Timex Grp. USA, Inc. v. Focarino, No. 1:12–CV–1080, 2013 WL 6713119 (E.D. Va. Dec. 17, 2013).
A Virginia district court reversed the Trademark Trial and Appeal Board’s decision that Timex Group USA, Inc. (“Timex”) could not register the composite mark INTELLIGENT QUARTZ in connection with watches. The court granted Timex summary judgment, holding that the mark is suggestive and deserving of trademark protection.
In their intent-to-use application, Timex disclaimed QUARTZ as descriptive, as consumers understand a QUARTZ watch to mean “a watch that is operated by the vibrations of a quartz crystal controlled by a microcircuit.” Consequently the analysis of the nature of the mark, whether descriptive (and thus protectable only upon showing of secondary meaning, which Timex does not have as the application is an intent-to-use application) or suggestive (and thus protectable without a showing of secondary meaning), turned on the meaning of INTELLIGENT within the composite mark.
The Timex INTELLIGENT QUART watches contain a quartz crystal that oscillates to provide a time base for the computer chip, as in any other watch with a quartz component. The computer chip controls the watch’s other advanced features such as an altimeter, a compass, a depth gauge, a chronograph, or a calendar. As a result, the main question for the court was whether consumers would understand INTELLIGENT in the context of INTELLIGENT QUARTZ to refer to such a watch.
In deciding this question, the court employed two related tests. With the “imagination test,” the court asked whether the mark “stands for an idea which requires some operation of the imagination to connect it with the goods.” The court held that INTELLIGENT does not describe QUARTZ, because the quartz component of Timex watch is not controlled by a computer chip; the quartz crystal is not capable of engaging in any “intelligent” data processing or storage. Rather, the quartz crystal simply oscillates and provides a time base for the computer chip. Thus the court concluded that consumers must employ a degree of imagination and mental reasoning to deduce that Timex INTELLIGENT QUARTZ watches have a quartz component that is not controlled by a computer chip and that the chip instead controls other advanced features of the watch.
With the “competitors’ need test,” the court asked whether “the message conveyed by the mark about the goods or services is so direct and clear that competing sellers would be likely to need to use the term in describing their goods in advertising and promotion.” The court concluded that because INTELLIGENT did not describe QUARTZ, there was little need by competitors to use the composite mark to describe their watches.
After applying these two tests, the court granted summary judgment for Timex, holding that INTELLIGENT QUARTZ was indeed suggestive and protectable without a showing of secondary meaning. Time for Timex to celebrate.