In Re: Magnesita Refractories Company ( 2017 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: MAGNESITA REFRACTORIES COMPANY,
Appellant
______________________
2016-2345
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in Nos.
77873477, 85834316.
______________________
Decided: November 27, 2017
______________________
THOMAS JOSEPH MOORE, Bacon & Thomas, Alexan-
dria, VA, for appellant. Also represented by THOMAS LEE.
NATHAN K. KELLEY, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
appellee Joseph Matal. Also represented by THOMAS L.
CASAGRANDE, CHRISTINA HIEBER, MARYNELLE W. WILSON.
______________________
Before O’MALLEY, REYNA, and TARANTO, Circuit Judg-
es.
REYNA, Circuit Judge.
Magnesita Refractories Company appeals the denial
by the Trademark Trial and Appeal Board of two trade-
2 IN RE: MAGNESITA REFRACTORIES COMPANY
mark applications for the mark MAGNESITA. Appellant
argues that the Board erred in finding that MAGNESITA
is generic for refractory products and highly descriptive of
online information services for refractory products. As
substantial evidence supports the Board’s findings, we
affirm.
BACKGROUND
Magnesita Refractories Company (“MRC”), a Brazili-
an company, filed two trademark applications with the
U.S. Patent and Trademark Office (“PTO”). MRC sought
registration of the standard-character mark MAGNESITA
for refractory products and services. Refractory products
are nonmetallic, extremely heat-resistant substances used
to, inter alia, patch, line, or repair high temperature
apparatuses, such as furnaces, kilns and reactors. See
J.A. 173. MRC sought multi-class registration for refrac-
tory products in International Class 19, and for online
information services related to using refractory products
in International Class 37. 1 J.A. 28, 198–99. Both appli-
1 To obtain a trademark, an applicant must identify
the International Class for which it seeks registration. 37
C.F.R. §§ 2.32(a)(7). International Class 19 relates to
“[b]uilding materials (non-metallic); non-metallic rigid
pipes for building; asphalt, pitch and bitumen; non-
metallic transportable buildings; monuments, not of
metal.” Id. § 6.1. International Class 37 relates to ser-
vices for “[b]uilding construction; repair; installation
services.” Id. Where, as here, multiple classes are
sought, the applicant must include dates of use and
submit a specimen for each class or provide a “statement
that the applicant has a bona fide intention, and is enti-
tled, to exercise legitimate control over the use of the
mark in commerce, for collective marks, for each class.”
Id. § 2.86(a)(3). The PTO can issue a single certification
IN RE: MAGNESITA REFRACTORIES COMPANY 3
cations contained translation statements noting that the
English translation of MAGNESITA is “magnesia” or
“magnesite.” J.A. 2–4.
MRC’s first application, No. 77/873,477 (“’477 applica-
tion”), requested registration based on MRC’s bona fide
intention to use the mark under § 1(b) of the Lanham Act,
15 U.S.C. § 1051 et seq. J.A. 28. Applying the doctrine of
foreign equivalents, the examining attorney translated
MAGNESITA into “magnesia” and “magnesite,” and
assessed the English translations for descriptiveness.
J.A. 88. The doctrine of foreign equivalents is used to
ascertain the genericness or descriptiveness of a foreign-
word mark from a common language by translating the
mark into English. Palm Bay Imp., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377
(Fed. Cir. 2005). The doctrine only applies if an American
buyer would translate the foreign mark into English and
“take it as it is.” Id. Here, the examining attorney re-
fused registration on grounds that “magnesite” and “mag-
nesia” are components of refractory products and are thus
merely descriptive of MRC’s goods and services. J.A. 88.
To overcome rejection, MRC amended the ’477 appli-
cation to claim acquired distinctiveness under § 2(f) of the
Lanham Act based on substantially exclusive and contin-
uous use of the mark in commerce. J.A. 261–63. The
examining attorney also rejected this amendment. J.A.
349–50.
MRC submitted a second amendment to the ’477 ap-
plication, requesting that the mark be registered in the
Supplemental Register. J.A. 2. 2 The examining attorney
of registration for the mark for multiple classes. Id.
§ 2.86(f).
2 An applicant can register a mark in the Supple-
mental Register for its goods or services if it is capable of
4 IN RE: MAGNESITA REFRACTORIES COMPANY
accepted the amendment for MRC’s Class 37 services.
She rejected the amendment and denied registration for
MRC’s Class 19 goods on the ground that MAGNESITA is
generic for refractory products. J.A. 2. She reasoned that
“magnesite” or “magnesia” is a primary component of the
refractory products MRC makes, and the name of an
ingredient or a key aspect of a good renders the mark
generic for those goods. J.A. 435. Because the examining
attorney accepted MRC’s amendment for Class 37 ser-
vices, the only dispute in this appeal concerning the ’477
application is whether MAGNESITA is generic for Class
19 refractory products.
As the ’477 application was pending, MRC filed Appli-
cation No. 85/834,316 (“’316 application”) seeking to
register MAGNESITA based on first use and use in
commerce for Class 19 goods and Class 37 services under
§ 1(a) of the Lanham Act. J.A. 198. MRC asserted that it
first used MAGNESITA in October 2008, and that the
mark had acquired distinctiveness. For evidence, MRC
produced data of its gross domestic sales from May 1,
2010, through December 31, 2013, and an article about
MRC’s acquisition of a U.S. refractory products company.
J.A. 885. The examining attorney denied registration.
First, as with the ’477 application, the examining attorney
found that MAGNESITA is generic or, in the alternative,
highly descriptive, for refractory products in Class 19.
J.A. 885. Second, the examining attorney found
MAGNESITA to be highly descriptive for Class 37 ser-
vices, and that MRC’s evidence of acquired distinctiveness
was insufficient for both Class 19 goods and Class 37
services. Id. She determined that MRC’s three-and-a-
becoming distinctive, even if the mark is ineligible as
“merely descriptive” for registration in the Principal
Register. 15 U.S.C. § 1091; In re Bush Bros. & Co., 884
F.2d 569, 570 (Fed. Cir. 1989).
IN RE: MAGNESITA REFRACTORIES COMPANY 5
half years of gross sales numbers alone were not enough
to show that MAGNESITA distinctively indicates MRC as
the source for the applied-for refractory products and
services. See id.; J.A. 435. The examining attorney thus
denied the ’316 application. J.A. 4.
MRC appealed both registration refusals to the Board.
The Board consolidated the appeals and affirmed the
examining attorney’s findings in a single opinion. J.A. 1,
22.
Starting with genericness, the Board determined that
the genus of refractory goods is “[r]efractory products not
made primarily of metal, namely, refractory bricks, re-
fractory mixes for patching, lining or repairing high
temperature apparatus and repairing the lining for fur-
naces, refractory furnace patching and repair mixes,” and
“pre-cast refractory shapes.” J.A. 8. The Board defined
the relevant public as consisting of “the public at large,
namely, ordinary consumers who purchase such refracto-
ry products” that range from “retail purchasers of house-
hold products to industrial purchasers for commercial
operations.” Id. The Board next applied the doctrine of
foreign equivalents. J.A. 10. The Board relied on record
evidence indicating that MAGNESITA translates to
“magnesia” from Italian, and “magnesite” from Spanish
and Portuguese, and that these three languages are
common and modern. J.A. 9–10. The Board reviewed
fifteen definitions, descriptions, and uses of magnesite
and magnesia that consistently defined the minerals as
the primary components of refractory products. J.A 11–
13. The Board also considered three examples of where
“magnesite” and “magnesia” were used as a name for
refractory bricks, as well as nine examples of other com-
panies using the words “magnesite” and “magnesia” in
connection with refractory products. J.A. 14–16. Based
on this evidence, the Board had “no doubt that potential
purchasers familiar with Spanish, Portuguese or Italian
would understand MAGNESITA to refer, at minimum, to
6 IN RE: MAGNESITA REFRACTORIES COMPANY
a type of refractory brick, i.e., a magnesite brick.” J.A. 17.
The Board therefore affirmed the examining attorney’s
conclusion that MAGNESITA is generic for the genus of
Class 19 goods identified in the ’477 and ’316 applications.
J.A. 18.
The Board also agreed with the examining attorney
that MRC failed to show acquired distinctiveness for both
Class 19 goods and Class 37 services as claimed in the
’316 application. In support of its claim, MRC had pro-
duced: (1) a declaration by MRC’s outside counsel attest-
ing to substantial and exclusive use of MAGNESITA since
2010; (2) a Canadian registration for MAGNESITA; (3) a
declaration by MRC’s general counsel attesting to gross
sales between 2010 and 2012; (4) an article from a trade
publication showing MRC’s first use of the MAGNESITA
mark in October 2008; (5) a second declaration from
MRC’s general counsel testifying on gross sales in 2014;
and (6) a second declaration from MRC’s outside counsel
attesting to no third-party use of MAGNESITA for refrac-
tory products. J.A. 19–20. Although the Board recog-
nized that five years of substantially exclusive and
continuous use may serve as prima facie evidence of
acquired distinctiveness, because the mark is highly
descriptive, the Board determined that more evidence is
necessary to show the extent to which the public perceives
MAGNESITA to indicate MRC as the source of the ap-
plied-for refractory goods and services. J.A. 20.
MRC appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(B).
DISCUSSION
MRC challenges the Board’s finding that
MAGNESITA is generic or highly descriptive for Class 19
refractory products, and highly descriptive for Class 37
services. Specifically, MRC contends that the Board’s
genericness finding is not based on substantial evidence,
and that MRC has shown that MAGNESITA has acquired
IN RE: MAGNESITA REFRACTORIES COMPANY 7
distinctiveness under § 2(f) of the Lanham Act based on
gross sales data and five years of substantially exclusive
and continuous use of the mark in U.S. commerce.
1. Standard of Review
We review the Board’s legal conclusions de novo and
its factual findings for substantial evidence. In re La.
Fish Fry Prods., Ltd., 797 F.3d 1332, 1335 (Fed. Cir.
2015). Genericness and acquired distinctiveness are
factual determinations. Id. The PTO has the burden of
proving a term is generic based on clear evidence, and the
trademark applicant has the burden of proving acquired
distinctiveness. Id.; In re Nordic Nats., Inc., 755 F.3d
1340, 1342–43 (Fed. Cir. 2014).
MRC contends that this court should reconsider our
allocation of the burden of proof on the applicant to show
acquired distinctiveness in view of the Supreme Court’s
decision in B & B Hardware, Inc. v. Hargis Industries,
Inc., 135 S. Ct. 1293 (2015). In B & B Hardware, the
Supreme Court held that district courts should give
preclusive effect to Trademark Trial and Appeal Board
decisions in inter partes proceedings if the elements of
issue preclusion are met. 135 S. Ct. at 1299. B & B
Hardware is inapplicable. MRC makes no issue preclu-
sion argument, but rather attempts to import regulations
governing the evidentiary burdens that apply to adversar-
ial parties into this ex parte appeal. B & B Hardware
does not address the evidentiary burdens involved in ex
parte proceedings. Indeed, the regulations setting forth
the content requirements for a trademark application
obligate an applicant to submit proof supporting any
claim of acquired distinctiveness. 37 C.F.R. § 2.41; see La.
Fish Fry, 797 F.3d at 1336; In re Steelbuilding.com, 415
F.3d 1293, 1297 (Fed. Cir. 2005). Accordingly, we do not
read B & B Hardware as disrupting our well-settled law.
8 IN RE: MAGNESITA REFRACTORIES COMPANY
2. Genericness of “Magnesite” and “Magnesia” as to Class
19 Refractory Products
A mark is generic if the relevant public primarily uses
or understands the mark to refer to the class or genus of
products in question. Park ’N Fly, Inc. v. Dollar Park &
Fly, Inc., 469 U.S. 189, 194 (1985). Generic terms cannot
be registered as trademarks because they are common
descriptive names of a class of products. Nordic Nats.,
755 F.3d at 1342; H. Marvin Ginn Corp. v. Int’l Ass’n of
Fire Chiefs, Inc., 782 F.2d 987, 989 (Fed. Cir. 1986) (“The
generic name of a thing is in fact the ultimate in descrip-
tiveness.”).
MRC does not challenge the applicability of the doc-
trine of foreign equivalents or the Board’s assessment of
the genus of products or relevant public. Instead, MRC
contends that the only conclusion that could be drawn
from the record evidence is that magnesite and magnesia
can be used in refractory material. Appellant’s Br. 14.
We disagree.
The record before the Board includes numerous uses
of magnesite and magnesia as key components in refrac-
tory products. See J.A. 11–14. For example, one of fifteen
definitions, descriptions, and uses of magnesite and
magnesia considered by the Board, the Industrial Miner-
als Association of North America, describes magnesia as
follows:
Dead-burned magnesia, also known as refractory
magnesia, is produced from the heating of magne-
site or magnesium hydroxide and is the primary
component in refractory materials. The refractory
industry is the greatest consumer of magnesium
compounds, over all. Refractory materials are
nonmetallic substances which are extremely heat
resistant, and are of great industrial value as the
lining of furnaces, kilns, and reactors. The steel
IN RE: MAGNESITA REFRACTORIES COMPANY 9
industry, for instance, is the largest use of refrac-
tory magnesia.
J.A. 173. Additional record evidence shows use of the
terms “magnesia brick” and “magnesite bricks” as syno-
nyms for refractory bricks. J.A. 410–11, 437. The Board
further cited to nine examples from websites and tech-
nical data sheets showing companies using the words
“magnesite” and “magnesia” when discussing refractory
products. J.A. 15–16. For example, the Hindustan Pro-
duce Company website states that Dead Burnt Magnesite
or Fused Magnesite “are used in: Refractory Industry for
manufacture of Basic Refractory Bricks . . . .” J.A. 440.
On their face, these examples do more than simply show
that magnesite and magnesia are potential components of
some refractory products. They provide clear evidence for
the Board’s finding that the relevant public, industrial
purchasers and refractory product consumers, would
primarily understand magnesia and magnesite to refer to
the genus of refractory products by referring to key as-
pects of those products. See In re Cordua Rests., Inc., 823
F.3d 594, 603–04 (Fed. Cir. 2016) (holding that certain
words referring to key aspects of a genus of services were
generic for those services). As such, substantial evidence
supports the Board’s conclusion.
Because we affirm the Board’s finding that
MAGNESITA is generic for the genus of refractory prod-
ucts set forth in MRC’s application, it cannot be registered
as a trademark. Nordic Nats., 755 F.3d at 1342; see In re
1800Mattress.com IP, LLC, 586 F.3d 1359, 1363 (Fed. Cir.
2009); In re Northland Aluminum Prods, Inc., 777 F.2d
1556, 1560 (Fed. Cir. 1985). We therefore do not address
the Board’s alternative finding of descriptiveness for
Class 19 products for either the ’477 or ’316 applications.
3. Acquired Distinctiveness as to Class 37 Services
MRC challenges the Board’s finding that MRC has not
shown that MAGNESITA has acquired distinctiveness
10 IN RE: MAGNESITA REFRACTORIES COMPANY
for Class 37 services. To establish that a term has ac-
quired distinctiveness, a trademark applicant must show
that “the primary significance of term in the minds of the
consuming public is not the product but the producer.”
Kellogg Co. v. Nat’l Biscuit Co., 305 U.S. 111, 118 (1938);
Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d
1356, 1379 (Fed. Cir. 2012). If a term is highly descrip-
tive, the applicant faces an elevated burden to show
acquired distinctiveness. La. Fish Fry, 797 F.3d at 1336.
To meet its elevated burden, an applicant can submit
advertising expenditures and sales success, as well as
length of exclusivity of use. Id. at 1336–37. But the
precise amount and character of evidence necessary
varies on case-specific facts and the nature of the mark.
See Roux Labs, Inc. v. Clairol, Inc., 427 F.2d 823, 829
(C.C.P.A. 1970).
As an initial matter, an applicant’s claim asserting a
term has acquired distinctiveness acts as an admission
that the term is merely descriptive. Yamaha Int’l Corp. v.
Hoshino Gakki Co., 840 F.2d 1572 (Fed. Cir. 1988); see
Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 772
(1992) (recognizing that § 2 of the Lanham Act “requires
secondary meaning only as a condition to registering
descriptive marks”). By claiming that MAGNESITA has
acquired distinctiveness for Class 37 services, MRC
concedes that MAGNESITA is merely descriptive for
those services. Thus, absent a showing of acquired dis-
tinctiveness, MRC cannot register MAGNESITA as a
trademark.
MRC argues that MAGNESITA has acquired distinc-
tiveness based on its gross sales from 2010 through 2014,
and declarations establishing first use and substantially
exclusive and continuous use of MAGNESITA since
October 2008. According to MRC, sales data and proof of
five years of use is by statute sufficient evidence to show
that MAGNESITA has acquired distinctiveness. Appel-
lant’s Br. 24–25. To show that this evidence is sufficient,
IN RE: MAGNESITA REFRACTORIES COMPANY 11
MRC relies on the language of § 2(f) of the Lanham Act,
which pertinently states:
The Director may accept as prima facie evidence
that the mark has become distinctive, as used on
or in connection with the applicant’s goods in
commerce, proof of substantially exclusive and
continuous use thereof as a mark by the applicant
in commerce for the five years before the date on
which the claim of distinctiveness is made.
15 U.S.C. § 1052(f) (emphasis added).
MRC misunderstands the statute. “May” implies dis-
cretion; it does not connote a requirement. Kingdomware
Techs., Inc. v. United States, 136 S. Ct. 1969, 1977 (2016).
Therefore, the Board is not required to find acquired
distinctiveness solely based on five years of sales data and
substantially exclusive and continuous use of a mark in
commerce. See La. Fish Fry, 797 F.3d at 1337; see also
Cicena Ltd. v. Columbia Telecomms. Grp., 900 F.2d 1546,
1551 (Fed. Cir. 1990). The Board has discretion to require
more evidence of acquired distinctiveness, particularly for
highly descriptive marks. La. Fish Fry, 797 F.3d at 1337.
Here, the Board correctly found MAGNESITA is
highly descriptive of MRC’s Class 37 services based on the
ample evidence supporting its genericness finding. After
reviewing MRC’s sales data and declarations, the Board
faulted MRC for not submitting any evidence demonstrat-
ing how the public perceives MAGNESITA as indicating
source. J.A. 20. We agree. Based on the highly descrip-
tive nature of MAGNESITA for Class 37 services, MRC
had an elevated burden to show acquired distinctiveness
by more than sales data and five years of use. La. Fish
Fry, 797 F.3d at 1337. But MRC did not add any evidence
to the record showing how the public perceives the term,
or how the term is otherwise source-identifying. The
Board was within its discretion to require MRC submit
additional evidence of acquired distinctiveness. Id.; see
12 IN RE: MAGNESITA REFRACTORIES COMPANY
also 15 U.S.C. § 1052(f). Therefore, substantial evidence
supports the Board’s conclusions that MAGNESITA is
highly descriptive for Class 37 services, and that MRC
failed to show acquired distinctiveness.
CONCLUSION
We have considered MRC’s remaining arguments and
find them unpersuasive. Substantial evidence supports
the Board’s findings that MAGNESITA is generic for
refractory products and is highly descriptive of infor-
mation services for refractory products. We therefore
affirm.
AFFIRMED
COSTS
No costs.