Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 COLONIAL ARMS CORPORATION
v.
TRULOCK FIREARMS, INC.
Opposition No. 75,699
December 11, 1987
Stanley C. Spooner for Colonial Arms Corporation
Shlesinger, Arkwright & Garvey for Trulock Firearms, Inc.
By the Board:
J.D. Sams, J.E. Rice and E.J. Seeherman
Members
Colonial Arms Corporation has opposed the application of Trulock Firearms, Inc. to register "TRU-CHOKE" for screw-in chokes for firearms. [FN1] As grounds for opposition, opposer alleges that since prior to December 1986, opposer has used the trademark "TRUE-TUBE" in connection with the manufacture and sale of replacement choke tubes for shotguns; that "TRU" is a common descriptive term applied to firearms and "CHOKE" is a generic term for "an attachment that allows variation of muzzle constriction of a shotgun"; that "CHOKE" has been used as a generic term by manufacturers and vendors of firearms since prior to September 7, 1983, applicant's claimed date of first use, and "TRU" has been used as a descriptive term by opposer and others prior to that date; that registration of "TRU-CHOKE" would restrain the public's use of the descriptive term "TRU" or "TRUE" and the generic term "CHOKE", the combination meaning a shotgun muzzle constrictor which is accurate; and that opposer would be damaged by such registration since it could raise doubts about opposer's right to use "TRUE" or "TRU" in its mark "TRU-TUBE" (sic). [FN2]
In its answer, applicant has admitted that "CHOKE" is generic, and that the issuance to it of a registration for "TRU-CHOKE" would place applicant in a position to raise doubts as to opposer's right to use the mark "TRU-TUBE" (sic), and has denied the remaining allegations in the notice of opposition. Applicant also raised as an affirmative defense that opposer is estopped from denying the registrability of "TRU-CHOKE" since opposer is asserting its own mark "TRU-TUBE" (sic) for essentially identical goods.
This case now comes up on opposer's motion for summary judgment. Opposer argues that summary judgment is appropriate because there is no genuine issue of material fact relating to the question of whether "TRU-CHOKE" is descriptive, and that it is entitled to judgment as a matter of law.
Opposer's position is that "CHOKE" is generic for the goods listed in the application, that the misspelling "TRUE", is the equivalent of "TRU", and that "TRUE" is descriptive in the firearms field. In support of this position, opposer has submitted a letter from applicant's attorney to opposer's attorney wherein applicant objected to the use of the prefix "TRUE" or "TRU". Opposer has also submitted dictionary definitions of the word "TRUE". Opposer characterizes these definitions as meaning "accurate", and claims that the dictionary example of "the bullet flew straight and true" evidences common usage of the word "TRUE" in the firearms field. Noting that applicant has admitted in its answer that "CHOKE" is generic, opposer asserts that "TRU-CHOKE" is a combination of a descriptive term and a generic term, and that it describes the product to which it refers, i.e., an accurate or true shot pattern limiting device or choke.
*2 Applicant has opposed the motion, arguing that there are genuine issues of material fact with regard to the significance of "TRU-CHOKE" to the public, the suggestiveness of "TRU" as applied to the goods, and opposer's intent in subsequently adopting the mark "TRUE-TUBE". Applicant has submitted a declaration from its president which has detailed applicant's advertising and sales of screw-in chokes under the mark "TRU-CHOKE"; an acknowledgment by a vendor of chokes that "the TRUCHOKE trademark is a trademark of Trulock Tool Co."; [FN3] and third-party registrations for marks containing the word or prefix "TRUE" or "TRU" in the firearms field in which exclusive rights to "TRUE" or "TRU" have not been disclaimed.
Opposer has moved for leave to file and has submitted a reply brief to applicant's opposition to the summary judgment motion. [FN4] In its reply, opposer has admitted there may well be many factual issues which are in dispute, including recognition of "TRU-CHOKE" as an indicator of origin by the consuming public, suggestiveness of the prefix "TRU" as applied to firearm goods, and the intent of the opposer in adopting its "alleged tru-tube mark". However, opposer asserts that these issues are irrelevant to the issue of descriptiveness, and that this is the only issue which is the subject of the summary judgment motion.
The granting of a motion for summary judgment is appropriate where there exists no genuine dispute as to as any material fact and where the moving party is entitled to judgment as a matter of law. Bongrain International v. Moquet, Ltd., 230 USPQ 626 (TTAB 1986), aff'd. unpub. opin., App. No. 86-1487 (Fed.Cir. Jan. 16, 1987); Buffett v. Chi-Chi's, Inc., 226 USPQ 428, (TTAB 1985).
We agree with applicant that summary judgment is not appropriate in this case. Opposer itself, as noted above, has conceded that there may be genuine issues of fact. We find that genuine issues exist as to the significance of "TRUE" or "TRU" in the firearms field, the significance to the public of the term "TRU-CHOKE" in its entirety and not as separate elements, and the significance of "TRUE" or "TRU" to opposer when it subsequently adopted the term "TRUE TUBE" for its screw-in chokes. Contrary to opposer's characterization, we find that such issues are directly relevant to our determination of whether or not "TRU-CHOKE" is merely descriptive.
Moreover, we disagree with opposer's statement that because the application was not made pursuant to the provisions of Section 2(f), the question of whether the term has acquired distinctiveness is not in issue. This factual question is relevant to our determination of the descriptiveness of the mark, and applicant should not be deprived of an opportunity to show such distinctiveness in response to opposer's charge of descriptiveness simply because its application was not published under Section 2(f). [FN5] This would unduly penalize an applicant whose application was accepted by the Examining Attorney without the need to invoke Section 2(f).
*3 Accordingly, opposer's motion for summary judgment is denied. Trial dates, beginning with the time for discovery, are reset as indicated in the accompanying trial order.
J. D. Sams
J. E. Rice
E. J. Seeherman
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 616,859, filed August 26, 1986, and claiming a date of first use and use in commerce on September 7, 1983.
FN2. In a subsequent paper, opposer indicated that its mark should have been identified here as "TRUE-TUBE", just as it was in paragraph 2 of the notice of opposition.
FN3. The declaration indicates that this acknowledgment was in response to a "cease and desist" letter written by applicant's attorney on applicant's behalf, although in all other papers applicant is described as Trulock Firearms, Inc., not Trulock Tool Co.
FN4. Since applicant has not objected to this request, we will treat the motion as conceded and will consider this paper.
FN5. If applicant wishes to plead, as an additional affirmative defense, that its mark has acquired distinctiveness, it should file an amended answer asserting that defense. It should be noted that the claim of distinctiveness can be pleaded alternatively, i.e. applicant may assert that "TRUE-CHOKE" is not merely descriptive and that in any event it has acquired distinctiveness.