Remington Products, Inc. v. North American Philips Corp.
| Decision Date | 03 January 1990 |
| Docket Number | Nos. 89-1511,89-1512,s. 89-1511 |
| Citation | 892 F.2d 1576,13 USPQ2d 1444 |
| Parties | REMINGTON PRODUCTS, INC., Appellants, v. NORTH AMERICAN PHILIPS CORPORATION, Appellee. |
| Court | U.S. Court of Appeals — Federal Circuit |
Frank J. Thompson, Stamford, Conn., argued, for appellants.
Ernestine C. Bartlett, Tarrytown, N.Y., argued, for appellee. With her on the brief was Robert T. Mayer.
Before RICH and NEWMAN, Circuit Judges, and DUMBAULD, Senior District Judge. *
This appeal is from the March 31, 1989, decision (unreported) of the Patent and Trademark Office Trademark Trial and Appeal Board (board) in consolidated cancellation and opposition proceedings involving the term TRAVEL CARE. North American Philips Corporation (Philips or Norelco) 1 holds principal register registration No. 1,340,374 of TRAVEL CARE for "electric travel irons and wrinkle remover/fabric steamers," registered June 11, 1985. On October 2, 1984, Philips filed application serial No. 527,612 to register the same mark for "adaptor plugs, voltage converters, and kits comprising adaptor plugs and voltage converters." Remington Products, Inc. (RPI) filed an opposition to the application and petitioned to cancel the registration. The two proceedings, Opposition No. 72,516 and Cancellation No. 15,201, proceeded separately until they reached the board which decided them in a single opinion, dismissing both because it was of the opinion that TRAVEL CARE is a registrable trademark for the goods enumerated above. RPI brings these two appeals. In this single opinion, we reverse in both.
It is RPI's position in both the opposition and cancellation proceedings that "travel care," a combination of two common words, is descriptive of the products for which it has been, and is sought to be, registered by appellee. More particularly, RPI asserts that the goods are in a category, namely personal care products used by travelers, which "travel care" aptly describes. In support of its position, RPI produced evidence to show that a company which is in competition with Norelco and which appears to have common ownership with RPI, Franzus Company Inc. (Franzus), has extensively used "travel care" in a descriptive or generic sense to describe the very goods for which Norelco has registered, and desires to register again, "travel care" as a trademark, thus securing to itself exclusive rights to the use of the words in connection with the sale of the named goods. RPI further asserts that, like Franzus, it too is in the business of selling the same line of goods, as are others.
At the outset of its opinion, the board held:
Plaintiff's [RPI's] standing is not in issue, since the record shows that the plaintiff markets a line of travel products, including converters and adaptors, travel irons, hair dryers and shavers, and promotes these products as being useful for travel. [Our emphasis.]
The relationship of the goods to travel is clear from the record but a word of explanation may make it clearer. The travel irons and the fabric steamers of Philips' registration are promoted for use by travelers to enable them to dewrinkle and press their clothes, and they are electrically operated. The goods named in the opposed application, adaptor plugs and voltage converters, are intended for use by travelers, enabling them to use all kinds of small electric appliances in foreign countries where the electrical outlets are different from those in this country in size and shape and where the voltage of the power supply at the outlet may differ from that in this country. Therefore, kits containing a variety of plugs and converters are frequently sold. There are several suppliers competing in this market.
Another aspect of these goods is that they all may be said to relate to personal care. One of RPI's witnesses was Robert J. Pape, general manager of the Personal Care Group of the North American Philips Corporation, within the Norelco Consumer Products Company division. Mr. Pape testified that he was the division manager "for travel care and man care products." In further explanation, we refer to the "Full Line Brochure" of Norelco, four editions of which were put in evidence, all dated 1986. The latest or fourth edition is Plaintiff's Exhibit 6. It has 26 pages and is divided up into sections, each with a heading naming different categories of merchandise as follows: Men's Razors, Ladies' Razors, Personal Care, Man Care, Travel Care, Garment Care, Clean Air, Health Care, Kitchen Appliance, Home Products, Home Security, Men's Razor Blister Products, Ladies' Razor Blister Products, and Personal Care Blister Products. The last three items refer to so-called "blister" packaging of the merchandise on cards. The catalog ends with four pages listing accessories for previously shown products. The first twenty pages are divided into nine rectangular spaces in 6 to 8 of which on each page are product illustrations. At the top of almost every rectangle, the trademark NORELCO in association with an "N" logo and an R-in-a-circle, the statutory marking per 15 U.S.C. § 1111, appears. The above listed category headings appear in otherwise empty rectangular spaces in ordinary bold-face type.
In the Travel Care section there are 11 items under the pictures of which are 9 descriptions in solid capital letters containing TRAVEL CARE. A typical example is: "NORELCO TRAVEL CARE COMPACT SPRAY IRON WITH DUAL VOLTAGE FOR WORLDWIDE USE." In neither the heading of the Travel Care products section nor in the individual item headings is there any indication that the words TRAVEL CARE are intended to be a trademark or that they have been registered, in contrast with the frequent indication, by the statutory symbol and otherwise, that NORELCO is a trademark. Furthermore, NORELCO is obviously a coined term, which "travel care" is not. The same statement applies to the second and third editions. 2
RPI produced testimony from the president of Franzus, Mr. Stuart Leventhal, in support of its opposition and petition to cancel, which may be summarized as follows. Franzus sells the same product line as that containing the goods named in Norelco's registration and application and in connection with advertising the same has been using "travel care" in a generic sense concurrently with Norelco's use. Examples are an ad addressed to the trade (Ex. 3), entitled "Traveler's Insurance," containing at the beginning the expression "the most extensive collection of world-class travel care products available today" and at the end "the full line of Franzus travel care products." Some 25,000 copies of this ad were exposed to the industry through publication in two magazines. A mailing piece distributed to 10,000 Franzus' customers, actual and prospective, offering a "travel package" consisting of a hair dryer and a clothes steamer, contains a blaring headline, pictures and brief descriptions of the two items, and this central message: "Get both of these terrific Franzus travel care products for just $12.99." Franzus' 1985 "Dealer Product Guide and Price List" contains on the cover three sentences the second of which refers to the "most extensive collection of world-class travel care products available today." (Ex. 6.) Inside, the Guide uses "travel care" twice in a similar manner in describing items. In excess of 100,000 copies, with a cover letter from the president using the same expression as the cover, were distributed.
Mr. Leventhal also testified that Franzus, as best he understood it, became a subsidiary in 1987 of Remington Technology which was a subsidiary of appellant RPI. He also stated that although Philips (Norelco) was a competitor he had never received from that company a complaint about the use of "travel care" in the descriptive manner explained above.
Mr. William R. Lenahan, vice-president and general manager of Franzus for two months also testified. Prior to holding that position, he had, for two and a half years, been employed by RPI and prior to that he had been a division manager of North American Philips Corporation where he was "responsible for the profit and loss statement on the health products and clean air machines." He testified that the products listed under the heading "Travel Care" in Norelco's catalog were "all products [which] would be used for travel, meaning a consumer's need when they travel." He corroborated the testimony of Mr. Leventhal about the distribution of Franzus literature using "travel care" in a descriptive sense. He also said that their sales representatives and trade journalists used "travel care" as "a classification of a particular product." He confirmed that Franzus was a subsidiary of Remington Technology, Inc., and he believed Remington Products and Remington Technology to be commonly owned by Mr. Victor Kiam. A Remington brochure he identified is in evidence. It identifies Mr. Kiam on its cover as "Victor Kiam America's most recognizable spokesperson" and shows a TV screen with his picture. The brochure features men's and ladies' travel shavers, travel steam irons, converters and adaptor plugs and kits, clocks and other travel needs. Obviously addressed to the trade, the brochure refers to "DYNAMIC TRAVEL CENTER DISPLAYS--'One Stop' shopping for all your customer's travel needs--get more mileage out of your travel ads and promotions!!" It also promises "boundless publicity" through Victor Kiam "Whose previous engagements include: 60 Minutes, Face the Nation, McNeil-Lehrer Report, Wall Street Journal, Merv Griffin, plus scores of others."
A final piece of evidence of the descriptiveness of "travel care" is an article in Housewares magazine, June 21-27, 1985 issue, put in evidence by RPI during the testimony of Norelco's Mr. Pape. The headline of the article, designated a "Housewares Special Report," reads: "Retailers Test Single Travel Care Sections." The gist of the article is that many retailers selling the personal care items used by...
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