Tuesday, February 07, 2012

Precedential No. 3: TTAB Dismisses Petition to Cancel SWISS and SWISS MADE Certification Mark Registrations for Watches

The Board dismissed a petition for cancellation of registrations for SWISS and SWISS MADE as certification marks for watches, clocks, and their component parts and fittings. Petitioner raised five grounds for cancellation: that Respondent permits its marks to be used for purposes other than certification (Section 14(5)(C) of the Lanham Act); that respondent does not control use of its marks (Section 14(5)(A)); that respondent discriminates in refusing to certify (Section 14(5)(D)); that the marks are generic for the goods; and that respondent committed fraud on the USPTO in securing the registrations. Swiss Watch International, Inc. v. Federation of the Swiss Watch Industry, 101 USPQ2d 1731 (TTAB 2012) [precedential].

Section 14(5)(C): Petitioner claimed that Respondent has permitted use of the subject marks for purposes other than certification, because it allowed its members and licensees to use trademarks that include the word SWISS: e.g., WENGER SWISS MILITARY, SWISS ARMY, and DAVOSA SWISS. However, the Board pointed out that, although a certification mark cannot be used as a trademark, this prohibition applies only when the mark is "identical or substantially or virtually identical" to the certification mark. Here, the third-party marks contain additional wording, which "clearly make these marks different from SWISS and from SWISS MADE."

Section 14(5)(A): A registration of a certification mark may be cancelled if the registrant does not control, or is not able to exercise control over, the use of the mark. Petitioner claimed that there is widespread, unauthorized use of SWISS by third parties. However, Respondent's witness testified as to its significant worldwide activities to ensure adherence to its standards. It monitors trademark filings, files oppositions, monitors media usage, buys or requests sample watches, and inspects watches seized by customs authorities.

Petitioner claimed that Respondent should be exercising greater control over its marks. However, absolute control is neither possible nor required; the question is whether Respondent's efforts have been reasonable. The Board found that Respondent's control has been adequate. Although there is some evidence of misuse of SWISS, the instances are not so extensive as to require cancellation of the registrations.

Section 14(5)(D): Petitioner's claim of discrimination was based not on a claim that Respondent refuses to certify goods, but that its standards are wrong and unnecessary. The Board, however, pointed out that the statutory provision "is not dependent upon whether the Board or a third party likes the standards, or sees the need for them." The statute requires only that the Registrant allow any entity that meets the standards (whatever they are) to use the mark.

In sum, Petitioner did not submit any evidence that Registrant refused to permit use of its marks for watches that meet its standards: namely, that the watch movement is made in Switzerland, the watch is "cased up" in Switzerland, and the final inspection takes place in Switzerland.

Genericness: Petitioner asserted that the subject marks are generic because they "primarily signify to the American purchaser the type of watch regardless of regional origin." It pointed to media usage of "Swiss watch" and "Swiss precision" to convey certain qualities associated with accurate watches. The Board, however, found that these uses merely show the renown of Swiss watches, not that the word "Swiss" refers to a type of watch.

The Board recognized that the record evidence included instances of use of the marks that do not conform to Respondent's standards. This small number of uses, however, was not sufficient to show that the marks "refer to any watch that works with precision, as opposed to indicating their geographic origin."

Petitioner also asserted that certification marks that indicate a geographic origin must concern "products tied to the land." The Board was unaware of any case law that supported that position. Here, the manufacture of watches is closely associated with Switzerland, and therefore consumers will understand that the subject marks signify the geographic origin of the goods. They will not regard the marks as generic terms.

Fraud: Finally, Petitioner claimed that Respondent committed fraud when it submitted its standards to the USPTO in a response to an Office action. However, the Board did not find any false statements in the submission, nor did it find any evidence of an intent to deceive the Office.

And so the Board dismissed the petition for cancellation.

Text Copyright John L. Welch.


At 2:43 PM, Anonymous Anonymous said...

What about petitioner's argument that the U.S. Customs laws allow watches to be marked Swiss if that's where the watch movements are made? Isn't this a conflict between the section 1304 marking laws and the certification mark/trademark laws?

At 1:35 PM, Anonymous Koimaster said...

Your argument is without merit. While US Customs laws allow the dial to state the country of Origin, Swiss is not the country of Origin. It is Switzerland and only meets the threshold of Swiss such as an ebauche purchased in Switzerland. Swiss made on the dial means the watch itself has met the bare minimum standards for that term which include case assembly, final inspection anon plus value of 51% made in Switzerland.
The US laws need to be updated to conform to the rest of the world on some of these matters. The loophole created by this allows watch companies to have dials which state Swiss Parts, Swiss Movt, none of which conform to Swiss Law.


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