Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE PENNZOIL PRODUCTS COMPANY
Serial No. 73/670,049
August 21, 1991
Hearing: July 2, 1991
Frederick B. Ziesenheim of Webb, Burden, Ziesenheim & Webb, P.C. for applicant
Fred Mandir
Trademark Examining Attorney
Law Office 7
(Thomas Howell, Managing Attorney)
Before Cissel, Quinn and Hohein
Members
Member
An application has been filed by Pennzoil Products Company to register "MULTI-VIS" for "multiple viscosity motor oil". [FN1]
Registration has been finally refused under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the basis that, when used in connection with applicant's goods, the mark is merely descriptive of them. Although applicant, in response, amended the application to seek registration pursuant to the provisions of Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), registration thereunder has also been finally refused on the ground that the evidence of acquired distinctiveness is insufficient since the term "MULTI-VIS" is generic or so inherently and directly descriptive of applicant's goods as to be incapable of registration. [FN2]
Applicant has appealed. Briefs have been filed and an oral hearing was held. We affirm on all grounds.
The evidence submitted in support of the final refusals includes a definition from The Random House Dictionary of the English Language (2d ed. 1987) at 1262 which defines "multi-" as "a combining form meaning 'many,' 'much,' 'multiple,' 'many times,' 'more than one,' 'more than two,' 'composed of many like parts,' 'in many respects,' used in the formation of compound words"; a definition from Acronyms, Initialisms & Abbreviations Dictionary (10th ed. 1986-87) at 2235 which defines "VIS" as "Viscosity"; definitions from Webster's Third New International Dictionary (1986) at 1485 and 2556 which respectively define "multi-" as "many: multiple: much" and "vis" as an abbreviation for "viscosity"; and a story, retrieved from a search of Mead Data Central's NEXIS(R))) data base, which indicates with respect to a January, 1983 article in the publication Automotive Marketing headlined "Manufacturers survey; Motor oil makers" that: [FN3]
Kendall SUPERB 100 line of multi-vis products is the most popular in the line and answers the needs of any gasoline fueled car. Diesel cars that continue to grow in popularity also have a specific oil to meet their unique requirements. Kendall SUPER DSL oils are available in straight weight 30 or in the 10W-30 multi-vis.
Applicant, in an effort to overcome the mere descriptiveness refusal, initially amended its application to claim distinctiveness on the basis that it "has used the mark lawfully in interstate commerce with the goods for the five years next preceding the filing date of this application". Subsequently, in response to the contention that such evidence was insufficient and that the term "MULTI-VIS" was generic, applicant submitted the declarations of officers and owners of nine different privately owned distributorships of motor oil products, whose experience in the marketing thereof ranges from 26 to 45 years, and who certify that "MULTI-VIS" as a word has no special meaning to ordinary purchasers of motor oil beyond identifying and distinguishing the multigrade motor oil of applicant from the same or similar products of others. [FN4] Applicant also submitted the affidavit of its Vice President, Paul B. Siegel, regarding its "substantial use of the MULTI-VIS mark in interstate commerce during the period 1982 through 1988 and Applicant's expenditures on MULTI-VIS advertising for the period 1983 through 1989." [FN5]
*2 Applicant argues in the alternative that while the term it seeks to register is not merely descriptive, if such term is considered to be merely descriptive, then it has submitted sufficient evidence of acquired distinctiveness or secondary meaning under Section 2(f) and that the term is not generic. [FN6] Since, if the term "MULTI-VIS" does not possess at least a merely descriptive significance, determination of whether it is generic and whether resort must be had to the provisions of Section 2(f) would not be necessary, we will first consider the refusal on the basis of mere descriptiveness.
Applicant asserts that the term "MULTI-VIS" is suggestive rather than merely descriptive in that it requires one to exercise imagination, thought or perception to reach a conclusion as to the nature of the goods. Even assuming that the terms "MULTI-" and "VIS" are descriptive as applied to multiple viscosity motor oil, applicant maintains that the combining of separately descriptive elements into a single term does not yield a merely descriptive mark and that "MULTI-VIS" is inherently distinctive to purchasers of its motor oil.
The Examining Attorney, on the other hand, contends that the term "MULTI-VIS" is an abbreviation for "multiple viscosity," which designates a type of motor oil, and would be recognized as such by the general public, who are the primary consumers for applicant's goods. Specifically, the Examining Attorney points to the dictionary definitions of the terms "multi-" and "vis," the descriptive use of the combination "multi-vis" in the article from Automotive Marketing describing a competitor's motor oils as "multi-vis" products and applicant's own use of the term "MULTI-VIS" in conjunction with the word "multi-viscosity," as shown by the specimens and advertising of record, as proof that the term "MULTI-VIS" possesses at least a merely descriptive significance as used in connection with multiple viscosity motor oil.
It is well settled that a term is considered to be merely descriptive of goods or services, within the meaning of Section 2(e)(1) of the Trademark Act, if it immediately describes an ingredient, quality, characteristic or feature thereof or if it directly conveys information regarding the nature, function, purpose or use of the goods or services. See In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). It is not necessary that a term describe all of the properties or functions of the goods or services in order for it to be considered to be merely descriptive thereof; rather, it is sufficient if the term describes a significant attribute or idea about them. Moreover, whether a term is merely descriptive is determined not in the abstract but in relation to the goods or services for which registration is sought, the context in which it is being used on or in connection with those goods or services and the possible significance that the term would have to the average purchaser of the goods or services because of the manner of its use. See In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
*3 It is our view that when applied to "multiple viscosity motor oil," the term "MULTI-VIS" immediately, and without conjecture or speculation, describes the nature of applicant's goods and, in particular, describes a significant characteristic, quality or feature thereof, namely, the multiple viscosity property of applicant's goods. [FN7] The plain meanings of the components comprising the term "MULTI-VIS," as confirmed by the dictionary definitions of record demonstrating that "multi-" is a combining form meaning "multiple" and "vis" is an accepted abbreviation for "viscosity," along with the clearly descriptive use of "multi-vis" in the article from Automotive Marketing and applicant's own manner of use of such term as evidenced by the specimens and its advertising, convince us that, when considered in the context of applicant's goods, there is nothing which is incongruous about the term "MULTI-VIS" or which requires the exercise of mental processing in order to readily perceive the descriptive significance of such term as it relates to multiple viscosity motor oil.
In this regard, we note among other things that the references to the term "multi-vis" in the article appearing in Automotive Marketing are indicative that such term would likely be employed to describe multiple viscosity oils offered by others in the motor oil trade. Moreover, the fact that applicant may have been the first to use and/or is currently the only entity using such term [FN8] is not dispositive where, as here, the term unequivocally projects a merely descriptive connotation. See In re MBAssociates, 180 USPQ 338, 339 (TTAB 1973). Finally, we observe that there could be no doubt as to the merely descriptive significance of the term "MULTI-VIS" to purchasers and prospective customers of applicant's goods since, as shown by the specimens and in applicant's advertising, the following statement has been and is still used on the front of the cans and plastic containers for quarts of "MULTI-VIS" motor oil sold by applicant: "A gas saving multi-viscosity oil providing fast cold weather starts and high temperature protection". With this statement appearing in close proximity to the term "MULTI-VIS," it simply does not require "cogitation," as asserted by applicant, for buyers of motor oil to interpret the term as signifying or describing the product's multiple viscosity property. It therefore is beyond conjecture that to customers and prospective purchasers of applicant's goods, the term "MULTI-VIS" conveys forthwith the idea of a multiple viscosity motor oil. The term, consequently, is at least merely descriptive of applicant's goods.
This brings us now to the remaining issues in the appeal. Among other things, applicant argues that even if its mark is merely descriptive, it is not generic and, in any event, it has acquired a secondary meaning. Specifically, applicant "submits that MULTI-VIS is not the common name of anything, but rather is a coined word never before known". Maintaining that, improperly, "[t]he Examining Attorney has dissected the mark into two components and found that each part is an abbreviation of something," applicant has submitted numerous certified copies of third-party registrations containing either the prefix "MULTI-" or the suffix "VIS". [FN9] Applicant notes that while, in the case of the former, each of the registered marks appears in the dictionary with the meaning suggested by the goods to which it is applied, "the position of the Patent and Trademark Office is not to disallow MULTI as a prefix for trademarks when it is used in the sense of 'multiple' ". In the latter instance, applicant points out that, "[o]n many occasions, the Patent and Trademark Office has recognized that marks containing the 'VIS' suffix are registrable for lubricants" and that:
*4 Each of the above registered marks consists of a meaningful prefix (either a word or an easily-recognized abbreviation) followed by the suffix VIS, which two elements in combination suggest a property of the product to which the mark is applied. Nothing is different in the case of MULTI-VIS. The mark suggests a substance exhibiting more than one viscosity.
Applicant consequently contends that by adopting "MULTI-VIS" as its mark, it has not appropriated for itself the exclusive use of words describing the concept of an oil displaying several viscosities.
While conceding that the suffix "VIS" is intended to suggest "viscosity," applicant additionally argues that such word is used more by petroleum chemists than by the general public. The fact that dictionaries list "VIS" or "vis" as an abbreviation for "viscosity," applicant asserts, does not mean that the abbreviation is well-known or even used in the retail oil business, particularly since the common term used to convey the concept of viscosity to purchasers of motor oil is "weight" or "grade" rather than "vis" or "viscosity". Applicant accordingly maintains that:
There has been no showing by the Examining Attorney that MULTI-VIS is part of the vernacular, much less that it would be readily understood by the public without the aid of the associated phrase, "multi-viscosity oil." The test for genericness requires a determination of the primary significance of the mark in the mind of the average purchaser. The record is devoid of evidence that the "primary" (or any other) significance of MULTI-VIS to the public is generic.
Applicant further contends that neither it nor others have used the term "MULTI-VIS" generically and that it, in fact, uses such term as a trademark. [FN10]
Consequently, while the term "MULTI-VIS" is not generic since it is not the common descriptive name of anything, let alone an oil product, applicant asserts that if such term is nevertheless deemed to be merely descriptive, its long and extensive use by applicant has rendered it distinctive and subject to registration under the provisions of Section 2(f). Applicant stresses that in addition to its exclusive and continuous use since April 28, 1953 of the term "MULTI-VIS" in connection with motor oil, the record contains compelling evidence that such term has become distinctive:
According to the Siegel affidavit, Applicant's revenues from sales of MULTI-VIS have exceeded $200 million in each year since 1982, reaching nearly $400 million in 1989. Applicant's expenditures on advertising to promote MULTI-VIS products have exceeded $20 million in each year since 1983 and amounted to nearly $40 million in 1989. Applicant is the leading seller of motor oil in the United States and at least half of its sales of oil since 1982 have been under the MULTI-VIS mark.
Applicant maintains that its advertising expenditures, along with its huge sales, are proof of its success in educating the public to associate its alleged mark with a single source, especially in light of the fact that none of its competitors has used the term "MULTI-VIS" in connection with its products. Lastly, applicant notes that it has submitted nine declarations from marketers of automotive oil products "which attest to the fact that MULTI-VIS distinctively identifies Applicant's products and no others" and points out that the Examining Attorney has not produced any evidence to the contrary.
*5 The Examining Attorney, on the other hand, contends that applicant's amendment to seek registration under the provisions of Section 2(f) did not overcome the refusal under Section 2(e)(1) "because 'MULTI-VIS' is generic or so highly descriptive as to be incapable of registration. Any evidence of secondary meaning would be viewed as de facto only, because 'MULTI-VIS' as applied to multiple viscosity motor oil is incapable of designating origin in any one source". The reason therefor, according to the Examining Attorney, is that the term "MULTI-VIS," as shown by the dictionary definitions and other evidence made of record in support of the denial of registration, is an abbreviation for "multiple viscosity" or "multi-viscosity," which is a type of motor oil and would be recognized as such by the general public. As to the third-party registrations submitted by applicant, the Examining Attorney notes that they are not conclusive on the question of registrability and that none is for the term "MULTI-VIS".
With respect to consideration of applicant's evidence of acquired distinctiveness, the Examining Attorney, citing In re Half Price Books, Records, Magazines, Inc., 225 USPQ 219, 221 (TTAB 1984), maintains that when, as here, a term sought to be registered is so highly descriptive as to be incapable of registration, any evidence of acquired distinctiveness can only be viewed as de facto and such evidence does not transform a highly descriptive term like "MULTI-VIS," which is the name for a type of oil, into a term which is capable of designating origin in one source. Thus, while the Examining Attorney finds applicant's evidence, including its length of use, advertising expenditures and sales figures, to be "very substantial," such is considered to be evidence only of de facto secondary meaning and is insufficient to allow registration under the provisions of Section 2(f). In addition, the Examining Attorney points out that inasmuch as the terms "MULTI-VIS" and "multi-viscosity" often appear together on the containers for applicant's goods, consumers would unquestionably expect the contents to be multiple viscosity oil. Since such terms are highly descriptive informational designations which provide the consumer with vital information, the Examining Attorney believes that the term "MULTI-VIS" informs the consumer only that the product sold by applicant is a multi-viscosity motor oil and hence such term is unregistrable.
In a case involving a similar situation, the Board in In re Paint Products Co., 8 USPQ2d 1863, 1866 (TTAB 1988), which concerned the registrability of the term "PAINT PRODUCTS CO." for "interior and exterior paints and coatings, namely, alkyd, oil, latex, urethane and epoxy based paints and coatings," stated that:
The Examining Attorney suggests that we need not examine the evidence submitted by applicant in support of its Section 2(f) claim in determining public perception of applicant's mark, that is, determining whether applicant's mark is so highly descriptive that it cannot function as a trademark. In support of that position, she cites In re Institutional Investor, Inc., 229 USPQ 614 (TTAB 1986), which, in turn, cites a number of precedents of the Court of Customs and Patent Appeals and of this Board for the proposition that, where a term is so highly descriptive that it is incapable of becoming distinctive, registration must be refused no matter what evidence of alleged distinctiveness is adduced. With that proposition we have no quarrel. Thus, if we find applicant's mark so highly descriptive that it cannot function as a trademark, the evidence of distinctiveness submitted by applicant under Section 2(f) will be of no avail on the ultimate issue of registrability. On the other hand, in deciding whether, in the first instance, applicant's mark can function as a trademark, we are obliged to consider all the evidence of record touching on the public perception of the term "PAINT PRODUCTS CO." That evidence includes the affidavits from applicant's customers, representing the perception of ten individuals concerning the meaning of the words "PAINT PRODUCTS CO." Because these affidavits were sought and collected by applicant from ten customers who have dealt with applicant for many years, the evidence is not altogether persuasive on the issue of how the average customer for paints perceives the words "PAINT PRODUCTS CO." in conjunction with paints and coatings. For us, the unambiguously descriptive meaning of the words that make up applicant's mark is more convincing evidence of public perception than the customer affidavits or other evidence offered by applicant.
*6 In the present case, we likewise believe that the purchasing public would regard the term "MULTI-VIS" as primarily signifying an apt descriptive designation for a multiple viscosity motor oil. The dictionary definitions, the article from Automotive Marketing, the specimens and the representative advertisements are sufficient evidence to demonstrate that, when joined to form a compound, the terms "MULTI-" and "VIS" have a meaning identical to the meaning which ordinary usage would ascribe to those terms in combination. There is nothing unique or incongruous about the combination nor would it have any meaning other than "MULTIPLE VISCOSITY" when used in connection with a multiple viscosity motor oil. Instead, the compound term aptly, immediately and unequivocally designates, without speculation or conjecture, the nature of applicant's goods and, in particular, a significant characteristic, feature or quality thereof. Purchasers and prospective customers, especially those interested in maintaining the performance of their vehicles and/or changing the oil therein themselves, consequently would readily understand that "MULTI-VIS" serves only to designate the class of goods to which applicant applies the term--namely, "multiple viscosity motor oil". In short, the evidence relied upon by the Examining Attorney is sufficient to meet the burden of proof upon the Patent and Trademark Office to establish that the term "MULTI-VIS," as applied to multiple viscosity motor oil, is generic and incapable of registration. See, e.g., In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1112 (Fed.Cir.1987) ["SCREENWIPE" for "pre-moistened, anti-static cloth for cleaning computer and television screens" incapable of being registered].
Applicant's reliance upon various third-party registrations is not persuasive of a different result. While, of course, uniform treatment under the Trademark Act is essential, our task on this appeal, based upon the factual record before us, is to determine whether applicant's mark is registrable. As the Board has often stated, each case must be decided on its own facts. See, e.g., In re Half Price Books, Records, Magazines, Inc., supra and In re Inter-State Oil Co., Inc., 219 USPQ 1229, 1231 (TTAB 1983). We are not privy to the file records of the third-party registrations applicant has submitted and thus have no way of knowing whether any of those registrations involved an initial descriptiveness refusal or issued pursuant to the provisions of Section 2(f). Consequently, and aside from the fact that none of the registrations is for the mark "MULTI-VIS," the determinations of registrability by the Trademark Examining Operation for marks containing the prefix "MULTI-" or the suffix "VIS" cannot control the result in this case, which involves a different mark for different goods.
The declarations from nine marketers of automotive oil products also lack persuasiveness on the issue of the primary significance of the term "MULTI-VIS" to the purchasing public. Initially, we note that given their long-standing business relationships as customers of applicant, it is not surprising that the declarants are aware that "MULTI-VIS" is a product originating from applicant. Moreover, the form declarations, which presumably were drafted by applicant's counsel, initially recite that "MULTI-VIS" is not a term merely descriptive of motor oil, but rather is a distinctive term known in the trade as identifying multigrade motor oil of Pennzoil Products Company, and distinguishing such products from the same or similar products of others" (emphasis added). There is no indication, however, that the declarants are knowledgeable in trademark law or that they otherwise understand and are familiar with such technical concepts as mere descriptiveness, distinctiveness and the definition of a trademark. [FN11]
*7 Furthermore, the declarants' opinions that few retail customers consider technical notions of viscosity when purchasing motor oil, except in the vague sense of winter or summer weights or grades, and that the term "MULTI-VIS" has no particular descriptive significance to ordinary purchasers of motor oil, seem in light of common experience to lack substantial credibility. [FN12] If the multiple viscosity property of applicant's goods were not an important feature thereof and an inducement to purchase, it would not be advertised on the containers for the goods, which emphasize that the product is "[a] gas saving multi-viscosity oil providing fast cold weather starts and high temperature protection". Accordingly, for us, the clear and unambiguous meaning of the components comprising the term "MULTI-VIS" is simply more convincing evidence of public perception of the term than the opinions of applicant's declarants.
Finally, with respect to the affidavit from applicant's vice president, we concur with the Examining Attorney that applicant's sales and advertising figures are "very substantial". However, with one possible exception, [FN13] there is a glaring absence of any evidence demonstrating that the term "MULTI-VIS" would be viewed or perceived as a trademark for applicant's goods, that is, as an indication which identifies and distinguishes their source from the like goods of others. [FN14] Applicant's extensive promotional expenditures, unit sales, product revenues and position of sales leadership in motor oil simply fail to prove that the term "MULTI-VIS" is either promoted as a trademark or perceived as one by the purchasing public. [FN15] Without anything linking even very substantial sales and advertising figures to the claimed trademark significance of the term "MULTI-VIS," we have no basis upon which to conclude that such term functions other than as a generic or apt descriptive name for multiple viscosity motor oil.
Consequently, on this record, we conclude that consumers and prospective customers of applicant's goods would not regard the term "MULTI-VIS" as a trademark but, instead, would attribute to such term the ordinary, straightforward meaning provided by its component parts and manner of use-- namely, multiple viscosity. The term, therefore, should remain available for use by applicant's competitors since it primarily signifies and aptly describes multiple viscosity motor oil.
Even if we had not found applicant's mark to be generic or an apt descriptive name, we nevertheless would affirm the refusal to register on the ground that the evidence submitted in support of the claim of acquired distinctiveness is insufficient to convince us that the term "MULTI-VIS" has become distinctive through use in commerce. While applicant claims use of such term for a period of over 36 years and has established very substantial advertising and sales figures for its goods, this evidence alone does not convince us that ordinary purchasers of multiple viscosity motor oil have come to view "MULTI-VIS" as a trademark. [FN16] See Truckstops Corp. of America v. C-Poultry Co. Ltd., 223 USPQ 143, 146 (M.D.Tenn.1983) [defendant's outstanding sales record and advertising expenses do not prove secondary meaning]. Rather, the fact that applicant is the leading seller of motor oil and that sales of oil with "MULTI-VIS" shown on the container account for more than 50% of its annual motor oil sales for each year since at least 1982 demonstrates only the popularity of applicant's goods and not that the term "MULTI-VIS" has acquired distinctiveness. See WLWC Centers, Inc. v. Winners Corp. 221 USPQ 701, 707 (M.D.Tenn.1983) [popularity in sales alone cannot establish secondary meaning]. Similarly, applicant's large advertising expenditures are merely indicative of its efforts to develop secondary meaning, but are not determinative of the success of those efforts. See Ralston Purina Co. v. Thomas J. Lipton, Inc., 173 USPQ 820, 824 (S.D.N.Y.1972) [promotional expenditures indicate efforts to establish secondary meaning, but do not determine the success of those efforts].
*8 As to the declarations from nine of applicant's distributors, we note that while the declarations are some evidence tending to show acquired distinctiveness of the term "MULTI-VIS" as a trademark, they must be weighed against the highly descriptive nature and applicant's manner of use of such term. Simply stated, that nine of applicant's customers, through many years of doing business with applicant, have come to recognize the term "MULTI-VIS" as a trademark for multigrade motor oil is much less persuasive evidence on the issue of acquired distinctiveness than is the inherently descriptive nature of such term and its manner of use by applicant. Therefore, assuming that the term "MULTI-VIS" could function as a trademark, more evidence than that which has been offered here, particularly evidence showing long-standing promotion of such term as a trademark, would be necessary to establish the distinctiveness of the term.
Decision: The refusals to register are affirmed.
R. F. Cissel
T. J. Quinn
G. D. Hohein
Members, Trademark Trial and Appeal Board
FN1. Ser. No. 73/670,049, filed on July 6, 1987, which alleges dates of first use of April 28, 1953.
FN2. Such refusal was expressed in the Office Action of April 4, 1990 as follows:
The refusal of registration on the ground that the evidence presented fails to demonstrate de jure secondary meaning under Section 2(f) is proper. The proposed mark MULTI-VIS is generic or so highly descriptive as to be incapable of registration.
FN3. The search disclosed only one other story. Such story, from the September, 1983 edition of Coal Age, bears the headline "Multi-Vis Hydraulic Oil" and contains the following reference to another of applicant's products: "Pennzoil's AWX Multi-Vis hydraulic oil for hydraulic systems, transmissions and pumps is especially effective in cold temperatures".
FN4. Except for the variations in the declarants' years of experience and their particular firms, the declarations are identical in form and substance. Each declarant, after indicating involvement in the marketing of automotive motor oil products, "including motor oil marketed under the trademark "MULTI-VIS," and awareness that such product originates from applicant, states that:
It is my experience that few customers, if any, consider the technical concept of viscosity when purchasing motor oil, except in the very imprecise sense of "winter" weight or grade and "summer" weight or grade. The term MULTI-VIS has no particular meaning as pertains to motor oil to ordinary purchasers of motor oil.
Based upon my years of experience in the trade, I can state that MULTI-VIS is not a term merely descriptive of motor oil, but rather is a distinctive term known in the trade as identifying the multigrade motor oil of Pennzoil Products Company, and distinguishing such products from the same or similar products of other manufacturers.
FN5. Among other things, Mr. Siegel states in his affidavit that the mark "MULTI-VIS" has been used in connection with the sale of motor oil by applicant and its predecessors in interest for a period of over 36 years, during which time the mark has become distinctive of applicant's goods by reason of its substantially exclusive and continuous use thereof throughout the nation; that, as indicated by the annual sales and advertising figures shown below for the seven-year period from 1982 to 1988, applicant sold approximately 2,089,084,000 quarts of motor oil generating approximately $1,832,504,000 in sales and expended about $217,948,000 advertising "MULTI-VIS" motor oil:
Year Quarts Sales Advertising
---- ----------------- -------------- -------------
1982 228,528,000 $208,780,000 Not available
1983 234,996,000 $212,437,000 $20,260,000
1984 268,396,000 $239,743,000 $26,832,000
1985 279,132,000 $244,519,000 $29,705,000
1986 336,768,000 $290,736,000 $28,675,000
1987 366,980,000 $310,147,000 $32,777,000
1988 374,284,000 $326,142,000 $39,775,000
1989 391,232,000 [FN*] $352,700,000 * $39,914,000
FN* (estimated);
that all types of advertising media are employed including radio, television, magazines, newspapers handbills, mailers, flyers, billboards, shelf-talkers, displays, signs and others; that representative print advertising is attached; and that applicant is the nation's sales leader in motor oil, with "MULTI-VIS" sales representing over 50% of applicant's total motor oil sales in every year since at least 1982.
FN6. Inasmuch as the application was not initially filed under the provisions of Section 2(f), applicant's amendment to seek registration pursuant thereto does not constitute an admission of mere descriptiveness. See In re Professional Learning Centers, Inc., 230 USPQ 70, 71 (TTAB 1986) at n. 2.
FN7. As noted by applicant in its main brief (at 3): "The product to which the mark MULTI-VIS is applied is motor oil whose viscosity changes with the operating temperature of the environment in which it is used. It is not a blend of oils of differing grades."
FN8. As indicated in its main brief (at 16):
Applicant first learned of the ... article from the Office Action of August 1, 1988. Applicant subsequently contacted Kendall to complain of the use made in the article. To date, Kendall has neither claimed any rights of its own in the mark nor disputed the validity of Applicant's mark. There is no evidence that Kendall ever used "multi-vis" to refer to its products or that anyone at all other than Applicant has used "multi-vis" since 1983.
FN9. Such evidence, having been submitted by applicant with its main brief, generally would not be considered under Trademark Rule 2.142(d) in the absence of suspension of the appeal and remand of the application to the Examining Attorney for further examination. Suspension and remand, however, ordinarily would not be granted where, as here, the evidence is not newly discovered. Nevertheless, inasmuch as the Examining Attorney, in his appeal brief, has raised no objection to consideration of the third-party registrations and has treated such evidence as being of record, the third-party registrations will be considered.
FN10. Applicant, in this regard, points to an advertising flyer which is entitled "PENNZOIL MULTI-VIS MOTOR OIL" as evidencing "classic trademark use-- 'MOTOR OIL' is the genus and 'MULTI-VIS' is the indicator of source".
FN11. Section 45 of the Trademark Act, 15 U.S.C. § 1127, defines "trademark" as including "any word, name, symbol, or device, or any combination thereof-- ... used by a person ... to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown".
FN12. As was pointed out in the final refusal of August 1, 1988:
Advertising of motor oils purchased by the general public is often and regularly directed towards the technical attributes of the competing products. Manufacturers do not simply use vague concepts such as best, highest quality, but also promote the ability of their products to meet and exceed manufacturer's [sic] requirements, and to surpass expectations for engine protection and differing conditions which the automobiles may encounter. Advertisements for consumer motor oils regularly tout the detergent properties, high heat range adaptability, suitability for smaller cars, or the ability to withstand heavy driving conditions such that the oil will not break down, or lose its viscosity.
The American consumer has been well educated as to technical properties of competing motor oils, and regularly select[s] an oil based on these characteristics. Those which are not so informed often seek the aid of a [salesperson at the] parts counter or other professional in selecting such an oil based on these same characteristics.
Just as the oil market has become more sophisticated, for example with the recent entry of 5-50 and 5-30 multiple viscosity motor oils, so has the American consumer become similarly sophisticated. Automobile manufacturer's [sic] requirements dictate the use of multiple viscosity motor oils, rather than the use of the older straight weight oils which remain in use for applications not likely to encounter the varying temperature ranges and driving conditions which the automobile must meet. In sum, not only is the consumer aware that a multiple viscosity, or MULTI-VIS oil should be used, but he is also capable of differentiating between a 10-30 and 10-40 motor oil.
....
It is clear that the term MULTI-VIS is a recognized short form for the term multiple viscosity. As detailed in the first office action, VIS is a recognized abbreviation for the term viscosity, and ... MULTI is a common combining form to indicate multiple. See attached photocopy from the Random House Dictionary 1987. As such, the term MULTI-VIS is an apt name for the type of oil to which applicant has applied the mark. Moreover there is evidence in the trade indicating that this term has been used ... in the description of competitors['] products.
FN13. Applicant's counsel, at oral argument, referred to an advertising flyer which prominently uses the phrase "PENNZOIL'S MULTI-VIS WITH Z-7". The flyer, which was distributed to customers around April of 1988, also contains, in addition to the phrase noted in footnote 10 of this opinion, the following language:
Pennzoil Multi-Vis Motor Oil exceeds the motor oil performance requirements of modern passenger car engines. A balanced blend of select high quality based stocks and Pennzoil's multi-purpose additive, Z-7, are combined with special friction modifiers that reduce resistance between moving parts, help an engine turn easier, and save gasoline!
Pennzoil Multi-Vis Motor Oil with Z-7 is recommended for passenger cars and light trucks that are fueled with gasoline.... All viscosity grades also exceed the performance requirements of MIL-L-46152B. They are also recommended for older engines requiring API Service SC, SD, CB or any combination such as SE/CC. Pennzoil Multi-Vis Motor Oil with Z-7 protects today's smaller 4 and 6 cylinder engines as well as larger or older ones.
The flyer also contains illustrations of the containers for applicant's goods which show the term "MULTI-VIS" used immediately above (and in proportionately half the size of) various grade or weight designations, as follows:
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
In light of the above context, it is ambiguous whether applicant is promoting the term "MULTI-VIS" as a trademark in the text of its advertising and whether customers would so perceive such term. Additionally, even if the phrase "PENNZOIL'S MULTI-VIS WITH Z-7" could be taken as an effort to promote "MULTI-VIS" as a trademark, there is no indication as to the amount expended on the flyer or the extent of its distribution to customers.
FN14. Virtually all of the representative samples of applicant's advertisements, which have been directed to both the trade and retail customers, show only promotion of "PENNZOIL" or "Pennzoil" as trademarks for applicant's goods. The term "MULTI-VIS" is generally used in a subordinate manner as part of the weight or grade designation for the goods, such as:
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and often appears on their containers in close proximity to the language: "A gas saving multi-viscosity oil providing fast cold weather starts and high temperature protection".
FN15. Applicant's representative advertisements reveal that not until about April of 1988 and again in the fall of 1989 did applicant display the term "MULTI-VIS," in the form reproduced below, separately from the weight or grade designation 10W-30 shown on the containers for the goods:
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Aside from the fact that this change apparently occurred after registration had been refused, there is no indication as to whether applicant continued to use and advertise the term "MULTI-VIS" in the form shown above. Moreover, we note that use of the symbol "TM" in connection with such term cannot make an otherwise unregistrable term a trademark. See, e.g., In re General Foods Corp., 177 USPQ 403, 404 (TTAB 1973) at n. 1 and In re Nosler Bullets, Inc., 169 USPQ 62, 64 (TTAB 1971).
FN16. To establish secondary meaning, applicant must show that the primary significance of the term "MULTI-VIS" in the mind of the consuming public is not the product but the producer. See Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 118, 39 USPQ 296, 298 (1938). As stated in Norwich Pharmaceutical Co. v. Sterling Drug, Inc., 123 USPQ 372, 376 (2d Cir.1959) at n. 9, proof of secondary meaning entails relatively rigorous evidentiary requirements in that the term in question "must have 'been used in such a manner, over such a period of time, and to such an extent that the purchasing public associates' it with the goods of a particular source. Automatic Washer Co. v. Easy Washing Machine Corp., ... 89 USPQ 524, 528 [N.D.N.Y.1951]".