Yamaha International Corporation (Yamaha) appeals from a decision of the United States Patent and Trademark Office (PTO) Trademark Trial and Appeal Board (TTAB or board) in
Yamaha International Corp. v. Hoshino Gakki Co.,
BACKGROUND
Applicant-appellee Hoshino Gakki Co., Ltd. (Hoshino), makes guitars in connection with which it employs its registered trademark “IBANEZ.” On June 13,1979, Hosh-ino filed Application Serial Nos. 219,414 and 219,435, seeking to register as trademarks two guitar peg head configurations/designs for electric and acoustic guitars.
See
In September 1984, the PTO published the marks in the Official Gazette for opposition in accordance with 15 U.S.C. § 1062(a). See also 37 C.F.R. § 2.80. In November 1984, Yamaha, a competing guitar maker, filed two essentially identical notices of opposition in accordance with 15 U.S.C. § 1063, 2 alleging, inter alia, that *1575 the guitar peg head designs sought to be registered as trademarks had not become distinctive of Hoshino’s goods within the meaning of Section 2(f). Hoshino denied Yamaha’s allegations. In May 1985, the board consolidated the proceedings in the two oppositions.
The Board’s Opinion
In its opinion, the board first considered and rejected various evidentiary objections from Yamaha contesting the admissibility of Hoshino’s evidence.
In an opposition, said the board, the burden of proof rests on the opposer as the plaintiff party, and Yamaha therefore had the burden of showing, at least prima facie, that Hoshino’s marks had not become distinctive under Section 2(f).
The board alternatively held that “even if the burden of proof has been transferred to applicant in this proceeding, applicant’s evidence sustains its Section 2(f) claim.” Id. at 935. The board made its alternative holding “[i]n the interest of judicial economy and in the event that it may be subsequently determined [i.e., on appeal] that the opposer established, by its record, a prima facie case that applicant’s head stock designs had not acquired sufficient distinctiveness to function as trademarks or indications of source.” Id. at 933. In the board’s view, the “body of evidence, taken cumulatively, [was] adequate to sustain applicant’s burden of establishing that its peg head designs have acquired the requisite secondary meaning for registration.” Id. at 933-34.
The board dismissed Yamaha’s oppositions on October 9, 1986.
ISSUE
Whether the board erred in dismissing Yamaha’s oppositions.
OPINION
At the outset, we observe that the board’s discussion of the applicant’s and the opposer’s “burdens of proof,” and of the "shifting” of those burdens as the various stages of an opposition under Section 2(f) unfold, is itself burdened with an inexactness that has helped to mask the relevant issues in this appeal. Nevertheless, the function of this court on appeals from the TTAB is to review the board’s decision, not its reasoning.
Ilco Corp. v. Ideal Security Hardware Corp.,
I. The Opposition Proceeding
The PTO rules governing the procedure in inter partes proceedings such as oppositions are adapted from the Federal Rules, with modifications appropriate to the administrative process. Thus, the Federal Rules of Civil Procedure are authorized to be followed “wherever applicable and ap *1576 propriate,” 37 C.F.R. § 2.116(a), are used to govern discovery matters “except as otherwise provided,” 37 C.F.R. § 2.120, and are applied to evidentiary matters in conjunction with the Federal Rules of Evidence, 37 C.F.R. § 2.122(a). The opposer in any opposition proceeding is in the position of plaintiff, and the applicant is in the position of defendant. 37 C.F.R. § 2.116(b).
An opposition proceeding is initiated by a simple statement, comparable to the filing of a complaint:
37 C.F.R. § 2.104 Contents of opposition.
The opposition must set forth a short and plain statement showing how the opposer would be damaged by the registration of the opposed mark and state the grounds for opposition.
The applicant is entitled to file an answer, and to present affirmative defenses and counterclaims. 37 C.F.R. § 2.114(a), (b). In fact, the opposition and the answer correspond to the complaint and answer in a court proceeding, the assignment of testimony periods corresponds to setting a case for trial, and the submission of evidence during the assigned testimony periods corresponds to the trial in court proceedings. 37 C.F.R. § 2.116(c), (d), (e). Briefs are filed by both parties, and the plaintiff party can file a reply brief. 37 C.F.R. § 2.128. The oral hearing, following the briefing, corresponds to the oral summation in court proceedings. 37 C.F.R. § 2.116(f).
II. Opposer’s Burden for Prima Facie Case under Section 2(f)
Hoshino, seeking to register its configurations/designs under Section 2(f), bore the burden of establishing acquired distinctiveness in ex parte proceedings before the PTO.
E.g., In re Meyer & Wenthe, Inc.,
However, in the opposition proceeding at issue here, Yamaha argues the board erred in requiring it, as the opposer, to prove that Hoshino’s marks had not acquired distinctiveness. We agree with Yamaha that the sole issue in this opposition is whether Hoshino did or did not prove acquired distinctiveness. Although the distinction between the two “burdens” was not clearly outlined by the board in its opinion, we do not believe that the board required Yamaha to “prove” a lack of acquired distinctiveness. Whatever may be said of “burdens,” it appears to us that one opposing a Section 2(f) registration published for opposition on the basis of that section must have at least the initial burden of challenging or rebutting the applicant’s evidence of distinctiveness made of record during prosecution which led to publication of the proposed mark.
An opposer to an application submitted under Section 2(f) sufficiently meets its initial burden if it produces sufficient evidence or argument whereby, on the entire record then before the board, the board could conclude that the applicant has not met its ultimate burden of showing acquired distinctiveness.
Cf. Sanyo Watch Co. v. Sanyo Electric Co.,
Nevertheless, citing
R.J. Reynolds Tobacco Co. v. Philip Morris Inc.,
Where, as here, an applicant seeks a registration based on acquired distinctiveness under Section 2(f), the
statute
accepts a lack of inherent distinctiveness as an established fact.
3
When registration is sought under Section 2(f), therefore, it is idle to continue to speak of an opposer’s burden to establish that fact, or to say that the applicant “conceded” that fact. Similarly, in cases where registration was initially sought on the basis of distinctiveness, subsequent reliance by the applicant on Section 2(f) assumes that the mark has been shown or conceded to be merely descriptive. Whether in ex parte proceedings under Section 2(f),
In re McIlhenny Co.,
To prevent the immediate registration of the mark, the opposer has the initial burden to establish prima facie that the applicant did not satisfy the acquired distinctiveness requirement of Section 2(f). If oppo-ser does not provide sufficient grounds to at least place the matter in issue, the situation is indistinguishable from one in which no opposition was filed. Under such circumstances, there is insufficient basis in the record to indicate that the applicant’s mark, contrary to the examiner’s prior determination, has not “become distinctive of the applicant’s goods in commerce.” 15 U.S.C. § 1052(f). 5
If the opposer does present its prima facie case challenging the sufficiency of applicant’s proof of acquired distinctiveness, the applicant may then find it necessary to present additional evidence and argument to rebut or overcome the opposer’s showing and to establish that the mark has acquired distinctiveness. To accept Yamaha’s argument that an opposer bears no burden of establishing even a prima facie case as to the sufficiency of applicant’s prior proof would make a mere filing of a *1578 naked opposition the sole basis for delaying registration and prompting an applicant to reestablish acquired distinctiveness to the satisfaction of the PTO in the face of insufficient evidence or argument by the oppo-ser. We conclude, therefore, that the board was not incorrect in stating that Yamaha, as opposer of a Section 2(f) registration, had the burden to establish a prima facie case, the principal facet of which is showing that Hoshino did not establish acquired distinctiveness.
On the other hand, we believe that the board unnecessarily addressed the issue of whether the prima facie case had indeed been established by Yamaha. As noted above, the PTO rules governing the procedure in oppositions are designed to approximate the proceedings in a courtroom trial. Thus, whether a prima facie case has been made by the opposer only would be relevant to the resolution of a summary judgment motion filed by the applicant following the close of the opposer’s testimony period. In
Sanyo,
Since we are reviewing the entire proceeding in the PTO in which both sides presented all their evidence, filed briefs, and made closing arguments, the only relevant issue before this court on appeal, as it should have been before the board, is which party should prevail on the entire record. 7 At this stage, evaluation of the entire record, not of the prima facie showings previously made by the respective parties, is the only issue relevant to the outcome. 8 Therefore, we do not address or adopt any of the board’s discussion relating to whether, under the facts of the present case, Yamaha’s showing was sufficient to place Hoshino’s showing of acquired distinctiveness at issue. We review instead the board’s alternative holding that Hoshi-no had established, on the entire record, the requisite acquired distinctiveness to support registration of its marks.
III. The Ultimate Burden of Persuasion under Section 2(f)
Yamaha strenuously asserts in its brief on appeal that the ultimate burden of persuasion under Section 2(f) on the issue of acquired distinctiveness is on Hoshino as applicant. We completely agree. “The burden of proving secondary meaning is on the party asserting it, whether he is the
*1579
plaintiff in an infringement action or the applicant for federal trademark registration.” 1 Gilson,
Trademark Protection and Practice
§ 2.09, at 2-72 (1987). As one of our predecessor courts stated in
In re Hollywood Brands, Inc.,
However, seizing upon the board’s statement that Yamaha had not met its “burden of proof,”
Admittedly, we do not find it altogether surprising that some of the language used by the board in its opinion is capable of being misinterpreted. At the outset of its discussion, the board observed that “the burden of proof in an inter partes proceeding rests on the plaintiff party.” The board then cited
Clinton Detergent Co. v. Procter & Gamble Co.,
It is beyond question that an opposer alleging likelihood of confusion under Section 2(d) “has the burden of proof to establish that applicant does not have the right to register its mark.”
Clinton,
However, Section 2(f) applies to registrations for marks which are not inherently distinctive, or which would not otherwise qualify for registration in the face of the provisions of Section 2(e).
See
37 C.F.R. § 2.41(a). Thus, unlike the first five sections of 15 U.S.C. § 1052 which define the grounds upon which a trademark registration is to be refused, Section 2(f) serves as an exception to a rejection under the provisions of one of the other sections, Section 2(e).
See In re Loew’s Theatres, Inc.,
Thus, seeking registration under Section 2(f) is not unlike an affirmative defense to a showing by the opposer (or a concession by the applicant) that the applicant otherwise is not entitled to a trademark for one of the reasons listed under Section 2(e). Affirmative defenses are to be proved by the party asserting them.
See, e.g., Brunswick Bank & Trust Co. v. United States,
*1581 IV. Hoshino’s Evidence
The issue of acquired distinctiveness is a question of fact,
In re Loew’s Theatres, Inc.,
As observed by our predecessor court, the “exact kind and amount of evidence necessarily depends on the circumstances of the particular case”, and “Congress has chosen to leave the exact degree of proof necessary to qualify a mark for registration to the judgment of the Patent Office and the courts.”
Yamaha argues that Hoshino had the burden of proving acquired distinctiveness under the present circumstances by clear and convincing evidence (citing
In re Meyer & Wenthe, Inc.,
In most oppositions to registrations under Section 2(f), prevailing opposers have presented some evidence that the mark has not acquired distinctiveness, such as others’ use of the proposed mark or similar marks.
Levi Strauss,
A. Admissibility
Before the board, Yamaha argued (1) that the compiled documentary evidence summarizing sales, advertising expenditures, and advertising placements were inadmissible hearsay because Hoshino did not lay a proper foundation for their admission under Federal Rule of Evidence 803(6); (2) that the deposition testimony of jazz guitarist John Scofield, guitar maker Roger Sadowsky, and Hoshino general manager Ryoichi Miyahara was inadmissible hearsay from witnesses not qualified as experts; (3) that statements from treatises and manuals on guitars that guitar heads serve to identify the makers or origin were inadmissible hearsay and irrelevant; and (4) that third-party registrations of guitar heads and other guitar components were irrelevant. With the exception of its objections to the admission of the statements from treatises and manuals, Yamaha raises the same objections to Hoshino’s evidence in this appeal that it made before the board.
The board admitted Hoshino’s summaries of its sales and advertising data over Yamaha’s objection, despite acknowledging a foundation for admission that “was less than optimally comprehensive or explicit,”
With respect to the testimony of the witnesses offered as experts by Hoshino, the board carefully considered Yamaha’s objections, and excluded the opinion testimony of Miyahara because he lacked the qualifications to express expert opinions in the field of guitar making and playing.
Yamaha does not challenge on appeal the introduction of the excerpts from the treatises and manuals that guitar heads are capable of serving as identifications of source. However, it does challenge Hoshino’s evidence that the guitar heads of other manufacturers had secondary meaning because the issue in this case is whether Hoshino’s guitar heads had acquired distinctiveness. However, the evidence of acquired distinctiveness in the guitar heads of others was admitted by the board for the purpose of rebutting Yamaha’s other ground for its opposition, that the guitar heads were “primarily ornamental” and incapable of functioning as trademarks. The board properly considered the proffered evidence as relevant to rebut that allegation.
B. Sufficiency
Yamaha then argues, in light of its evidentiary objections, that Hoshino’s remaining admissible evidence did not meet the minimum standard necessary for registration on the basis of secondary meaning because the guitar head configuration was always presented in conjunction with the applicant’s word mark “IBANEZ,” because there was no special effort in the advertising to distinguish the guitar head as having separate source-identifying significance, and because there was no consumer survey data or affidavits indicating consumer perceptions. However, absence of consumer surveys need not preclude a finding of acquired distinctiveness.
See Roux Laboratories, Inc. v. Clairol Inc.,
The board had before it Hoshino’s evidence showing 8 years of continuous and exclusive use of the specific guitar head designs sought to be registered, evidence of substantial sales and promotion of the guitars whose head shape it sought to register, and evidence that guitar head designs identify their source. The board also viewed as credible the applicant’s assertion that the shape of the guitar peg heads could serve as source identifiers in situations where the brand names on the heads might not be visible.
CONCLUSION
We hold that in an opposition under Section 2(f) the ultimate burden of persuasion is on the applicant to prove acquired distinctiveness in the mark sought to be registered. While the board was not incorrect in describing the opposer’s burden in an opposition based on Section 2(f) to present a prima facie case of no acquired distinctiveness by rebutting the applicant’s prima facie case of acquired distinctiveness made to the examiner, for the reasons stated in Part II of this opinion, we find that the board unnecessarily addressed whether the *1584 prima facie case of no acquired distinctiveness had been established by Yamaha. Judicial economy would have been better served if the board had limited its analysis to whether Hoshino demonstrated acquired distinctiveness in its proposed marks by a preponderance of the evidence in the entire record. Finally, under the circumstances present here, we conclude that the board was not clearly erroneous in determining that Hoshino’s evidence was sufficient to meet its burden under Section 2(f) to demonstrate acquired distinctiveness to support registration of its guitar peg heads as trademarks.
AFFIRMED.
Notes
. 15 U.S.C. § 1052, Section 2 of the Lanham Act, provides, in part pertinent to the following discussion, that:
No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused ... unless it—
(d)Consists of or comprises a mark which so resembles a mark registered in the [PTO] or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when applied to the goods of the applicant, to cause confusion, or to cause mistake, or to deceive....
(e) Consists of a mark which, (1) when applied to the goods of the applicant is merely descriptive or deceptively misdescriptive of them....
(f) Except as expressly excluded in paragraphs (a), (b), (c), and (d) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce....
. 15 U.S.C. § 1063 provides, in pertinent part, that:
Any person who believes that he would be damaged by the registration of a mark upon the principal register may, upon payment of *1575 the required fee, file an opposition in the [PTO], stating the grounds therefor....
. Registration of designs or shapes such as the guitar heads involved here may necessarily require reliance on Section 2(f).
See In re Soccer Sport Supply Co.,
. Yamaha nevertheless also argues that placing on it the burden of establishing a lack of acquired distinctiveness was error because it required Yamaha to "prove a negative.” But, even if the board had actually done so, no rule would necessarily bar such a requirement.
See, e.g., Whitaker v. Beavin,
. In fact, under such circumstances, applicant may elect to file a dispositive motion. 37 C.F.R. § 2.217(d);
cf. Sanyo Watch Co. v. Sanyo Electric Co.,
.
Cf. Petersen Manufacturing Co. v. Central Purchasing, Inc.,
. In Section 2(f) proceedings, as in any other opposition, once the opposer establishes its pri-ma facie case, all evidence must be considered.
See, e.g., In re Seats,
. Of course, if the entire record adduced after all testimony periods still lacks the elements of the prima facie case of one of the parties, the ultimate conclusion based on the entire record will be quite easily reached. However, the better practice is to limit the discussion to the issues relevant at the stage of the proceeding at issue. Similarly, situations such as R.l. Reynolds, Anchor Hocking, and Federal Glass involved oppositions where distinctiveness was a contested issue and opposer necessarily presented evidence of lack of inherent distinctiveness. In the face of the opposer's case, the applicant then attempted to rebut that showing through reliance on a showing of acquired distinctiveness under Section 2(f), which had not been at issue in the ex parte proceedings in the PTO. In such situations, the procedural posture of the opposition also precludes the need to separately evaluate or address the adequacy of the oppo-ser’s prima facie showing of no acquired distinctiveness.
. Thus, it was not the same “burden" that was being shifted by the board, assuming it can be said that there was indeed a shift of "burdens” at all.
Cf. Federal Glass,
. In
Capital Formation,
. Here, the board had cited
Sunbeam Corp. v. Battle Creek Equipment Co.,
. The applicant in
Meyer & Wenthe
was seeking to register the mark "Official” for seal presses, which caused the court to observe that "when the word is not only descriptive but ... connotes an authorized activity, much stronger proof is required."
. Unlike the situation in
Squirtco v. Tomy Corp.,