Schmidt v. Quigg

• Decision Date: 20 May 1985
• Docket Number: Civ. A. No. 84-CV-3492-DT.
• Citation: 609 F. Supp. 227
• Parties: Mary J. SCHMIDT, in her capacity as sole Trustee of the Harry J. Hoenselaar Revocable Trust, Plaintiff, v. Donald J. QUIGG, Acting Assistant Secretary in the United States Department of Commerce and Acting Commissioner of Patents and Trademarks, Defendant.
• Court: U.S. District Court — Western District of Michigan

609 F. Supp. 227

Mary J. SCHMIDT, in her capacity as sole Trustee of the Harry J. Hoenselaar Revocable Trust, Plaintiff, v. Donald J. QUIGG, Acting Assistant Secretary in the United States Department of Commerce and Acting Commissioner of Patents and Trademarks, Defendant.

Civ. A. No. 84-CV-3492-DT.

United States District Court, E.D. Michigan, S.D.

May 20, 1985.

John A. Artz, Ronald W. Wangerow, Harness, Dickey & Pierce, Birmingham, Mich., for plaintiff; J. Rodgers Lunsford, William R. Cohrs, Hurt, Richardson, Garner, Todd & Cadenhead, Atlanta, Ga., of counsel.

Karl Overman, Asst. U.S. Atty., Detroit, Mich., for defendant.

MEMORANDUM OPINION

FEIKENS, Chief Judge.

This matter arises out of plaintiff's attempt to register the term "Honey Baked Ham" as a trademark pursuant to the Trademark Act of 1946, 15 U.S.C. § 1051 et seq. Jurisdiction is based on 15 U.S.C. § 1071(b).

Plaintiff, Mary J. Schmidt, is sole trustee of the Harry J. Hoenselaar Revocable Trust which was created October 4, 1973. The trust was created and has its principal place of business in Michigan operating under the name and style, Honey Baked Ham Company ("Company"). Since approximately 1949, the Company has continuously used the term "Honey Baked Ham" on spiral sliced glazed hams. In 1949, the Company's product was distributed out of a single store in Detroit, Michigan; since then, the Company has grown to nearly 100 stores in 23 states. From 1960 to 1985, over $10 million was spent on advertising "Honey Baked Ham," and gross revenue for its stores exceeded $300 million during the same period.

On August 29, 1977, plaintiff filed an application to register the term "Honey Baked Ham" under the provisions of the Trademark Act of 1946, 15 U.S.C. §§ 1051 et seq. On December 6, 1977, the United States Patent and Trademark Office rejected plaintiff's application. Plaintiff responded to the Office Action, and the Patent and Trademark Office again rejected the application on September 28, 1979. The Patent and Trademark Office's refusal was continued on June 15, 1981, and on November 3, 1981, plaintiff appealed the refusal to the Trademark Trial and Appeal Board. That Board affirmed the Patent and Trademark Office's refusal to register on May 31, 1984.

Plaintiff may seek review of a Trademark Trial and Appeal Board final decision in either the United States Court of Appeals for the Federal Circuit or a United States District Court. 15 U.S.C. § 1071(b). An appeal to the Federal Circuit is an appellate review of the Trademark Trial and Appeal Board record. A section 1071(b) review in District Court is different. The District Court proceeding is often called a de novo review because new evidence may be introduced. A more apt description, however, is found in Standard Pressed Steel Co. v. Midwest Chrome Process Co., 418 F.Supp. 485, 489 (N.D.Ill. 1976), in which the court described the standard of review as "unique." See also Gillette Co. v. "42" Products Ltd., 435 F.2d 1114, 1115 (9th Cir.1970). The review is unique because the record below, as well as new matters, may be introduced as evidence. Unlike a de novo proceeding, findings of fact made by the Trademark Trial and Appeal Board are given great weight and are not upset unless new evidence is introduced "which in character and amount carries thorough conviction." American Heritage Life Insurance Co. v. Heritage Life Insurance Co., 494 F.2d 3, 10 (5th Cir.1974); see also Morgan v. Daniels, 153 U.S. 120, 125, 14 S.Ct. 772, 773, 38 L.Ed. 657 (1894). The District Court may also reverse the Trademark Trial and Appeal Board if its decision is not supported by sufficient evidence. See Redken Laboratories, Inc. v. Clairol, Inc., 501 F.2d 1403, 1404 (9th Cir.1974); cf. In re DC Comics, Inc., 689 F.2d 1042, 1054-55 (C.C.P.A.1982) (Judge Nies, concurring) (Trademark Trial and Appeal Board's refusal to register reversed by Court of Claims and Patent Appeals because the Patent and Trademark Office did not meet its burden of proof.)

Not all terms may be registered as trademarks under the Trademark Act of 1946. A common reason for rejecting an application for trademark registration is that the term is too descriptive of the applicant's type of goods. Exclusive use of such a term by the applicant would deprive others of using the term to describe their goods. The United States Court of Appeals for the Sixth Circuit has identified four categories of descriptiveness into which a term may fit:

A term for which trademark protection is claimed will fit somewhere into the spectrum which ranges through (1) generic or common descriptive and (2) merely descriptive to (3) suggestive and (4) arbitrary or fanciful.

A generic or common descriptive term is one which is commonly used as the name or description of a kind of good. It cannot become a trademark under any circumstances.

A merely descriptive term specifically describes a characteristic or ingredient of an article. It can, by acquiring a secondary meaning, i.e., becoming distinctive of the applicant's good ..., become a valid trademark.

A suggestive term suggests rather than describes an ingredient or characteristic of the goods and requires an observer to use imagination and perception to determine the nature of the goods. Such a term can be protected without proof of a secondary meaning.

An arbitrary or fanciful term enjoys the same full protection as a suggestive term but is far enough removed from the merely descriptive not to be vulnerable to possible attack as being merely descriptive rather than suggestive.

Induct-o-matic Corp. v. Inductotherm Corp., 747 F.2d 358, 362-63 (6th Cir.1984) (quoting Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75, 79 (7th Cir.1977), cert. denied, 434 U.S. 1025, 98 S.Ct. 751, 54 L.Ed.2d 772 (1978) (citations omitted)).

The Trademark Trial and Appeal Board concluded that the term "Honey Baked Ham" is "an apt or common descriptive name for plaintiff's baked hams to which a honey glaze has been applied." In re Schmidt, 222 U.S.P.Q. 643, 644 (T.T.A.B. 1984). If "Honey Baked Ham" is a common descriptive name, it is not registerable as a trademark. Plaintiff argues that her term is not a common descriptive term, but instead is a merely descriptive term and, thus, is registerable if it has acquired a secondary meaning. It is clear that "Honey Baked Ham" is not suggestive, arbitrary or fanciful, and so the threshold question becomes whether it is a common descriptive term or a merely descriptive term — in other words, does the term fit into Induct-o-matic's category one or category two? If it is determined that "Honey Baked Ham" is a merely descriptive term, I must address the question whether the term has acquired a secondary meaning.

The burden of proving that plaintiff's claimed trademark is a common descriptive term is on defendant. See In re DC Comics, Inc., 689 F.2d at 1054-55 (Judge Nies, concurring); In re American Standard Inc., 223 U.S.P.Q. 353, 355 (T.T. A.B.1984). After careful consideration of the testimony, documents, and the record introduced by the parties, I conclude that defendant clearly has failed to prove that the term "Honey Baked Ham" is "commonly used as the name or description of a kind of good." Induct-o-matic Corp., 747 F.2d at 362.

Defendant introduced virtually no evidence suggesting that "Honey Baked Ham" is a common descriptive term. In fact, defendant's failure to proffer any meaningful evidence suggesting the common use of the term strongly suggests that "Honey Baked Ham" is not a common or generic description. For example, defendant referred to a restaurant menu mentioned in the Christian Science Monitor which listed "Honey Baked Ham" as a selection. Defendant's Exhibit 1, p. 340. This evidence is not persuasive because it is unclear whether the restaurant in question was using the term generically. Defendant offered no proof that the menu listing did not refer to plaintiff's product. Moreover, one isolated instance of the term's use by another party does not demonstrate that it is a common descriptive term.

Defendant also argues that the use of the simile "like honey on a baked ham, ice glazes porch railings ..." in a Washington Post article about job seekers is symptomatic of how aptly descriptive "Honey Baked Ham" is. Defendant's Exhibit 1, p. 339. I find this evidence wholly unsupportive of defendant's position. The simile does not demonstrate that "Honey Baked Ham" is a generic term; it only demonstrates that honey is commonly used in preparing hams. It is undisputed that plaintiff is not the sole supplier of hams glazed with honey, nor does plaintiff deny that the term describes a characteristic or ingredient of her product. The core inquiry is whether "Honey Baked Ham" is a generic or common descriptive name for hams prepared with honey, and defendant's simile evidence does not address the inquiry.

Thus, I find that the term "Honey Baked Ham" is not a common descriptive term, and I hold that the Trademark Trial and ...