Monday, August 23, 2010

WYHO? TTAB Tosses Out Feeble Fraud and Mere Descriptiveness Claims

Eighty-sixing Opposer's fraud and mere descriptiveness claims, the Board dismissed this opposition to registration of the mark METAL GEAR for "enclosures for external computer hard drives" [METAL disclaimed]. Opposer Galaxy alleged that Applicant DAT committed fraud when DAT represented that is was the owner of the mark, but Galaxy failed to prove fraud "to the hilt." And its Section 2(e)(1) claim fell well short of the mark. Would You Have Opposed? Galaxy Metal Gear, Inc. v. Direct Access Technology, Inc., Opposition No. 91184213 (August 10, 2010) [not precedential].

Fraud: Galaxy alleged that "[b]oth Opposer and Applicant purchased products with Metal Gear mark from a foreign supplier known as Data Stor [sic], who is the real owner and first user of Metal Gear mark in U.S. Commerce." [SIC!] According to Galaxy, Applicant DAT is a "mere importer and distributor" of the goods.

The Board pointed out that, under Bose, fraud must be proven "to the hilt" with "clear and convincing evidence." Here, however, DAT's principal gave "convincing testimony that he believed and continues to believe that applicant is the owner of the METAL GEAR mark":

Q: At the time the application was filed, do you
believe that Metal Gear was DAT’s trademark?
A: Yes.
Q: How about today?
A: Still is.
Q: Why do you believe it’s DAT’s trademark?
A: Because we came up with the brand name and we contact the manufacturer to manufacture product for us under the brand name.
Q: Who set the specifications for the product?
A: I did. DAT did.
Q: Did you personally come up with the specifications for the product?
A: Yes.

The Board observed that, even if the witness were incorrect in his belief that DAT owned the mark, Galaxy failed to prove a subjective intent to deceive. And so the Board tossed out the fraud claim. [Instead of alleging fraud, thereby invoking the impossibly high Bose standard of proof, why didn't Opposer just allege non-ownership? - ed.]

Mere Descriptiveness: Galaxy relied on dictionary definitions of "metal" and "gear," but its own principal conceded that "there's nothing about the Metal Gear trademark that makes [him] think it describes" an enclosure.

The Board found that "to refer to computer hard drive enclosures as 'gear' is at worst suggestive. The enclosures do not inherently have any 'gears' nor can they simply be described as 'equipment.'"

The Board therefore found that METAL GEAR is suggestive, and it dismissed this Section 2(e)(1) claim.

TTABlog comment: Where did the term "eighty-six" come from? The best explanation I've heard is this: The Lexington Avenue subway line in New York City used to stop at Eighty-Sixth Street. When the train reached Eighty-Sixth, the conductor would toss all sleeping bums off the train. They would be "eighty-sixed."

Text Copyright John L. Welch 2010.


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