Glendale Intern. Corp. v. U.S. Patent & Trademark

• Decision Date: 20 June 2005
• Docket Number: No. 1:04CV1082.,1:04CV1082.
• Citation: 374 F.Supp.2d 479
• Court: U.S. District Court — Eastern District of Virginia
• Parties: GLENDALE INTERNATIONAL CORP., Plaintiff, v. U.S. PATENT & TRADEMARK OFFICE, Defendant.

374 F.Supp.2d 479

GLENDALE INTERNATIONAL CORP., Plaintiff, v. U.S. PATENT & TRADEMARK OFFICE, Defendant.

No. 1:04CV1082.

United States District Court, E.D. Virginia, Alexandria Division.

June 20, 2005.

Bruce Alan Tassan, Tassan & Hardison, Arlington, VA, for Plaintiff.

Dennis E. Szybala, Richard Parker, United States Attorney's Office, Alexandria, VA, for Defendant.

MEMORANDUM OPINION

ELLIS, District Judge.

This case involves review of the Trademark Trial and Appeal Board's ("TTAB's") determination that plaintiff's trademark "TITANIUM" is deceptively misdescriptive of its goods and therefore non-registrable on the principal trademark register. At issue on cross-motions for summary judgment is the question whether the TTAB's determination is supported by substantial evidence.

I.¹

Plaintiff Glendale International Corp. is a Canadian corporation that markets recreational vehicles under the trademark "TITANIUM." In November 2000, plaintiff began its multi-year quest to register the TITANIUM mark in the United States by filing an intent-to-use application² with the U.S. Patent & Trademark Office ("PTO"). In its application, plaintiff identified the goods that would bear the TITANIUM mark only as "recreational vehicles." Record at 162. Approximately five months later, in April 2001, the PTO Examining Attorney reviewing plaintiff's application refused registration of the TITANIUM mark on the ground that it was "merely descriptive" of plaintiff's recreational vehicles and therefore non-registrable pursuant to § 2(e)(1) of the Trademark Act.³ As part of her refusal letter, the Examining Attorney attached a definition of titanium taken from The American Heritage Dictionary — "[a] strong, low-density, highly corrosion-resistant, lustrous white metallic element that ... is used to alloy aircraft metals for low weight, strength, and high-temperature stability" — and explained that "[a]bsent any limitations in the identification of goods, it is presumed that the applicant's recreational vehicles are made wholly or in part of titanium," noting in addition a 1996 news article from Tooling & Production magazine that mentions the use of titanium in recreational vehicles. Record at 155, 157. The Examining Attorney also stated, however, that the refusal was not a final action, and invited plaintiff to submit additional evidence and arguments bearing on registrability, including a more detailed description of the goods in issue.

In June 2001, in response to the refusal, plaintiff submitted an amendment to its application clarifying that "applicant's product does not contain any titanium." Record at 142. The amendment also added considerably greater detail to the identification of goods, describing them as:

Recreational vehicles, namely, a vehicular type unit primarily designed as temporary living quarters for recreational camping, travel, or seasonal use that either has its own motive power or is mounted on, or towed by, another vehicle, namely, camping trailers, fifth wheel trailers, motor homes, travel trailers, and truck campers....

Record at 141. Based on these changes, plaintiff contended that the TITANIUM mark was not "merely descriptive" of its goods, and asked that the refusal of registration be withdrawn. In an apparent attempt to preempt refusal on different grounds, plaintiff also contended that the TITANIUM mark was not "[deceptively] misdescriptive" of its goods,⁴ explaining that the mark was unlikely to cause consumers to believe mistakenly that plaintiff's vehicles were made of titanium. To support this point, plaintiff quoted from the dictionary definition cited by the Examining Attorney, suggesting that titanium "is a very expensive metal which is not likely to be used in vehicles of the type identified by [a]pplicant's mark." Record at 142. As a final point, plaintiff noted that the principal trademark register contained many registered trademarks for vehicles that incorporate the words "GOLD" or "SILVER," and encouraged the PTO "to practice consistent and uniform policies" with respect to "metal marks." Record at 142-43.

Based on this response, the Examining Attorney withdrew the initial descriptiveness-based refusal and issued in its place a refusal on grounds of deceptive misdescriptiveness. Applying the two-part test for deceptive misdescriptiveness set forth in In re Quady Winery, Inc., 221 USPQ 1213, 1214 (Trademark Tr. & App.Bd.1984), the Examining Attorney found (i) that the TITANIUM mark misdescribed plaintiff's goods, which did not actually contain titanium, and (ii) that — contrary to plaintiff's claims — consumers were likely to believe the misdescription and incorrectly infer that plaintiff's goods were made, at least in part, of titanium. In support of the latter conclusion, the Examining Attorney again cited the Tooling & Production article, quoting its comment that:

Aluminum-alloy products, such as titanium, are finding their way into automobiles and recreational vehicles. Not only do these materials make vehicles lighter, ... but they also make them more structurally sound.

Record at 126. The Examining Attorney found this comment particularly significant in light of the fact that plaintiff's advertising brochures emphasized that TITANIUM recreational vehicles were composed of "LITE WEIGHT composite materials ... which provide significantly reduced overall Weight." Record at 53, 126. Additionally, the Examining Attorney noted that a NEXIS search had discovered thirteen other newspaper and magazine articles discussing the use of titanium in the automotive industry. Excerpts from the articles, which the Examining Attorney attached to her refusal letter, included such quotes as:

(i) "with titanium, we are talking about comparatively exotic vehicles, not the run-of-the road sorts of things that most of use roll in,"

(ii) "[i]n a typical American-built five- or six-passenger family vehicle ... a total savings of 20 to 30 pounds would be achieved just by converting the four coil springs to titanium,"

(iii) "[f]or years titanium has been used in racing cars,... but now it is creeping into volume-produced cars,"

(iv) "stainless [steel] could face competition from lightweight but super-expensive titanium," and

(v) "Ford has been able to reduce the vehicle's mass drastically by substituting for steel such lightweight materials as ... titanium."

Record at 130-37. Although the majority of the articles came from trade publications like Automotive Manufacturing & Production and American Metal Market, some had appeared in more mainstream periodicals, including The Indianapolis Star, Seattle Weekly, and The Plain Dealer. Based principally on the articles and plaintiff's description of its own product, the Examining Attorney concluded that "consumers are likely to believe that [plaintiff's] goods contain titanium," and thus found the TITANIUM mark deceptively misdescriptive. Record at 126.

In March 2002, plaintiff responded to the second refusal by again amending its application, this time eliminating the reference to vehicles having their "own motive power" in the description of its goods.⁵ As plaintiff explained, its product line was limited to non-motorized recreational vehicles, e.g., trailers, and thus the inclusion of motorized vehicles in the previous identification of goods was an error. Addressing the substance of the second refusal, plaintiff explained that while it "may be true" that some motorized recreational vehicles contained titanium components, there was "no evidence that anyone, anywhere is making products of applicant's type containing titanium." Record at 122. With respect to the Examining Attorney's evidence, plaintiff contended that apart from the Tooling & Production article, "[a]ll the other articles cited by the Examiner relate to prototype vehicles, super exotic vehicles, vehicles with motors, or exotic solar vehicles," and thus there was "no evidence that anyone would believe that a non-motorized truck cabin or a trailer would be made of such an expensive metal." Record at 122. Given this, plaintiff argued, its proposed mark was not deceptively misdescriptive of its goods, and the refusal should be withdrawn.

Two months later, in May 2002, the Examining Attorney issued a final refusal of plaintiff's application maintaining her previous finding of deceptive misdescriptiveness. In response to the arguments set forth in plaintiff's new amendment, the Examining Attorney attached a half-dozen new articles from The Denver Post, The San Antonio Express-News, American Metal Market, and American Machinist, containing, inter alia, the following quotes:

(i) "`The cost of titanium is far too expensive for the Big Three (automakers) to begin accepting the material on all of the automotive models, but we see tremendous opportunities within the luxury and sporting vehicles,' Olin said."

(ii) "The exhaust system is a first for the auto industry in a mass-market vehicle: It uses titanium in the twin mufflers and tailpipes."

(iii) "Timet's more optimistic assessment is that the formation of new division would allow it [to] respond to the emerging market for titanium in vehicles in North America, Europe, and Japan."

(iv) "In street-vehicle applications, titanium is used for engine valves, connecting rods, wheel-rim screws, exhaust systems, and suspension springs."

Record at 103-05. On the basis of these and other, similar excerpts, the Examining Attorney reasoned that "consumers... have seen the increasing use of titanium and titanium components in ... different types of vehicles," and thus that "[i]t would not be a leap in logic for consumers to assume that recreational vehicles `that [are] mounted on or towed by another vehicle' contain titanium components." Record at 92. The Examining Attorney therefore found it "immaterial" that plaintiff's recreational vehicles were non-motorized, but noted that the description of plaintiff's goods included "motor homes," which are...