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John N. Jennison Jennison & Shultz, P.C. 2001 Jefferson Davis Highway, Suite 1102 Arlington, VA 22202-3604 Email: John@JennisonLaw.com John P. Margiotta Leo Kittay FROSS ZELNICK LEHRMAN & ZISSU, P.C. 866 United Nations Plaza New York, NY 10017 Tel: (212) 813-5900 Email: jmargiotta@frosszelnick.com lkittay@frosszelnick.com Attorneys for Plaintiff Timex Group USA, Inc. UNITED STATES DISTRICT COURT EASTERN DISTRICT OF VIRGINIA TIMEX GROUP USA, INC., Plaintiff, -againstTERESA STANEK REA, Acting Under Secretary of Commerce for Intellectual Property and Director of United States Patent and Trademark Office,1 Defendant. MEMORANDUM OF LAW IN SUPPORT OF PLAINTIFFS MOTION FOR SUMMARY JUDGMENT Civil Action No. 1:12cv1080 (TSE/TCB)

Under 35 U.S.C. 3, the powers and duties of the U.S. Patent and Trademark Office (PTO) are vested in an Under Secretary of Commerce for Intellectual Property and Director of the PTO. Effective February 1, 2013, David J. Kappos resigned as Under Secretary of Commerce for Intellectual Property and Director of the PTO, and Theresa Stanek Rea became the Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the PTO. Accordingly, the named defendant for the subject civil action has changed. Fed. R. Civ. P. 25(d)(1).

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TABLE OF CONTENTS TABLE OF AUTHORITIES .......................................................................................................... ii INTRODUCTION ...........................................................................................................................1 STATEMENT OF UNDISPUTED FACTS ....................................................................................3 A. The TIMEX Brand ...............................................................................................................3 B. Procedural History ...............................................................................................................4 C. The TTABs Holding ...........................................................................................................6 D. Timexs Line of INTELLIGENT QUARTZ Watches.........................................................7 E. The Meanings of Intelligent and Quartz .......................................................................9 F. Seikos INTELLIGENT QUARTZ Watch ........................................................................10 ARGUMENT .................................................................................................................................10 I. The Standard of Review.....................................................................................................10 II. INTELLIGENT QUARTZ is a Suggestive Mark ..............................................................13 A. Introduction ..................................................................................................................13 B. There is No Commercial Need to Use INTELLIGENT QUARTZ in the Watch Industry.......................................................14 C. Applying the Imagination Test, INTELLIGENT QUARTZ Does Not Immediately Convey Any Unequivocal Idea or Information about Watches .............................................................................16 1. No Single Definition of Intelligent Will Immediately Come to Mind ...........................................................................16 2. INTELLIGENT QUARTZ is Incongruous ............................................................20 III. The TTABs Finding that INTELLIGENT QUARTZ is Descriptive is Not Supported by Substantial Evidence .....................................................21 A. The TTAB Made a Factually Inaccurate Presumption ................................................................................................22

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B. The TTABs Application of the Commercial Need Test and the Imagination Test are in Error....................................................23 C. The Definition of Intelligent Relied on by the TTAB is Not Common and the Board Offers No Substantial Evidence that it Would Apply in the Context of Watches ...........................................24 D. The TTAB Does Not Distinguish the Seiko Registration............................................26 CONCLUSION ..............................................................................................................................27

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TABLE OF AUTHORITIES CASES In re Aid Laboratories, Inc., 221 U.S.P.Q. 1215 (T.T.A.B. 1983) ........................................................................................12 Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986) .................................................................................................................11 In re Bayer Aktiengesellschaft, 488 F.3d 960 (Fed. Cir. 2007)..................................................................................................23 In re Bed-Check Corp., 226 U.S.P.Q. 946 (T.T.A.B. 1985) ..........................................................................................12 CAE, Inc. v. Clean Air Engineering, Inc., 267 F.3d 660 (7th Cir. 2001) ...................................................................................................11 Celotex Corp. v. Catrett, 477 U.S. 317 (1986) .................................................................................................................11 In re Chamber of Commerce of the United States, 675 F.3d 1297 (Fed. Cir. 2012)................................................................................................23 In re Colonial Stores Inc., 394 F.2d 549 (C.C.P.A. 1968) .................................................................................................20 Concurrent Technologies. Inc. v. Concurrent Technologies Corp., 12 U.S.P.Q.2d 1054 (T.T.A.B. 1989) ......................................................................................20 Consolidated Edison v. NLRB, 305 U.S. 197 (1938) .................................................................................................................11 In re Dollar-A-Day Rent-A-Car Systems, Inc., 173 U.S.P.Q. 435 (T.T.A.B. 1972) ..........................................................................................15 DuoProSS Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F.3d 1247 (Fed. Cir. 2012)................................................................................................11 Firestone Tire & Rubber Co. v. Goodyear Tire & Rubber Co., 186 U.S.P.Q. 557 (T.T.A.B. 1975) ..........................................................................................15 George & Co. v. Imagination Entertainment Ltd., 575 F.3d 383 (4th Cir. 2009) ...................................................................................................13 Glendale International Corp. v. United States Patent & Trademark Office, 374 F. Supp. 2d 479 (E.D. Va. 2005) ................................................................................11, 23 In re Intelligent Medical Systems Inc., 5 U.S.P.Q.2d 1674 (T.T.A.B. 1987) ................................................................................ passim

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International Bancorp, L.L.C. v. Societe des Bains de Mer et du Cercle des Etrangers a Monaco, 192 F. Supp. 2d 467 (E.D. Va. 2002) .............................................20 In re Jones Investment Co., Ser. No. 77/249189, 2009 WL 273242 (T.T.A.B. Jan. 21, 2009) .....................................15, 16 Microstrategy Inc. v. Motorola, Inc., 245 F.3d 335 (4th Cir. 2001) ...................................................................................................17 Minnesota Mining & Manufacturing Co. v. Johnson & Johnson, 454 F.2d 1179 (C.C.P.A. 1972) ...............................................................................................13 In re Morton-Norwich Products, Inc., 209 U.S.P.Q. 791 (T.T.A.B. 1981) ..........................................................................................12 In re Pacer Technology, 338 F.3d 1348 (Fed. Cir. 2003)................................................................................................11 In re Pennwalt Corp., 173 U.S.P.Q. 317 (T.T.A.B. 1972) ..........................................................................................12 Pizzeria Uno Corp. v. Temple, 747 F.2d 1522 (4th Cir. 1984) ...........................................................................................13, 14 Rainbow Art Co. v. Sears, Roebuck & Co., 99 F. Supp. 677 (S.D. W. Va. 1951) ........................................................................................14 Retail Services, Inc. v. Freebies Publishing, 364 F.3d 535 (4th Cir. 2004) ...................................................................................................13 Rodeo Collection, Ltd. v. West Seventh, 812 F.2d 1215 (9th Cir. 1987) .................................................................................................13 Rossignol v. Voorhaar, 316 F.3d 516 (4th Cir. 2003) ...................................................................................................12 In re Shutts, 217 U.S.P.Q. 363 (T.T.A.B. 1983) ..............................................................................12, 21, 23 Synergistic International, L.L.C. v. Korman, 470 F.3d 162 (4th Cir. 2006) .......................................................................................13, 14, 16 Telechron, Inc. v. Telicon Corp., 198 F.2d 903 (3d Cir. 1952).....................................................................................................14 In re Tennis in the Round, Inc., 199 U.S.P.Q. 496 (T.T.A.B. 1978) ..........................................................................................20 Van Camp Sea Food Co. v. Alexander B. Stewart Organizations, 50 F.2d 976 (C.C.P.A. 1931) ...................................................................................................13 RULES AND RESTATEMENT Fed. R. Civ. P. 25(d)(1).............................................................................................................. fn. 1

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Fed. R. Civ. P. 56(c) ......................................................................................................................11 Restatement (Third) of Unfair Competition 14 (2006) ...............................................................13 STATUTES 35 U.S.C. 3 .............................................................................................................................. fn. 1 15 U.S.C. 1071 ............................................................................................................................10 TRADEMARK MANUAL OF EXAMINING PROCEDURE TMEP 1209.01(b) ..........................................................................................................................23 TMEP 1209.03(d) ..........................................................................................................................20 TMEP 1209.03(d) ..........................................................................................................................20 TREATISE J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition 11:18 (4th ed. 2012) ...............................15 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition 11:65 (4th ed. 2012) ...............................13 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition 11:67 (4th ed. 2012) ...............................13 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition 11:68 (4th ed. 2012) ...............................13 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition 11:71 (4th ed. 2012) ...............................14

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INTRODUCTION This action arises out of the United States Patent & Trademark Offices Trademark Trial and Appeal Boards (the TTAB) refusal to allow Plaintiff Timex Group USA, Inc. (Plaintiff or Timex) to register INTELLIGENT QUARTZ (the Mark) as a trademark for watches. The TTAB based its refusal on a finding that the Mark is merely descriptive when used in connection with watches. Timex brings this action to overturn this holding. As background, trademark law does not protect a mark that is merely descriptive, that is, the mark does nothing more than immediately convey knowledge of a quality, feature or function of the relevant goods. An example of such a mark is ACCURATE WATCHES for watches, which merely describes a key quality of a watch. Allowing one party to register ACCURATE WATCHES would disadvantage competitors because there is a commercial need for the phrase. Watch sellers need to be able to claim that they sell accurate watches. No trademark owner should be able to prevent this. Trademark law does not permit a monopoly on a merely descriptive term. Trademark law does, however, protect marks that suggest a quality, feature or function of the relevant goods. There is a thin line between a merely descriptive mark and a suggestive mark. Nevertheless, this fine distinction is all-important because suggestive marks may be registered and protected, while merely descriptive marks may not, absent a showing of acquired distinctiveness through long and substantially exclusive use. Suggestive marks are common because sellers frequently aim to tie a mark to the product in a customers mind. One such suggestive mark is MUSTANG for cars. MUSTANG suggests a key quality of the car, namely, its speed. But MUSTANG does not immediately convey the quality; rather, the consumer must pause to grasp the marks suggestion. In deciding whether a mark is suggestive or merely

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descriptive, the TTAB is to resolve all doubts in the applicants favorhere, a finding that the Mark is suggestive. In the case at hand, the mark INTELLIGENT QUARTZ is suggestive, not merely descriptive. Timex has disclaimed quartz because the term is descriptive of the quartz crystal timekeeping mechanism used in the watches. But the compound mark INTELLIGENT QUARTZ does not immediately convey anything about the Timex watches sold under the brand. The record demonstrates that the Mark is suggestive, not merely descriptive. First, there is no evidence that anyone has ever used the phrase intelligent quartz to describe anything. The only times the words intelligent and quartz appeared together in the record below was as a trademark, referencing either Timexs product or a product made by Seiko years ago under its prior trademark registration for the exact same mark, INTELLIGENT QUARTZ. Even now, given the opportunity to augment the record, Defendant cannot show a single descriptive use of the Mark. Thus, the record is clear that there is no commercial need for the phrase intelligent quartz in the watch industry. Second, though the TTAB held that the Mark was descriptive because intelligent means equipped with a microprocessor computer and the watchs quartz was controlled by a computer chip, the evidence submitted on this motion proves unequivocally that such holding was in error. As explained in the Declaration of Louis Galie, a 33-year veteran of the watch industry, no watch (Timex or otherwise) contains a quartz run by a computer chip. Indeed, a quartz is a rock and cannot be controlled by a computer chip. Third, INTELLIGENT QUARTZ is an obvious oxymoron because no definition of intelligent can describe a rock. It is well established in trademark jurisprudence that incongruity indicates suggestiveness because incongruous marks force consumers to stop, think

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and put the pieces together. For this reason, the Mark cannot immediately convey a feature of the watch. Furthermore, given the many definitions of intelligent and the many ways the term is used to market products, including watches, it is not clear what consumers will conclude about the product. The range of reasonable conclusions also indicates suggestiveness, not descriptiveness. Fourth, Defendant permitted Seiko to register the exact same mark for the exact same goods in 1991, and Seiko maintained this registration for 11 years before ceasing use. If the definition of intelligent has changed significantly in the interim in the watch industry, this was not proven below. And, it would be odd that such a change has taken place in the watch industry and not in any of the other industries in which the United States Patent & Trademark Office (PTO or Defendant) has recently permitted INTELLIGENT-formative registrations. But, even if the phrase intelligent watch now enjoys some use, quartz is not synonymous with watch, and the descriptiveness of intelligent watch does not speak to the alleged descriptiveness of INTELLIGENT QUARTZ. Notwithstanding, the evidence that INTELLIGENT QUARTZ is suggestive, the TTAB denied registration to INTELLIGENT QUARTZ. Timex submits that the TTABs decision is without merit and should be reversed. STATEMENT OF UNDISPUTED FACTS A. 1. The TIMEX Brand Timex is the nations leading watch manufacturer. Declaration of Louis Galie

(Galie Decl.) 3. 2. The history of Timex Group dates back to the 1850s to 1880s when its

predecessors Waterbury Clock Company and Waterbury Watch Company made clocks and

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pocket watches, and sold the products throughout North America and Europe, and eventually in Africa and Japan. Id. 3. The TIMEX branded wristwatch debuted in 1950, and TIMEX as the brand and

then trade name of the company has carried on a long tradition of technological innovation and market leadership of its predecessors ever since. Id. 4. To date, TIMEX has consistently been ranked by annual surveys as number one

out of fifty brands in jewelry and accessories and as the third most popular of all womens accessory brands. Id. 5. Timex Group employs approximately seventy-five hundred people and sells its

watches in over eighty countries on four continents, serving customers in numerous international markets, including China. Id. 6. Timex Group also operates retail stores and maintains a strong internet presence

via its main e-commerce website located at www.timex.com and associated country-specific websites. Id. B. 7. Procedural History On October 29, 2010, Timex filed an intent-to-use application for INTELLIGENT

QUARTZ in standard characters for watches in Class 14. Certified Administrative Record, Dkt. No. 7 (R.) at 4. 8. 9. Timex disclaimed the QUARTZ portion of the mark. Id. An Office Action issued on December 15, 2010, refusing registration on the basis

that the Mark was merely descriptive of a characteristic or feature of the identified goods. Id. at 8-25. 10. On January 10, 2011, Timex filed a response arguing that the word intelligent

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and the phrase intelligent quartz as a whole were suggestive rather than merely descriptive, as they were capable of different interpretations in the context of Timexs goods and did not immediately convey to the consumer any qualities or characteristics of Timexs goods. Id. at 2854. 11. Timex also pointed out that the printouts of purported third-party descriptive uses

attached to the Office Action failed to support the refusal because they consisted primarily of references to INTELLIGENT QUARTZ used as a trademark or showed uses of the word QUARTZ alone in relation to watches. Id. 12. A Final Office Action, dated February 5, 2011, maintained and made final the

descriptiveness refusal. Id. at 59-86. 13. Timex thereafter filed a Notice of Appeal and Request for Reconsideration on

August 2, 2011. Id. at 93-109. 14. The Office Action denied the Request for Reconsideration on August 16, 2011,

without addressing any of Applicants points. Id. at 116. 15. Instead, the Office attached Internet printouts showing Applicants use of

INTELLIGENT QUARTZ as a trademark, covering Applicants launch of its INTELLIGENT QUARTZ technology and use of the Mark in connection with watches. Id. at 117-40. 16. On September 1, 2011, the Board issued an order resuming the proceedings on

appeal. Id. at 142. 17. Timex then filed an appeal to the TTAB and both Timex and the Examining

Attorney submitted briefs. Id. at 143-76. 18. The TTAB affirmed the Examining Attorneys refusal on July 26, 2012, on the

grounds that the Mark was merely descriptive of watches. Id. at 177-91.

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C. 19.

The TTABs Holding The PTO refused to register INTELLIGENT QUARTZ because:

INTELLIGENT QUARTZ directly conveys the meaning that the watches have a quartz component controlled by computer chip. The mark does not convey any multiple meanings, double entendre or incongruity. Id. at 188. 20. The TTAB cited no evidence that Timexs watches actually feature a quartz

controlled by a computer chip or that consumers perceive them that way. See id. at 177-91. 21. Instead, the TTAB rested primarily on YourDictionary.coms third and final

definition of intelligent: equipped with a microprocessor computer. Id. at 183. 22. The TTAB cited industry blogs, websites, advertisements and articles that refer to

either Timexs or Seikos INTELLIGENT QUARTZ watches, as if they constituted industry examples that intelligent is used in the watch industry to mean equipped with a microprocessor computer. Id. at 183-87. 23. Next, the TTAB admitted that consumers presented with [the Mark] would pause

to consider its meaning. Id. at 186. 24. Then, the TTAB conceded that the PTO failed to show any commercial need for

the Mark. Id. at 190. 25. The TTAB rejected without explanation the notion that the Mark is incongruous

and therefore suggestive. Id. at 188. 26. Finally, the TTAB found, without explanation or legal support, that the fact that

the exact same mark was already registered in connection with the exact same goods was not persuasive. Id. at 189-90; see also R. at 43 (Seiko Reg. No. 1,648,797).

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D. 27.

Timexs Line of INTELLIGENT QUARTZ Watches In September 2011, Timex introduced to the market a new line of watches under

the mark INTELLIGENT QUARTZ. Galie Decl. 4. 28. The INTELLIGENT QUARTZ watches couple an ordinary analogue, quartz

watch with some further innovation, such as a chronograph, a thermometer, a compass, a perpetual calendar or multi-city time displays. Id. 10. 29. The watches currently offered under the INTELLIGENT QUARTZ mark are:

ALTIMETER contains an altimeter that displays maximum/minimum altitude records; COMPASS contains a compass; DEPTH GAUGE contains a depth sensor, reinforced case, screw-down crown and 200meter water resistance capability;

TIDE TEMP COMPASS contains a tide clock, compass and air or water thermometer; FLY-BACK CHRONOGRAPH contains a chronograph and second time zone; FLY-BACK CHRONOGRAPH COMPASS contains a compass and a fly-back chronograph;

PERPETUAL CALENDAR contains a calendar that accounts for short months and leap years; and

WORLD TIME displays the time in twenty-four cities, and indicates whether that city is using summer (i.e., daylight savings) or winter time.

Id. 30. Each additional feature present in the INTELLIGENT QUARTZ watch is enabled

by a computer microprocessor embedded in the watch. Id. 11. 31. But, that computer microprocessor is utilized by the watch solely to run the

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additional feature, such as the chronograph or perpetual calendar. Id. 32. 33. The microprocessor does not act on the quartz at all. Id. Mr. Galie, a 33-year veteran in the watch industry, attests: I can state with absolute certainty that the PTO is incorrect about the technological workings of the watches to which Timex applies the INTELLIGENT QUARTZ mark. It is blatantly inaccurate that any watch sold by Timex under the INTELLIGENT QUARTZ mark contains a quartz component controlled by a computer chip. In fact, to the extent that the INTELLIGENT QUARTZ watches contain computer chips, those chips unequivocally exert no control whatsoever over the quartz in the watch. To my knowledge, there are no such watches on the market and, indeed, it is not possible for a computer chip to enhance the functionality of a quartz crystal. Id. 5. 34. The only role that a quartz plays in the Timex line of INTELLIGENT QUARTZ

watches is the same role that it plays in any other quartz watch, namely, time keeping. Id. 9. 35. As Mr. Galie explains and as is common knowledge, quartz is nothing more than

a crystal rock. Id. 11. 36. Quartz is used in watches because it is a piezoelectric crystal, meaning, when

electrical charges are placed across an appropriately cut piece of quartz, the crystal will vibrate at a precise frequency, 32,768 Hz (oscillations) per second. Id. 7. 37. In addition, the quartz crystals do not expand or contract significantly in

temperature fluctuations such that the frequency of the vibrations stay remarkably consistent despite many changes in the environment. Id. 38. The consistency of the oscillations, in all types of environments, enabled

watchmakers to base the movement of the hands of a watch on the oscillations per second. Id. 39. Each time the piece of quartz oscillates 32,768 times, one second has passed, and

the secondhand moves appropriately. Id.

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40.

The use of crystal quartz to keep time was a major breakthrough in the time-

keeping accuracy of watches, as it increased the frequency of the timing mechanism of the watch from the typical mechanical oscillation. Id. 8. E. 41. The Meanings of Intelligent and Quartz In adopting the name INTELLIGENT QUARTZ, Timex did not intend to convey

anything about the quartz component of the watches sold by it under the Mark. Id. 9. 42. as: 1. Having intelligence: Is there intelligent life elsewhere in the galaxy? 2. Having a high degree of intelligence; mentally acute: an intelligent student. 3. Showing sound judgment and rationality: an intelligent decision; an intelligent solution to the problem. 4. Appealing to the intellect; intellectual: a film with witty and intelligent dialogue. Margiotta Decl. Exh. 6, TX0619. 43. Other dictionaries also include having the capacity for thought and reason The American Heritage Dictionary of the English Language defines Intelligent

especially to a high degree, clever, bright, informed and able to learn and understand things easily. Id. at TX0622. 44. Although many dictionary definitions do not include them, the PTO submitted to

the TTAB two lesser-used definitions of intelligent: thefreedictionary.com (fifth definition): Computer Science Having certain data storage and processing capabilities: an intelligent terminal; intelligent peripherals YourDictionary.com (fourth definition): equipped with a microprocessor or computer; an intelligent missile

R. at 39, 67-68. 45. Quartz is the name of a particular mineral substance. The American Heritage

Dictionary has a single definition of the term: [a] very hard mineral composed of silica . . . ,

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found worldwide in many different types of rocks, including sandstone and granite. Margiotta Decl. at Exh. 7, TX0641. 46. Elsewhere, quartz is defined as any of various crystallized forms of silica that

are transparent, translucent, or colored . . . . Id. at TX0635. 47. In addition to the Seiko registration, dozens and dozens of third parties have been

allowed to register INTELLIGENT-formative marks across many classes of goods and services. Margiotta Decl. Exh. 1. F. 48. Seikos INTELLIGENT QUARTZ Watch The watch manufacturer Kabushiki Kaisha Hattori Seiko (Seiko) successfully

obtained a registration for INTELLIGENT QUARTZ in 1991 for watches, U.S. Reg. No. 1,648,797 (the Seiko Registration). R. at 43. 49. In 1996, due to proper maintenance of its registration, the Seiko Registration

became incontestable and therefore served as conclusive proof of Seikos exclusive right to use the Mark for watches. Id. 50. Then, in 2002, Seikos registration was cancelled under Section 8 of the Lanham

Act, for failure to make the next requisite maintenance filing, at approximately the same time it ceased production of its INTELLIGENT QUARTZ line. Id. ARGUMENT I. The Standard of Review This case is brought pursuant to 15 U.S.C. 1071, which allows [a]n applicant for registration of a mark who is dissatisfied with the decision of the . . . Trademark Trial and Appeal Board to seek remedy by civil action. 15 U.S.C. 1071(a), (b). Litigants challenge a TTAB decision more often by appealing to the Federal Circuit. By bringing a new civil action in

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federal district court, however, the plaintiff has the opportunity to introduce new evidence in support of its claims. Glendale Intl Corp. v. U.S. Patent & Trademark Office, 374 F. Supp. 2d 479, 484 n.7 (E.D. Va. 2005) (Ellis, J.). In this context, the district court sits in a dual capacity. Id. at 485 (citing CAE, Inc. v. Clean Air Engg, Inc., 267 F.3d 660 (7th Cir. 2001)). To the extent the TTAB made findings of fact below, this Court sits as an appellate court, reviewing for substantial evidence. Id. However, this Court must review de novo any new evidence submitted by the parties and any of the TTABs conclusions of law. Id. Substantial evidence is more than a mere scintilla and such relevant evidence as a reasonable mind would accept as adequate to support a conclusion. In re Pacer Tech., 338 F.3d 1348, 1349 (Fed. Cir. 2003) (citing Consol. Edison v. NLRB, 305 U.S. 197, 229 (1938)). The issue before this Court whether a mark is merely descriptive of the goods identifiedis a question of fact. See DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1252 (Fed. Cir. 2012). Summary judgment is appropriate where the record demonstrates that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law. Fed. R. Civ. P. 56(c); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). At summary judgment, the evidentiary record must be viewed in the light most favorable to the nonmoving party. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). A mere scintilla of proof ought not to bar a summary judgment award; the question is not whether there is literally no evidence, but whether there is any upon which a jury could properly proceed to find a verdict for the party producing it. Id. at 251 (internal quotation marks omitted). Where the nonmoving party has failed to make a sufficient showing on an essential element of [its] case, with respect to which [it] has the burden of proof, the moving party is entitled to summary judgment. Celotex Corp., 477 U.S. at 323. Cross-motions for

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summary judgment are reviewed under the same standard, such that courts consider each motion separately on its own merits to determine whether either of the parties deserves judgment as a matter of law. Rossignol v. Voorhaar, 316 F.3d 516, 523 (4th Cir. 2003) (internal quotation marks omitted). Thus, the Court ought to reject any findings of fact by the TTAB, unless the Court finds substantial evidence to support them. Then, the Court must review de novo the newly submitted evidence and determine whether there is a triable issue of fact as to whether the Mark is merely descriptive or suggestive. Timex submits that no reasonable trier of fact could conclude other than that the Mark is suggestive. Finally, any doubt as to descriptiveness should be resolved in the applicants favor. See In re Aid Labs., Inc., 221 U.S.P.Q. 1215, 1216 (T.T.A.B. 1983); In re Pennwalt Corp., 173 U.S.P.Q. 317, 319 (T.T.A.B. 1972). As the Board stated in In re Bed-Check Corp., [w]e recognize that there is often a thin line separating merely descriptive from suggestive terms and that judgments in these cases are frequently subjective. However, where there is doubt in the matter, the doubt should be resolved in Applicants favor. 226 U.S.P.Q. 946, 948 (T.T.A.B. 1985), (finding SENSORMAT not merely descriptive of electrical sensing pad for use under patient). See In re Morton-Norwich Prods., Inc., 209 U.S.P.Q. 791, 791 (T.T.A.B. 1981) (The Boards practice is to resolve doubts in applicants favor and publish the mark for opposition); In re Shutts, 217 U.S.P.Q. 363, 365 (T.T.A.B. 1983) (At the very least, however, we have doubts about the merely descriptive character of the mark before us[,] and . . . it is clear that such doubts are to be resolved in favor of applicants.).

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II.

INTELLIGENT QUARTZ is a Suggestive Mark A. Introduction

In the United States, trademarks are divided into four groups in an ascending order of strength or distinctiveness: (1) generic; (2) descriptive; (3) suggestive; and (4) arbitrary or fanciful. Synergistic Intl, L.L.C. v. Korman, 470 F.3d 162, 171 (4th Cir. 2006) (citing Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984)). The issue here is whether INTELLIGENT QUARTZ is suggestive or merely descriptive. As explained above, a suggestive mark is one that suggests, rather than merely describes, a quality or characteristic of the goods. See Retail Servs., Inc. v. Freebies Publg, 364 F.3d 535, 542 (4th Cir. 2004); Minn. Mining & Mfg. Co. v. Johnson & Johnson, 454 F.2d 1179, 1180 (C.C.P.A. 1972); see also George & Co. v. Imagination Entmt Ltd., 575 F.3d 383, 394 (4th Cir. 2009). Indeed, [t]he Court of Customs and Patent Appeals even stated that, in its opinion, the best marks are often highly suggestive. 2 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS & UNFAIR COMPETITION (hereinafter, McCarthy) 11:65 (4th ed. 2012) (citing Van Camp Sea Food Co. v. Alexander B. Stewart Orgs., 50 F.2d 976 (C.C.P.A. 1931) (holding that CHICKEN OF THE SEA tuna fish is not descriptive)). To determine whether a mark is suggestive or descriptive, the leading treatise on trademark law sets out two related tests: the competitors need test and the imagination test. 2 McCarthy 11:67, 11:68. To apply the commercial need test, the Court may ask: Does the mark so closely tell something about the product or service that other sellers of like products would be likely to want to use the term in connection with their goods? Id. And, have other sellers been using the mark? Id.; see also Rodeo Collection, Ltd. v. W. Seventh, 812 F.2d 1215, 1218 (9th Cir. 1987); Restatement (Third) of Unfair Competition 14 cmt. b (2006) (The classification of a

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designation as either suggestive or descriptive thus depends upon both the likelihood that prospective purchasers will perceive it as an indication of source and the potential effect on competitors of its appropriation as a trademark by a particular seller. (emphasis added)). To apply the imagination test, the Court may query, as mentioned above, whether the mark directly conveys a real and unequivocal idea of some characteristic, function, quality or ingredient of the product or service to a reasonably informed potential buyer or is imagination on the buyers part . . . required in trying to cull a direct message from the mark about the quality, ingredients or characteristics of the product or service? . . . Even though the mark may tell something about the goods or services, is it just as likely to conjure up some other, purely arbitrary connotation? 2 McCarthy 11:71; see Synergistic Intl, 470 F.3d at 171 (citing Pizzeria Uno, 747 F.2d at 1527). Timex submits that both tests reveal that INTELLIGENT QUARTZ is suggestive and should be registered. B. There is No Commercial Need to Use INTELLIGENT QUARTZ in the Watch Industry

No evidence suggests that any third-party has the commercial need to use the term INTELLIGENT QUARTZ in conjunction with watches or anything else. As discussed above, the concern about granting trademark protection for a mark that may be descriptive is that doing so would deprive competitors of an important descriptive term. Telechron, Inc. v. Telicon Corp., 198 F.2d 903, 906 (3d Cir. 1952) (The basic reason for refusing to allow the exclusive appropriation of descriptive words in trade-marks is the danger of depleting the general vocabulary available to all for description and denomination of articles of commerce.); Rainbow Art Co. v. Sears, Roebuck & Co., 99 F. Supp. 677, 680 (S.D. W. Va. 1951) (A practical test is to inquire whether giving to the Plaintiff the right to appropriate the word as his Trade-Mark is, in

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any way, restricting others from properly describing similar articles produced by them. (internal quotation marks omitted)); 2 McCarthy 11:18. The fact that others in the industry do not use the phrase intelligent quartz descriptively is powerful evidence that the term is not a natural or obvious way to describe watches and that no commercial need for the phrase exists. See In re Jones Inv. Co., Ser. No. 77/249,189, 2009 WL 273242, at *3 (T.T.A.B. Jan. 21, 2009) (That the record is devoid of any evidence of descriptive use of green indigo in the clothing industry is indicative that applicants mark is only suggestive.); Firestone Tire & Rubber Co. v. Goodyear Tire & Rubber Co., 186 U.S.P.Q. 557, 558-59 (T.T.A.B. 1975); In re Dollar-A-Day Rent-A-Car Sys., Inc., 173 U.S.P.Q. 435, 436-37 (T.T.A.B. 1972). This absence of evidence is especially persuasive given that the phrase is not new. It has been in use as a trademark since at least as early as 1991, when Seiko first used and registered INTELLIGENT QUARTZ. Moreover, even after Seiko allowed its INTELLIGENT QUARTZ trademark registration to lapse in 2002, no other watch companies began using the phrase descriptively. Even over the last several years, as watches containing enhanced computer functionality have been marketed and sold, there is no evidence that any watch manufacturer other than Timex has used the compound phrase intelligent quartz to refer to its products. To further demonstrate the lack of commercial need to use intelligent quartz, Timex has submitted to this Court a set of articles about new computerized watch technologies from leading technology publications, none of which use the term intelligent quartzin fact, none even use the term intelligent. See Margiotta Decl. Exh. 4. Defendant submits limited evidence that the phrase intelligent watch has been used to describe watches with internet, GPS or music-playing capabilities. But, Defendant has not produced a single instance in which the phrase intelligent quartz is used, other than as a trademark. The absence of commercial need

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demonstrates that INTELLIGENT QUARTZ is suggestive. See In re Jones Inv., 2009 WL 273242, at *3. No third-party would be disadvantaged in communicating about its products if Timex owned a trademark in INTELLIGENT QUARTZ. C. Applying the Imagination Test, INTELLIGENT QUARTZ Does Not Immediately Convey Any Unequivocal Idea or Information about Watches

The compound mark INTELLIGENT QUARTZ is not descriptive because (i) intelligent has a number of definitions, none of which are particularly relevant to watches; and (ii) the combination of terms is incongruous, regardless of which definition of intelligent consumers apply. 1. No Single Definition of Intelligent Will Immediately Come to Mind

The evidence presented establishes that the term intelligent has a number of meanings, including having intelligence, mentally acute, and showing sound judgment and rationality, as well as having the capacity for thought and reason especially to a high degree, clever, bright, informed and able to learn and understand things easily. Margiotta Decl. Exh. 6; see also Synergistic Intl, 470 F.3d at 171-72 (when a registered trademark contains a disclaimed word . . . , a reviewing court must look mainly at the use of the dominant word . . . in making its assessment of whether a mark is suggestive or descriptive). The TTAB noted that, in some niche contexts, intelligent can also mean equipped with a microprocessor computer or Having certain data storage and processing capabilities. R. at 183. In determining whether a mark is suggestive or merely descriptive in such a crowded field of definitions, the Court must determine whether consumers of watches will immediately understand the mark to employ one of these definitions or if consumers will have to engage in some degree of imagination or deduction to select one of the definitions. It is not obvious here

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which definition of intelligent is implicated in the phrase intelligent quartz because none can be literally applied. A quartz crystal can have no mental acuity or judgment; it is, in fact, as dumb as the rock that it is. Nor, as discussed above, can it be enhanced by a computer chip. See infra 7-9; Galie Decl. 5, 9-11. As a result, consumers might believe that intelligent, speaks to the nature of the consumer who purchases the watch, the style of the watch, the price point of the watch, the craftsmanship of the watch or the accuracy of the watch. Consumers might believe they were intelligent to buy the watch because the watch works well or is well priced. Perhaps consumers think that they will appear intelligent if they wear the watch. Perhaps consumers believe that the watch was made by intelligent watchmakers. Perhaps they think that the quartz is intelligent because it keeps time well. Or, perhaps consumers think that the term intelligent does not have any particular meaning. All of these are equally possible. See Microstrategy Inc. v. Motorola, Inc., 245 F.3d 335, 344 n.7 (4th Cir. 2001) (expressing some skepticism . . . as to the district courts conclusions that Intelligence Everywhere is a descriptive mark for communication software). Such is the analysis the TTAB performed in In re Intelligent Medical Systems Inc., 5 U.S.P.Q.2d 1674 (T.T.A.B. 1987). The TTAB reversed the Examiners finding that the mark INTELLIGENT MEDICAL SYSTEMS is descriptive for electronic thermometers. Id. at 1676. The TTAB held that consumers were not likely to apply the definition of intelligent relating to microprocessors outside of the computer context: The fact that the word intelligent is, for the sake of argument, descriptive of a component within applicants electronic thermometers (i.e. the electronic processor) does not automatically mean that this word is merely descriptive of the electronic thermometers themselves. For example, as applied to an electronic thermometer, the word intelligent could suggest that selecting said thermometer represents an intelligent choice because, as noted in applicants literature, the thermometer is quicker and easier to use. . . .While the word intelligent when applied to computers may immediately impart information about computers to

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average prospective purchasers of computers, the word intelligent when applied to electronic thermometers does not, insofar as the record herein shows, immediately impart with any degree of particularity information about electronic thermometers to average prospective purchasers of electronic thermometers. In short, it cannot be said that INTELLIGENT MEDICAL SYSTEMS as applied to an electronic thermometer only serves to inform prospective purchasers of an ingredient within the electronic thermometer, namely a computer or microprocessor. Id. at 1675-76. The same reasoning applies to INTELLIGENT QUARTZ. This inquiry is crucial because intelligent is an exceedingly common initial term in a trademark, and it is frequently unclear what the seller means to convey by it. This can be seen in the scores of INTELLIGENT-formative third-party registrations that the PTO has permitted. See Margiotta Decl. Exh. 1. When consumers are confronted with the marks INTELLIGENT VALUE (disclaiming value) for inter alia, Financial and investment information services, namely, providing a common stock index that tracks the value of common stocks; financial investment services in the field of securities and financial securities underwriting services, registered in 2011; Id. at TX0093-98; INTELLIGENT NUTRIENTS (disclaiming nutrients) for inter alia, Providing banquet and social function facilities for special occasions; Restaurant and bar services, registered in 2009; id. at TX0473-76; INTELLIGENT WATER (disclaiming water) for inter alia, Water purifying apparatus; water purifying machines; water filtering apparatus, registered in 2008; id. at TX0082-85; INTELLIGENT RIVER (disclaiming river) for inter alia, Monitoring the water quality of watersheds, rivers and streams; analysis of the quality of watersheds, rivers and streams; providing information in the field of water quality, registered in 2009, id. at TX0158-60; INTELLIGENT RACE APPAREL (disclaiming race apparel) for inter alia, Sportswear for men and women, namely, a full line of triathlon training and racing apparel, namely, shorts with and without special padding, jerseys, singlets, running tops, tank tops, T-shirts, swimming suits, briefs, tights, sweatshirts, jackets, warm-up suits, hats,

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caps and visors, footwear and wetsuits, registered in 2012; id. at TX0029-34; INTELLIGENT VARIABLE ANNUITY (disclaiming variable annuity) for inter alia, financial services, namely, underwriting and administering annuities, registered in 2008, id. at TX0086-88; and INTELLIGENT SKINCARE (disclaiming skincare) for inter alia, Cosmetics, namely, skin cleansing cream, facial astringent, toning lotion, emollient cream, eye cream, nail strengthening cream, sunscreen, registered in 2002, id. at TX0493-95; they might certainly apply any number of meanings to the term intelligent. Consumers might well apply this range of meanings to INTELLIGENT QUARTZ as well. Moreover, consumers are especially likely to apply a range of meanings because intelligent here appears paired with the term quartz, not computer, terminal, or circuitry, any of which would be more likely to cause a consumer to resort to the lesser-known computer science-specific definition. INTELLIGENT QUARTZ does not even pair intelligent with any word for a specific device at all; it pairs it, instead, with a word that means crystal rock. It is important to recognize, that there is no evidence in the record that quartz is synonymous with watch, and Defendant cannot maintain any serious argument that the general public regularly uses quartz in place of the term watch. For example, no watch consumer says I am going to buy a quartz, I lost my quartz, or I am off to the quartz shop to get my quartz fixed. In fact, The American Heritage Dictionary has a single definition of the term quartz: [a] very hard mineral composed of silica . . . , found worldwide in many different types of rocks, including sandstone and granite. Margiotta Decl. Exh. 7, TX0641. Elsewhere, quartz is defined as any of various crystallized forms of silica that are transparent, translucent, or colored . . . . Id. at TX0635. Quartz may be recognized as a type of timekeeping mechanism for watches, but it is not synonymous with watch and does not mean watch.

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2.

INTELLIGENT QUARTZ is Incongruous

Furthermore, in analyzing a compound mark, the descriptiveness of the individual terms is not the key inquiry. Under Section 1209.03(d) of the Trademark Manual of Examining Procedure (TMEP), [w]hen two descriptive terms are combined, the determination of whether the composite mark also has a descriptive significance turns upon the question of whether the combination of terms evokes a new and unique commercial impression. See Intl Bancorp, L.L.C. v. Societe des Bains de Mer et du Cercle des Etrangers a Monaco, 192 F. Supp. 2d 467, 480 n.26 (E.D. Va. 2002) (Ellis, J.) (Casino de Monte Carlo is a composite mark, and is entitled to protection under 15 U.S.C. 1125(a) regardless of whether each word in the combination is descriptive.);For instance, a mark comprising a combination of merely descriptive components is registrable . . . if the composite has a bizarre or incongruous meaning as applied to the goods. Id. The Board has described incongruity in a mark as one of the accepted guideposts in the evolved set of legal principles for discriminating the suggestive from the descriptive mark, and has noted that the concept of mere descriptiveness should not penalize coinage of hitherto unused and somewhat incongruous word combinations whose import would not be grasped without some measure of imagination and mental pause. Id. (citing In re Shutts, 217 U.S.P.Q. at 364-65); TMEP 1209.03(d) (citing In re Colonial Stores Inc., 394 F.2d 549 (C.C.P.A. 1968)) (SUGAR & SPICE held not merely descriptive of bakery products); Concurrent Techs. Inc. v. Concurrent Techs. Corp., 12 U.S.P.Q.2d 1054, 1057 (T.T.A.B. 1989) (CONCURRENT TECHNOLOGIES CORPORATION found not merely descriptive of printed electronic circuit boards because, while concurrent had meaning in the computer field, concurrent technologies had no established meaning in relation to computer hardware or software); In re Tennis in the Round, Inc., 199 U.S.P.Q. 496, 498 (T.T.A.B. 1978) (association of TENNIS IN THE ROUND with theater-in-the-round creates incongruity

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because applicants tennis courts are not analogous to a theater-in-the-round). In In re Shutts, the PTOs Examining Attorney refused to register the mark SNO-RAKE as merely descriptive for a snow removal hand tool. 217 U.S.P.Q. 363 (T.T.A.B. 1983). The TTAB reversed the decision. The Examining Attorney had contended that the mark described the products purpose, namely raking snow from automobile windshields and other surfaces. Id. at 363. The TTAB disagreed, finding that SNO-RAKE was incongruous. [T]he idea of a rake or raking does indeed sit strange in terms of application to snow and, at best, is suggestive of a capacity for gathering up snow with an implement or using an action that hardly fits any of the common conceptions of rake or raking. Id. at 364. Here, the use of the word intelligent to modify quartz is incongruous, because quartz refers to a piece of crystalline stone that is inanimate and insensate, rather than intelligent. The Mark is, in fact, an oxymoron since there can be nothing intelligent about a rock. Mr. Galies testimony establishes unequivocally that the quartz component of Applicants watches is not intelligent, nor does it perform any so-called intelligent functions. Galie Decl. 5, 9, 11. The essential function of the quartz stone in Applicants watches is its oscillation at precise frequencies, which is made possible by the way the stone is cut and mounted. Id. 7, 8. Timexs use of INTELLIGENT to modify QUARTZ is odd and prompts the consumer to pause and consider in what way the quartz in Applicants watches could be intelligent. Therefore, the Mark in its entirety is incongruous and suggestive, not merely descriptive. III. The TTABs Finding that INTELLIGENT QUARTZ is Descriptive is Not Supported by Substantial Evidence In its refusal, the TTAB (i) based its descriptiveness finding on a factually inaccurate presumption; (ii) conceded that there was no evidence of commercial need and misapplied the

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imagination test; (iii) found, without evidence, that the public would presume that the term intelligent was meant to mean controlled by a computer chip, a rarely-used, niche definition; (iv) ignored the incongruity of the Mark; and (v) discounted without evidence the prior registration by Seiko of the same mark for the same goods. A. The TTAB Made a Factually Inaccurate Presumption

The TTAB found that the Mark conveys to consumers that the watch contains a quartz component controlled by a computer chip. R. at 187. This was the Boards central holding, stating twice more, as follows: However, based on the evidence of record, INTELLIGENT QUARTZ directly conveys the meaning that the watches have a quartz component controlled by computer chip. However, as indicated above, we find that INTELLIGENT QUARTZ will be perceived as an INTELLIGENT QUARTZ watch and, as such, the individual components of the mark, the words Intelligent and Quartz retain their descriptive meaning when used in connection with watches with a quartz component controlled by a computer chip.

R. at 188, 189 (emphases added). As discussed above, the evidence now before the Court establishes unequivocally that the watches Timex sells under its INTELLIGENT QUARTZ mark do not feature a quartz component controlled by a computer chip, nor is Mr. Galie aware of any watch sold wherein the quartz component is controlled by a computer chip. Galie Decl. 5. Thus, as a factual matter, the TTAB erred in presuming that Timexs watch is run by a quartz component that is controlled by a computer chip. In addition, the TTAB offered no evidence that consumers would make this same mistake en masse. Mr. Galie attests that the use of intelligent with quartz is not intended to convey anything about the quartz component of the watches sold by Timex under the INTELLIGENT QUARTZ mark. Id. 9. Indeed, Mr. Galie has never heard of a quartz mechanism being run by a computer chip. Id. 9. Against this marketplace and technological reality, the Boards holding that consumers would immediately

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convey to consumers that the watches have a quartz component controlled by computer chip is entirely lacking and certainly does not rise to the level of substantial evidence. R. at 187-89; see Glendale Intl, 374 F. Supp. 2d at 484 n.7. B. The TTABs Applications of the Commercial Need Test and the Imagination Test are in Error

The TTAB conceded that there was no evidence of commercial need of the phrase intelligent quartz. The TTAB found: Evidence that competitors have used particular words to describe their goods is, of course, persuasive evidence that those words would be perceived by purchasers as descriptive for the goods. Absence of such evidence of competitors use is, however, not conclusive on the question of whether a term is descriptive. R. at 190. While the TTAB is technically correct, some basis for the legal holding is still required. The TTAB, however, provided no support for the conclusion that the Mark was descriptive, other than stating that the Mark directly conveys meaning that the watches have a quartz component controlled by computer chip, which is ill-founded. R. at 187-89. Although the TTAB references the imagination test, it applied it incorrectly. See R. 181. It framed the question as whether a consumer who knows what the products are will understand the mark to convey information about them. R. at 179. However, this is an incomplete and overly broad expression of the test for descriptiveness because it fails to include the requirement that the mark immediately conveys the information. TMEP 1209.01(b) (citing In re Chamber of Commerce of the U.S., 675 F.3d 1297, 1300 (Fed. Cir. 2012); In re Bayer Aktiengesellschaft, 488 F.3d 960, 963-64 (Fed. Cir. 2007)) (emphasis added)). Surprisingly, the TTAB conceded that consumers presented with th[e Mark] would pause to consider its meaning. R. at 186 (emphasis added). This finding alone is sufficient to reverse the TTABs holding. See In re Shutts, 217 U.S.P.Q. at 364-65 (The concept of mere descriptiveness, it

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seems to us, must relate to general and readily recognizable word formulations and meanings, either in a popular or technical usage context, and should not penalize coinage of hitherto unused and somewhat incongruous word combinations whose import would not be grasped without some measure of imagination and mental pause. (emphasis added)). C. The Definition of Intelligent Relied on by the TTAB is Not Common and the Board Offers No Substantial Evidence that it Would Apply in the Context of Watches

The Board purports to support the imagination test with a conclusion that the word intelligent will be readily understood by consumers to mean equipped with a microprocessor computer. R. 187-89. While the TTAB in In re Intelligent Medical Systems Inc., 5 U.S.P.Q.2d 1674 (T.T.A.B. 1987) analyzed whether consumers would interpret intelligent to mean that the device contained a microprocessor and then concluded that they would not, the TTAB underwent no such analysis in denying Timexs INTELLIGENT QUARTZ application. See infra 17-18. Had the Board conducted this analysis, it would be clear that there is no substantial evidence that the niche computer-science definition on which it relies is the one that consumers would apply in connection with analogue watches. To support its reliance on the rather obscure dictionary definition of intelligent, and to buttress its holding that INTELLIGENT QUARTZ is descriptive, the TTAB referenced Internet postings regarding Seikos use of INTELLIGENT QUARTZ, and third-party references to Seikos historical line of INTELLIGENT QUARTZ watches that purportedly demonstrate that the term INTELLIGENT QUARTZ is descriptive in the watch industry. R. at 187-88. But what is missing to contextualize these very few references is that Seiko owned a trademark registration for INTELLIGENT QUARTZ for watches until 2002. Indeed, it protected that mark for eleven years after obtaining the registration from the PTO. For example, the TTAB referenced an eBay listing for a Vintage Seiko Intelligent Quartz Chrono/Alarm in Box, as evidence of

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descriptiveness when it is, in fact, a reference to the trademark owned by Seiko under which that watch was sold. Similarly, the article entitled Seiko on the website classicwatch.com indicated merely that Seiko introduced the first Intelligent Quartz Watch. The phrase is capitalized, and clearly refers to Seikos branding. The same is true to the references that the TTAB mentioned on the Seiko.com site and a blog named Watches Corner. R. at 183. The blogger mentions that Seiko Company developed the first intelligent analog quartz watch with alarm and time functions controlled by an IC computer on a chip. But this is not a descriptive use of INTELLIGENT QUARTZ. Comparing the phrase intelligent analog quartz watch to the mark INTELLIGENT QUARTZ has no bearing on this case, and is irrelevant. Timex is not seeking to register the phrase intelligent analog quartz watch, but the far more suggestive INTELLIGENT QUARTZ. The TTAB next referenced two industry websites that reported on Timexs introduction of the Intelligent Quartz Technology. R. at 184-85. The TTAB takes these articles to establish that the writers perceive INTELLIGENT QUARTZ as describing a feature of Applicants watches. R. at 187-88. But, nothing in these articles supports that argument; rather, both articles always capitalize Intelligent Quartz, and use it to refer to Timexs brand name for its watch line. The article from Moodie Report specifically refers to Intelligent Quartz as proprietary. R. at 184. There is no discussion of intelligent quartz as a feature of the products; INTELLIGENT QUARTZ is used to identify the brand of watches. Finally, the TTAB relied on three sites advertising Timexs INTELLIGENT QUARTZ watches, which allegedly support a finding that the Mark is descriptive. R. at 186. The TTAB failed to understand that these sites are simply advertisements for Timexs INTELLIGENT QUARTZ line of watches. There is nothing descriptive about the uses of the Mark in any of

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these advertisements. Regarding the Marks incongruity, the TTAB acknowledges Timexs argument, but finds, without more: [B]ased on the evidence of record, INTELLIGENT QUARTZ directly conveys the meaning that the watches have a quartz component controlled by computer chip. The mark does not convey any multiple meanings, double entendre or incongruity. R. 188. But the TTAB fails to indicate which evidence supports the claim. D. The TTAB Does Not Distinguish the Seiko Registration

The PTO maintained its refusal even though it granted registration for the exact same mark on the exact same goods to Seiko. See R. 43; 189-90. The PTO failed to establish with any evidence that there has been a signficant shift in the consumer definition of intelligent since that time. The failure to come forward with this evidence is particularly disturbing because Seiko is not alone in having registered INTELLIGENT-formative marks. Indeed, the breadth of registrations granted by the PTO across many classes and applied to many different goods and services undermines any argument that INTELLIGENT would be readily and singularly understood as equipped with a microprocessor computer; the word obviously has a broad array of meanings to consumers. See Margiotta Decl., Ex. 1. The PTO has notably allowed registrations for many INTELLIGENT-formative marks in the computer services industry as well, even where the intelligent modifies a generic or highly descriptive term explicitly associated with computing. This is compelling evidence that the PTO understands and acknowledges that, even in the computer industry, intelligent does not have the singular meaning of equipped with a microprocessor computer. See, e.g., Margiotta Dec., Ex. 1 at TX0078-81 (INTELLIGENT WEB HOSTING (disclaiming web hosting) for, inter alia, Computer services, namely, creating, maintaining, designing and implementing web sites

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for others and hosting the web sites of others on a computer server for a global computer network, registered in 2012); TX0240-42 (INTELLIGENT IT (disclaiming IT) for Computer technology support services, namely, help desk services; Information technology consultation, registered in 2008); TX0089-92 (INTELLIGENT VEHICLE NETWORK (disclaiming vehicle network) for Onboard data systems comprising computer hardware, computer software and communication equipment comprising microphones and loudspeakers for providing public transportation information including public service, transfer, passenger information and stop announcements, registered in 2000); TX0257-60 (INTELLIGENT IMAGE INDEXING (disclaiming Image Indexing) for User authentication computer software that employs biometric identification functionality, registered in 2009); TX0060-63 (INTELLIGENT INSTRUMENTATION (disclaiming instrumentation) for, inter alia, electronic I/O (input/output) boards and data acquisition boards for use in personal computers, registered in 1996). See also id. at TX0068-72; TX0073-77; TX0129-32; TX0247-50; TX026164; TX0388-91; TX0462-68; TX0483-87 and TX0488-92. The breadth of third-party registrations for INTELLIGENT-formative marks across a broad spectrum of trademark classes, including in connection with computer-related technologies belies the TTABs holding that consumers immediately conclude intelligent means powered by a microprocessor in the context of watches. The evidence is plain that intelligent has many commonly used meanings, and consumers cannot immediately conclude which definition may apply even when the goods are computer related. CONCLUSION For the reasons stated above, the TTAB decision should be reversed and the PTO should be ordered to approve Plaintiffs Application for publication and allow the subsequent

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registration upon Plaintiffs establishment of a valid basis for registration; and there is no triable issue of fact upon which a fact-finder could conclude that the INTELLIGENT QUARTZ mark is merely descriptive; and the Court should declare that Plaintiffs INTELLIGENT QUARTZ mark is not merely descriptive when used in connection with Plaintiffs product.

Dated: Arlington, Virginia March 15, 2013

JENNISON & SHULTZ, P.C.

By:

/s/ John N. Jennison Virginia State Bar No. 36824 2001 Jefferson Davis Highway Suite 1102 Arlington, VA 22202-3604 Email: john@jennisonlaw.com John Margiotta (jm@fzlz.com) Leo Kittay (lkittay@fzlz.com) Fross Zelnick Lehrman & Zissu, P.C. 866 United Nations Plaza New York, NY 10017 Tel: (212) 813-5900 Fax: (212) 813-5901 Attorneys for Plaintiff Timex Group USA, Inc.

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CERTIFICATE OF SERVICE I hereby certify on this 15th day of March, 2013, that I will file the foregoing with the Clerk of Court using the CM/ECF system, which will send a notification of such filing to the following: Bernard G. Kim Assistant United States Attorney Justin W. Williams United States Attorney's Building 2100 Jamieson Avenue Alexandria, Virginia 22314 Counsel for Defendant

/s/ John N. Jennison