Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 NATIONAL AERONAUTICS AND SPACE ADMINISTRATION
v.
BULLY HILL VINEYARDS, INC.
May 21, 1987
Hearing: October 21, 1986
Opposition No. 69,908, to application Serial No. 373,142, filed July 19, 1982.
Robert F. Kempf, Nina M. Lawrence and Robert D. Marchant for National Aeronautics and Space Administration
Stephen L. Baker for Bully Hill Vineyards, Inc.
Before Sams, Rice and Simms
Opinion by Simms
Member
National Aeronautics and Space Administration (NASA) has opposed the application of Bully Hill Vineyards, Inc., a New York corporation, to register the mark SPACE SHUTTLE for wines. [FN1] As grounds for opposition, opposer asserts that it is an agency of the United States government which has been using for several years the term SPACE SHUTTLE as a 'mark/name' for a space transportation system comprising a reusable orbiter, an external tank and two solid rocket boosters; that opposer provides launching services from the SPACE SHUTTLE and facilities for conducting experiments on the SPACE SHUTTLE on a reimbursable basis to users and is using the mark SPACE SHUTTLE in the advertising, sale and rendition of its services; that opposer's activities in the development and operation of the SPACE SHUTTLE and the rendition of services by means of the SPACE SHUTTLE have been widely disseminated in all media prior to applicant's first use of the mark; that the name SPACE SHUTTLE is depicted in official badges and emblems established since 1977 which are used on opposer's hardware, uniforms, publications, posters, etc., to identify opposer's space program and related missions and on commemorative souvenirs; that the name SPACE SHUTTLE has become well and favorably known and is a valuable symbol of opposer's activities and goodwill; that opposer permits certain uses by others of its various badges and emblems in connection with the sale and advertising of services and goods provided that no endorsement by opposer is expressed or implied; that purchasers and persons in the trade will be confused as to the source or origin of applicant's goods by its use of the term SPACE SHUTTLE for wine and will assume that applicant's goods are endorsed by opposer; that applicant's mark does not function to identify applicant's goods and distinguish them from those of others; and that applicant's mark falsely suggests a connection with opposer.
Applicant has denied the essential allegations of the opposition and has asserted as an affirmative defense, among other things, that opposer does not use the term SPACE SHUTTLE as a trademark or service mark or in a manner analogous thereto but rather as a generic term to describe opposer's activities. Applicant also asserts that opposer is barred from asserting its rights herein due to laches, acquiescence and estoppel. [FN2]
The essential issues framed by the pleadings are (1) whether applicant's mark as used on its goods so resembles the term SPACE SHUTTLE previously used by opposer as to be likely to cause confusion under Section 2(d) of the Act, 15 USC § 1052(d), and (2) whether applicant's mark falsely suggests a connection with opposer under Section 2(a) of the Act, 15 USC § 1052(a). For the reasons indicated below, we find that opposer cannot prevail on either of the grounds relied upon.
*2 The record of this case consists of printed publications relied upon by opposer pursuant to notice, opposer's discovery responses and printed publications relied upon by applicant by notice, and testimony (and exhibits) taken by opposer. Both parties filed briefs and appeared at the oral hearing of arguments held in connection with this case. [FN3]
According to Mr. Charles Redmond, the public affairs officer or spokesperson for the SPACE SHUTTLE program, the term SPACE SHUTTLE has been used by NASA in the following manner:
A. [to Q10] It's been in use for over a decade. It was originally the term used to describe a reusable vehicle then in concept and, following the authorization and appropriations for the SPACE SHUTTLE program, it was used to describe the program in total, the vehicles that are involved. There are components to the SPACE SHUTTLE, and, more often of late, to describe them each or element [sic] the orbiter itself as the SPACE SHUTTLE.
The chief of NASA's public affairs office, Robert Schulman, also testified concerning the origin of the term SPACE SHUTTLE, at 53, 54:
Q-55. Why did you pick 'SPACE SHUTTLE'?
A. Because it was the name of the system--our spacecraft and what we do. It was the term that identified most clearly the entire configuration of orbiter, SRBs and ET--eternal--external tank.
MS. LAWRENCE: Maybe you'd better say what SRB is.
MR. SCHULMAN: Oh, I'm sorry. Solid Rocket Boosters. The external tank, which is the large configuration in the center, and then the orbiter that's attached to it, makes up the space transportation system, and the other term being 'SPACE SHUTTLE.' The orbiter itself has its own name, as the other elements have their own names. The entire thing has been referred to and identified by NASA as the SPACE SHUTTLE.
Q-56. Would you say that the space transportation system and SPACE SHUTTLE are then synonomous [sic]?
A. Uh, yes.
Q-57. And the service provided by that space transportation system, is that a Shuttle service between the Earth and space?
A. Yeah, I would say the space transportation system program--you're incorporating there a lot of administrative activity. The word 'SPACE SHUTTLE' is applied more directly to the configuration of the spacecraft and its component parts. So that's what--that's the best definition that divides both those terms.
While the first orbital test flight took place on April 12, 1981, the official badge of opposer's SPACE SHUTTLE program was established by opposer's administrator over four years earlier, on February 18, 1977. The badge consists of the name SPACE SHUTTLE and a representation of the orbiter in a launch configuration. Opposer has issued regulations governing use of the official badge. The regulations permit use by the general public of exact reproductions of the badge on a patch, decal or sticker for articles of wearing apparel and other personal property items, and on a coin, medal, plaque or other commemorative souvenirs. Pursuant to requests, opposer has permitted uses of its emblem on children's clothing, T-shirts and caps, as well as various souvenirs. The regulations also require opposer's approval when the badge is used in conjunction with the advertising of any product or service. Clothing, patches and souvenirs bearing the official badge or the term SPACE SHUTTLE are available to the public in souvenir shops, NASA's visitors centers and museum stores. It should be pointed out, however, that while opposer permits uses of its emblems, opposer acknowledges that it does not control the nature and quality of the goods on which the emblems appear, nor does opposer require submission of the products for approval. Opposer grants no exclusive rights to use its emblems.
*3 Although opposer does not endorse commercial products and services, it does review private sector advertising, including requests to use the term SPACE SHUTTLE in connection with commercial products and services. According to the testimony, opposer does not approve of any such uses that imply NASA's endorsement, and only permits truthful statements regarding a connection with opposer. Opposer has objected, therefore, to uses of the words SHUTTLE and NASA on cameras.
Because applicant took no testimony, we have nothing in the record concerning applicant's use of its mark in connection with wine.
It is opposer's contention that applicant's mark is likely to cause confusion as to source or origin of applicant's goods and that there is a false suggestion of a connection with opposer because the services opposer renders by means of the SPACE SHUTTLE system are well known, because opposer has an official SPACE SHUTTLE emblem which it uses and offers to license to others and because the public will make an association with opposer as a result of seeing applicant's mark on the wine label. While opposer has argued, therefore, that it has superior rights to the designation SPACE SHUTTLE through prior use of the term, this record fully supports applicant's contention that this term is generic as applied to opposer's spacecraft and related activities. Mr. Redmond testified concerning the meaning of the term SPACE SHUTTLE:
Q-47. Are you familiar with the use of the term 'Shuttle' generally in the aerospace industry?
A. Yes. That was part of the process involved in selecting the name 'Shuttle' as part of the SPACE SHUTTLE name. The fact that Eastern and a number of other airlines have used the term 'Shuttle' to indicate reasonably frequent reliable service to and from a particular place.
Q-48. Throughout the testimony, you referred to, for example, space on the Shuttle, the Shuttle orbits the Earth. Do you--what do you mean by 'The Shuttle orbits the Earth'?
A. Well, there are--there have developed--three connotations of the word 'Shuttle.' And it almost depends on context, but 'SPACE SHUTTLE' or 'Shuttle' can refer to the program itself, which, in essence, is a shorthand way of talking about the manned space program. 'SPACE SHUTTLE' can refer to the actual physical configuration of the vehicle which is two solid rockets, the external tank and an orbital vehicle. And, in fact, in our preferred usage, 'SPACE SHUTTLE system,' that's what it refers to, is all four of those components. But, in everyday language, through probably the use of it by the media and by the nation's school teachers, the term 'Shuttle' itself has come to a shorthand term for SPACE SHUTTLE orbiter, which is the actual manned air frame which flies in space and which comes back and lands. So, when I say 'Shuttle,' and I say something like, 'The Shuttle orbits the Earth, 'I am, in fact, referring to an orbiter vehicle, be it Atlantis, Discovery, Challenger or Columbia.
*4 Indeed, opposer acknowledges in its discovery responses (answer to Int. No. 5(b)) that, as early as 1969, the term SPACE SHUTTLE 'was the standard NASA designation for a reusable spacecraft.'
While the United States is the only entity that presently has a reusable space vehicle, both the Soviet Union and France have programs to develop reusable spacecraft. Although the Soviet Union and France do not use the term SPACE SHUTTLE for their programs or their vehicles under development, Mr. Redmond's testimony, at 33-34, is revealing:
Q-54. Both the Russians and the French then have a Shuttle service?
A. They have--well, they have programs to develop these systems. The Soviet program is under development. So far as we know, they've had one test flight of a dummy model. The French program is right now in the throes of trying to coordinate intra-European national funding for it. It competes with a number of other large dollar scientific programs. But the French have indicated that they will go forth, whether they get ESA support or not. So the French have indicated that they will have a manned vehicle Shuttle type available within, say, the next ten years.
Q-55. And they will offer Shuttle services to and from space?
A. They will then--it's believed that they will then begin to offer the same kinds of things that the U.S. Shuttle now offers--to a smaller degree, because their vehicle will be smaller.
Q-56. Would you characterize their services as SPACE SHUTTLE services?
A. Well, not meaning to want to trample on our own toes, we probably would wind up in shorthand terms, characterizing what they would propose as the French Shuttle or French Shuttle services.
Q-57. Or a French SPACE SHUTTLE perhaps?
A. Perhaps French SPACE SHUTTLE.
Also, NASA's public affairs officer has indicated that 'we have called their programs the Soviet Shuttle and the French Shuttle, but they have not.' (Redmond dep., 37) Further, while opposer now tries to distance itself from the descriptive significance of the term 'shuttle', by claiming that the U.S. vehicles are not technically 'shuttles' because they do not go back and forth between the same two points, opposer's answer to Interrogatory No. 31(d) indicates that, 'It is a matter of common knowledge that Opposer operates such a shuttle.'
Opposer's own patent (Patent No. 4,452,412, granted June 5, 1984) also refers to NASA's vehicle as a 'space shuttle,' although NASA now claims that this use was improper and that 'reusable spacecraft' would have been more appropriate.
ABSTRACT
A space shuttle system (11) having an orbiter spacecraft (16) with main rocket engines (43) a large external propellant tank (12), and two solid rocket boosters (13, 14). The propellant tank (12) has a forward pressure vessel (19) for liquid hydrogen and an aft pressure vessel (20) for liquid oxygen. The two solid rocket boosters (13, 14) are joined together by a thrust frame (15) which extends behind the external tank. The thrust of the orbiter's main rocket engines (43) are transmitted to the aft portion of the external tank (12).
****
BACKGROUND ART
*5 The space shuttle is now a proven space transportation system in which space crews will use the spacecraft orbiter again and again in launches from the earth. The space shuttle system is composed of the orbiter with its main rocket engines, which carries the crew and payload, a large external tank that contains the propellants for the orbiter's main engines, and two solid rocket boosters. The orbiters and boosters are reuseable, but the external is expended on each launch.
The space shuttle during ascent has the large cylindical external tank at its center . . .
Other patents, held by RCA Corporation, also refer to the orbiter as the 'space shuttle.'
According to Origin of NASA Names, published by NASA in 1976, introduced by opposer:
The name 'Space Shuttle' evolved from descriptive references in the press, aerospace industry, and Government and gradually came into use as concepts of reusable space transportation developed . . .
NASA used the term 'shuttle' for its reusable transportation concept officially in 1968. Associate Administrator for Manned Space Flight George E. Mueller briefed the British Interplanetary Society in London in August with charts and drawings of 'space shuttle' operations and concepts. In November, addressing the National Space Club in Washington, D.C., Dr. Mueller declared the next major thrust in space should be the space shuttle.
A footnote in that reference indicates:
'The Defense/Space Business Daily newsletter was persistent in referring to USAF and NASA reentry and lifting-body tests as 'Space Shuttle' tests. Editor-in-Chief Norman L. Baker said the newsletter had first tried to reduce the name 'Aerospaceplane' to 'Spaceplane' for that project and had moved from that to 'Space Shuttle' for reusable, back-and-forth space transport concepts as early as 1963. The name was suggested to him by the Washington, D.C., to New York airline shuttle flights. (Telephone interview, 22 April 1975. [FN4]
The term is used in federal regulations and NASA publications as the name of the vehicle and not in the manner of a source indicator. See, for example, 14 CFR Part 1221.106 ('The Badge is a triangular stylized drawing of the Space Shuttle in launch configuration . . .'); 14 CFR Part 1214.1604(a) ( 'Although the Space Shuttle and Spacelab were developed for the purpose of accommodating technical cargoes . . .'); NASA Educational Briefs (EB 83-7) ('On STS-5. . . . NASA's Space Shuttle carried a Federal Republic of Germany experiment into orbit.'); NASA--SPACE SHUTTLE (Attachment 15 to respondent's notice of reliance) ('Then, on April 12, 1981, a new era in manned space flight began as America's first reusable Space Shuttle embarked on its maiden voyage.'); Student Rules and Guide Book ('This program provides an opportunity for secondary school students to propose experiments suitable for possible flight aboard the Space Shuttle . . .') In some federal regulations, NASA press releases and other NASA publications, the vehicle is frequently referred to simply as the 'Shuttle,' as, for example, '. . . the cost of launch on the Shuttle . . .' (Attachment 8 to respondent's notice of reliance); 'The payload must be self-powered and not draw on the Shuttle orbiter's electricity.' (NASA Educational Briefs (EB 83-7) (Attachment 14); 'Manned by Astronauts John Young, as commander, and Robert Crippen, as pilot, the Shuttle was launched from Kennedy Space Center's Launch Complex . . .' (NASA--SPACE SHUTTLE, Attachment 15 to respondent's notice of reliance); 'Those students whose experiments are selected to fly on the Shuttle will be required to submit a final report.' (Student Rules and Guide Book).
*6 While NASA appears to consistently capitalize the terms 'Space Shuttle' and 'Shuttle' in its press kits and other publications, we note that other obviously generic terms such as 'space station,' 'space transportation system' and 'space telescope' are also capitalized in NASA publications. Other government agencies are not as consistent. In a brochure of space-related publications apparently prepared by and available from the Superintendent of Documents, also made of record by opposer, the words are not always capitalized. ('Aboard the Space Shuttle. A fascinating color booklet that shows you what it would be like to be aboard the space shuttle.')
The evidence of generic use by the press, introduced by applicant, is also persuasive. Some of those NEXIS excerpts from the LEXIS/NEXIS computer search system are noted below. [FN5]
'The team from NASA wanted a robot that would replace 12 people working under the space shuttle, doing dangerous, difficult jobs in the last five minutes before a space liftoff,' Mr. Hanauer explained.
The New York Times, December 15, 1985
. . . a Democratic congressman, Mr. Bill Nelson of Florida, will ride into space on board America's space shuttle Columbia. One of his main jobs will be to grow 60 protein crystals that are hard to grow on earth because of the force of gravity . . .
The Economist, December 14, 1985
Vice President George Bush formally presented the prototype space shuttle Enterprise Friday to the National Air and Space Museum.
United Press International, December 7, 1985
The occasion honored Combs Aircraft Inc. President Harry B. Combs and also marked NASA's official donation of the space shuttle Enterprise to the National Air and Space Museum. The Enterprise itself was on display outside the hangar.
The Washington Post, December 7, 1985
The contract, awarded earlier this year, rescued an industry that had appeared doomed. NASA's space shuttle, which can launch satellites from orbit, originally was intended to take care of the military's satellite-boosting needs.
The Washington Post, December 1, 1985
The space shuttle Enterprise, which was neither spaceship nor shuttle, has taken its final ride on the back of a jetliner and sits now in a remote . . . The Enterprise was a lame duck from the day it was manufactured. It was built to test airframe loads, flight dynamics characteristics and other . . . It never had the equipment of a real space shuttle--engines to take it into space or heat-resistant tiles to get it back home.
The Associated Press, November 19, 1985
The space shuttle was supposed to land at commercial airports, serve as a gravity-free lab for working scientific miracles, and pay for itself . . . Finally, it settled on the space shuttle, a re-usable spacecraft designed to reduce by two orders of magnitude the cost of placing cargo in orbit.
Discover, November 1985
. . . 1/2, 500ths of an inch in diameter and perfectly round, each made in space. They were produced on board a space shuttle and are being sold to industrial and scientific laboratories.
*7 The New York Times, August 4, 1985
Even some of the magazine articles opposer has relied on use the term generically. See Business Week, September 23, 1985, 76.
There is no question but that opposer has used the term 'space shuttle' as a generic designation for a reusable space transportation vehicle that carries humans and cargo to space and back to Earth. Opposer has never sought registration of this term for any goods or services, nor has opposer ever used any method, such as a 'TM' superscript, to indicate that it was claiming rights in this term. NASA has launched no infringement actions against any entity using these words. Moreover, these are ordinary words which would be and are perceived by the public in their primary significance as a space vehicle which transports crew and equipment from the ground to Earth orbit and returns, and not as an indication of origin. That is, it is a shuttle which goes into space. The term is an apt and common description of NASA's space vehicle or system. Although opposer was and remains the only space agency to make a reusable space shuttle, the record fully supports the conclusion that this term is used and understood by the public as referring to the genus or classification of reusable spacecraft. H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986). The fact that there may be other generic terms to describe opposer's reusable spacecraft is immaterial. All generic terms must remain free for the trade and the public to use. In re Sun Oil Co., 426 F.2d 401, 165 USPQ 718, 719 (CCPA 1970) (Rich, J. concurring). Moreover, exclusive use cannot take a common descriptive name out of the public domain.
Because opposer has no protectible interest in the term 'space shuttle,' NASA's opposition grounded upon alleged proprietary rights must fail. That is, if an opposer's alleged trade designation does not identify source, then there is no basis upon which to predicate a finding of likelihood of confusion. A likelihood of confusion cannot be recognized where one claimed to be aggrieved by that confusion does not have a right superior to his opponent's. Otto Roth & Co., Inc. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43, 44, 45 (CCPA 1981). See also Thompson Medical Co., Inc. v. Pfizer, Inc., 753 F.2d 208, 225 USPQ 124, 130 (2d Cir. 1985).
Likewise, opposer's Section 2(a) false suggestion claim must fail. This Lanham Act claim evolved out of the concepts of the rights of privacy and publicity, protecting an individual's control over the use of his 'identity' or 'persona.' University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co. Inc., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). While a party's interest in its identity does not depend for its existence on the adoption of and use of a technical trademark, a party must nevertheless have a protectible interest in a name (or its equivalent). Where a name claimed to be appropriated does not point uniquely and unmistakably to that party's personality or 'persona,' there can be no false suggestion. Buffett v. Chi-Chi's, Inc., 226 USPQ 428, 429 (TTAB 1985). Here, where opposer's claimed mark is generic, it cannot point uniquely and unmistakably to any one entity. As applicant's attorney has pointed out:
*8 To hold otherwise would mean that ordinary descriptive and generic terms could be removed from the language if associated with a particular person. This cannot be the law. The law has always provided that a generic term could not acquire secondary meaning. To hold that a generic term is entitled to some form of protection under 2(a) flies in the face of accepted trademark law. Such a holding would in effect recognize de facto secondary meaning. Applicant's brief, 28
While opposer has argued in its brief that applicant's mark should also be refused registration because the words 'space shuttle' identify a national symbol (Section 2(a) of the Act), we not only agree with applicant that opposer has failed to prove this contention, but also would point out that this ground has not been pleaded in the notice of opposition. Nor do we believe that it has been tried. In any event, on this record we cannot agree with opposer that the words SPACE SHUTTLE per se constitute a 'national symbol' within the meaning of the Act.
We note that applicant is not seeking to register the name 'National Aeronautics and Space Administration,' the acronym NASA, the NASA seal, astronaut badges containing those letters, etc. Section 310 of the National Aeronautics and Space Act, enacted as part of an appropriations bill in 1983, prohibiting uses of the name and letters, therefore, can be of no aid to opposer in this proceeding. If opposer believes applicant is using a NASA program badge, including one depicting the space shuttle in launch configuration and the words SPACE SHUTTLE, in a manner other than that authorized in the rules, opposer may bring an action pursuant to 14 CFR Part 1221.116(b). See 18 USC 701. Also, as opposer is aware, false or misleading statements of NASA endorsement, sponsorship or approval which are considered deceptive trade practices may be brought to the attention of the Federal Trade Commission. In this proceeding, however, because of the generic nature of opposer's pleaded mark in relation to its goods, opposer cannot prevent registration to applicant under Sections 2(a) and (d). [FN6]
Decision: The opposition is dismissed.
J. E. Rice
R. L. Simms
Members, Trademark Trial and Appeal Board
FN1. Serial No. 373,142, filed July 19, 1982, claiming use since May 1981.
FN2. Concerning this defense, the record shows that applicant donated some of its SPACE SHUTTLE wine to NASA on the occasion of the Paris Air Show in the Spring of 1983. NASA paid the shipping costs for this wine, which was served at one or more receptions. According to opposer's testimony, however, the name was not objected to at the time because it was viewed by NASA officials as a 'commemorative label to be used on a one-time basis only.' Schulman dep., 64. In view of our disposition of opposer's claims, however, we need not reach the issue of estoppel.
FN3. We have excluded from consideration those exhibits identified in applicant's brief which fall within the scope of documents requested by applicant during discovery but which were not produced until opposer sought to introduce them during trial. Shoe Factory Supplies Co. v. Thermal Engineering Co., 207 USPQ 517, 519 n. 1 (TTAB 1980).
FN4. In this regard, see Eastern Air Lines, Inc. v. New York Air Lines, Inc., 559 F. Supp. 1270, 218 USPQ 71, 75-76 (S.D.N.Y. 1983), holding AIR-SHUTTLE to be generic. In so doing, the court noted, at 76:
This conclusion is particularly certain in the use of the word 'shuttle' in combination with 'air' as 'shuttle' has historically been used in compound form with a word to describe the mode of transportation involved, as in shuttle bus, shuttle train, or space shuttle. Placing a common generic adjective in front of a generic word does not make the word any the less generic, especially when the combination of the terms has both the purpose and effect of describing the genus of which the particular product is a species.
FN5. In its brief, applicant has also referred us to the following definition from Webster's Deluxe Unabridged Dictionary (2d. ed. 1979), of which we take judicial notice:
space shuttle, a spacecraft designed to transport persons and equipment between Earth and an orbiting space station.
FN6. Of course, with respect to wine, the term SPACE SHUTTLE must be considered arbitrary. Opposer's argument in its brief that registration to applicant will tend to impair the rights of opposer, the news media and the public to use the term 'space shuttle' in describing and reporting on opposer's activities is wholly without merit.