Christian Dior Couture

Trademark Trial and Appeal Board

May 14, 2012

No. 79048804 (T.T.A.B. May. 14, 2012)

Mailed:
May 14, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Christian Dior Couture
________

Serial No. 79048804
_______

Philip H. Gottfried and Holly Pekowsky of Amster, Rothstein
& Ebenstein LLP for Christian Dior Couture.

Linda M. Estrada, Trademark Examining Attorney, Law Office
104 (Chris Donninger, Managing Attorney).
_______

Before Bergsman, Wellington and Shaw,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Christian Dior Couture (“applicant”) filed an
application for the design shown below

for, inter alia, the goods set forth below:
Optical goods, namely, spectacles,
spectacle cases, sunglasses, anti-glare
spectacles, sport spectacles, lenses
for spectacles, monocles, lorgnettes,
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 79048804
2
spectacle frames, contact lenses, ski
goggles, snow-board goggles, in Class 9

and

Furniture, mirrors, picture frames;
wooden works of art, wax, plaster,
cork, reed, cane, wicker, horn, bone,
ivory whalebone, shell, amber, mother
of pearl, meerschaum, substitutes for
all these materials, or of plastics;
coat hangers, chests of drawers,
cushions, shelf units, packaging
containers of plastic, armchairs,
chairs, bedding except linen;
mattresses, plate racks; wickerwork;
boxes of wood or plastic, in Class 20.

The application is based on a request for protection filed
under Section 66a of the Trademark Act of 1946, 15 U.S.C.
§ 1144f(a).
Applicant claims ownership of the two registrations
set forth below for the same mark sought to be registered
in this application:
1. Registration No. 1776536 for carry-on bags;
change purses; clutch bags; clutch purses; golf umbrellas;
handbags; luggage; passport cases, holders or wallets;
pocketbooks; purses; shoulder bags; all-purpose sports
bags; suitcases; tote bags; travel bags; and, wallets, in
Class 18. The mark was registered under Section 44(e) of
the Trademark Act of 1946, 15 U.S.C. § 1124(e). In 1999,
the USPTO accepted and acknowledged applicant’s Sections 8
Serial No. 79048804
3
and 15 affidavits and, in 2004, accepted applicant’s
Sections 8 and 9 affidavits; and
2. Registration No. 1872313 for “eyeglass frames;
[sic] and parts thereof; sunglasses,” in class 9 and
“rings; watch bands; watches; parts for watches,” in Class
14. The mark was registered under Section 44(e) of the
Trademark Act of 1946, 15 U.S.C. § 1124(e). In 2001, the
USPTO accepted and acknowledged applicant’s Sections 8 and
15 affidavits and, in 2005, accepted applicant’s Sections 8
and 9 affidavits.
The examining attorney refused to register applicant’s
mark on the Principal Register for the goods in Classes 9
and 20 because the proposed mark is merely a decorative or
ornamental feature of the goods and would not be perceived
as a mark. The Examining Attorney contends that the design
sought to be registered is not inherently distinctive
because it consists of a repetitive pattern of common
geometric shapes and lines and is merely a background
design.1 The examining attorney, therefore, refused
registration under Sections 1, 2, and 45 of the Trademark
Act of 1946, 15 U.S.C. §§ 1051, 1052, and 1127. Applicant

1 Examining Attorney’s Brief, pp. 3-4. The original application
included goods in Classes 6, 9, 19, and 20 and services in Class
38. Because the refusal was limited to Classes 9 and 20,
applicant filed a request to divide the application on December
10, 2010 which was processed on November 11, 2011.
Serial No. 79048804
4
argues to the contrary that its two prior registrations for
the same mark establish secondary source significance.2
“To show that a proposed mark that is used on the
goods in a decorative or ornamental manner also serves a
source-indicating function, the applicant may submit
evidence that the proposed mark would be recognized as a
mark through its use with goods or services other than
those being refused as ornamental. To show secondary
source, the applicant may show: (1) ownership of a U.S.
registration on the Principal Register of the same mark for
other goods or services based on use in commerce under §1
of the Trademark Act; (2) ownership of a U.S. registration
on the Principal Register of the same mark for other goods
or services based on a foreign registration under §44(e) of
the Trademark Act for which an affidavit of use in commerce
under §8 of the Trademark Act has been accepted; (3) non-
ornamental use of the mark in commerce on other goods or
services; or (4) ownership of a pending use-based
application for the same mark, used in a non-ornamental
manner, for other goods or services.” TMEP § 1202.03(c)
(8th ed. 2011) (Emphasis added). Cf. In re Watkins Glen
International, Inc., 227 USPQ 727, 729 (TTAB 1985) (“the

2 Applicant’s Brief, p. 2.

Serial No. 79048804
5
record supports a finding that said design is an indicia of
source inasmuch as the design comprises the dominant,
indeed, the only nondisclaimed portion of applicant's prior
service mark registration.”); In re Expo ‘74, 189 USPQ 48,
50 (TTAB 1975) (holding EXPO ‘74 registrable for
handkerchiefs and T-shirts, since applicant, organizer of
the 1974 World’s Fair, had previously registered EXPO ‘74
for other goods and services). Because applicant has
claimed ownership of two prior registrations for the same
design (one of which is for legally identical goods) issued
under Section 44(e) for which affidavits of use in commerce
under Section 8 have been accepted, applicant has made a
prima facie showing that the design sought to be registered
serves a source-indicating function.
The examining attorney argues that a Section 44
registration with a Section 8 affidavit that has been
accepted is not necessarily sufficient evidence of
secondary source. The examining attorney asserts that
“applicant’s ownership of prior registrations under Section
44 is insufficient evidence under the requirements clearly
set forth in the TMEP to establish that the proposed mark
is an indicator of secondary source because the
registrations were not based on use in commerce under §1 of
Serial No. 79048804
6
the Trademark Act.”3 (Emphasis in the original). Thus, the
examining attorney’s position is, in essence, that under
the circumstances of this case, applicant’s prior
registrations which issued under Section 44, and now have
Section 8 affidavits that have been accepted, are not
sufficient evidence of secondary source.
In her discussion of secondary source, the examining
attorney quoted the above-noted section of the TMEP but
relegated the following provision to a footnote: “(2)
ownership of a U.S. registration on the Principal Register
of the same mark for other goods or services based on a
foreign registration under §44(e) of the Trademark Act for
which an affidavit of use in commerce under §8 of the
Trademark Act has been accepted.”4
In the footnote, the examining attorney sheds more
light on the basis for her position:
Even if the Board were to hold that
applicant’s submission of proof of use
in the prior registrations was
sufficient under TMEP § 1202.03(c), the
examining attorney respectfully calls
the attention of the Board to the fact
that the specimens applicant submitted,
pursuant to Sections 8 and 9, in the
aforementioned prior registrations show
the same ornamental use and/or raise
the same failure to match the mark
issues that are present in the instant

3 Examining Attorney’s Brief, p. 6.
4 Examining Attorney’s Brief, p. 5.
Serial No. 79048804
7
application. The examining attorney
respectfully directs the Board’s
attention to pages 3-4 of the December
11, 2003 specimens in TICRS in U.S.
Registration No. 1776536 and page 1 of
the June 27, 2005 and page 1 of the
July 11, 2005 specimens in U.S.
Registration No. 1872313. The
examining attorney respectfully
requests that the Board take notice of
these specimens since the applicant has
made these prior registrations a part
of the record and they are readily
available in a public format via the
Office’s website at
http://tmportal.uspto.gov/external/port
al/tow.

The examining attorney’s argument is predicated on the
Board taking judicial notice of specimens in applicant’s
two registrations; specimens that have not been made of
record in the appeal before us. However, the Board does
not take judicial notice of application and registration
files that reside in the Patent and Trademark Office on the
basis of their mere identification in briefs and/or
evidentiary submissions. “Each case must be complete in
and of itself.” In re Duofold, Inc., 184 USPQ 638, 640
(TTAB 1974).5 If the examining attorney wanted the Board to

5 We recognize the Federal Circuit exercised its discretion to
take judicial notice of third-party registrations in an ex parte
appeal. In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQQ2d
1681, 1688 (Fed. Cir. 2010). However, the Board's well-
established practice is not to take judicial notice of
registrations that reside in the USPTO, and we do not take
judicial notice of the specimens from other registration files
that have not been made of record in the case before us. See
TBMP § 704.12(a) (3rd ed. 2011).
Serial No. 79048804
8
consider the specimens submitted in the applicant’s claimed
prior registrations, copies of those registration files
should have been proffered. Id. In this regard, the Board
will take judicial notice of a relevant fact not subject to
reasonable dispute, as defined in Fed. R. Evid. 201(b), if
a party (1) requests that the Board do so, and (2) supplies
the necessary information. Fed. R. Evid. 201(d). See
Litton Business Systems, Inc. v. J. G. Furniture Co., 190
USPQ 431, 433 (TTAB 1976) (“the taking of judicial notice
is mandatory only if requested by a party and the party
supplies the necessary information [Rule 201(d)].
Otherwise, the taking of judicial notice is discretionary
with the Board.”). We cannot take judicial notice of the
specimens in applicant’s prior registration files because
the examining attorney did not supply the necessary
information. Further, Fed.R.Evid. 201 allows for, or on an
appropriate proffer, requires, that judicial notice be
taken only when the “fact [is] one not subject to
reasonable dispute.” Here, while the filing of the
specimens in conjunction with the maintenance of
applicant’s prior registrations may be such a fact, the
import of those specimens and the question whether they
show ornamental use is a subject of reasonable dispute.
Thus, even if the examining attorney had made copies of the
Serial No. 79048804
9
specimens of record, it does not follow as a matter of
course that such specimens would be considered as
undisputed evidence of ornamental use.
Another problem with the examining attorney’s argument
is that it may be viewed as a collateral attack on the
validity of applicant’s prior registrations. That is, the
examining attorney is essentially contending that the
specimens do not properly demonstrate use of the registered
mark in commerce. The registrations are prima facie
evidence of the validity of the registered mark and of the
registration of the mark. Section 7(b) of the Trademark
Act, 15 U.S.C. § 1057(b). In certain circumstances, such
presumptions may be rebutted where there is clear and
unmistakable evidence in the record that the registered
mark is invalid due to its having been abandoned, obtained
on the basis of fraud or some other material defect and we
need not accord the registration any evidentiary effect.
See Lever Brothers Company v. Shaklee Corporation, 214 USPQ
654, 659 (TTAB 1982) (presumptions of validity, ownership
and exclusive right to use normally accorded a Principal
Register registrant may be rebutted). As noted above, the
examining attorney did not submit any evidence, let alone
clear and unmistakable evidence, that the prior
registrations were somehow invalid.
Serial No. 79048804
10
In view of the fact that applicant is the owner of two
registrations, issued under Section 44 and for which
affidavits of use under Section 8 have been accepted, for a
mark that is identical to the applied-for mark, this shall
be accepted as showing of secondary source, applicant has
shown that its mark serves a source-identifying function.
TMEP § 1202.03 (c).
Decision: The refusal to register is reversed.