Tuesday, October 04, 2011

Finding PAVEWAY Generic for Laser-Guided Bombs, TTAB Sustains Lockheed Opposition Versus Raytheon

In a 61-page opinion, the Board sustained Lockheed's opposition to Raytheon's applications to register PAVEWAY for laser-guided bombs and bomb kits, on the ground of genericness. The Board ruled that the relevant purchasing public - the U.S. Air Force and Navy and the defense ministries of friendly foreign governments - understands the word "Paveway" to be a generic reference for a type of laser-guided bomb. Lockheed Martin Corporation v. Raytheon Company, Oppositions Nos. 91167189 and 91174512 (September 27, 2011) [not precedential].

The Board first observed that this case "was a good candidate for the Board's ACR procedure," since it involved "no real dispute about the operative facts.." It also expressed its unhappiness, once again, at the over-designation of documents as confidential - thwarting the intention that submissions to the Board be publicly available and making it "more difficult to make findings of fact, apply the facts to the law, and write decisions that make sense when the facts in evidence may not be discussed." The Board proceeded to "treat as confidential only the testimony and evidence that was appropriately designated as confidential."

Turning to the substantive issues, the Board began by finding the genus of the goods to be adequately defined by Raytheon's identification of goods: laser-guided bombs and laser-guided bomb kits. The question, then, was whether the relevant public understands PAVEWAY to refer to the category or class of goods at issue.

Lockheed submitted affidavits from purchasing officials, documents showing use of the term by the Air Force and Navy, deposition testimony, printed publications and website pages, and a paper published by Raytheon, showing that "'Paveway' is the generic or common name for a specific type of laser guided bomb."

The U.S. Air Force and Navy use the term “Paveway” to identify products produced by both parties. Therefore, relevant consumers use the word “Paveway” to identify a type of laser guided bomb. The above-noted evidence unequivocally demonstrates that the relevant consumers use and understand “Paveway” to mean a type of laser guided bomb.

Raytheon contended that PAVEWAY is not generic because:

(A) Applicant has used PAVEWAY as a trademark;

(B) The media uses PAVEWAY as a trademark;

(C) Opposer’s use of PAVEWAY has caused confusion;

(D) Applicant has enforced its PAVEWAY trademark rights;

(E) The government recognizes applicant’s trademark rights;

(F) There is no competitive need for opposer to use PAVEWAY;

(G) The defense industry recognizes PAVEWAY as applicant’s trademark; and

(H) Opposer’s position in this proceeding is inconsistent with opposer’s previous attempts to register military terms.

The Board made the following observations in rejecting Raytheon's arguments.

(A) Raytheon's intent to use the word as a trademark is not the issue. The relevant consumers do not view PAVEWAY as a source indicator.

(B) The evidence did not support this argument. Although the news media refers to the generic name of the goods as "laser guided bombs," there can be more than one generic name for a product."

(C) None of the customers experiencing the confusion testified that they thought PAVEWAY was a trademark and identified a single source. Moreover, it is not clear that the confusion was trademark confusion or product confusion.

This is exactly the problem that arises when a generic term is used to “identify” a product. If a customer requests a pencil, the customer may get any old pencil, made by any company. To get a specific pencil, the customer has to use a trademark (e.g., I’ll take the Eberhard-Faber 5111, please.) In fact this kind of confusion seems to suggest that PAVEWAY is actually not capable of distinguishing between these two company’s products.

In sum, the Board found the evidence to be ambiguous and entitled to little weight.

(D) The Board found Raytheon's testimony regarding enforcement to be "vague and evasive" and therefore "unpersuasive."

(E) Noting one instance in which the government "arguably recognized 'Paveway' as a trademark," the Board pointed out that subsequent documents show the government using the term "to identify a type of laser guided bomb."

(F) To the extent that competitor need is even relevant, the only other competitor qualified to make this type of product is Lockheed,who uses "Paveway" as a generic term" and thus shows a need to do so."

(G) Raytheon pointed to three declarations from defense contractor employees stating that they "associate PAVEWAY as applicant's trademark," but the Board found these statements not as probative as the declarations from customers (an Air Force employee and a broker for foreign military purchasers).

(H) Although Lockheed's statements in previous applications may be admissible as admissions against interest, its opinions do not "relieve the decision maker of the burden of reaching his own ultimate conclusion on the entire record." Lockheed's previous positions regarding other marks do not detract materially from its position here "because the primary issue is how the relevant consumer perceives the term under the facts of record in this proceeding."

And so the Board sustained the opposition.

TTABlog comment: The oral argument in this case was held at Northeastern University School of Law in Boston on April 29, 2011. Many in attendance have told me that they were impressed with the entire proceeding: the active interest of the judges, the civility and competence of the attorneys, and the attire of yours truly. Well, actually, not the last one.

Pamela Chestek; John L. Welch; Judges David Mermelstein, Thomas Wellington, and Marc Bergsman; Prof. Susan Barbieri Montgomery

Text Copyright John L. Welch 2011.


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