Hoover Co v. Royal Appliance Mg. Co.

Citation238 F.3d 1357,57 USPQ2d 1720
Decision Date31 January 2001
Docket NumberNo. 00-1219,00-1219
Parties(Fed. Cir. 2001) THE HOOVER COMPANY, APPELLANT, V. ROYAL APPLIANCE MG. CO., APPELLEE
CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Ray L. Weber, Renner, Kenner, Greive, Bobak, Taylor & Weber, of Akron, Ohio, argued for appellant.

Jude A. Fry, Fay, Sharpe, Fagan, Minnich & McKee, L.L.P., of Cleveland, Ohio, argued for appellee. With him on the brief were Patrick R. Roche, and Sandra M. Koenig.

Before Mayer, Chief Judge, Lourie and Bryson, Circuit Judges.

Mayer, Chief Judge.

The Hoover Company (Hoover) appeals the decision of the United States Patent and Trademark Office Trademark Trial and Appeal Board, Opposition No. 96,834 on Application No. 74/462,460 (December 17, 1999), dismissing Hoover's opposition of Royal Appliance Manufacturing Company's (Royal) registration of the mark "The First Name in Floorcare." We affirm.

Background

On November 23, 1993, Royal filed an application to register "The First Name in Floorcare" on the principal register for "electrical vacuum cleaners for both domestic and industrial use," in class nine. The application included a disclaimer of "Floorcare" apart from the mark as a whole. Royal claimed use of the mark since April 29, 1992, as a part of the Royal logo and on all Royal metal vacuum product cartons.

Hoover began opposition proceedings on November 23, 1994, contending that Royal's mark was likely to cause confusion with Hoover's unregistered mark, "Number One in Floorcare," and that Royal's mark, "The First Name in Floorcare," is deceptive or deceptively misdescriptive. Hoover has used the slogan, "Number One in Floorcare," since the mid-1970's in advertising, point of sale materials and specification sheets. According to surveys in the record below, Hoover has consistently ranked first for brand recognition and market share in the floorcare industry.

The board dismissed Hoover's opposition, concluding that there was no likelihood of confusion under section 2(d) of the Trademark Act. The board found that Hoover's mark was not inherently distinctive and had not acquired distinctiveness, and that Royal's mark is not deceptive or deceptively misdescriptive.

Discussion

Hoover alleged a likelihood of confusion between its unregistered mark, "Number One in Floorcare," with Royal's mark, "The First Name in Floorcare." The Patent and Trademark Office may refuse to register a trademark if it so resembles a mark with priority "as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive." 15 U.S.C. § 1052(d) (1994). "Whether a likelihood of confusion exists is `a question of law based on underlying facts'." In re Dixie Rest., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997) (citation omitted). We review the board's legal conclusions de novo, In re The Boston Beer Co. Ltd. P'ship, 198 F.3d 1370, 1373, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999), and uphold the board's factual findings unless they are unsupported by substantial evidence, On-Line Careline, Inc. v. America Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000).

Hoover, as the party opposing registration on the basis of likelihood of confusion with its own mark, must establish that "Number One in Floorcare" is distinctive of its goods either inherently or through the acquisition of secondary meaning. See Towers v. Advent Software, Inc., 913 F.2d 942, 945, 16 USPQ2d 1039, 1041 (Fed. Cir. 1990). Hoover's attempt on appeal to characterize its slogan as a trade identity does not relieve it of the burden of establishing distinctiveness. See id. at 946, 16 USPQ2d at 1041. "[T]rade identity rights arise when the term is distinctive, either inherently or through the acquisition of secondary meaning." Id.

The issue of inherent distinctiveness is a factual determination made by the board. Cf. Imagineering, Inc. v. Van Klasens, Inc., 53 F.3d 1260, 1263, 34 USPQ2d 1526, 1528 (Fed. Cir. 1995). Hoover argues that the slogan "Number One in Floorcare" is inherently distinctive because it uniquely identifies a single source, the number one ranked source of floorcare goods, which Hoover alleges itself to be. No others, according to Hoover, can use the mark, "Number One in Floorcare," with equal truth.

Substantial evidence, however, supports the board's finding that "Number One in Floorcare" is a generally laudatory phrase, and thus is not inherently distinctive. Hoover's Vice President of Marketing confirmed the self-laudatory nature of the slogan. "Marks that are merely laudatory and descriptive of the alleged merit of a product are also regarded as being descriptive. . . . Self-laudatory or puffing marks are regarded as a condensed form of describing the character or quality of the goods." Boston Beer, 198 F.3d at 1373, 53 USPQ2d 1056, 1058 (citing 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 11:17 (4th ed. 1996)).

Furthermore, descriptive terms are in the public domain and should be free for use by all who can truthfully employ them to describe their goods. See Estate of P.D. Beckwith, Inc. v. Comm'r of Patents, 252 U.S. 538, 543-44 (1920). However unlikely, Hoover could fall from the number one ranking in one or more of the numerous categories (e.g., innovation, brand awareness, purchase intent, loyalty, market share), that it suggests render it "Number One in Floorcare." Because the "number one" source in each category could change at any time, the laudatory phrase of "Number One" does not necessarily indicate a single source. The new "number one" source should be free to "truthfully employ" the descriptive term "Number One" to describe its goods as well. See id. Therefore, substantial evidence supports the board's finding that the mark "Number One in Floorcare" is not inherently distinctive.

A merely descriptive mark may nevertheless acquire distinctiveness or secondary meaning. See Boston Beer, 198 F.3d at 1373, 53 USPQ2d at 1058 (citing In re Bongrain Int'l (Am.) Corp., 894 F.2d 1316, 1317 n.4, 13 USPQ2d 1727, 1728 n.4 (Fed. Cir. 1990)). Under 15 U.S.C. § 1052(f) (1994), a mark has acquired secondary meaning if it has become "distinctive of the applicant's goods in commerce." Whether a mark has acquired distinctiveness is a question of fact. See G.H. Mumm & Cie v. Desnoes & Geddes, Ltd., 917 F.2d 1292, 1294, 16 USPQ2d 1635, 1637 (Fed. Cir. 1990).

Hoover argues that its slogan, "Number One in Floorcare," evolved as a second-hand identity as a consequence of consumer recognition of Hoover's first place position in every recognized category in the floorcare industry. Mere industry rankings, however, do not establish actual use of a slogan for the purpose of acquiring secondary meaning. Hoover presented no evidence showing how consumers actually perceive the slogan and only minimal evidence of the use of the slogan. The board found that Hoover used the slogan in close proximity to its principal trademark, "Hoover": a use more likely to be perceived as a laudatory statement about the goods than as a trademark. Furthermore, Hoover never conducted a consumer brand recognition survey for its "Number One in Floorcare" slogan. Therefore, substantial evidence exists to support the board's finding that the mark, "Number One in Floorcare," did not acquire distinctiveness or secondary meaning....

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