the industry and illustrative evidence that the applicant’s
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`goods are knives commonly identified in the industry as “lockbacks” or “lockback
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`knives.” The evidence also includes various websites featuring folding knives that lock
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`open and identifying such knives as “lockbacks” or lockback knives.” It also includes
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`various printouts from the USPTO’s X-Search database featuring various registrations
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`which include goods identified as “lockbacks” or “lockback knives.” Because the
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`evidence shows that the applied-for mark is used as a common commercial name for the
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`goods, the allegation of five years’ use is insufficient to show acquired distinctiveness. In
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`re Kalmbach Publishing Co., 14 USPQ2d 1490 (TTAB 1989. See TMEP 1212.05(a).
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`The applicant also asserts a claim of acquired distinctiveness based on the
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`evidence. Under Trademark Rule 2.41(a), 37 C.F.R. §2.41(a), an applicant may submit
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`affidavits, declarations under 37 C.F.R. §2.20, depositions, or other appropriate evidence
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`showing the duration, extent, and nature of the applicant’s use of a mark in commerce
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`that may lawfully be regulated by Congress, advertising expenditures in connection with
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`such use, letters, or statements from the trade and/or public, or other appropriate evidence
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`tending to show that the mark distinguishes the goods. In considering a claim of acquired
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`distinctiveness, the issue is whether acquired distinctiveness of the mark in relation to the
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`goods has in fact been established in the minds of the purchasing public, not whether the
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`mark is capable of becoming distinctive. Nextel Communications, Inc. v. Motorola, Inc.,
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`91 USPQ2d 1393 (TTAB 2009); In re Redken Laboratories, Inc., 170 USPQ 526 (TTAB
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`1971); In re Fleet-Wing Corp., 122 USPQ 335 (TTAB 1959). See TMEP 1212.06.
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`In this case, the applicant submitted a signed statement by its executive vice
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`president discussing the applicant’s promotional efforts, advertising expenditures and
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`sales figures. However, proof of an expensive and successful advertising campaign is not
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`in itself enough to
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`prove secondary meaning. Such extensive sales and promotion may demonstrate the
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`commercial success of applicant’s goods, but not that relevant consumers view the matter
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`as a mark for such goods. See In re Boston Beer Co., 198 F.3d 1370, 53 USPQ2d 1056
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`(Fed. Cir. 1999); In re Busch Entm’t Corp., 60 USPQ2d 1130, 1134 (TTAB 2000).
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`Similarly, applicant’s advertising expenditures are merely indicative of its efforts to
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`develop distinctiveness and is not sufficient evidence that the mark has acquired
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`distinctiveness. See In re Pennzoil Prods. Co., 20 USPQ2d 1753 (TTAB 1991).
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`Furthermore, as noted above, the examining attorney has submitted evidence
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`showing that the mark LOCKBACK is a generic designation for the goods. If matter is
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`generic, functional, or purely ornamental, or otherwise fails to function as a mark, the
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`matter is unregistrable. See, e.g., In re Bongrain Int’l Corp., 894 F.2d 1316, 1317 n.4, 13
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`USPQ2d 1727, 1728 n.4 (Fed. Cir. 1990); TMEP 1212.02(i). Because the applied-for
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`mark is generic as applied to the goods, the evidence submitted remains insufficient to
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`support the claim of acquired distinctiveness and does not alter the determination that the
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`applied-for mark is unregistrable. See TMEP 1212.02(i).
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`III. CONCLUSION
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`The widespread use of the terms “lockback” and “lockback knives” in the
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`applicant’s industry to describe foldable knives that lock open supports a finding that the
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`mark LOCKBACK identifies the class or genus of the goods for which registration is
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`sought and that the relevant public understands this designation primarily to refer to the
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`class or genus of such goods. Alternatively, if the proposed mark is found not to be
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`generic for the goods, it has been demonstrated that the applicant’s statement of five
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`years’ use and evidence in support of its claim of acquired distinctiveness are insufficient
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`to establish distinctiveness. Therefore, it is respectfully requested that the refusal to
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`register the proposed mark be affirmed.
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`Respectfully submitted,
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`/Melissa Vallillo/
`Examining Attorney
`Law Office 113
`Phone: (571) 272-5891
`Fax: (571) 273-9113
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`Odette Bonnet
`Managing Attorney
`Law Office - 113