No. 14-1219 ________________________ IN THE ________________________ M.Z. BERGER & CO., INC., Appellant, – v. – SWATCH AG (SWATCH SA) (SWATCH LTD.), Appellee. ________________________ On Appeal From a Decision of the Trademark Trial and Appeal Board in Opposition No. 91187092 ________________________ REPLY BRIEF OF APPELLANT ________________________ Samson Helfgott Jessica Garrett KATTEN MUCHIN ROSENMAN LLP 575 Madison Avenue New York, NY 10022 212-940-8800 Howard R. Rubin Counsel of Record Robert T. Smith Daniel Lipton * KATTEN MUCHIN ROSENMAN LLP 2900 K Street, NW – Suite 200 Washington, DC 20007 202-625-3500 Counsel for Appellant M.Z. Berger & Co., Inc. * Licensed to practice only in New York; supervised by Principals of the Firm.
44
Embed
M.Z. BERGER CO., INC., · 575 Madison Avenue New York, NY 10022 212-940-8800 Howard R. Rubin
This document is posted to help you gain knowledge. Please leave a comment to let me know what you think about it! Share it to your friends and learn new things together.
Transcript
No. 14-1219 ________________________
IN THE
________________________
M.Z. BERGER & CO., INC.,
Appellant,
– v. –
SWATCH AG (SWATCH SA) (SWATCH LTD.), Appellee.
________________________
On Appeal From a Decision of the Trademark Trial and Appeal Board in Opposition No. 91187092
________________________
REPLY BRIEF OF APPELLANT ________________________
Samson Helfgott Jessica Garrett KATTEN MUCHIN ROSENMAN LLP 575 Madison Avenue New York, NY 10022 212-940-8800
Howard R. Rubin Counsel of Record Robert T. Smith Daniel Lipton* KATTEN MUCHIN ROSENMAN LLP 2900 K Street, NW – Suite 200 Washington, DC 20007 202-625-3500
Counsel for Appellant M.Z. Berger & Co., Inc.
* Licensed to practice only in New York; supervised by Principals of the Firm.
- i -
CERTIFICATE OF INTEREST
Consistent with Federal Rule of Appellate Procedure 26.1 and
Federal Circuit Rule 47.4, counsel for Appellant M.Z. Berger & Co., Inc.
certifies the following:
1. The full name of every party or amicus represented by me is:
M.Z. Berger & Co., Inc.
2. The name of the real party in interest (if the party named in the caption is not the real party in interest) represented by me is:
The real party in interest is the same as the party represented by me.
3. All parent corporations and any publicly held companies that own 10 percent or more of the stock of the party or amicus curiae represented by me are:
M.Z. Berger & Co., Inc. is a privately-held company. There are no parent corporations or any publicly-held companies that own 10 percent or more of the stock of M.Z. Berger & Co., Inc.
4. The names of all law firms and the partners or associates that appeared for the party or amicus now represented by me in the trial court or agency or are expected to appear in this court are:
Katten Muchin Rosenman LLP: Howard R. Rubin, Samson Helfgott, Robert T. Smith, Jessica Garrett, Daniel Lipton, and Michael F. Sarney (no longer with Katten Muchin Rosenman LLP).
Dated: August 7, 2014 /s/ Howard R. Rubin x Howard R. Rubin Counsel for Appellant M.Z. Berger & Co., Inc.
- ii -
TABLE OF CONTENTS
CERTIFICATE OF INTEREST ................................................................. i TABLE OF AUTHORITIES ..................................................................... iv REPLY ARGUMENT ................................................................................ 1 I. M.Z. Berger Satisfied the Standard that Governs the Earliest
Stage of the Intent-to-Use Process .................................................. 2 A. The Standard Enacted By Congress Only Requires a
Bona Fide Intent to Use the Mark at a Later Date, Not Actual Promotion, Development, or Marketing Efforts ......... 5
B. M.Z. Berger Proffered Numerous Pieces of Objective Evidence Demonstrating Its Bona Fide Intent to Use the iWatch Mark at a Later Date ................................................. 9
C. Contrary to Swatch’s Argument, The Board Made No Finding of Bad Faith ............................................................. 15
D. Contrary to Swatch’s Argument, M.Z. Berger Is Not Limited to Documentary Evidence to Support Its Application ............................................................................ 17 1. The Statute Nowhere Requires Documentary
Evidence ....................................................................... 17 2. Swatch’s Insistence on Documentary Evidence Is
Contrary to Congressional Intent ................................ 18 3. The Board Has Never Previously Insisted on
Documentary Evidence ................................................ 19 4. What Distinguishes this Case From Past Cases Is
the Board’s Erroneous Insistence on Evidence of Promotion, Development, and Marketing Efforts ....... 21
II. The Board Correctly Found That There Is No Likelihood of Confusion Between the “iWatch” and “Swatch” Marks ................ 24 A. “Watch” Is A Generic and Descriptive Term that Carries
Little or No Significance In Evaluating Likelihood of Confusion ............................................................................... 25
- iii -
B. The Board Correctly Weighed the Factors in Finding No Likelihood of Confusion ........................................................ 29
C. Swatch Waived Its Argument Regarding “iSwatch” and “eSwatch” and Cannot Claim Likelihood of Confusion Based on These Marks .......................................................... 33
CONCLUSION ........................................................................................ 35 CERTIFICATE OF COMPLIANCE ........................................................ 36 CERTIFICATE OF SERVICE ................................................................. 37
- iv -
TABLE OF AUTHORITIES
CASES:
Aktieselskabet AF 21 November 2001 v. Fame Jeans Inc., 525 F.3d 8 (D.C. Cir. 2008) ...................................... 8, 16, 17, 18, 34
Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350 (Fed. Cir. 2009) ................................................. 2, 3, 7
Boston Red Sox Baseball Club Ltd. P’ship v. Sherman, 88 U.S.P.Q.2d 1581, 2008 WL 4149008 (T.T.A.B. 2008) ......... 20, 21
Collagenex Pharms., Inc. v. Four Star Partners, No. 91150890, 2003 WL 22273118 (T.T.A.B. Sept. 24, 2003) (non-precedential) ................................................................................... 16
S. Rep. No. 100-515 (1988) ........................................................ 2, 6, 13, 18
Sandra Edelman, Proving Your Bona Fides—Establishing Bona Fide Intent to Use Under the U.S. Trademark (Lanham) Act, 99 Trademark Rep. 763 (2009) ...................................................... 21
Webster’s Ninth New Collegiate Dictionary (1987) ................................. 26
- 1 -
REPLY ARGUMENT In trying to defend the decision below, Swatch all but ignores the
minimal standard that governs the earliest stage of the intent-to-use
trademark application process. Without ever taking on that standard,
Swatch argues that M.Z. Berger was required to submit exhaustive
documentary evidence in support of its intent-to-use application for the
iWatch mark, and it also argues that the Board made a finding of bad
faith. Swatch is mistaken. M.Z. Berger provided sufficient and
persuasive evidence to survive the earliest stage of the intent-to-use
process, and the Board made no finding of bad faith.
As an alternative ground for affirmance, Swatch claims that there
is a likelihood of confusion between the iWatch and Swatch marks, but
its aggressive claim that others cannot use the generic term “watch” has
been repeatedly rejected by the courts. Perhaps for this reason, Swatch
argues for the first time on appeal that the iWatch mark is confusingly
similar to the iSwatch and eSwatch marks, but it waived this
argument, and it nowhere acknowledges that M.Z. Berger applied for
the iWatch mark before Swatch ever applied for iSwatch or eSwatch.
The ultimate decision of the Board, sustaining the notice of
opposition, should be reversed.
- 2 -
I. M.Z. Berger Satisfied the Standard that Governs the Earliest Stage of the Intent-to-Use Process.
As M.Z. Berger explained in its principal brief (and Swatch does
not dispute), this case presents a matter of first impression for this
Court regarding the proper standard to apply at the earliest stage of an
intent-to-use application filed under 15 U.S.C. § 1051(b)(1). That
subsection simply requires an applicant to make a verified statement
that she has a “‘bona fide intention to use the mark in commerce’ at a
later date.” Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 1357-58
(Fed. Cir. 2009) (quoting 15 U.S.C. § 1051(b)). It is only later in the
process, following the conclusion of an opposition proceeding such as
this one, that an applicant is required to show efforts to promote,
develop, market, or use a product bearing the trademark at issue. M.Z.
Congress added the intent-to-use process to allow an applicant to
obtain priority in a trademark before “making a sizable investment in
packaging, advertising and marketing.” S. Rep. No. 100-515, at 5
(1988). The decision of the Board is contrary to that process.
Although this Court has not yet opined on the substantive
standard that governs the earliest stage of an intent-to-use application,
- 3 -
it has established the standard of review that governs a decision of the
Board holding that an applicant “failed to meet the ‘use in commerce’
element of the Lanham Act.” Aycock, 560 F.3d at 1353. In evaluating
this element, the Court reviews the Board’s “legal conclusions de novo.”
Id. at 1355. Factual findings, in contrast, are “reviewed for substantial
evidence.” Id. Such a distinction makes sense. The Board’s
“interpretations of the Lanham Act and the legal tests it applies in
measuring registrability” are inherently questions of law that this
Court has “reviewed de novo.” In re Save Venice N.Y., Inc., 259 F.3d
1346, 1351-52 (Fed. Cir. 2001).
Drawing on abandonment cases, Swatch argues that this Court
should treat the Board’s ultimate conclusion—that M.Z. Berger “lacked
a bona fide intent to use a trademark”—as a question of fact that is
reviewed for substantial evidence. Swatch Br. 15. But this argument
fails for at least three reasons. First, it is too simplistic to label this
inquiry a question of fact. Whether a party has satisfied the standard
under Section 1051(b)(1) is more aptly described as a mixed question of
fact and law, because it involves both “a determination of historical
facts” and an analysis of “whether the facts satisfy the relevant
- 4 -
statutory . . . standard.” Ornelas v. United States, 517 U.S. 690, 696
(1996) (brackets omitted). Second, this Court has emphasized that,
unlike the issue of abandonment, questions of registrability are mixed
questions that ultimately warrant de novo review. For example, this
Court has held that “[w]hether a likelihood of confusion exists”—a
question of registrability—“is a question of law, based on underlying
factual determinations.” On-Line Careline, Inc. v. Am. Online, Inc., 229
F.3d 1080, 1084 (Fed. Cir. 2000). Deference is given to those underlying
factual determinations, but review of the ultimate question is plenary.
Id. Third, the Supreme Court has explained that where, as here, the
“relevant legal principle can be given meaning only through its
application to the particular circumstances of a case, the Court has been
reluctant to give the trier of fact’s conclusions presumptive force and, in
so doing, strip a federal appellate court of its primary function as an
expositor of law.” Miller v. Fenton, 474 U.S. 104, 114 (1985).
Here, M.Z. Berger challenges the legal standards that the Board
applied in determining whether the company had satisfied the standard
under Section 1051(b)(1); it does not need to take on the Board’s
underlying factual findings. That is, even with deference accorded to
- 5 -
the Board’s factual findings, its ultimate conclusion is contrary to the
process established by Congress—a process that was meant to lower the
initial barrier to obtaining priority while establishing subsequent
safeguards to prevent parties from reserving marks without any intent
to use them in commerce. The portion of the Board’s decision
misapplying the intent-to-use standard should be reversed.
A. The Standard Enacted By Congress Only Requires a Bona Fide Intent to Use the Mark at a Later Date, Not Actual Promotion, Development, or Marketing Efforts.
Swatch barely acknowledges the revised intent-to-use process that
Congress ushered in with the passage of the Trademark Law Revision
Act of 1988. Swatch Br. 17-18. It concedes, as it must, that Congress
“allowed a party, for the first time, to file an application based not on
actual use in commerce, but on a bona fide intent to use.” Id. at 17.
But Swatch only hints at the purposes behind this revised process, id.
(discussing only the concept of “token use”), and it nowhere discusses
how the revised process was structured to achieve these purposes, see
generally id. Those purposes and structure are critical to
understanding why the Board erred in this case.
- 6 -
As M.Z. Berger explained in its principal brief, Congress added
the intent-to-use process in order to correct perceived deficiencies in the
To be sure, the Board has interpreted Section 1051(b)(1) “to
require both actual intent to use a mark in commerce and evidence,
contemporary with the application, that objectively demonstrate[s] such
an intent.” Aktieselskabet AF 21 November 2001 v. Fame Jeans Inc.,
525 F.3d 8, 21 (D.C. Cir. 2008) (citing Board authorities). But the
quantum of evidence that the Board requires must be commensurate
with the overarching structure and purpose of the intent-to-use
process—a process that does not require concrete steps to develop,
promote, market, or manufacture a product until at least a year after
an opposition proceeding has concluded. 15 U.S.C. § 1051(d)(1), (2)
(allowing six months and one automatic extension of an additional six
months before requiring proof of use or a showing of good cause).
Sustaining a notice of opposition based on a complete absence of
objective evidence of bona fide intent is one thing. See, e.g., Spirits Int’l,
B.V. v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri
Birligi, 99 U.S.P.Q.2d 1545, 2011 WL 2909909, at *4 (T.T.A.B. July 6,
2011) (non-precedential) (finding a lack of bona fide intent, during an
- 9 -
opposition proceeding, where the “applicant submitted no evidence
whatsoever”). But it is quite another thing to sustain an opposition
based on a demand—such as the one the Board made here—for
evidence of “promotional” material or “effort[s] to develop and market” a
product. J.A. 24, 32. The former situation is consistent with the
statutory design; the latter is not.
B. M.Z. Berger Proffered Numerous Pieces of Objective Evidence Demonstrating Its Bona Fide Intent to Use the iWatch Mark at a Later Date.
M.Z. Berger satisfied the minimal standard under Section
1051(b)(1). It proffered objective evidence, both documentary and
testimonial, demonstrating its bona fide intent to use the iWatch mark
at a later date. That is all that is required at this stage of the process.
Cf. 15 U.S.C. § 1051(d); 37 C.F.R. § 2.89(d).
M.Z. Berger applied for the iWatch mark for a narrow set of
products—watches, clocks, and related goods. J.A. 41. There was
uncontested documentary and testimonial evidence that, at the time
that M.Z. Berger applied for the mark, it was a “watch” and “clock”
company with more than half a century of experience in the business.
E.g., J.A. 939, 1759, 1850-51; see J.A. 10. There also was uncontested
- 10 -
documentary evidence that M.Z. Berger employs over 700 men and
women (mostly in manufacturing), has offices in New York, Hong Kong,
China, and Canada, and sells roughly 20 million timepieces a year. J.A.
938-39; see also J.A. 10. Finally, there was uncontested documentary
and testimonial evidence that M.Z. Berger is not simply a reseller of
watches and clocks; it also develops, designs, and then sells its own line
of proprietary brands. E.g., J.A. 938, 940-41, 1759-61, 1852. Indeed,
the company submitted uncontested documentary evidence that it has
brought numerous trademarked watches to market, both in the years
preceding the iWatch application (J.A. 1233-34) and in the years that
followed (J.A. 1224-25, 1227-28, 1230-31). (The Board completely
ignored M.Z. Berger’s evidence that it had brought trademarked
watches to market before it applied for the iWatch mark. J.A. 30-31.)
In addition, M.Z. Berger submitted testimonial evidence that, at
the time that the company’s CEO, Bernard Mermelstein, “came up with
the” idea for the iWatch name, he thought it would be a good name for a
brand “if [the company] decided to do [an] information watch or
something that would have that type of characteristic.” J.A. 845. Soon
thereafter, the company held an initial meeting to discuss the iWatch
- 11 -
name and potential product features. E.g., J.A. 1765-67, 1860-62, 1887.
At the end of this meeting, the company had reached a firm decision:
“[W]e all decided, after we left that meeting, that [the iWatch name]
was something we were going to pursue.” J.A. 1766.1
The company held several more meetings about iWatch, including
several meetings within the merchandising department. J.A. 1767.
During these meetings, the company discussed “what the logo should
and could look like” (J.A. 1767), potential accounts and vendors (J.A.
1768), a target price (J.A. 1769, 1814, 1862), and potential colors (J.A.
1825). Also during these meetings, the company decided that the logo
would have a “small I” and a “capital W.” J.A. 2044; see J.A. 761, 763
(depictions of iWatch logos).2
1 Swatch claims that Mr. Mermelstein admitted that he never had a firm intent to use iWatch at the time that M.Z. Berger applied for the mark, suggesting that, at that time, he simply thought it was a good mark “‘if we decided to do a . . . technology . . . or information watch.’” Swatch Br. 2 (quoting J.A. 845) (emphasis added by Swatch). But in reality, Mr. Mermelstein was responding to a question about what he thought at the time he “came up with” the idea for the mark, not when the company applied for it. J.A. 845 (emphasis added). 2 Swatch attempts to discredit these meetings, claiming that there is “no evidence in the record that such meetings were contemporaneous with the filing of the application.” Swatch Br. 38. But that is simply not true. It is apparent that these meetings occurred before M.Z. Berger filed its application. E.g., J.A. 1766 (testifying that, following one of
- 12 -
Following these meetings, the company prepared a trademark
application for “iWatch,” J.A. 40—one that included the small I and
capital W previously discussed, J.A. 45. Before filing that application,
however, the company conducted a trademark search to determine
whether the mark was available, J.A. 19, 1251, 1966-67, 1987-2003—
more uncontested, objective, documentary evidence of the company’s
bona fide intent to use the mark at a later date.
In addition, there was uncontested documentary and testimonial
evidence that, not long after filing its trademark application, the
company prepared renderings of a watch and clock bearing the “iWatch”
mark. J.A. 65, 227-28, 757-58. There was some potentially conflicting
testimony about whether these renderings were shown to a prospective
buyer. Compare J.A. 855-56, 867-68 (Mermelstein), with J.A. 2033
(Titera); see also J.A. 1783 (Russo). But there is no requirement that
M.Z. Berger had to show a potential buyer any product at this stage of
There also was some potentially conflicting testimony about whether
these meetings, everyone in attendance agreed that M.Z. Berger should “pursue” the application); J.A. 45 (deciding on the “small I” and “capital W” that would form the basis of the company’s application).
- 13 -
the company produced a prototype of the watch. Compare J.A. 1819
(Russo), with J.A. 857 (Mermelstein); see also J.A. 1891 (Gordon). But
again, there is no requirement that M.Z. Berger had to make that sort
of investment—upwards of “$15,000,” J.A. 1864-65 (Gordon)—before
learning whether the mark was registrable, S. Rep. No. 100-515, at 23.
Lastly, there was testimonial evidence that an M.Z. Berger
employee discussed the iWatch brand with at least one potential buyer.
J.A. 1779. To be sure, the Board perceived some level of inconsistency
about the details of this conversation. J.A. 29-30 (comparing an e-mail
by Ms. Titera (J.A. 2033) with Ms. Russo’s testimony (J.A. 1825-26)).
But the company representative who met with the prospective buyer
had no doubt that the meeting took place. J.A. 1783; see also J.A. 1810
(responding that she was “100 percent sure” she met with a woman and
discussed the mark with her).3
3 In reality, the two pieces of evidence are not in conflict. Ms. Titera wrote in an e-mail to Mr. Mermelstein that a specific potential buyer thought that a watch with interactive features would be too expensive, and as a result, the company decided not to move forward on a watch with interactive features. J.A. 2033. Ms. Russo, in contrast, was asked what caused the company to suspend efforts to develop the iWatch brand, J.A. 1825; she testified that it was because of Swatch’s notice of opposition, not because “buyers thought the watch would be too expensive.” J.A. 1826.
- 14 -
As the opponent, Swatch at all times bore the burden of proving,
by a preponderance of the evidence, that M.Z. Berger did not have any
bona fide intent, e.g., Intel Corp. v. Emeny, No. 91123312, 2007 WL
1520948, at *4 (T.T.A.B. May 15, 2007) (non-precedential), and Swatch
bore this burden at a stage in the process when M.Z. Berger is under no
obligation to take steps to develop, promote, market, or use the product
in question, cf. 15 U.S.C. § 1051(d)(2); 37 C.F.R. § 2.89(d). The fact that
Swatch bears such a high burden at this stage is fully consistent with
congressional intent. Eastman Kodak, 994 F.2d at 1572 (explaining
that “Congress knew that some issues of registrability could not be
decided in opposition proceedings”); see also id. at 1575 n.8 (noting
Congress was aware that this process could delay the adjudication of
certain issues of registrability for “a period of months or years” but this
was the balance “intended by Congress”).
Judged under the proper standard, Swatch failed to meet its
burden. The evidence, viewed as a whole, shows that M.Z. Berger had
the past experience, the capacity, the motivation, the wherewithal, and
the appropriate level of follow-through to use the iWatch mark in
- 15 -
commerce at a later date, and it provided more than sufficient, objective
evidence of its bona fide intent to overcome Swatch’s opposition.
C. Contrary to Swatch’s Argument, The Board Made No Finding of Bad Faith.
In its response brief, Swatch argues that the Board made a finding
of bad faith on the part of M.Z. Berger, Swatch Br. 46-47, but the Board
did no such thing, see J.A. 1-33. Granted, the Board discounted some of
M.Z. Berger’s testimonial evidence, highlighting the perceived
inconsistencies discussed above. E.g., J.A. 23 (noting that the witnesses
“disagree[d]” about what the renderings represented); J.A. 28-29
(claiming a discrepancy between Ms. Titera’s e-mail and Ms. Russo’s
testimony); but see supra note 3 (noting that these two pieces of
evidence are not contradictory). Even then, discussing potential
inconsistencies is a far cry from a finding of bad faith. And the Board
made no such finding here.
According to Swatch, perhaps the most persuasive evidence of bad
yet, Swatch points to no consumer surveys or other evidence showing
that consumers do not distinguish “watch” from the “Swatch” mark, or
“Swatch” from the “iWatch” mark, for that matter. Moreover, the Board
- 28 -
did not need evidence to arrive at this reasonable conclusion. This
Court has recognized that “experience tells us that we and other
consumers distinguish between [the descriptive and] the non-
descriptive portion” of trademarks. In re Nat’l Data Corp., 753 F.2d
1056, 1060 (Fed. Cir. 1985). The same logic applies here. The Board
properly applied its experience to conclude that consumers will
distinguish the generic and descriptive term “watch” from the “Swatch”
and “iWatch” marks.
Second, Swatch argues for the first time on appeal that the
“Swatch” mark has taken on a “secondary meaning,” such that
“consumers do not view the mark (or portions of the mark) under its
ordinary meaning.” Swatch Br. 52. Swatch failed to raise this
argument below, and it is therefore waived. In re Chamber of
Commerce, 675 F.3d 1297, 1298 n.1 (Fed Cir. 2012). Yet, even if Swatch
had raised this argument below, it has no merit. Although “Swatch”
arguably is a unique word that can take on any number of fanciful
meanings in the minds of consumers and is therefore “capable of
receiving trademark protection,” a generic term, like “watch,” is not.
Nautilus Group, 372 F.3d at 1341.
- 29 -
Swatch’s argument boils down to the proposition that the generic
and descriptive term “watch” is so closely associated with the “Swatch”
mark that no other manufacturer or seller of watches can use a
trademark with the letters W-A-T-C-H in the “lucrative ‘alphabetical
watch’ market.” Swatch Watch, 785 F.2d at 957. Accepting Swatch’s
line of argument would effectively grant Swatch a monopoly over the
term “watch” when used in connection with timepieces. This Court has
diligently guarded against such an outcome based on a legitimate
concern that it would prohibit competitors from “‘describ[ing] [their]
goods as what they are.’” Nautilus Group, 372 F.3d at 1341. The Court
should adhere to its precedent and reject Swatch’s attempt to
monopolize the generic and descriptive term “watch.”
B. The Board Correctly Weighed the Factors in Finding No Likelihood of Confusion.
Having properly determined that the term “watch” should be
afforded little or no weight in the likelihood-of-confusion analysis, the
Board reasonably concluded that the sound, meaning, and overall
commercial impression of the “iWatch” mark were sufficiently different
from the “Swatch” mark, such that no likelihood of confusion exists.
- 30 -
As the Board recognized, “Swatch” and “iWatch” are phonetically
dissimilar. “Swatch” is monosyllabic, beginning with a sibilant
consonant, while “iWatch” is a “two-syllable telescoping of the terms ‘I’
and ‘WATCH’ beginning with the long ‘I’ vowel sound.” J.A. 14. Indeed,
Swatch’s insistence that the “Swatch” mark should be viewed as a
unitary term (Swatch Br. 51-53) only reinforces the phonetic differences
between the monosyllabic “Swatch” and the hyphenated pronunciation
of “iWatch.”
Furthermore, while acknowledging there is “some visual
similarity” between the “Swatch” and “iWatch” marks, the Board found
that the “S” and “i” were “readily distinguishable in both appearance
and in meaning.” J.A. 14-15. To that end, the Board correctly noted
that the various consumer interpretations that may attach to the “i” of
the “iWatch” mark—including a “reference to ‘interactive’; a personal
pronoun; or a double entendre playing on the verb form of the term
‘watch’” (J.A. 15)—were distinct from any of the connotations associated
with the “Swatch” mark.
Swatch attempts to undermine this finding by arguing that the
Board improperly ascribed a meaning to the “i” of the “iWatch” mark
- 31 -
when M.Z. Berger had taken the position with the PTO that the
meaning of its mark was purely arbitrary. Swatch Br. 54. Swatch,
however, exaggerates the significance of M.Z. Berger’s statement. After
M.Z. Berger submitted its application for the “iWatch” mark, the PTO
examining attorney initially refused registration based on concerns that
“iWatch” was descriptive under 15 U.S.C. § 1052(e)(1). J.A. 72. M.Z.
Berger responded to the PTO, explaining that “[t]he ‘i’ does not refer to
any particular feature of the watches or clocks” and that “there will be
no interactive features on any models.” J.A. 75. The Company,
however, never stated that the “iWatch” mark could not lend itself to
various consumer interpretations. To that end, the various meanings
that consumers may ultimately ascribe to the “i” of the “iWatch” mark—
whether related to pronouns, entendres, or technology—are distinct
from the question of whether the “iWatch” mark is impermissibly
descriptive under Section 1052(e)(1). In any event, Swatch only argues
that the “i” of “iWatch” must be devoid of meaning; it never argues that
the “S” of “Swatch” and the “i” of “iWatch” have similar connotations.
Thus, there can be no basis for finding that the two marks have
confusingly similar meanings, aside from the fact that they share the
- 32 -
generic and descriptive term “watch.” And as discussed above, this is
an insufficient ground upon which to find the two marks confusingly
similar.
Swatch also contends that the Board improperly “discounted” the
fame of the “Swatch” mark and the fact that the “Swatch” and “iWatch”
marks compete in the same channels of trade. Swatch Br. 49-50. But
the Board did no such thing; it recognized that the goods were in the
same channels of trade (J.A. 12) and was “mindful that fame, where it
exists, plays a dominant role in the likelihood[-]of[-]confusion analysis”
(J.A. 14). Nevertheless, fame and similarity in the channels of trade
are not dispositive factors. To the contrary, depending on the facts,
other factors “may play dominant roles in determining likelihood of
confusion.” Kenner Parker Toys, Inc. v. Rose Art Indus., Inc., 963 F.2d
350, 352 (Fed. Cir. 1992). Here, the Board properly concluded that
dramatic differences in sound, meaning, appearance, and overall
commerce impression outweighed any significance that can be ascribed
to the fame of the “Swatch” mark and the similarity in the channels of
trade.
- 33 -
In the end, Swatch’s argument is little more than a naked
assertion that the fame of its mark should entitle it to a monopoly in
the watch industry over the use of the generic and descriptive term
“watch,” no matter the difference in sound, appearance, and meaning of
competing marks, and without submitting any evidence of consumer
confusion. The Board properly rejected this argument.
C. Swatch Waived Its Argument Regarding “iSwatch” and “eSwatch” and Cannot Claim Likelihood of Confusion Based on These Marks.
Swatch claims that the Board erred by failing to give
consideration to its “iSwatch” and “eSwatch” marks. Swatch Br. 56-57.
The Board, however, correctly noted that Swatch made no arguments in
its trial briefing concerning the “iSwatch” and “eSwatch” marks. J.A. 7
n.18. Swatch merely cited these marks in its notice of reliance (J.A.
681) and vaguely referenced their registration numbers in an
introductory section of its trial brief, entitled “Description of the Record”
(J.A. 1695). Swatch never argued that these registrations were relevant
to the Board’s likelihood-of-confusion analysis. See J.A. 1717-32.
Swatch, therefore, waived these arguments. Chamber of Commerce,
675 F.3d at 1298 n.1.
- 34 -
Regardless, even if Swatch had preserved its arguments
concerning the “iSwatch” and “eSwatch” marks, it still fails to explain
how these registrations are relevant to the question of whether
“Swatch” and “iWatch” are confusingly similar. Swatch’s claim for
likelihood of confusion in its Notice of Opposition was based solely on
the marks “SWATCH” and “SWATCH QUARTZ.” J.A. 92. Indeed,
Swatch concedes that “iSwatch” and “eSwatch” were never pleaded in
its Notice of Opposition. Swatch Br. 58.
Finally, Swatch cannot claim priority to the iSwatch and eSwatch
marks. M.Z. Berger filed its application for the “iWatch” mark on July
5, 2007. J.A. 40. Swatch waited until April 7, 2008, before filing
applications with the PTO for the “iSwatch” and “eSwatch” marks,
claiming priority for these marks based on earlier international
registrations only up to November 28, 2007. J.A. 714-15, 721-22. Given
the sequencing of these filings, Swatch cannot rely on “iSwatch” and
“eSwatch” marks to assert a likelihood of confusion claim against M.Z.
Berger for its earlier-filed “iWatch” mark. E.g., Aktieselskabet, 525 F.3d
at 18 (holding that an intent-to-use applicant, like M.Z. Berger, can
claim priority from the filing date of its application).
- 35 -
CONCLUSION
This Court should (i) reverse that potion of the Board’s decision
holding that M.Z. Berger lacked a bona fide intent to use the iWatch
mark in commerce at a later date; (2) affirm that portion of the decision
finding no likelihood of confusion; and (3) remand with instructions that
the Patent and Trademark Office deny Swatch’s opposition and issue a
notice of allowance.
Dated: August 7, 2014 Samson Helfgott Jessica Garrett KATTEN MUCHIN ROSENMAN LLP 575 Madison Avenue New York, NY 10022 212-940-8800
Respectfully submitted, /s/ Howard R. Rubin x Howard R. Rubin Counsel of Record Robert T. Smith Daniel Lipton* KATTEN MUCHIN ROSENMAN LLP 2900 K Street, NW – Suite 200 Washington, DC 20007-5118 Tel: 202-625-3500
Counsel for Appellant M.Z. Berger & Co., Inc.
* Admitted to practice before the Federal Circuit; licensed to practice in New York only; supervised by Principals of the Firm who are members of the District of Columbia Bar consistent with D.C. Bar Rule 49(c)(8).
- 36 -
CERTIFICATE OF COMPLIANCE
Pursuant to Federal Rule of Appellate Procedure 32(a)(7)(C)(i), I
hereby certify that this brief is proportionately spaced; uses a Roman-
style, serif typeface (Century Schoolbook) of 14-point; and contains
6,995 words, exclusive of the material not counted under Federal Rule
of Appellate Procedure 32(a)(7)(B)(iii).
/s/ Robert T. Smith x Robert T. Smith Counsel for Appellant
- 37 -
CERTIFICATE OF SERVICE
I hereby certify that I electronically filed the foregoing Reply Brief
of Appellant with the Clerk of the Court for the United States Court of
Appeals for the Federal Circuit by using the appellate CM/ECF system
on August 7, 2014.
I certify that all participants in the case are registered CM/ECF
users and that service will be accomplished by the appellate CM/ECF
system.
/s/ Daniel Lipton x Daniel Lipton Counsel for Appellant