The USPTO refused to register the term SWISS MILITARY for “watches of Swiss origin,” on the ground of genericness. The Board, however, ruled that the Office failed to submit the requisite “clear evidence” that SWISS MILITARY “will be perceived by the relevant consumers primarily as a common name for watches of Swiss origin.” In re Wenger S.A., Serial No. 85157939 (May 14, 2021) [not precedential] (Opinion by Judge Thomas W. Wellington).
The examining attorney, applicant, and the Board all agreed that the pertinent genus of good is “watches of Swiss origin.” The question, then, was whether the relevant public (purchasers and potential purchasers of said watches), understands SWISS MILITARY to primarily refer to watches of Swiss origin.
The Board found the term “SWISS” to be geographically descriptive term: i.e., Swiss watches are perceived by the relevant public as watches from Switzerland, and not a type of watch that would originate elsewhere. Although a geographic term may be generic for goods (e.g., French dressing, Gruyere cheese), the record did not establish that this is the case with SWISS for watches of Swiss origin. The term “MILITARY,” however, is generic for, and commonly understood by the relevant public to refer to, a type or category of watch.
As to the composite term SWISS MILITARY, there was some evidence of use of the term as part of a brand by third parties. Applicant characterized some of those users as “infringers” and its witness asserted that sales of those watches was “insignificant and insubstantial.” There was also some evidence of use of “Swiss military” not as a brand, but the evidence was limited and “often inconsistent as to what ‘Swiss military’ or ‘Swiss Military’ is identifying.”
The Board noted that it must resolve any reasonable doubt in favor of the applicant “on the theory that any person who believes that he would be damaged by the registration will have an opportunity … to oppose the registration of the mark and to present evidence, usually not present in the ex parte application, to that effect.”
Applicant offered the results of a “Teflon” survey in which 57% of respondents pegged SWISS MILITARY as a brand name, while 35% deemed it generic. The Board saw no flaw in the survey and accorded it some probative value, but observed that it would have reached the same result with or without the survey evidence.
And so, the Board reversed the refusal.
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TTABlogger comment: The Board spent some time comparing this case with the PRETZEL CRISPS case vis-a-vis the “Teflon” survey evidence. There, the record included “significant evidence of third-party use of the term PRETZEL CRISPS prior to the applicant’s adoption,” whereas here that was no such evidence. “In other words, on the record before us, we cannot conclusively label the survey result for the term SWISS MILITARY as merely a reflection of Applicant’s acquisition of rights in a common term that was already in use, i.e., obtaining ‘de facto secondary meaning.'”
Text Copyright John L. Welch 2021.