Corporate Express, Inc.Download PDFTrademark Trial and Appeal BoardJun 28, 2007No. 78657648 (T.T.A.B. Jun. 28, 2007) Copy Citation Mailed: June 28, 2007 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Corporate Express, Inc. ________ Serial No. 78657648 _______ Miriam D. Trudell and Sabrina C. Stavish of Sheridan Ross for Corporate Express, Inc. Evelyn Bradley, Trademark Examining Attorney, Law Office 105 (Thomas G. Howell, Managing Attorney). _______ Before Walters, Holtzman and Bergsman, Administrative Trademark Judges. Opinion by Walters, Administrative Trademark Judge: Corporate Express, Inc. seeks registration on the Principal Register of the mark EVERYTHING FOR YOUR OFFICE. TO YOUR OFFICE. (in standard character form) for the following services: retail store and on-line retail store services featuring a full line of office products and supplies, business furniture and interiors, computers, computer accessories and software, cleaning equipment and supplies, stationery, school supplies, imaging and computer graphic THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser. No. 78657648 2 supplies, promotional products, document and print management supplies, workplace safety equipment and supplies, electronic devices and equipment, and telephones; retail supply services, retail telephone order services and electronic online catalog services to commercial customers featuring a full line of office products and supplies, business furniture and interiors, computers, computer accessories and software, cleaning equipment and supplies, stationery, school supplies, imaging and computer graphic supplies, promotional products, document and print management supplies, workplace safety equipment and supplies, electronic devices and equipment, and telephones; wholesale distributorship services featuring a full line of office products and supplies, business furniture and interiors, computers, computer accessories and software, cleaning equipment and supplies, stationery, school supplies, imaging and computer graphic supplies, promotional products, document and print management supplies, workplace safety equipment and supplies, electronic devices and equipment, and telephones.1 At issue in this appeal is the Trademark Examining Attorney’s final refusal to register the subject matter of the application on the ground that applicant is seeking to register more than one mark in this application. See Trademark Act Sections 1(a)(1) and 45, 15 U.S.C. §1051(a)(1) and 1127. The appeal is fully briefed. After careful consideration of the evidence of record and the arguments of counsel, we reverse the refusal to register. 1 Serial No. 78657648, filed June 24, 2005. The application is based on use of the mark in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), alleging first use and use in commerce as of September 1, 2004. Ser. No. 78657648 3 The examining attorney contends that the mark in the drawing does not match the specimens because elements of the mark on the drawing page appear as separate marks on the specimen. The examining attorney states in her brief the following (p. 3): “[t]he literal elements of the mark as depicted in the specimen are not connected and are in fact separated by a sizeable photograph[;] [t]hese elements are so far apart that they constitute at least two different marks.” She adds that “each phrase is punctuated with a full stop such that they appear to be two separate marks.” (Id.) Applicant contends in the following statement that the subject matter is clearly and only a single unitary mark: [T]he specimen shows the mark immediately above and below a photo of people working in an office. The mark is all in the same font and size. It is clear from the specimens that applicant’s services include the sale and delivery of office supplies and related products to customers. Thus, the entire slogan “EVERYTHING FOR YOUR OFFICE. TO YOUR OFFICE.” as a whole suggests to the customer the nature of applicant’s retail services, which include a wide range of office supplies that may be delivered directly to the customer. When a consumer reviews the specimens, the consumer will not stop reading after EVERYTHING [FOR] YOUR OFFICE. Rather, the consumer will also read the mark as a whole by reading the language under the photo as well. Ser. No. 78657648 4 Applicant argues that the mark does not make sense when read as two separate marks, stating that “TO YOUR OFFICE” does not stand alone as a sensible phrase. The specimen of record is a color advertisement shown below in black and white.2 2 Applicant submitted additional examples of the use of the alleged mark and contends that neither the specimens nor additional evidence shows any use of the terms separated by a photo or other matter. Not until her brief did the examining attorney object to the additional materials submitted by applicant. In her brief (p. 4), she stated the following: “[t]hese advertisements were not submitted as specimens of record and were not in use as of the filing date of this application[;] … [o]nly designated specimens of record may be considered in determining whether a given term would be perceived as a trademark.” We find it unnecessary to address the examining attorney’s concern because we have decided the question by considering only the specimen of record and, thus, her stated concern is moot. Ser. No. 78657648 5 We agree with applicant’s contention that the subject matter of this application is, indeed, a single mark. It is clearly a slogan consisting of two sentences meant to be read together because, as applicant points out, the second sentence makes little sense without the first sentence. The “EVERYTHING” portion of the first sentence clearly pertains to both sentences, as the second phrase is actually an incomplete sentence. The “FOR YOUR OFFICE” and “TO YOUR OFFICE” are similar prepositional phrases with the terms “FOR” and “TO” serving as clever one-word changes to the two phrases that change the connotation of the phrases to indicate the two parts of applicant’s services – the availability of the office supplies, and the delivery of the same. Additionally, the two sections of the mark appear in the same size and style font; the two sections of the mark are the only words on the page in the particular size and font shown; both sections are right-justified on the page, with the same right margin as the photo and appearing immediately above and below the photo; and, finally, the photograph between the two sections of the mark serves merely as a pause, allowing the viewer to take in, view, and appreciate the entire advertising message. Ser. No. 78657648 6 Therefore, we conclude that the mark in the drawing is a single mark that is supported by the specimens of use in the record. Decision: The refusal to register is reversed. Copy with citationCopy as parenthetical citation