Incontestable - July/August 2010 - Mag Instrument, Inc. v. Brinkmann Corp.

Finnegan's monthly review of essential decisions, key developments, evolving trends in trademark law, and more.

July/August 2010 Issue

TTAB Cases

Mag Instrument, Inc. v. Brinkmann Corp.,
Opp. No. 91163534 (TTAB July 28, 2010)

ABSTRACT
The TTAB sustained each of three oppositions in a consolidated proceeding between competing flashlight manufacturers. In the first proceeding, the TTAB found a likelihood of confusion between Brinkmann’s MAGNUM MAXFIRE mark and Mag’s MAG-NUM STAR mark, rejecting Brinkmann’s asserted Morehouse defense. With roles reversed in the second proceeding, the TTAB sustained Brinkmann’s opposition to Mag’s MAG STAR mark on the basis of Brinkmann’s MAXSTAR registration. Finally, the TTAB held that Mag’s dual-band design mark applied to the barrel of a flashlight was functional and, in the alternative, lacked the required acquired distinctiveness for registration.

CASE SUMMARY

FACTS
This opinion resolved three consolidated opposition proceedings between Mag Instrument, Inc. (“Mag”) and Brinkmann Corporation (“Brinkmann”). In the first proceeding, Brinkmann applied to register the mark MAGNUM MAXFIRE for “hand-held portable lights, namely flashlights and spotlights.” Mag opposed the registration on the grounds of priority and likelihood of confusion based on its famous family of “MAG” marks, including the registered mark MAG-NUM STAR for flashlight bulbs. In the second proceeding, Brinkmann opposed Mag’s registration of the mark MAG STAR for flashlights and related parts and electric flashlight accessories based upon its own registration for the mark MAXSTAR for electric lanterns. In the final proceeding, Brinkmann opposed Mag’s application to register a configuration mark (“the dual-band mark”) for flashlights under Section 2(f) on the grounds that the mark was functional and, alternatively, had not attained acquired distinctiveness.

ANALYSIS
The TTAB reviewed each of the consolidated proceedings individually.

MAGNUM MAXFIRE
In the first proceeding in which Mag opposed Brinkmann’s registration of MAGNUM MAXFIRE on the basis of its MAG-NUM STAR mark, the TTAB first addressed Brinkmann’s assertion of the Morehouse defense, citing its ownership of an existing incontestable registration for the mark MAGNUM MAX for “hand-held electrical spotlights.” The Morehouse defense, also known as the prior-registration defense, is an equitable doctrine that applies when an applicant owns a prior registration “for essentially the same (or substantially similar) mark and goods or services, and which registration has not been challenged.” In such cases, “the opposer cannot be injured . . . because there already exists a similar registration, and therefore the additional registration does not add to the injury.”

Brinkmann argued that the affirmative defense was applicable because it owned an incontestable registration for the mark MAGNUM MAX for “hand-held electrical spotlights,” which, it alleged, was substantially identical to the applied-for MAGNUM MAXFIRE mark. Brinkmann argued that the addition of the term FIRE was irrelevant because Mag’s allegation only related to the MAGNUM/MAX portions of Brinkmann’s mark, and that spotlights were identical to flashlights. The TTAB disagreed, finding MAGNUM MAX not substantially the same as MAGNUM MAXFIRE, and further that Mag did not solely claim damages based on the similarity of the MAGNUM portions of the marks. While the TTAB acknowledged that “hand-held electric spotlights” and “flashlights” were “clearly very similar in nature,” it concluded that the products represented distinct categories of lighting products and were thus not substantially the same.

Finding the Morehouse defense inapplicable, the TTAB found a likelihood of confusion between Mag’s MAG-NUM STAR mark and Brinkmann’s MAGNUM MAXFIRE mark. Of particular interest in that analysis was the TTAB’s rejection of Brinkmann’s argument that an absence of any actual confusion with any of Mag’s marks in the twenty-five years of Brinkmann’s use of its incontestable MAGNUM MAX mark suggested that confusion was not likely between the applied-for mark and Mag’s mark. The TTAB refused to extrapolate from the lack of confusion between different marks that confusion was unlikely between the marks at issue.

MAG STAR
In the second proceeding, the TTAB sustained Brinkmann’s opposition to Mag’s application to register the MAG STAR mark for flashlights and related accessories based on its MAXSTAR mark. The TTAB found the marks to be similar in sound and appearance, noting that both “begin with the letters ‘MA’ followed by another single letter and end with ‘star,’” and, unless spoken slowly with enunciation, it is likely a consumer will confuse the two marks upon hearing them spoken. Mag unsuccessfully argued that consumers would understand the MAG STAR mark to connote its product based on its family of “MAG” marks. The TTAB reiterated that the family-of-marks doctrine is unavailable to a defendant in an inter partes proceeding. Nor did the TTAB accept that “MAG” would be understood by consumers as Mag’s house mark.

It was undisputed that the goods—Mag’s flashlights and related parts and accessories, and Brinkmann’s electric lanterns—were found in the same channels of trade and sold to the same classes of consumers. And the TTAB held them to be “clearly related” despite different utilitarian purposes.

Finally, Mag unsuccessfully argued that there was no likelihood of confusion because it had extensively used similar marks, namely, MAG-NUM STAR and WHITE STAR, without any known instances of actual confusion with Brinkmann’s MAXSTAR mark. As with Brinkmann’s similar argument in the first proceeding, the TTAB rejected this argument.

Dual-Band Design Mark
In the third proceeding, Brinkmann opposed Mag’s dual-band design mark, which consisted of two bands that encircled the barrel of a flashlight. As an initial matter, Mag argued that the mark consisted of bands that were visibly contrasting from the rest of the flashlight. Rejecting this contention, the TTAB noted that the application’s description of the mark and its drawing did not require that the two bands contrast with the barrel of the flashlight. Rather, the drawing only showed the location of the bands on the barrel.

Mag’s only use of the dual-band mark has been on its rechargeable MAG CHARGER flashlight, and Brinkmann argued that the design mark was functional because the mark represented a design “that is ‘necessary to charge the flashlight and the reason that the charging feature works.’” Specifically, Brinkmann contended that the two charging bands encircling the barrel provided a continuous surface from which to charge the flashlight. In response, Mag contended that there was no functional requirement that the bands be visibly separate and contrasting bands. Pointing to Mag’s expired utility patent claiming a flashlight and recharging unit depicting the two bands and describing their functional purpose for recharging, the TTAB held that “it is evident that the features of Mag’s applied-for mark . . . are fundamentally covered by the expired patent.” Despite slight differences between the patent and the MAG CHARGER flashlight, the TTAB found that the two bands represented in the mark also represented the two annular rings described in the patent as essential to the recharging function of the flashlight. The fact that several advertisements for the MAG CHARGER flashlight promoted the advantages of the circumferential ring design for recharging purposes was further evidence in favor of a functionality finding.

The TTAB rejected Mag’s expert’s testimony that functionally equivalent designs existed, finding several inadequacies with the proffered alternative designs, including that the alternatives lacked descriptions as to their feasibility; it was unstated whether third parties could use the alternatives without infringing Mag’s design; and the alternatives were not functionally equivalent to Mag’s design.

Finding the disclosure in the utility patent and advertisement language to outweigh the significance of any possible alternative designs in its functionality analysis, the TTAB concluded that the proposed design mark was functional.

The TTAB also addressed Brinkmann’s alternative argument that the design mark lacked acquired distinctiveness. Despite evidence of twenty-seven years of use and substantial sales, the TTAB found Mag’s secondary-meaning evidence lacking. Specifically, the TTAB found insufficient the numerous declarations of Mag sales representatives because they did not appear to be prepared by the signors, were not a random selection of possible declarants, and the declarants were not end consumers. The TTAB noted that the “most damaging” element to Mag’s argument was the noticeable absence of evidence that Mag ever placed any “look for” advertisements or other promotional efforts to create an association between the dual bands and Mag itself.

CONCLUSION
This proceeding illuminates the TTAB’s analysis of the functionality of a design mark covered by an expired utility patent and highlights the importance of exacting drawings and descriptions in a design-mark application. This decision also reiterates the extremely narrow application of the Morehouse defense. Finally, the decision illustrates that the TTAB will not credit the absence of a lack of actual confusion between similar, but not identical, marks as evidence that confusion is unlikely.