Brewster Wallcovering Co.

Trademark Trial and Appeal Board

Jul 19, 1999

No. 75005241 (T.T.A.B. Jul. 19, 1999)

Paper No. 11
cmb
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 19, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Brewster Wallcovering Company
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Serial No. 75/005,241
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Charles Hieken of Fish & Richardson P.C. for Brewster
Wallcovering Company
Thomas W. Wellington, Trademark Examining Attorney, Law
Office 104 (Sidney Moskowitz, Managing Attorney)
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Before Seeherman, Hairston and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Brewster Wallcovering Company has appealed from the
refusal of the Trademark Examining Attorney to register
LONGWOOD, in typed form, as a trademark for "wallcovering
made of plastic, vinyl or paper."1 Registration has been
refused on the ground that applicant has failed to submit
Ser No. 75/005,241
2
acceptable specimens showing use of the mark depicted in
the application drawing, i.e., LONGWOOD. Applicant’s
specimens, consisting of labels which are attached to the
goods, appear as follows (in reduced form):2

1 Application Serial No. 75/005,241, filed October 13, 1995,
alleging September 1995 as the date of first use anywhere and
date of first use in commerce.
2 The wording at the bottom of the illustration reads "Prepasted
Wallcoverings and Borders with Coordinating Fabrics."
Ser No. 75/005,241
3
Applicant and the Trademark Examining Attorney have
filed main briefs, and applicant has filed a reply brief;
an oral hearing was not requested.3
We affirm the refusal.
Trademark Rule 2.51(a)(1) requires that in an
application (such as applicant's) filed under §1(a) of the
Trademark Act, "the drawing of the trademark shall be a
substantially exact representation of the mark as used on
or in connection with the goods." To determine what is
"the mark as used on or in connection with the goods," we
look to the specimens of use submitted by applicant. See
In re Jane P. Semans, 193 USPQ 727, 729 (TTAB 1976).
Where the mark depicted in the application drawing is
a "mutilation" of the mark, i.e., an incomplete
representation of the mark as used on the goods due to the

3 On July 7, 1998, after the briefs had been filed, the Board
remanded the application to the Trademark Examining Attorney for
possible further action in light of the Court’s decision in In re
ECCS, Inc., 94 F.3d 1578, 39 USPQ2d 2001 (Fed. Cir. 1996). On
August 13, 1998, the Trademark Examining Attorney issued an
office action notifying applicant and the Board as follows:
The examining attorney contacted applicant by telephone
on August 28, 1998 [sic - should be July 28, 1998?], and
offered applicant the option of amending the mark in the
drawing to LONGWOOD MANOR to conform to the mark as
displayed on the specimens, in accordance with the In re
ECCS, Inc. decision. The applicant declined this
option.
In view of applicant’s clear statement that the mark for which it
seeks registration is LONGWOOD, per se, the sort of ambiguity the
Court found in In re ECCS, supra, is not present in this case.
Ser No. 75/005,241
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omission of essential and integral matter, the application
is not in compliance with Trademark Rule 2.51(a)(1) and
registration must be refused. See id; TMEP 807.14(b). In
determining whether mutilation of a mark has occurred, we
note that:
[i]t is well established that one may use a
composite mark in connection with a product
and register separately its several elements
if each element is used in such a manner as
to create a separate and distinct commercial
impression from the other elements and does
in fact, per se, identify and distinguish
this product from the products of others.
In re Jane P. Semans, supra, 193 USPQ at 729. See also
TMEP §807.14(b).
In this case, the Trademark Examining Attorney has
made of record ten excerpts from the NEXIS automated
database showing that when the term MANOR is combined with
another term which, by itself, suggests a geographical
location or a surname, the result is a composite, unitary
expression which connotes a stately home.4 The examples set
forth in the NEXIS excerpts submitted by the Trademark
Examining Attorney are "Haxley Manor," "Waddesdon Manor,"
"Avebury Manor," "Douglaston Manor," "Childwickbury Manor,"

4 The Trademark Examining Attorney’s NEXIS search request was
MANOR W/50 (STATELY PRE/1 HOME), conducted in the ENTERT library
of the ALLNWS file. The search retrieved twenty-seven
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Eastwell Manor," "Whatley Manor," Billesley Manor," "Adare
Manor," "Wayne Manor," and "Snowshill Manor."
We agree with the Trademark Examining Attorney’s
contention that, like these examples from the NEXIS
database, the designation LONGWOOD MANOR, as it appears on
applicant’s specimens of use, is a unitary expression.
Although LONGWOOD, alone, suggests a surname or
geographical location, we find that it takes on a different
connotation when combined with the term MANOR, i.e., that
of a stately home called LONGWOOD MANOR.
The manner in which the designation LONGWOOD MANOR
appears on applicant’s specimens reinforces the unitary
commercial impression created by the meaning and
connotation of the words themselves. The two words are
displayed on a single line and in the same size and
distinctive style of script, in upper and lower case
lettering with the initial letter of each word capitalized.
The words LONGWOOD MANOR appear together as a unit at the
top of the label, separate from the generic wording
"Prepasted Wallcoverings and Borders with Coordinating
Fabrics" which appears at the bottom of the label in much
smaller type. These display characteristics further

references, ten of which were made of record by the Trademark
Examining Attorney.
Ser No. 75/005,241
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support our conclusion that LONGWOOD MANOR is a unitary
expression. See In re Jane P. Semans, supra.
We are not persuaded by applicant’s argument that,
because the word LONGWOOD, per se, has a distinct meaning
or connotation as a surname or geographical location, it
therefore must be deemed to create a separate and distinct
commercial impression when used on applicant’s goods. The
issue is not whether LONGWOOD, when considered alone, has a
distinct meaning and connotation. Rather, the issue is
whether, when LONGWOOD is used in the manner displayed on
applicant’s specimens, it creates a separate and distinct
commercial impression, i.e., whether it would be perceived
as a separate mark, independent of the word MANOR. We find
that it would not be perceived as a separate and
independent mark.
We have considered the cases relied on by applicant,
i.e., In re The Singer Manufacturing Company, 118 USPQ 310
(CCPA 1958), The Procter & Gamble Company v. Keystone
Automotive Warehouse, Inc., 191 USPQ 468 (TTAB 1976), and
The All England Lawn Tennis Club (Wimbledon) Limited v.
Creations Aromatiques, Inc., 220 USPQ 1069 (TTAB 1983), and
find them to be either inapposite to or easily
distinguished from the present case. Unlike the ornamental
design mark involved in In re Singer Mfg. Co., supra, or
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the designation BUMPER TO BUMPER CAR CARE used in
conjunction with the house mark PROCTER & GAMBLE in Procter
& Gamble, supra, or the designation WIMBLEDON used in
conjunction with the generic term COLOGNE in The All
England Lawn Tennis Club, supra, the matter applicant seeks
to register in the present case, i.e., LONGWOOD, does not
present a separate and distinct commercial impression apart
from and independent of the unitary mark LONGWOOD MANOR,
and it would not be perceived as a separate mark.
Rather, we find that this case is very similar to In
re Jane P. Semans, supra, in which the Board found that
where the applicant’s specimens displayed the applicant’s
mark as the unitary expression KRAZY MIXED-UP, the
applicant was not entitled to register the word KRAZY, per
se. In the present case, applicant attempts to distinguish
the In re Jane P. Semans case by arguing that LONGWOOD
MANOR is not a unitary "colloquial" expression like KRAZY
MIXED-UP. However, the Board’s decision in In re Jane P.
Semans did not rest on the colloquial nature of the
expression KRAZY MIXED-UP, but rather on its unitary
nature. "Under these circumstances, it is concluded on the
record adduced herein that, on both a visual and connotive
viewpoint, "KRAZY" is used merely as a part of the unitary
phrase "KRAZY MIXED-UP", and that, as used, it does not
Ser No. 75/005,241
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function as a trademark in and of itself." In re Jane P.
Semans, supra, 193 USPQ at 729.
Likewise in the present case, we find that, as used on
applicant’s goods, LONGWOOD does not function as a
trademark "in and of itself," separate and distinct from
LONGWOOD MANOR. Applicant’s mark, as demonstrated by the
specimens of use, is LONGWOOD MANOR, and LONGWOOD is an
unregistrable mutilation of that mark.
Decision: The refusal of registration is affirmed.
E. J. Seeherman
P. T. Hairston
C. M. Bottorff
Administrative Trademark Judges
Trademark Trial and Appeal Board