Yamaha Intern. Corp. v. Hoshino Gakki Co., Ltd.

Decision Date07 March 1988
Docket NumberNo. 87-1128,87-1128
Citation6 USPQ2d 1001,840 F.2d 1572
Parties, 6 U.S.P.Q.2d 1001 YAMAHA INTERNATIONAL CORPORATION, Appellant, v. HOSHINO GAKKI CO., LTD., assignee of Hoshino Gakki Ten Inc., Appellee.
CourtU.S. Court of Appeals — Federal Circuit

Robert D. Hornbaker, Freilich, Hornbaker, Rosen & Fernandez, Los Angeles, Cal., for appellant.

Charles L. Gholz, Oblon, Fisher, Spivak, McClelland & Maier, P.C., Arlington, Va., for appellee.

Before MARKEY, Chief Judge, BENNETT, Senior Circuit Judge, and NEWMAN, Circuit Judge.

BENNETT, Senior Circuit Judge.

Yamaha International Corporation (Yamaha) appeals from a decision of the United States Patent and Trademark Office (PTO) Trademark Trial and Appeal Board (TTAB or board) in Yamaha International Corp. v. Hoshino Gakki Co., 231 USPQ 926 (TTAB 1986), dismissing Opposition Nos. 70,401 and 70,402 filed by Yamaha. We affirm.

BACKGROUND

Applicant-appellee Hoshino Gakki Co., Ltd. (Hoshino), makes guitars in connection with which it employs its registered trademark "IBANEZ." On June 13, 1979, Hoshino filed Application Serial Nos. 219,414 and 219,435, seeking to register as trademarks two guitar peg head configurations/designs for electric and acoustic guitars. See 231 USPQ at 927 & n. 2. In May 1984, Hoshino amended its applications to seek registration on the basis of acquired distinctiveness (secondary meaning) under Section 2(f) of the Lanham Act, 15 U.S.C. Sec. 1052(f). 1

In September 1984, the PTO published the marks in the Official Gazette for opposition in accordance with 15 U.S.C. Sec. 1062(a). See also 37 C.F.R. Sec. 2.80. In November 1984, Yamaha, a competing guitar maker, filed two essentially identical notices of opposition in accordance with 15 U.S.C. Sec. 1063, 2 alleging, inter alia, that

the guitar peg head designs sought to be registered as trademarks had not become distinctive of Hoshino's goods within the meaning of Section 2(f). Hoshino denied Yamaha's allegations. In May 1985, the board consolidated the proceedings in the two oppositions.

The Board's Opinion

In its opinion, the board first considered and rejected various evidentiary objections from Yamaha contesting the admissibility of Hoshino's evidence. 231 USPQ at 927-930. After concluding that Yamaha had standing to challenge registration of Hoshino's proposed marks, the board outlined its views on the appropriate "burdens of proof" to be used in an opposition under Section 2(f).

In an opposition, said the board, the burden of proof rests on the opposer as the plaintiff party, and Yamaha therefore had the burden of showing, at least prima facie, that Hoshino's marks had not become distinctive under Section 2(f). 231 USPQ at 931-32 & n. 12. In rejecting Yamaha's argument that Hoshino had the burden of proving acquired distinctiveness, the board said Hoshino had already done so to the PTO's satisfaction in ex parte proceedings. Id. at 931-32. In the board's view, Yamaha's evidence that Hoshino's competitors made guitar heads "like" those Hoshino sought to register was deemed insufficient to establish a prima facie case of no acquired distinctiveness, especially in the absence of assertions of confusing similarity between the guitar heads of the competitors and those of Hoshino. Id. at 932-33. Therefore, said the board, Yamaha had not made out "its prima facie case that applicant's design marks had not acquired secondary meaning and the requisite distinctiveness to warrant registration." Id. at 933.

The board alternatively held that "even if the burden of proof has been transferred to applicant in this proceeding, applicant's evidence sustains its Section 2(f) claim." Id. at 935. The board made its alternative holding "[i]n the interest of judicial economy and in the event that it may be subsequently determined [i.e., on appeal] that the opposer established, by its record, a prima facie case that applicant's head stock designs had not acquired sufficient distinctiveness to function as trademarks or indications of source." Id. at 933. In the board's view, the "body of evidence, taken cumulatively, [was] adequate to sustain applicant's burden of establishing that its peg head designs have acquired the requisite secondary meaning for registration." Id. at 933-34.

The board dismissed Yamaha's oppositions on October 9, 1986.

ISSUE

Whether the board erred in dismissing Yamaha's oppositions.

OPINION

At the outset, we observe that the board's discussion of the applicant's and the opposer's "burdens of proof," and of the "shifting" of those burdens as the various stages of an opposition under Section 2(f) unfold, is itself burdened with an inexactness that has helped to mask the relevant issues in this appeal. Nevertheless, the function of this court on appeals from the TTAB is to review the board's decision, not its reasoning. Ilco Corp. v. Ideal Security Hardware Corp., 527 F.2d 1221, 1225, 188 USPQ 485, 488 (CCPA 1976). See 15 U.S.C. Sec. 1071(a)(4); see also Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1540, 218 USPQ 871, 880 (Fed.Cir.1983) ("[w]e sit to review judgments, not opinions"). Therefore, it is that task to which we now turn.

I. The Opposition Proceeding

The PTO rules governing the procedure in inter partes proceedings such as oppositions are adapted from the Federal Rules, with modifications appropriate to the administrative process. Thus, the Federal Rules of Civil Procedure are authorized to be followed "wherever applicable and appropriate," 37 C.F.R. Sec. 2.116(a), are used to govern discovery matters "except as otherwise provided," 37 C.F.R. Sec. 2.120, and are applied to evidentiary matters in conjunction with the Federal Rules of Evidence, 37 C.F.R. Sec. 2.122(a). The opposer in any opposition proceeding is in the position of plaintiff, and the applicant is in the position of defendant. 37 C.F.R. Sec. 2.116(b).

An opposition proceeding is initiated by a simple statement, comparable to the filing of a complaint:

37 C.F.R. Sec. 2.104 Contents of opposition.

The opposition must set forth a short and plain statement showing how the opposer would be damaged by the registration of the opposed mark and state the grounds for opposition.

The applicant is entitled to file an answer, and to present affirmative defenses and counterclaims. 37 C.F.R. Sec. 2.114(a), (b). In fact, the opposition and the answer correspond to the complaint and answer in a court proceeding, the assignment of testimony periods corresponds to setting a case for trial, and the submission of evidence during the assigned testimony periods corresponds to the trial in court proceedings. 37 C.F.R. Sec. 2.116(c), (d), (e). Briefs are filed by both parties, and the plaintiff party can file a reply brief. 37 C.F.R. Sec. 2.128. The oral hearing, following the briefing, corresponds to the oral summation in court proceedings. 37 C.F.R. Sec. 2.116(f).

II. Opposer's Burden for Prima Facie Case under Section 2(f)

Hoshino, seeking to register its configurations/designs under Section 2(f), bore the burden of establishing acquired distinctiveness in ex parte proceedings before the PTO. E.g., In re Meyer & Wenthe, Inc., 267 F.2d 945, 949, 122 USPQ 372, 374, 46 CCPA 919 (1959). When registration is sought under Section 2(f), the board publishes the mark for opposition when it is satisfied that the applicant has presented a prima facie case of acquired distinctiveness. In re Capital Formation Counselors, Inc., 219 USPQ 916, 919 (TTAB 1983) ("an applicant need not conclusively establish distinctiveness but need only establish a prima facie case" in order to warrant publication of mark for opposition); In re Industrial Washing Machine Corp., 201 USPQ 953, 956 (TTAB 1979) ("[a] prima facie showing of distinctiveness is all that is necessary for the publication of the application"); see also 15 U.S.C. Secs. 1052(f), 1062(a). If no opposition is filed following publication, the proposed mark will be registered. 37 C.F.R. Sec. 2.81.

However, in the opposition proceeding at issue here, Yamaha argues the board erred in requiring it, as the opposer, to prove that Hoshino's marks had not acquired distinctiveness. We agree with Yamaha that the sole issue in this opposition is whether Hoshino did or did not prove acquired distinctiveness. Although the distinction between the two "burdens" was not clearly outlined by the board in its opinion, we do not believe that the board required Yamaha to "prove" a lack of acquired distinctiveness. Whatever may be said of "burdens," it appears to us that one opposing a Section 2(f) registration published for opposition on the basis of that section must have at least the initial burden of challenging or rebutting the applicant's evidence of distinctiveness made of record during prosecution which led to publication of the proposed mark.

An opposer to an application submitted under Section 2(f) sufficiently meets its initial burden if it produces sufficient evidence or argument whereby, on the entire record then before the board, the board could conclude that the applicant has not met its ultimate burden of showing acquired distinctiveness. Cf. Sanyo Watch Co. v. Sanyo Electric Co., 691 F.2d 1019, 1022, 215 USPQ 833, 834 (Fed.Cir.1982) (opposer's prima facie case requires "facts from which the board might reasonably conclude" that applicant was not entitled to the registration sought). Thus, the board's requirement that Yamaha establish a prima facie case of no acquired distinctiveness does not require Yamaha to "prove" anything, but simply requires Yamaha to present sufficient evidence or argument on which the board could reasonably conclude that Hoshino had not proven at least one of the elements necessary to obtain a trademark registration.

Nevertheless, citing R.J. Reynolds Tobacco Co. v. Philip Morris Inc., 210 USPQ 34, 41 (TTAB 1981), Anchor Hocking Glass Corp. v. Corning Glass Works, 162 USPQ 288, 291 (TTAB 1969), and Federal Glass Co. v. Corning Glass Works, 162 USPQ 279,...

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