Precedential No. 7: Opposer Fails to Prove Distinctiveness of its Common Law Mark, Loses 2d Opposition on Priority

In a fact-intensive, yet precedential ruling, the Board rendered a split decision in this opposition to registration of the mark PCS for woodworking stations that included table saws and other components. Opposer SawStop alleged lack of bona fide intent and likelihood of confusion with its identical common law mark for table saws. The Board dismissed the Section 2(d) claim for failure to prove priority and sustained in part the lack-of-bona-fide-intent claim. SawStop, LLC v. Felder KG, 2025 U.S.P.Q.2d 1063 (TTAB 2025) [precedential] (Opinion by Judge Robert Lavache).

Priority: Applicant Felder AG relied on the foreign filing date of its European Union application - December 13, 2018 - as the priority date for the opposed application, a request for extension of protection under the Madrid Protocol. See Lanham Act Section 67, 15 U.S.C. § 1141g. In order to prevail on its Section 2(d) claim, Opposer SawStop had to prove that it used the term PCS as a distinctive source identifier in commerce prior to Felder AG's priority date. See Otto Roth, 640 F.2d at 1320; DowntownDC Bus. Improvement Dist. v. Clarke, Opp. No. 91275100, 2024 TTAB LEXIS 412, at *38 (TTAB 2024) (citing Araujo v. Framboise Holdings Inc., 99 F.4th 1377, 1380 (Fed. Cir. 2024)). 

Felder acknowledged that SawStop began using the PCS designation in connection with professional cabinet saws in 2009, but contended that SawStop's use prior to December 13, 2018, was not trademark use and thus did not establish its priority.

Under the rule of Otto Roth, a party opposing registration of a trademark due to a likelihood of confusion with his own unregistered term cannot prevail unless he shows that his term is distinctive of his goods, whether inherently or through the acquisition of secondary meaning or through “whatever other type of use may have developed a trade identity.

Felder maintained that, at least up until Felder's priority date, SawStop's use of PCS "was almost purely as part of an alphanumeric model designation or side by side with the generic indicator, i.e., professional cabinet saw," and that any "consumer-facing" use of PCS was "de minimis usage of descriptive matter that could not and did not yield secondary meaning within the consumer consciousness.”

The Board observed that “[i]t is well settled that terms used merely as model, style, or grade designations . . . do not serve to identify and distinguish one party’s goods from similar goods manufactured and/or sold by others.” In re Dana Corp., Ser. No. 73655454, 1989 TTAB LEXIS 34, at *2 (TTAB 1989) (emphasis added).

The Board first found that that the designation PCS was not inherently distinctive. Examining SawStop's evidence in detail, the Board concluded that, even when used in a manner other than as a part of a model designation, PCS "would be viewed merely as an abbreviation of the descriptive phrase 'professional cabinet saw' and not as a trademark."

Opposer’s evidence of use of PCS prior to Applicant’s December 13, 2018, constructive date of first use, considered as a whole, shows PCS being used solely as a model designation or otherwise in a nondistinctive manner. That is, it does not establish use of PCS that consumers would perceive as an inherently distinctive source identifier in connection with table saws and table saws with active injury mitigation technology.

As to acquired distinctiveness, the Board observed that SawStop bore a "relatively heavy burden, because model designations generally serve a descriptive or informational purpose," and because PCS, "as used by Opposer, is shorthand for the merely descriptive phrase 'professional cabinet saw,' is frequently paired with other informational matter (e.g., horsepower designations, part names), and would be perceived as indicating a type or model of saw."

Sales and advertising figures submitted by SawStop did not distinguish between pre- and post-2018 data and therefore were not probative. In any case, the mark "SawStop" consistently appeared along with the PCS designation, and so "it is just as likely that Opposer’s promotional and marketing expenditures induced and increased the recognition of the 'SawStop' mark, rather than the PCS designation." In media references, PCS appeared "either as an abbreviation for 'professional cabinet saw' or to identify the particular model of SawStop saw being discussed." Similarly, communications from consumers "by and large ... show PCS being used ... to designate a particular model of SawStop saw (i.e., the professional cabinet saw) or otherwise to differentiate between Opposer’s saw types (i.e., 'ICS' vs. 'PCS')."

In sum, while the evidence of record shows that Opposer has used the PCS designation in some fashion since at least 2008 and appears to have had some success in selling saws associated with the PCS designation and in garnering unsolicited media coverage of its saws, Opposer has not satisfied its burden to show that consumers of Opposer’s saws came to view PCS as an identifier of source for the saws prior to Applicant’s constructive date of first use

Lack of Bona Fide Intent: A request for extension of protection under Section 66(a) of the Lanham Act includes "a declaration of bona fide intention to use the mark in commerce." The case law regarding lack of bona fide intent, developed largely in the Section 1(b) context, is applicable to determinations of bona fide intent under Section 66(a). See Nestle, 2020 TTAB LEXIS 267, at *28.

SawStop had the initial burden to present a prima facie case of lack of bona fide intent. The absence of any documentary evidence regarding such intent on Felder's part was sufficient to shift the burden to Felder to come forward with evidence to overcome SawStop's prima facie case. See Nestle, 2020 TTAB LEXIS 267, at *29; Rsch. in Motion Ltd. v. NBOR Corp., Opp. No. 91179284, 2009 TTAB LEXIS 673, at *12 (TTAB 2009) (citing Commodore Elecs., 1993 TTAB LEXIS 6, at *13).

Felder failed to provide the required evidence as to many of the items within its identification of goods. However, a lack of bona fide intent as to some but not all of the goods does not render the application void in its entirety, but rather results in deletion of those goods for which a bona fide intent was not established. Monster Energy Co. v. Tom & Martha LLC, Opp. No. 91250710, 2021 TTAB LEXIS 458, at *16 (TTAB 2021)."

As to the remaining goods, Felder's witness testified that its saws were shown at a trade show in 2019 under the mark PCS, that it took sales deposits, and it produced a Facebook video showing of a person operating a table saw with the caption "Don’t cut yourself – PCS system from Felder Group." Orders for some of its systems were taken in 2021.

The Board noted that "[t]he bar for showing a bona fide intent is not high." M.Z. Berger, 787 F.3d at 1378. Actions taken after the filing of an application may corroborate the applicant's bona fide intent as of its filing date. See, e.g., Lane Ltd. v. Jackson Int’l Trading Co., Opp. No. 91092025, 1994 TTAB LEXIS 41, at *19 (TTAB 1994).

Here, the record establishes that Applicant began marketing its PCS table saw systems shortly after filing its application, promoted its PCS mark at a trade show later that same year, began to take sales deposits for saws with PCS technology, and ultimately sold those saws to consumers in the U.S. This evidence corroborates that Applicant had the requisite bona fide intent, at least as to table saws, at the time Applicant filed its application.

And so, the Board sustained in part and dismissed in part SawStop's lack of bona fide intent claim.

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TTABlogger comment: Now what? Felder has priority. Will it try to stop SawStop's use of the PCS mark? 

PS: the opinion would be much easier to read if the Board referred to the parties by their names, rather than "Opposer" and "Applicant."

Text Copyright John L. Welch 2025.