estta tracking number: estta1010981 10/24/2019

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov

ESTTA Tracking number: ESTTA1010981

Filing date: 10/24/2019

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Proceeding 92070950

Party PlaintiffThe NOCO Company

CorrespondenceAddress

ANN K FORDDLA PIPER LLP (US)500 EIGHTH STREET NWWASHINGTON, DC 20004UNITED [email protected], [email protected],[email protected], [email protected]

Submission Motion to Amend Pleading/Amended Pleading

Filer's Name John M. Nading

Filer's email [email protected], [email protected], [email protected]

Signature /John M. Nading/

Date 10/24/2019

Attachments Amended Petition for Cancellation - Canc. No. 92070950.pdf(2864511 bytes )

http://estta.uspto.gov

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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In the Matter of Trademark Registration No. 4750963 Mark: BATTERY TENDER Filed: July 21, 2014 Registered: June 9, 2015

) THE NOCO COMPANY, )

) Petitioner, )

) Consolidated Proceedings v. ) Cancellation No. 92070950

) Cancellation No. 92070474 (Parent) DELTONA TRANSFORMER CORPORATION,

))

Registrant. ) ) )

AMENDED PETITION FOR CANCELLATION1

1. Deltona Transformer Corporation, a Florida corporation (“Registrant”), is listed

in the records of the United States Patent and Trademark Office (“USPTO”) as the owner of the

following registration (the “Mark”) in connection with the following goods (the “Goods”):

1 Petitioner files this Amended Petition for Cancellation with leave of the Board as permitted in its October 4, 2019 Order. (12 TTABVUE 10.)

Mark Reg./App. Date Reg./App. No. Class

BATTERY TENDER

App. July 21, 2014 Reg. June 9, 2015

App. 86342718 Reg. 4750963

09: Batteries; battery chargers; battery maintainers; battery monitors; battery testers; waterproof battery chargers; trickle battery chargers; renewable battery charger systems consisting primarily of battery charging devices, solar panels, charge controllers and battery cables; solar panels for production of electricity; power supplies for batteries; battery conditioners; battery voltage indicators; portable battery charger systems consisting primarily of battery charging devices, charge controllers and battery cables; portable power

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2. The NOCO Company, an Ohio corporation (“Petitioner”), is a manufacturer and

distributor of battery chargers, battery jump starters, battery packs, and other battery related goods

and accessories.

3. Petitioner is being harmed by the continued registration of the Mark and hereby

petitions for cancellation of the Mark on the basis that the Mark has become generic.

Petitioner has Standing to Petition for the Cancellation of the Mark

4. Petitioner and Registrant are competitors that operate in the same industry and sell

competitive products, namely battery chargers.

5. As a competitor of Registrant and seller of similar products as Registrant, Petitioner

will at times use the words “battery tender” or “tender” in its marketing materials, in Amazon

keywords, keywords for targeted paid advertisements and for product comparisons.

6. In fact, Registrant has accused Petitioner of infringing on its rights in the Mark as

a result of Petitioner’s advertising. At the time of filing the initial Petition for Cancellation in this

Proceeding, Petitioner had already filed a Petition for Cancellation against Registrant’s BATTERY

TENDER Mark Registration No. 3474591 at the United States Trademark Trial and Appeal Board,

which was assigned Proceeding No. 92070474. The instant Cancellation Proceeding and

supply systems consisting primarily of power supply devices, charge controllers and battery cables; battery jump starters; power supply connectors, battery charging devices and adaptors for use with portable electronic devices; battery cases; battery power connectors and adaptors; battery terminal connector clamps; carrying cases for battery chargers and accessories; digital voltage indicators; extension cables; and battery terminal harnesses.

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Proceeding No. 92070474 were consolidated by the Board on or around October 8, 2019. (13

TTABVUE.)

7. The continued registration of the Mark is hindering and interfering with Petitioner’s

business.

8. As such, the registration of the Mark is causing injury and damage to Petitioner,

and therefore, Petitioner has standing to petition for the cancellation of the Mark.

The History of the Mark

9. Registrant’s Mark has a history of being deemed, at best, merely descriptive for

their Goods. Nearly two decades ago, in Deltona Transformer Corp. v. Wal-Mart Stores, 115 F.

Supp. 2d 1361 (M.D. Fla. 1999), Registrant filed suit against Wal-Mart seeking a preliminary

injunction to prevent Wal-Mart from selling a line of battery chargers that used the term “battery

tender” on its packaging. Registrant lost its request for preliminary injunction because the Court

found “that the ‘Battery Tender’ mark is merely descriptive with no showing of a secondary

meaning and, thus, is not entitled to protection.” Id. at 1366-67. The Court further remarked, “[i]t

is beyond doubt that the term ‘Battery Tender’ bears a relationship to the type of product—battery

charger—being offered by Deltran [(Registrant’s d/b/a)].” Id. at 1366 n.2. In fact, the Court went

on to state that “the evidence borders on showing that the term is being used generically to describe

the type of product, i.e., a charger that tends batteries.” Id. at 1367 (emphasis added).

10. The Mark already includes a disclaimer of the term “battery;” specifically, “no

claim is made to the exclusive right to use ‘Battery’ apart from the mark as shown.”

11. Registrant was required by the USPTO to disclaim “BATTERY” in connection

with Registration No. 4750963, because, as stated in the November 15, 2014 Office Action, “it

merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of

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applicant’s goods, and thus is an unregistrable component of the mark.” The Examining Attorney

went on to state: “The descriptive nature of the term ‘battery’ is amply demonstrated by the

applicant’s use of that term countless times in its identification of goods. An applicant may not

claim exclusive rights to terms that others may need to use to describe their goods and/or services

in the marketplace.”

12. Registrant’s rights in the Mark have always been clouded by issues of mere

descriptiveness, and at least since its registration, the Mark has become so highly descriptive of

the Goods it is associated with that the Mark has become generic.

13. A “battery tender” generically describes a type of battery charger that only charges

a battery when the battery’s charge has dropped below a certain level, and it will shut off once the

battery is fully charged.

The Mark has Become Generic

14. A registration is subject to cancellation “[a]t any time if the registered mark

becomes the generic name for the goods or services, or a portion thereof, for which it is registered.”

15 U.S.C. § 1064(3).

15. There is a two-step analysis for determining whether a mark is generic:

a. What is the genus of the goods or services at issue; and b. Is the term understood by the relevant public primarily to refer to that

genus?

16. The Mark has become generic because it is registered in connection with battery

chargers, and it has become a generic term for a type of battery charger. As the Board has noted:

“A registration is appropriately cancelled in an entire class if the term at issue is generic for any of

the goods within that class.” (12 TTABVUE 7.)

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17. Registrant itself uses the Mark in a generic way to identify its Goods. Attached as

Exhibit A is an advertisement from Registrant where it shows a stylized version of the Mark,

beneath which it states “the only battery tender.” Here, “battery tender” is not used to identify the

source of the Goods but rather it is being used generically to identify a type of battery charger.

18. Additionally, the relevant public (i.e. purchasers of battery chargers and those who

operate in the battery charger industry) primarily views the Mark as generic for a type of battery

charger, rather than an indication that Registrant is the source of the Goods. Numerous examples

of how the Mark (“battery tender”) is used generically throughout the marketplace are attached to

this Petition and more specifically identified below.

19. Attached as Exhibit B is a screenshot from an Internet article published in

November 2010 titled “Trickle chargers vs. battery tenders: what’s the difference?” The article

explains that:

“The difference between a trickle charger and a battery tender is that a trickle charger constantly applies a charge, whether the battery is fully charged or not. A battery tender, on the other hand, has circuitry that monitors the battery and charges only when the voltage has dropped below a preset level, thus preventing overcharging and damage.”

(emphasis added).

20. The article makes no mention of Registrant or Registrant’s products and uses

“battery tender” purely as a generic term for a type of battery charger.

21. Attached as Exhibit C is a screenshot from an Internet article titled “Trickle Charger

Vs Battery Tender (Battery Maintainer): What are the differences?” (emphasis added). The

article explains that “trickle chargers and battery tenders both have their uses.” The article does

not reference Registrant or Registrant’s products, and it uses the term “battery tender” generically

for a type of battery charger, specifically a battery maintainer.

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22. Attached as Exhibit D is a screenshot from a YouTube video posted on January 5,

2018 from John Engel of JE Motors titled “Choosing the Right Battery Tender for your Car and

Motorcycle.” (emphasis added).

23. The description of the video is as follows:

“I review three different battery tenders and give you the specs on each. Selecting the right battery maintainer is easy when you have all the facts! Stanley VS Black and Decker VS Schumacher, who will win?”

(sic, emphasis added).

24. The video does not review any of Registrant’s products, and the speaker in the video

uses the term “battery tender” as a generic term for a type of battery charger.

25. Attached as Exhibit E is a screenshot from a YouTube video posted on July 3, 2018

from Interesting Facts About Vehicles titled “Top 7 Best Battery Tenders in 2018 Reviews. Best

Accessories for Cars 2018.” (emphasis added).

26. The description of the video is as follows:

Amazing compilation of latest and new battery tenders in 2018 reviews. 7. KeyLine Chargers KC-125-MPXP 12V 1.25 Amp Automatic Mini Pro-XP 6. Schumacher SE-1-12S-CA Fully Automatic Onboard Battery Charger 5. Morange MBC010 12V/1A Smart Battery Charger 4. NOCO Genius G1100 GV/12V 1.1A UltraSafe Smart Battery Charger 3. Deltran Battery Tender Junior 12 Volt 3-Pack 2. Black & Decker BM3B 6V and 12V Battery Charger 1. Battery Tender 021-0123 Battery Tender Junior 12V Battery Charger

(emphasis added).

27. Two of the seven reviewed products are Registrant’s products, but the other five

products are from different companies. Nonetheless, each of these products is referred to as battery

tender. Again, “battery tender” is being used generically to describe a type of battery charger.

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28. Attached as Exhibit F is a screenshot from an Internet article from March 21, 2018

titled “The 8 Best Solar Battery Tenders.” (emphasis added). The article reviews eight different

products, two of which are Registrant’s products. The article uses “battery tender” as a generic

term for a type of battery charger.

29. Attached as Exhibit G is a screenshot from an Internet article from November 21,

2018 titled “The Best Battery Maintainer 2019.” The article reviews five different products only

one of which is Registrant’s product. The article uses the term “battery tender” as a generic term

for a type of battery charger.

30. Exhibits E, F and G all include reviews of Registrant’s products alongside other

battery chargers, but the publishers of these videos/articles make no mention that “battery tender”

is a brand name, rather, they use the term in a generic manner to describe a type of battery charger

from multiple companies. If the Mark was truly distinctive then articles reviewing the best

“battery tenders” would only include Registrant’s products.

31. Attached as Exhibit H is a screenshot from an Internet article titled “Installing a

Battery Tender.” (emphasis added). The article provides instructions for how to install a battery

tender on a motorcycle, and the article states that it is using a “Yuasa 900 mA battery charger.”

The article makes no mention of Registrant or its products, rather, this how-to article uses “battery

tender” as a generic term for a type of battery charger.

32. Attached as Exhibit I is a screenshot from Yahoo Answers. A user asked the

question “What’s a battery tender?” (emphasis added).

33. The top answer, from nine years ago, states:

battery charger charges the battery, but battery tender charges, make sure it doesn’t over charge and it also maintains the charge. so if you need to leave your car unattended for a while, plug it into a battery tender while you are gone.”

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34. Not one of the answers references Registrant or its products. Although one answer

reads as follows:

“battery tender” does not have a generic meaning. various manufacturers and distributors of battery charging devices use the term to mean whatever they want it to mean. could be a battery maintainer, could be a multi-bank charge controller…..


35. While this responder is not using generic in the legal sense, the explanation

provided is exactly that of a generic term, in that “battery tender” does not denote the source of

the goods, rather, it denotes a generic term for a type of battery charger.

36. Attached as Exhibit J is a screenshot from a forum page from June 2016 on the topic

of Motor Vehicle Maintenance & Repair. The thread is titled “Battery Tender vs Trickle Charger.”

(emphasis added). The user asked what are the differences between these two products?

37. There is one answer to the question, which states that a “trickle charger provides

a constant current all the time. It does not know whether the battery is charged or discharged. A

battery tender is smart. It will charge the battery only when it needs charged.” (emphasis

added). The answer goes into additional details, but at no point does it reference Registrant or its

products. The answer uses the term “battery tender” solely as a generic term for a type of battery

charger.

38. Attached as Exhibit K is screenshot from a motorcycle forum page. The thread,

which started September 17, 2017, is titled “Battery Trickle Charger vs. Battery Tender??”

(emphasis added). Commenters use the term “battery tender” in a generic manner throughout the

entire thread to describe a type of battery charger.

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39. One commenter wrote the following:

“To be anal about it trickle charger is an indefinite term used for both actual ‘trickle’ chargers and battery maintainers. Battery tender is like the name

Xerox, a brand name that has become a generic term. Battery Tender is a brand of battery maintainer.... Battery Tender brand is one of the most recommended but I use one from NAPA and it works great. There are other quality brands out there also such as Schumacher.”

(emphasis added).

40. Attached as Exhibit L is a screenshot from Amazon after a search for “battery

tenders” was conducted. The results do include Registrant’s products, but it also includes various

other brands of battery chargers.

41. Moreover, the search also showed Amazon’s “Expert Recommendations.” Of the

three products recommended by the Amazon Verified Expert, only one was Registrant’s product.

42. Attached as Exhibit M is a screenshot from Harley Davidson’s website where it is

selling a line of battery tenders. The website makes no mention of Registrant, the Mark or

Registrant’s products, as such the term “battery tender” is being used generically to describe a type

of battery charger.

43. Attached as Exhibit N is a screenshot from Optima Batteries’ website which

includes a section titled “Battery Maintainer and Battery Tender.” (emphasis added). The site

makes no reference to Registrant, the Mark or Registrant’s products, and its uses the term “battery

tender” as a generic term for a type of battery charger.

44. This evidence demonstrates that the relevant public understands the term “battery

tender” to be a type of battery charger, and they do not associate the Mark with Registrant or its

Goods.

45. Registrant itself uses the Mark generically (See Exh. A); related industry websites

publish articles that use the Mark generically (See Exhs. B, C, F, G and H); persons in the

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automotive industry post videos reviewing battery chargers and use the Mark in a generic manner

(See Exh. D and E); forums where users engage in discussions about battery chargers use the Mark

in a generic manner (See Exhs. I, J, and K); Amazon’s search algorithm produces various types of

battery chargers when “battery tenders” are searched for (See Exh. L); and certain companies have

their own line of products referred to as “battery tenders” (See Exhs. M and N).

46. Registrant may argue that content from the Internet is not sufficient evidence to

establish the Mark as generic, but the people or companies cited above all in some way operate

in the battery charger industry - they are the “relevant public” - and they all use the Mark in a

generic manner to describe a type of battery charger, not to identify Registrant as the source of

the Goods.

47. The Mark has become a generic term for a type of battery charger.

48. Accordingly, Petitioner requests that the Mark be cancelled as it has become

generic.

WHEREFORE, Petitioner is and will continue to be damaged by the registration of the

Mark and hereby requests that registration of the Mark be cancelled.

Petitioner hereby appoints Ann K. Ford, a member of the Bar of the District of Columbia;

John M. Nading, a member of the Bar of the District of Columbia; Thomas E. Zutic, a member of

the Bar of the District of Columbia; Ryan C. Compton, a member of the Bar of the District of

Columbia; Eunice R. Chung, a member of the Bar of the District of Columbia; David M. Kramer,

a member of the Bar of the District of Columbia; Ashley H. Joyce, a member of the Bar of the

District of Columbia; James K. Stewart, a member of the Bar of the District of Columbia; Devika

Persaud, a member of the Bar of the District of Columbia, and all of the law firm of DLA Piper

LLP (US), 500 8th Street, N.W., Washington, D.C. 20004, telephone number (202) 799-4000, to

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transact all business in the USPTO in connection with this Cancellation Proceeding and hereby

revokes all previous powers of attorney herein.

Please address all correspondence to:

Ann K. Ford, Esq. DLA Piper LLP (US) 500 8th Street, N.W. Washington, D.C. 20004 [email protected]

The filing fee for this Cancellation in the amount of $1,200.00 was electronically

transferred with the submission of the initial Petition for Cancellation.

The undersigned, registered agent for Petitioner herein, states that she is authorized to

prosecute this Cancellation, that she has read and signed the foregoing Amended Petition for

Cancellation and knows the contents thereof, and that all statements made on information and

belief are believed to be true; and further that these statements were made with the knowledge that

willful false statements and the like so made are punishable by fine or imprisonment, or both, under

Section 1001 of Title 18 of the United States Code and that willful false statements may jeopardize

the validity of this Cancellation and any decision resulting therefrom.

Dated: October 24, 2019 Respectfully submitted,

DLA PIPER LLP (US)

By: /s/John M. Nading Ann K. Ford John M. Nading Devika Persaud 500 8th Street, NW Washington, D.C. 20004 Tel. 202-799-4000 Fax 202-799-5000 [email protected] [email protected] [email protected] Attorneys for Petitioner

The NOCO Company

EXHIBIT A

Amazon Advertisement

EXHIBIT B

https://www.theglobeandmail.com/globe-drive/culture/commuting/trickle-chargers-vs-battery-

tenders-whats-the-difference/article1241701/

Accessed on January 16, 2019.

EXHIBIT C

https://autofthings.com/trickle-charger-vs-battery-tender/


EXHIBIT D

https://www.youtube.com/watch?v=jUCrnW_ibEo


EXHIBIT E

https://www.youtube.com/watch?v=4TNrvDjKDS4


EXHIBIT F

https://wiki.ezvid.com/best-solar-battery-tenders


EXHIBIT G

https://procarreviews.com/best-battery-maintainers/


EXHIBIT H

https://faq.ninja250.org/wiki/Installing_a_battery_tender


EXHIBIT I

https://answers.yahoo.com/question/index?qid=20100818112512AA7tVrs


EXHIBIT J

https://mechanics.stackexchange.com/questions/31747/battery-tender-vs-trickle-charger


EXHIBIT K

https://www.spyderlovers.com/forums/showthread.php?108162-Battery-trickle-charger-vs-

Battery-Tender


EXHIBIT L

https://www.amazon.com/s/ref=nb_sb_noss_1?url=search-alias%3Daps&field-

keywords=battery+tenders


EXHIBIT M

https://www.harley-davidson.com/shop/motorcycle-battery-tenders


EXHIBIT N

https://www.optimabatteries.com/en-us/support/maintenance-storage/battery-maintainer-battery-

tender


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CERTIFICATE OF SERVICE

This is to certify that a copy of the foregoing AMENDED PETITION FOR

CANCELLATION was served via email to Registrant’s counsel of record as follows:

Patricia M. Flanagan Megan A. McNamara Fox Rothschild LLP 997 Lenox Drive, Building 3 Lawrenceville, NJ 08648-2311 [email protected] [email protected] [email protected] [email protected]

Counsel for Registrant

Deltona Transformer Corporation

this 24th day of October, 2019.

/s/ John M. Nading__________

John M. Nading Attorney for Petitioner

The NOCO Company

estta tracking number: estta1010981 10/24/2019

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