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`’ BR
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`A B
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`LLI?
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`May 20,
`
`008966.0108
`
`By First-Class Mail
`
`ONE SHELL PLAZA
`910 LOUISIANA
`HOUSTON, TEXAS
`77002-4995
`713.229.1234
`FAX 713.229.1522
`
`AUSTIN
`BAKU
`DALIAS
`DUBAI
`HONG KONG
`HOUSTON
`LONDON
`MOSCOW
`NEW YORK
`RIYADH
`WASHINGTON
`
`James R. Robinson
`713.229.2156
`FAX 713.229.7956
`
`iomes.robinson@bokerbotts.com
`
`05-24-2005
`U.S. Patent 8:. TMOfcITM Mail Rep! Dt. #11
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Trademark Trial and Appeal Board
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Re:
`
`Finger Furniture Company, Inc. v. Finger Interests Number One, Ltd.
`Opposition No.: 91155115
`
`Dear Sir/Madame:
`
`Enclosed please find a Motion for Summary Judgment in connection with the
`above-captioned opposition.
`
`Please date stamp and return the enclosed postcard in acknowledgement of
`
`receipt.
`
`JR: 197
`
`cc:
`
`Ms. Roberta S. Bren w/enclosures
`
`Res ectfiilly sub itted,
`
`James R. Robinson
`
`HOUOI :907498.l
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`Rims
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91155115
`
`Trademark: FINGER INTERESTS
`
`j.
`
`05-24-2005
`
`u.s. Patent 3. TMOf<:I‘l’M Mail Rent In #11
`
`
`
` FINGER FURNITURE COMPANY, INC.
`
`Opposer,
`
`
`
`V.
`
`FINGER INTERESTS NUMBER ONE, LTD.,
`
`
`Applicant.
`
`APPLICANT’S MOTION FOR SUMMARY JUDGMENT
`
`Applicant, FINGER INTERESTS NUMBER ONE, LTD.
`
`(“Finger
`
`Interests”), by its attorneys, hereby moves the Trademark Trial and Appeal Board
`
`(“TTAB”) pursuant to Rule 56 of the Federal Rules of Civil Procedure for summary
`
`judgment denying Opposition No. 91155115. Applicant also moves, pursuant to Rule 2.1
`
`27(d), 37 C.F.R.
`
`§ 2.127(d),
`
`that
`
`the TTAB suspend this proceeding pending
`
`determination of its Motion for Summary Judgment.
`
`If the TTAB denies Applicant’s
`
`Motion for Summary Judgment, Applicant hereby moves that the discovery period be
`
`extended for 120 days after the TTAB issues its decision and that the testimony and trial
`
`periods be reset accordingly.
`
`The undisputed facts and arguments supporting this Motion are set forth in
`
`the attached Memorandum in Support of Applicant’s Motion for Summary Judgment, and
`
`the Declaration of Andrew Dawson and exhibits thereto.
`
`HOU0l:899677.1
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`Respectfully submitted,
`
`BAKER BOTTS L.L.P.
`
`Dated: May 20, 2005 aél A. Hawes
`
`J
`
`es R. Robinson
`
`910 Louisiana Street
`
`Houston, TX 77002
`
`(713) 229-1750
`(713) 229-7750 (Fax)
`
`Attorneys for Applicant
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`HOUOI :899677.1
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`CERTIFICATE OF SERVICE
`
`I hereby certify that on May 20, 2005 a true and correct copy of the
`
`foregoing APPLICANT’S MOTION FOR SUMMARY JUDGMENT was served on
`
`Counsel for Opposer by first-class mail, postage prepaid, to the address identified below:
`
`Roberta S. Bren
`
`Oblon Spivak McCle1land Maier &
`Neustadt, P.C.
`1940 Duke Street
`
`Alexandria, VA 22314
`
`
`
` Ja
`es R. Robinson
`
`CERTIFICATE OF MAILING
`
`I hereby certify that APPLICANT’S MOTION FOR SUMMARY
`
`JUDGMENT is being deposited with the United States Postal Service with sufficient
`
`postage as first-class mail in an envelope addressed to the United States Patent and
`
`Trademark Office, Trademark Trial and Appeal Board, P.O. Box 1451, Alexandria,
`
`Virginia 22313-1451 on the date indicated below:
`
` Dated: May 20, 2005
`
`HOU01:899677.1
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`FINGER FURNITURE COMPANY, INC.
`
`
`
`Opposer,
`
`v.
`
`Opposition No. 91 1551 15
`
`Trademark: FINGER INTERESTS
`
`FINGER INTERESTS NUMBER ONE, LTD.,
`
`Applicant.
`
`APPLICANT’S MEMORANDUM IN SUPPORT OF APPLICANT’S MOTION
`FOR SUMMARY JUDGMENT
`
`Applicant, FINGER INTERESTS NUMBER ONE, LTD. (“Applicant” or
`
`“Finger Interests”), respectfully submits this Memorandum in support of its Motion for
`
`Summary Judgment on Opposer FINGER FURNITURE COMPANY, INC.’s (“Opposer”
`
`or “Finger Furniture”) trademark dilution claim.
`
`PRELIMINARY STATEMENT
`
`Applicant moves for summary judgment and respectfully requests that
`
`Opposer’s Consolidated Notice of Opposition (“Opposition” or “Opp.”) be denied
`
`because Opposer’s pleaded mark and/or trade name are not famous. To succeed on the
`
`claim of dilution under 15 U.S.C. § ll25(c), Opposer must establish that its mark and/or
`
`trade name is famous. The undisputed facts demonstrate Opposer cannot establish its
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`mark and/or trade name are famous as a matter of law. Opposer is a fumiture retailer in
`
`Houston, Texas.
`
`It owns and operates six retail stores in the Houston area.
`
`It does not
`
`own or operate any stores elsewhere.
`
`In 2001, the date Applicant filed the intent-to-use
`
`trademark applications at issue and the date on which Opposer must prove its mark is
`
`famous, Opposer had revenue of only $226 million. Opposer’s business has generated
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`HOUO1:899677.l
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`almost no press coverage outside of the Houston area, and the press coverage of the
`
`business in Houston has been minimal. Moreover, the federal trademark registry is home
`
`to more than 250 registrations owned by third parties that incorporate the term “Finger”
`
`or “Fingers” as a part of the mark. Two of those registrations are in connection with
`
`furniture related goods or services.
`
`In short, Opposer’s mark simply is not among and not even close to being
`
`“a member of the ‘select class of marks —- those with powerful consumer associations that
`
`even non-competing uses can impinge on their value.’” Toro Co. v. ToroHead Inc., 61
`
`U.S.P.Q.2d 1164, 1179 (TTAB 2001), quoting Avery Dennison Corp. v. Sumpton, 189
`
`F.3d 868, 875 (9th Cir. 1999).
`
`The
`
`available
`
`public
`
`information
`
`about Opposer
`
`conclusively
`
`demonstrates it will be unable as a matter of law to establish that its trade name or its
`
`FINGERS Mark is famous. Consequently, summary judgment in Applicant’s favor and
`
`denial of Opposer’s Opposition is warranted.
`
`STATEMENT OF FACTS
`
`I.
`
`THE PARTIES
`
`Opposer, Finger Furniture,
`is a Texas corporation and furniture retailer
`having a place ofbusiness at 4001 GulfFreeway, Houston, Texas 77003. Opp. at p. 2.
`It
`
`owns and operates six retail fumiture stores in the Houston area. (Declaration of Andrew
`
`Dawson (“Dawson Decl.”) 1[ 4 at Ex. A, Pg. 1).
`
`Applicant, Finger
`
`Interests,
`
`is
`
`a Texas
`
`limited liability company
`
`specializing in investment management having a place of business at 520 Post Oak
`
`Boulevard, Suite 750, Houston, Texas. (Dawson Decl. 1[ 6 at Ex. B, Pg. 2).
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`HOUOI :899677.l
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`II.
`
`THE APPLICATIONS AT ISSUE
`
`Applicant, Finger Interests, filed three U.S. trademark applications for the
`
`mark FINGER INTERESTS.
`
`(Dawson Decl. 1] 8 at Ex. C). Specifically, Applicant filed
`
`an intent-to-use application (Serial No. 76/350,770) on December 19, 2001, for the mark
`
`FINGER INTERESTS in connection with the following services:
`
`business acquisition and merger consultation; business
`consultation; business management consultation; business
`organizational consultation.
`
`Id.
`
`Also, on December 20, 2001, Applicant filed an intent-to-use application
`
`(Serial No. 76/351,157) for the mark FINGER INTERESTS in connection with the
`
`following services:
`
`investment consultation;
`investment advice;
`investment
`management;
`investment of funds for others; financial
`investment in thefield ofreal estate; real estate investment;
`real estate management;
`real estate procurement for
`others; real estate brokerage.
`
`Id.
`
`Applicant filed a third intent-to-use application (Serial No. 76/351,158) on
`
`December 20, 2001 for the mark FINGER INTERESTS in connection with the following
`
`services:
`
`Id.
`
`real estate development.
`
`All
`
`three of the above-described applications were published for
`
`opposition on June 18, 2002. Id.
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`HOU01 :899677.1
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`--
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`III.
`
`THE PLEADINGS
`
`On December 19, 2002, Opposer filed its Opposition against the three
`
`applications described above (hereinafter the “Finger Interest Applications”). Opposer
`
`asserted the following in its Opposition:
`
`Opposer is the owner of the following registration and applications
`3.
`pending before the United States Patent and Trademark Office (hereinafier
`collectively, “U.S. FINGERS Marks”):
`
`“@ YOUR FINGERS” Registration No. 2,610,684 filed
`(a)
`July 25, 2001, issued August 20, 2002, for retail fiimiture stores
`(hereinafter, the “684 Registration”).
`
`“FINGERS”, Serial No. 76/290,186 filed July 25, 2001, for
`(b)
`furniture
`stores
`(hereinafter,
`the
`‘I86 Application”).
`retail
`Although a Use Statement for the “FINGERS” application has not
`been filed as a result of Opposer’s efforts to ascertain the exact
`first use dates, Opposer first used the mark “FINGERS” anywhere
`and in commerce at least as early as 1965.
`
`“FABULOUS FINGERS”, Serial No. 76/290,406 filed
`(c)
`July 25, 2001,
`for furniture retail stores (hereinafter,
`the ‘406
`Application”).
`
`“FINGERS PRIVATE LABEL”, Serial No. 76/290,150
`(d)
`filed July 25, 2001, for furniture retail stores (hereinafter, the ‘I50
`Application”).
`
`“FINGERS ASSURANCE OF QUALITY”, Serial No.
`(e)
`76/290,185 filed July 25, 2001,
`for
`retail
`furniture
`stores
`(hereinafter, the ‘I85 Application”).
`
`A copy of a print-out bearing pertinent information regarding Opposer’s
`U.S. FINGERS Marks are (sic) attached hereto as Exhibit A.
`
`Opposer’s U.S. FINGERS Marks are inherently distinctive as used
`4.
`in connection with Opposer’s Services.
`
`Opposer has spent a substantial amount in advertising its U.S.
`5.
`FINGERS Marks on the Internet, in print media, radio and/or television
`broadcast media.
`
`By virtue of Opposer’s use in commerce of Opposer’s U.S.
`6.
`FINGERS Marks in connection with Opposer’s Services and Opposer’s
`Trade Name, such services and business name have become well and
`
`HOU01:899677.l
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`favorably known to the relevant trade and public under such mark and
`name.
`
`By virtue of extensive sales in commerce, the relevant trade and
`7.
`public have come to associate Opposer’s Services under Opposer’s U.S.
`FINGERS Marks with Opposer, thereby creating a valuable reputation for
`such services.
`
`in commerce,
`By virtue of extensive advertising and sales
`8.
`Opposer’s FINGERS mark and Opposer’s Trade Name have become
`famous.
`
`Opposer’s FINGERS mark and Opposer’s Trade Name attained
`9.
`fame long before any date of first use which Applicant can rely upon.
`
`“FINGER
`register
`to
`applications
`the
`bases
`Applicant
`10.
`INTERESTS” on an intent to use the mark in commerce in the United
`
`States.
`
`As indicated in Applicant’s intent to use applications, Applicant’s
`11.
`constructive use date is after Opposer’s constructive use date for the ‘684
`Registration and the ‘l86 Application,
`the ‘406 Application,
`the ‘150
`Application and ‘ 185 Application.
`
`that
`Inc. prays
`WHEREFORE, Finger Furniture Company,
`Application Serial Nos. 76/350,770; 76/351,157 and 76/351,158 for
`“FINGER INTERESTS” sought for the services therein specified be
`denied and refused, and that this opposition be sustained.‘
`
`On June 18, 2003, Applicant filed and served its answer and affirmative
`
`defenses to Opposer’s Opposition.
`
`IV.
`
`OPPOSER’S BUSINESS AND SERVICE MARKS
`
`Opposer is a retail furniture company that operates six stores in the
`
`Houston area.
`
`(Dawson Decl. 1] 4 at Ex. A, Pg. 1). The earliest it alleges it has used any
`
`of the marks it cites in its Opposition is 1965. Opp. at 1] 3(b). Specifically, Opposer
`
`alleges it began using the mark FINGERS in connection with retail furniture stores at
`
`least as early as 1965. Id.
`
`In spite of its alleged long-standing use of the mark, Opposer
`
`It should be noted that Opposer’s Consolidated Notice of Opposition appears to be missing a page.
`'
`Notably, Page 4 from the Consolidated Notice of Opposition was not included in Opposer’s filing, which
`has not been corrected or amended. However, based on the content of Page 3, as recited above, it is clear
`that Opposer is alleging dilution under 15 U.S.C. § l125(c).
`
`HOU01:899677.1
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`did not
`
`file applications to register its purported marks with the U.S. Patent and
`
`Trademark Office (“PTO”) until a few months before those filed by Applicant.
`
`(Dawson
`
`Decl. 1] 8 at Exs. C, D). Specifically, Opposer filed the applications upon which it relies
`
`in its opposition proceeding on July 25, 2001, five months before Applicant filed the
`
`three applications that are the subject of this opposition proceeding. Opp. at p. 1 and 11 3.
`
`Notwithstanding Opposer’s
`
`citation
`
`to
`
`five
`
`separate
`
`trademark
`
`applications it alleges it owns, it alleges only that its “FINGERS” mark and its trade
`
`name “Finger Furniture Company, Inc.” are famous. “By virtue of extent of advertising
`
`and sales in commerce, Opposer’s FINGERS mark and Opposer’s Trade Name have
`
`become famous.” Opp. at 11 8.
`
`Opposer’s FINGERS mark registered on November 11, 2003 (U.S.
`
`Registration No. 2,782,562) in connection with retailfurniture stores. (Dawson Decl. 1] 8
`
`at Ex. D, Pg. 5). While Opposer asserted in its Opposition that it first began use of the
`
`mark in commerce at least as early as 1965, Opposer maintained in its registration that
`
`the FINGERS mark was first used in commerce on or before 1946. Id.
`
`Similarly, its application for the mark FABULOUS FINGERS has also
`
`registered, on April 6, 2004 (U.S. Registration No. 2,830,436),
`
`in connection with
`
`furniture retail stores. Opposer alleges a date of first use in commerce in connection
`
`with that mark of 1992. Id at Pg. 9.
`
`Opposer’s cited application for the mark FINGERS PRIVATE LABEL
`
`(U.S. Serial No. 76/290,150) filed in connection with furniture retail stores, has not
`
`registered because of Opposer’s failure to tender to the PTO appropriate proof of use. Id.
`
`at Pgs. 13-14.
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`HOU01:899677.1
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`Opposer’s cited application for the mark FINGERS ASSURANCE OF
`
`QUALITY (U.S. Serial No. 76/290,185) also filed in connection with retail furniture
`
`stores, has been abandoned because of Opposer’s failure to file a Statement of Use. Id. at
`
`Pgs. 17-18.
`
`Opposer’s web site reveals that it operates six retail fiirniture stores in the
`
`Houston area.
`
`(Dawson Decl. 1[ 4 at Ex. A, Pg. 1).
`
`Its web site contains a photograph of
`
`a delivery truck.
`
`Id. at Pg. 2. On the side of the delivery truck is the statement,
`
`“Houston’s # 1 Furniture Store.” Id. That slogan also appears separately on the web site.
`
`Id. Opposer is only registered to do business in the state of Texas.
`
`(Dawson Decl. 1} 10
`
`at Ex. E).
`
`It is not registered to do business in any other state.
`
`Id. According to a web
`
`site devoted to the retail furniture industry, Finger Furniture did $226 million in business
`
`in 2001, the year Applicant filed its applications.
`
`(Dawson Decl. 1] 12 at Ex. F, Pg. 5).
`
`Opposer did $247 million in business in 2003. Id. at Pg. 8. Opposer is classified by that
`
`same web site as a “local” or “regional” furniture store and is ranked 31st out of the top
`
`100 retail furniture stores in the country. Id. at Pgs. 7-8.
`
`The PTO web site reveals 253 active federal
`
`trademark registrations
`
`owned by parties other than Opposer that include the term FINGER or FINGERS.
`
`(Dawson Decl. 1] 14 at Ex. G). Two of those registrations are registered in connection
`
`with fumiture -- FINGER-TOUCH MASSAGE (Reg. No. 2,660,467) for “furniture,
`
`namely, indoor furniture” and COMFORT AND CONTROL AT YOUR FINGERTIPS
`
`(Reg. No. 2,572,496) for “office fumiture.” Id. at Pgs. 86, 171. Moreover, a separate
`
`business in Ohio has adopted the name “Nine Finger Furniture Company”.
`
`(Dawson
`
`Decl. 11 10 at Ex. E, Pg. 27). Lastly, the genesis of the term “FINGER” in both Applicant
`
`and Opposer’s trademarks is the surname of the family involved in the respective
`
`l-lOUO1:899677.1
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`a
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`4.
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`Is
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`businesses. (Dawson Decl. 1] 6 at Ex. B, Pg. 2 and fll 16 at Ex. H, Pg. 42). In other words,
`
`Opposer is seeking to prevent Applicant from being able to use the surname of
`
`App1icant’s principals as part of its mark.
`
`Unsolicited press coverage of Opposer has occurred to any extent only in
`
`Houston.
`
`In the last 14 years, only 63 stories that reference Finger Furniture have
`
`appeared in the company’s hometown newspaper,
`
`the Houston Chronicle.
`
`(Dawson
`
`Decl. 11 16 at Ex. H).2 Outside of Houston, the company has received practically no press
`
`coverage. No stories that reference Opposer have appeared in the San Antonio, Texas
`
`newspaper since January 1, 1996, and the Dallas, Texas newspaper has run only one story
`
`-- an obituary -- that references Finger Furniture since October 1, 1992. (Dawson Decl. 1[
`
`16 at Exs. I, J).
`
`Outside of Texas, neither the New York Times nor the Los Angeles Times
`
`has run a story mentioning the company since, respectively, June 1, 1980, and January 1,
`
`1985, and the Chicago Tribune has run only one story that references the company since
`
`January 1, 1985. (Dawson Decl. 1] 16 at Exs. K, L, M).
`
`ARGUMENT
`
`V.
`
`OPPOSER’S DILUTION CLAIM FAILS
`
`A.
`
`Summary Judgment Standard
`
`Summary judgment is appropriate in cases in which the moving party
`
`establishes there is no genuine issue of material fact that requires resolution at trial and
`
`the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c). An
`
`issue is material when its resolution would affect the outcome the proceeding under
`
`governing law. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A fact is
`
`Three of these stories are obituaries in which Finger Furniture was referenced. (Dawson Decl. 1] 16
`2
`at Ex. H, Pgs. 41, 42 and 75).
`
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`I.
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`genuinely in dispute if the evidence of record is such that a reasonable fact finder could
`
`return a verdict in favor of the nomnoving party. Anderson 477 U.S. at 248. Under Fed.
`
`R. Civ. P. 56, the nonmoving party must be given the benefit of all reasonable doubt as to
`
`whether genuine issues of material fact exist, and the evidentiary record on summary
`
`judgment and all inferences to be drawn to the undisputed facts must be viewed in the
`
`light most favorable to the nonmoving party. See Opryland US Inc. v. Great American
`
`Music Show, Inc. 970 F.2d 847 (Fed. Cir. 1992); Olde Tyme Foods Inc. v. Roundy’s Inc.,
`
`961 F .2d 200 (Fed. Cir. 1992). To succeed in it summary judgment motion, therefore,
`
`Applicant must establish no genuine issue of material fact exists as to the absence of
`
`fame of the mark FINGERS or the trade name FINGER FURNITURE COMPANY, INC.
`
`B.
`
`The Test to Establish Fame
`
`The Federal Trademark Dilution Act of 1995 (FTDA) provides that;
`
`The owner of a famous mark shall be entitled, subject to the
`principles of equity and upon such terms as the court deems
`reasonable,
`to an injunction against another person’s
`commercial use in commerce of a mark or trade name, if
`such use begins after the mark has become famous and
`causes dilution of the distinctive quality of the famous
`mark, and to obtain other relief as is provided in this
`subsection.
`
`15 U.S.C. § 1125 (c)(l) (emphasis added).
`
`The FTDA further provides that “[i]n determining whether a mark is
`
`distinctive and famous, a court may consider factors such as, but not limited to --
`
`the degree of inherent or acquired distinctiveness of
`(A)
`the mark;
`
`the duration and extent of use of the mark in
`(B)
`connection with the goods or services in which the mark is
`used;
`
`the duration and extent of advertising and publicity
`(C)
`of the mark;
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`the geographic extent of the trading area in which
`(D)
`the mark is used;
`
`the channels of trade for the goods or services with
`(E)
`which the mark is used;
`
`the degree of recognition of the mark in the trading
`(F)
`areas and charmels of trade used by the mark’s owner and
`the person against whom the injunction is sought;
`
`the nature and extent of use of the same or similar
`(G)
`marks by third parties; and
`
`whether the mark was registered under the Act of
`(H)
`March 3, 1881, or the Act of February 20, 1905, or on the
`principal register.
`
`15 U.S.C. § l125(c)(l).
`
`Ogposer Cannot Base an FTDA Claim on a Trade Name
`
`As an initial matter, Opposer’s Opposition based on the purported fame of
`
`its trade name fails as a matter of law because the plain language the FTDA allows a
`
`claim only on the basis of a famous mark. 15 U.S.C. § 1125(c). While the FTDA does
`
`allow the owner of a “famous mark” to enjoin another’s use of a “mark or trade name”, it
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`does not allow the plaintiff to use a famous trade name to accomplish that. See 15 U.S.C.
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`§ l125(c). The term “mark” is defined for purposes of the FTDA as including “any
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`trademark, service mark, collective mark, or certification mar .”
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`15 U.S.C. § 1127.
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`None of the definitions of those terms include the term “trade name.” See 15 U.S.C. §
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`1127. A “trade name” is defined separately as “any name used by a person to identify his
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`or her business or vocation.” 15 U.S.C. § 1127. A “mark”, on the other hand, is used to
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`“identify and distinguish” the goods or services of one person from those of another and
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`“to indicate the source” of those goods or services, even if that source is unknown. See
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`15 U.S.C. § 1127. A trade name, therefore, is not a mark and cannot serve as the basis of
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`4.
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`an FTDA claim. Therefore, Opposer’s FTDA claim based on its allegedly famous trade
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`name fails as a matter of law.
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`D.
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`Neither Opposer’s Mark or Trade Name is Famous
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`However, even assuming the TTAB considers the FTDA to allow a claim
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`based on Opposer’s trade name, Opposer dilution claim fails as a matter of law because
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`neither Opposer’s trade name, Finger Furniture Company, Inc., nor its FINGERS Mark is
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`famous. Because of the extraordinary remedy permitted owners of famous marks --
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`allowing them to stop any use or registration by others of their mark, even in connection
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`with unrelated goods or services -- the TTAB has set the bar very high for a party
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`attempting to establish its mark is famous.
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`“[T]o accomplish this successfully,
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`the
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`mark’s owner must demonstrate that the common or proper noun uses of the term and
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`third-party uses of the mark are now eclipsed by the owner’s use of the mark. What was
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`once a common noun, a surname, a simple trademark, etc., is now a term the public
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`primarily associates with the famous mark.
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`To achieve this level of fame and
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`distinctiveness,
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`the party must demonstrate that the mark has become the principal
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`meaning of the wor .” Toro Co. v. ToroHead Inc., 61 U.S.P.Q.2d 1164, 1180 (TTAB
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`2001) (emphasis added). A finding of fame usually requires a large portion of the general
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`consuming public to recognize the mark. See Thane Int ’l, Inc. v. Trek Bicycle Corp., 64
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`U.S.P.Q.2d 1564, 1575 (9th Cir. 2002).
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`“Put another way .
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`.
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`. the mark must be a
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`household name.” Id. Even evidence that Applicant has gathered without the benefit of
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`discovery establishes as a matter of law that neither Opposer’s mark or trade name is
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`famous under the factors set forth in the FTDA.
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`X.
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`1:
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`1.
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`Degree of Inherent or Acguired Distinctiveness
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`This factor requires an examination of how “unique” the term is or has
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`become to the public, either in and of itself or through use over time. See Toro, 61
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`U.S.P.Q.2d at 1176-77. The TTAB considers the distinctiveness of a mark and its fame
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`to be “overlapping, but slightly different, concepts.” Id. at 1177. However, to be capable
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`of dilution, a mark must have a degree of distinctiveness beyond that needed to qualify as
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`a valid trademark.
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`Id. at 1176. Like the term “toro” in Toro, the term “fingers” in
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`Opposer’s mark has been registered without a claim of acquired distinctiveness.
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`(Dawson Decl. 11 8 at Ex. D, Pgs. 1, 5, 9). Similarly, however, the term has a low degree
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`of distinctiveness.
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`First,
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`like the term “tom”,
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`the term “finger” has a commonly
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`understood meaning. It goes without citation to authority that the primary meaning of the
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`term refers to the digits on a forelimb.
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`In addition, in this case, it is the pluralized
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`surname of the family of the principals involved in both Opposer and Applicant. While
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`the term is not likely “primarily merely a sumame” under 15 U.S.C. § l052(e)(4) because
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`of its more common meaning, in this instance it is still a surname and as such has a more
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`limited degree of distinctiveness than the term “tom.”
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`2.
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`Duration and Extent of Use
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`In Toro, the TTAB concluded that the mark TORO in connection with
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`lawn equipment was not famous despite the fact that the owner of the mark had been
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`using the mark since 1914 and had worldwide use of the mark on all of its product lines..
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`See id. at 1178. Here, Opposer has been using its mark a much shorter period of time --
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`since 1942 -- and conducted its business in a much more geographically limited area --
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`near Houston, Texas. The duration and extent of use of the mark is reflected in the
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`owner’s sales of the goods or services associated with the mark. Opposer’s furniture
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`sales in 2001 were $226 million, only 17 percent of the $1.3 billion in annual sales Toro
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`reported in connection with its mark.
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`In combination, these facts weigh heavily against a
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`finding of fame.
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`3.
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`The Duration and Extent of Advertising and Publicity of the Mark
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`Because this motion is being filed without the benefit of discovery}
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`Applicant does not have available Opposer’s advertising expenditures in connection with
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`either its mark or trade name. Regardless, the evidence Applicant has been able to gather
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`shows the extent of publicity about Opposer weighs heavily against a finding of fame.
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`Unsolicited newspaper or media attention is one of the ways in which a term can be
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`transfonned into a truly famous mark. See Toro, 61 U.S.P.Q.2d at 1181 citing Eli Lilly &
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`Co. v. Natural Answers Inc., 56 U.S.P.Q.2d 1942, 1943, 1951 (7th Cir. 200O).4 Opposer
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`has received a limited amount of unsolicited newspaper coverage, and only in Houston.
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`Opposer is virtually unrecognized in newspapers outside of Houston.
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`(Dawson Decl. 1]
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`16 at Exs. I, J, K, L, M).
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`In contrast, Toro introduced evidence that it spent $35-40
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`million armually on advertising, had advertised in a variety of publications, including
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`newspapers such as the Los Angeles Times, national publications such as Better Homes
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`and Gardens, and state and city magazines such as Minneapolis-St. Paul Magazine. See
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`Toro, 61 U.S.P.Q.2d at 1178. Still, the TTAB rejected Toro’s claim that its mark was
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`famous. This factor weighs in favor of a finding that Opposer’s mark and trade name are
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`not famous.
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`3 Any request by Opposer for Fed. R. Civ. Pro. 56(f) discovery should be denied. Whatever information
`that exists about the fame of Opposer’s marks is in Opposer’s possession, not Applicant’s. See Build—a—
`Bear Workshop v. Silver Dollar City, Inc., 2003 WL. 22866815 *3 (TTAB 2003).
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`4 Eli Lilly’s mark PROZAC was the subject of two national best selling books, segments on 60 Minutes,
`Good Morning America and the Oprah Winfrey Show, and “a designer label, a buzzword, a brand name
`familiar to .
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`. Americans who have taken it” according to a Baltimore Sun columnist. Eli Lilly, 56
`U.S.P.Q.2d at 1951.
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`4.
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`The Geographical Extent of the Trading Area in Which the Mark is
`Used
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`The limited geographic area in which Opposer does business in and of
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`itself precludes Opposer’s mark or trade name from attaining fame.
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`In drafting the
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`FTDA, Congress intended that
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`to be considered famous, a mark must be famous
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`“throughout a substantial portion of the US.” H.R.Rep. No. 374, 104th Cong., lst Sess.
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`1995, 1996 U.S.C.C.A.N. 1029, 1030-31. While one court has granted protection to a
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`mark under the FTDA that was famous within a several county area, a five-state region is
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`the next smallest geographic area in which a mark was used and found to be famous. See
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`Gazette Newspaper, Inc. v. New Paper, Inc., 934 F. Supp. 688 (D. Md. 1996) and Star
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`Markets, Ltd. v. Texaco, Inc., 950 F. Supp. 1030, 1034 (D. Hawaii 1996) citing WA WA,
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`Inc. v. Haafi 1996 WL 460083 (E.D. Pa. 1996). In Star Markets, the court concluded that
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`“fame in only one state militates strongly against meriting protection from dilution under
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`federal law” and this factor “overwhelmingly favors Defendants.” Star Markets, 950 F.
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`Supp. at 1035.
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`Here, Opposer’s business and commercial use of its mark are confined to a
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`single city, Houston, Texas, where its six stores are located . (Dawson Decl. 1[ 4 at Ex. A,
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`Pg. 1). Opposer is not registered to do business outside of Texas. (Dawson Decl. 1] 10 at
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`Ex. E). Moreover, it is recognized publicly by way of press accounts to any degree only
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`in the city in which it does business, Houston, Texas. (Dawson Decl. 1] 16 at Exs. H, I, J,
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`K, L, M). Houston in the 2000 census had a population of 1,953,631.
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`(Dawson Decl. 1]
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`18 at Ex. N, Pg. 3). Even if all of Harris County, the county in which Houston is located,
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`is included, the population in 2000 amounted to just 3,400,578.
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`Id. at Pg. 2. This
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`represents 1.2 percent of the U.S. population in 2000 of 281,421,906.
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`Id. at Pg. 1.
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`In
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`contrast, Toro introduced evidence that
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`it had 3,000 dealers worldwide including
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`approximately 2,500 in the United States, had annual sales of $1.3 billion and that it used
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`the mark on all of its products and services. See Toro, 61 U.S.P.Q.2d. at 1178. Still, the
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`TTAB concluded that Toro’s mark was not famous.
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`Given the limited geographic scope of the use of Opposer’s mark and
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`trade name, even assuming they are well known within their limited geographic area of
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`use, as a matter of law they do not qualify as being famous in a “substantial portion” of
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`the United States and are not qualified to be among that “select class of marks” to which
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`the FTDA was intended to apply. See Avery Dennison, 189 F.3d at 875 (9th Cir. 1999).
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`5.
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`The Channels of Trade for the Mark’s Goods or Services
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`This factor merely requires the TTAB to define the product or service line
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`or market in which Opposer’s mark is used and is alleged to have become famous.
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`Opposer’s cited trademark applications indicate the only market in which Opposer uses
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`the mark is in the retail furniture business, not a broad spectrum of goods or services.
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`The narrowness of the market in which Opposer’s mark is used therefore weighs against
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`a finding of fame to the general public.
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`6.
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`The Degree of Recognition of the Mark in the Trading Areas and
`Channels of Trade Used by the Mark’s Owner and the Person
`Against Whom the Injunction is Sought
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`Absent
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`information that would show the degree of recognition of
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`Opposer’s mark, there is no evidence to support a conclusion about this factor. However,
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`considering the limited geographic scope of Opposer’s business and use of its mark, this
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`factor is irrelevant for purposes of the analysis of this case.
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`7.
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`The Nature and Extent of Use of the Same or Similar Marks by
`Third Parties
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`For purposes of this factor, courts consider the use of the same or similar
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`marks by third parties in any industry, not just the industry in which the party alleging
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`dilution operates. See Star Markets, 950 F. Supp. at 1035. Extensive third-party use
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`“undermines the inherent distinctiveness” of the mark of the party alleging dilution and
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`weighs against a finding of fame. Michael Caruso & Co. v. Estefan Enterprises, Inc.,
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`994 F. Supp. 1454, 1463 (S.D. Fla. 1998).
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`Third-party U.S. trademark registrations that include the term “finger” or a
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`variation thereof are voluminous. More than 250 registered marks at the PTO owned by
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`parties other than Opposer incorporate the portion of Opposer’s mark it alleges is famous,
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`namely, the term “finger”. Moreover, two of the registrations were for marks used in
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`connection with furniture.
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`(Dawson Decl. 1] 14 at Ex. G, Pgs. 86, 171); see supra at 10.
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`In addition, a third party in Ohio has adopted the trade name “Nine Finger Furniture
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`Company.” (Dawson Decl. 1] 10 at Ex. E, Pg. 27). Such extensive third-party use of the
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`same or similar mark, particularly in connection with overlapping goods or services,
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`overwhelmingly favors a finding that Opposer’s mark and trade name are not famous.
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`8.
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`Whether the Mark is Registered at the PTO
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`This
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`factor
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`too favors Applicant because when Opposer
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`filed its
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`Opposition, it did not have a registration for any of its cited marks. The registration of
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`Opposer’s cited marks post-dates the filing of this opposition proceeding. Moreover,
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`Opposer has abandoned the application for one of the marks cited in its Opposition and
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`been unable to produce satisfactory proof of use of another to permit the application to
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`register.
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`E.
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`Opposer Cannot Establish Niche Market Fame
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`The TTAB in Toro accepted, without deciding, that a mark could achieve
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`fame in