Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE REMINGTON PRODUCTS, INC.
Serial No. 493,829
January 29, 1987
Charles R. Miranda for applicant
Steven Fine
Trademark Examining Attorney
Law Office 8
(Sidney Moskowitz, Managing Attorney)
Before Sams, Rooney and Simms
Members
Opinion by Rooney
Remington Products, Inc. has appealed the refusal to register the term PROUDLY MADE IN USA (MADE IN USA disclaimed) for electric shavers and parts thereof [FN1] on the principal register under Section 2(f). [FN2] The ground for refusal is that the term does not function as a trademark within the meaning of Section 45 of the Trademark Act and is therefore unregistrable under Sections 1 and 2.
The issue on appeal is stated by both applicant and the Examining Attorney to be whether applicant's slogan functions as a trademark. Specifically the Examining Attorney argues that the term sought to be registered is an unimaginative embellishment of a common informational phrase; that adding the word 'proudly' does not change the informational character of the slogan; that applicant has attempted to elevate an informational slogan to the level of a trademark by prominently displaying it on its packages, using the letters 'TM' in connection therewith and by attempting to promote the phrase as its own on television and in magazines. It is the Examining Attorney's position that, while the absence of 'trademark trappings' may be evidence that the subject matter sought to be registered does not function as a trademark, the reverse does not necessarily follow. In support of her position, the Examining Attorney submitted the results of a Lexis/Nexis search.
Applicant's position is that the word 'proudly' adds a new dimension to what is, admittedly, a commonly used expression on numerous products; that that word, appearing before the phrase, changes the impression from purely informational to one of pride. The expression is catchy and is prominent on applicant's packaging, it is asserted, and presents an image separate and apart from other matter thereon. Declarations submitted by applicant indicate that in the three years prior to the date thereof, applicant had sold one hundred twenty million dollars worth of shavers and had expended four hundred fifty thousand dollars in advertising the product, assertedly causing applicant's slogan to become recognized by the purchasing public as indicating the source of applicant's shavers. As further evidence of recognition, applicant has also submitted a letter sent to it by a third party who requested applicant's permission to use the notation PROUDLY MADE IN USA on its own goods.
The term, trademark, means 'any word, name, symbol or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured or sold by others.' (Section 45 of the Trademark Act of 1946). We note that not every word or combination thereof which appears on a party's goods functions as a trademark. See In re Morganroth, 208 USPQ 284 (TTAB 1980). Thus, the mere fact that applicant's slogan appears on the specimens, even separate and apart from any other indicia which appear on them, does not make it a trademark. To be a mark, the term, or slogan, must be used in a manner calculated to project to purchasers or potential purchasers a single source or origin for the goods in question. Mere intent that a term function as a trademark is not enough in and of itself, any more than attachment of the trademark symbol would be, to make a term a trademark.
*2 A critical element in determining whether a term is a trademark is the impression the term makes on the relevant public. In this case, the inquiry becomes would the term be perceived as a source indicator or merely an informational slogan?
Applicant concedes the informational function of the phrase 'Made in USA' and that it is found on many products. The question then is, what effect does the addition of the adverb PROUDLY have on the relevant public as far as their perception of applicant's slogan is concerned? The Examining Attorney quoted the Board's statement in In re Melville Corporation, 228 USPQ 970 (TTAB 1986) to the effect that, '(T)he fact that applicant may convey similar information in a slightly different way than others is not determinative'. Applicant's slogan, in addition to informing the public of the product's locale of manufacture, adds further information about the state of mind of the manufacturer and/or its employees in connection with the production of the goods.
It is common knowledge that today's American marketplace has a surplus of foreign-made goods and that American manufacturers are anxious to encourage purchasers to give preference to American products. While the Lexis/Nexis material submitted by the Examining Attorney may not illustrate use of the identical slogan used by applicant, the fact that there is an organization known as The Crafted with Pride in the USA Council is an indication of the extent to which emphasis has been and is being placed on American manufacture. The copy of applicant's ad from the New York Times, December 9, 1984 is in keeping with this trend. [FN3] For example:
We, the employees of Remington Products, Inc. are proud to tell you how our company, manufacturers of superior quality electric shavers, is winning its battle in today's global economic conflict.
. . . Remington shavers, the only shavers manufactured in the United States, are produced by loyal, dedicated American workers who take great pride in producing superior quality shavers . . . our workforce has doubled over the last 3 years, providing more jobs for American workers.
. . . These commercials not only promote the quality image of American made Remington shavers but also uplifts the standards world-wide for other quality built American made products.
The text of this ad only impresses upon the public the informational nature of the slogan so that when it is seen on the shaver box, that is the message which comes across. The slogan used by applicant conveys the same information in shorthand form.
Use of the letters 'TM' on a product does not make unregistrable matter into a trademark. Nor is recognition by one individual sufficient to do so. While applicant may have had substantial sales and advertising of its product, that does not prove recognition by the public of the subject slogan as a trademark. There is nothing in the record to indicate that purchasers recognize the slogan as a source indicator.
*3 Decision: Accordingly, the refusal to register is affirmed.
J. D. Sams
L. E. Rooney
R. L. Simms
Members, Trademark Trial and Appeal Board
FN1. Serial No. 493,829, filed August 8, 1984 alleging use as of April 29, 1982.
FN2. In the first Office action, attention was directed to the Supplemental Register as a result of which applicant sought registration under Section 2(f), whereupon the Examining Attorney indicated his belief that the slogan was not capable of functioning as a mark and withdrew his suggestion that the application should be amended to seek registration on the Supplemental Register.
FN3. Applicant also submitted a copy of a television commercial which does not aid applicant's case. In that ad, not only is the usage strictly informational, '. . . we say we are PROUDLY MADE IN THE USA', but the slogan therein does not even agree with that sought be registered--PROUDLY MADE IN USA.