Burrell Mining Products, Inc.

Trademark Trial and Appeal Board

Apr 8, 1999

No. 74693924 (T.T.A.B. Apr. 8, 1999)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 4/8/99
Paper No. 20
BAC
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Burrell Mining Products, Inc.
________
Serial No. 74/693,924
_______
Julie K. Morriss of Trask, Britt & Rossa for Burrell Mining
Products, Inc.
Albert J. Zervas, Trademark Examining Attorney, Law Office
104 (Sidney Moskowitz, Managing Attorney).
_______
Before Hohein, Walters and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
Burrell Mining Products, Inc. has filed an application
to register the mark shown below
Ser. No. 74/693924
2
for “non-metal mine roof supports or props, namely posts”
in International Class 19.1 The application is based on
applicant’s allegation of a bona fide intention to use the
mark in commerce. Applicant filed an amendment to allege
use on December 20, 1995 (via certificate of mailing)2,
asserting dates of first use and first use in commerce of
August 3, 1995. The specimen submitted by applicant is
reproduced below.
Registration has been finally refused pursuant to
Trademark Rule 2.51(a)(2) on the ground that applicant has

1 Application Serial No. 74/693,924, filed June 26, 1995. The
application includes statements that the lining and the stippling
are for shading purposes only and do not indicate color.
2 This paper was not immediately associated with the application
file, however, and the application was published for opposition
on April 16, 1996, and a notice of allowance issued on July 9,
1996. The amendment to allege use was treated by the Office as a
statement of use.
Ser. No. 74/693924
3
not submitted proper specimens showing use of the mark
shown in the drawing.3
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We reverse.
The Examining Attorney has required that applicant
submit specimens showing the mark without the words
“BURRELL MINING PRODUCTS INC.,” and an affidavit or
declaration that the substitute specimens were in use as of
a date prior to the expiration of the time allowed for
applicant to file a statement of use. The Examining
Attorney contends that applicant’s corporate name, BURRELL
MINING PRODUCTS, INC., is an integral part or inseparable
element of the mark shown on the specimen, but the
corporate name does not appear in the drawing of the
applied-for mark; and that, therefore, applicant has not
provided a specimen which is a substantially exact
representation of the mark shown in the drawing as required
by Trademark Rule 2.51(a)(2). (“Alternatively stated, the
mark shown on the drawing page is an incomplete

3 The Examining Attorney made clear that under Trademark Rule
2.72(a), “applicant cannot amend the drawing to conform to the
display on the specimens because the character of the mark would
be materially altered.” (Office action dated December 16, 1996.)
The applicant did not attempt to change the mark, and therefore,
the possible issue of a material alteration of the mark is not
before us.
Ser. No. 74/693924
4
representation of the mark shown in the specimen and the
applicant has ‘mutilated’ the mark as actually used.”
(Examining Attorney’s brief, p. 2.)4
Applicant contends that the appearance of its
corporate name on the specimens is merely extraneous and
informational, as is applicant’s address, telephone number,
and patent information; and that the applied-for mark
creates a separate commercial impression without
applicant’s corporate name, or any of the other
informational material shown on the specimen.5
As explained in 3 J. McCarthy, McCarthy on Trademarks
and Unfair Competition, §19:59 (4th ed. 1998):
“Mutilation” refers to a situation where a
seller seeks registration of something less than
the totality of his trademark. That is, the
seller “mutilates” his trademark, severs a part of
it, and seeks registration only of that part. The
Patent and Trademark Office may then reject
registration, saying that the applicant is trying
to register something less than his full
trademark, thereby attempting to obtain protection
for an element that is only his in combination
with other words or symbols. (footnote and
citations omitted).

4 The Examining Attorney expresses the issue before the Board as
“whether the specimen depicts a substantially exact
representation of the mark shown in the drawing.” (Brief, p. 2)
5 Applicant expresses the issue before the Board as whether the
applied-for mark creates a separate commercial impression apart
from applicant’s corporate name (Appeal brief, p. 3); and in the
reply brief, applicant challenges the Examining Attorney’s
statement of the issue because it presumes what the mark is, when
the issue before the Board involves a determination of what the
mark is. (Reply brief, p. 2).
Ser. No. 74/693924
5
The whole problem is one of definition: what
exactly is the “trademark”? Once defined, the
designation sought for registration is compared to
that “trademark.” If less than the total
“trademark,” then what is sought is a registration
of a “mutilated” version of the mark. In defining
the scope of the “trademark” the applicant will
argue that the designation he applies for does, in
fact, function in and of itself as a trademark.
That is, there may be a lot of printed matter on a
label, but he has culled out exactly that element
which serves to distinguish his product from
others.
The specimens submitted by applicant unquestionably
show the applied-for mark, but they also include numerous
words and numbers (applicant’s corporate name and address,
applicant’s telephone number, as well as patent
information). The Examining Attorney does not assert that
any of the other material on the specimen, other than
applicant’s corporate name, is involved in his requirement
for substitute specimens. Rather, the Examining Attorney
simply does not accept that the applied-for mark creates a
separate commercial impression without applicant’s
corporate name as it appears on the specimens.6

6 The case cited by the Examining Attorney, In re Chemical
Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828 (Fed. Cir. 1988), is
inapposite here. The Chemical Dynamics case involved a
background design (a picture of a watering can with a medicine
dropper and droplet) with a word mark (7 DROPS), and there the
applicant sought to register only a part of the background
design, namely the medicine dropper and droplet. The case now
before the Board does not involve the applicant attempting to
register an incomplete and inseparable portion of a background
design. To the contrary, applicant seeks to register the entire
background design, plus the sitting miner and the words THE CAN.
Ser. No. 74/693924
6
We agree with applicant that its applied-for mark is
registrable without its corporate name. In fact, as argued
by applicant, if such matter had been included on the
drawing, the Examining Attorney may have required removal
or disclaimer of such material. See TMEP §807.13(a). That
is, applicant’s drawing presents a substantially exact
representation of the mark as actually used in commerce,
and applicant need not submit new specimens showing the
mark without the corporate name.
We acknowledge that this decision is subjective, but
we cannot agree with the Examining Attorney’s assessment of
applicant’s drawing vis-a-vis the mark shown on the
specimens. Rather, the commercial impression of the
applied-for mark is separable from applicant’s corporate
name as it appears on the specimens of record.
Decision: The requirement for different specimens is
reversed.
G. D. Hohein
C. E. Walters
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial and
Appeal Board