David McQuade Leibowitz

Trademark Trial and Appeal Board

Aug 22, 2001

No. 75151245 (T.T.A.B. Aug. 22, 2001)

8/22/01

Paper No. 22
RFC

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re David McQuade Leibowitz
________

Serial No. 75/151,245
_______

Daniel D. Chapman of Miller, Sisson, Chapman & Nash, P.C.
for David McQuade Leibowitz.

Kimberly Krehely, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney).
_______

Before Cissel, Hanak and Holtzman, Administrative Trademark
Judges.

Opinion by Cissel, Administrative Trademark Judge:
On August 18, 1996, applicant filed the above-

referenced application to register the following phrase

_____ GRAD _____DAD, THE BEST OF BOTH WORLDS

on the Principal Register for “bumper stickers,” in Class
16, and for “clothing, and hats,” in Class 25. Applicant
stated in the application that “[t]he blanks are intended
to be filled in with the nickname of a college, such as
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/151,245
2
‘IRISH GRAD’ and ‘AGGIE DAD’ or ‘LONGHORN GRAD’ and ‘SOONER
DAD.’” The basis for filing the application was
applicant’s assertion that he possesses a bona fide
intention to use the mark in commerce in connection with
the specified products.
The Examining Attorney refused registration, stating
that what applicant is attempting to register is a phantom
mark, i.e., a mark which includes words which are subject
to change, and that such marks are not registrable because
registration of them would deny third parties fair notice,
in that it would be impossible to conduct a meaningful
search without specific knowledge of each possible
permutation in view of the unspecified word elements
represented by the blanks in the drawing of the mark
submitted with the application. Applicant was also
informed that the identification-of-goods clause for Class
25 was indefinite and that the application should be
amended to specify the particular items of clothing with
which the phrase is intended to be used as a trademark.
Responsive to the first Office Action, applicant
amended the clause identifying the goods in Class 25 to
read as follows: “clothing, namely shirts, hats, and
jackets.” Applicant requested that the following statement
be entered into the application by amendment: “Applicant
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3
herewith disclaims the nicknames of any colleges intended
to be placed in the blanks of applicant’s mark.” Applicant
also presented arguments on the refusal to register, and
submitted a copy of a third-party registration and
photocopies from the Official Gazette of another third-
party mark approved for publication. In each instance,
applicant argued that if those marks were acceptable, so is
his.
The Examining Attorney was not persuaded by
applicant’s arguments or evidence, and in the second Office
Action, he made the refusal to register final. The
amendment to the identification-of-goods clause was
accepted, but the proposed disclaimer was not, on the
ground that the proffered disclaimer does not specifically
state what the words are in which applicant makes no claim
to exclusive rights. Further, the Examining Attorney noted
that as applied to bumper stickers, the proposed mark may
not function as a mark, but that such a refusal could not
be made until applicant provided evidence of actual use, at
which time such a determination could be made.
Applicant filed a Notice of Appeal, along with a
request for reconsideration presenting arguments as to why
the refusal to register is not well taken. A substitute
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drawing was also submitted. This drawing shows the
proposed mark as follows:
SOONER GRAD AGGIE DAD,
THE BEST OF BOTH WORLDS
The lettering in which the words “SOONER’ and “AGGIE” are
shown is presented in broken lines. Additionally,
applicant requested that the disclaimer be amended to read
“No claim is made to any of the matters shown in broken
lines apart from the mark as shown.”
The Examining Attorney responded to the request for
reconsideration and accompanying amendments by maintaining
the finality of the refusal to register and rejecting both
the substitute drawing and the substitute disclaimer. He
held the amended drawing to be a mutilation of the one
originally submitted with the application, creating a
different mark by including the words “SOONER” and “AGGIE.”
The reference in the proposed disclaimer with respect to
“any matters shown in broken lines” was rejected for the
same reason that the first disclaimer had been rejected:
any terms or other matter being disclaimed must be
specifically identified in the disclaimer.
Action on the appeal was then resumed. Applicant
submitted his appeal brief, but the original Examining
Attorney was replaced by another one, so action on the
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appeal was again suspended, and the application was
remanded to her for additional action on applicant’s latest
proposed amendments. She refused registration on
additional grounds: under Section 2(a) of the Lanham Act on
the ground that the mark shown in the amended drawing
consists of or comprises matter which may falsely suggest a
connection with the Board of Regents of the University of
Oklahoma and Texas A&M University, the respective owners of
the trademarks “SOONERS” and “AGGIES”; and also under
Section 2(d) of the Act based on the likelihood of
confusion with the marks in nine of the registrations these
two educational institutions own.
In addition, the Examining Attorney advised applicant
that she found the instant case to be indistinguishable
from the one decided by the Board in In re International
Flavors & Fragrances Inc., 47 USPQ2d 1314 (TTAB 1998),
aff’d, 183 F.3d 1361, 51 USPQ 1513 (Fed. Cir. 1999). A
copy of the Board’s opinion was attached for applicant’s
consideration. In that case, the Examining Attorney had
refused to register the marks “LIVING XXXX,” “LIVING XXX
FLAVORS” and “LIVING XXX FLAVOR” for essential oils and
flavor substances. The applicant had stated that the
“XXXX” in each mark stood for different words which are the
names of specific herbs, fruits, plants or vegetables, and
Ser No. 75/151,245
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that in use, the mark would incorporate these names in
place of the “XXXX” shown in the drawing. The issue was
framed in terms of whether the specimens submitted with the
application showed the mark sought to be registered, as
reflected by the drawing. The Board held that what
applicant was trying to protect with the three
registrations it was seeking was in fact an unknown number
of marks, whereas Section 1 of the Lanham Act provides that
each application may seek registration of only one mark.
Notwithstanding the existence of third-party registrations
which appeared to be in conflict with this holding, the
refusal to register was affirmed.
The applicant in the appeal now before us responded to
the action by the new Examining Attorney with a withdrawal
of the amended drawing and a request that the appeal go
forward based on the final refusal which had been issued
previously. The Examining Attorney then withdrew the
refusals to register under Sections 2(a) and 2(d), and
noted that applicant had not amended the application to
delete the disclaimer of “matters shown in broken lines,”
even though the drawing now of record has none.
In response, applicant withdrew the second disclaimer,
but left the first one, which refers to “the nicknames of
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any colleges intended to be placed in the blanks of
applicant’s mark.”
The Examining Attorney then filed her brief on appeal.
Applicant neither filed a reply brief nor requested an oral
hearing before the Board.
Accordingly, the issues before the Board in this
appeal are whether the phrase sought to be registered by
this application, “_____GRAD_____DAD, THE BEST OF BOTH
WORLDS,” in consideration of applicant’s statement that
the blanks are intended to be filled in with nicknames of
colleges, constitutes more than one mark, and therefore is
contrary to the provisions of Section 1 of the Lanham Act;
whether a substitute drawing is required in order to
present a single mark; and whether the proffered disclaimer
is acceptable in view of the fact that it does not specify
the particular words that applicant asserts it is
disclaiming. After careful consideration of the record,
the arguments presented by both applicant and the Examining
Attorney, as well as the relevant legal precedents on this
issue, we hold that the refusal to register and the
requirements for a substitute drawing and an acceptable
disclaimer which specifies what is being disclaimed are all
proper and must all be affirmed.
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We agree with the Examining Attorney that the
International Flavors case, supra, is directly on point
with the case at hand. That “XXXX” was used there to
represent the differing “phantom” elements in place of the
underlining which is used in the case at hand is
immaterial, as is the fact that the applicant in that case
intended to use the names of herbs, fruits, plants or
vegetables, whereas the applicant in this case uses the
equally vague language “the nickname of a college” to
describe the variety of words it intends to use to fill in
the blanks in its mark as presented for registration by the
drawing submitted with the application. As the Examining
Attorney points out, both applicants attempted to add a
disclaimer statement of the words represented by their
respective “substitution vehicles,” and both applicants
argued that past inconsistent practice by the Patent and
Trademark Office requires approval of marks containing
changeable elements.
Just as in the prior case, however, these arguments
are unavailing. As in that case, contrary to Section 1 of
the Act, the instant application seeks registration of more
than one mark, and as in that case, the instant application
does not give adequate notice of what is being claimed as
applicant’s mark, such that a meaningful search by another
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party trying to avoid choosing a mark which would be likely
to cause confusion “is next to impossible.” International
Fragrances, supra, 47 USPQ2d at 1318. The refusal based on
Section 1 of the Act is therefore well taken.
In a similar sense, just as a single application may
not seek registration of more than one mark, there clearly
cannot be more than one mark shown on the drawing submitted
with a single application. Trademark Rule 2.51 requires
submission of “the drawing” of what is repeatedly referred
to as “the trademark,” which is a clear indication that
only one trademark may be represented in a single drawing.
In that the drawing of record in the instant application
clearly is intended to represent any number of different
combinations of words, the requirement for a drawing
showing only one mark is plainly appropriate.
Also, in a similar sense, the requirement for a
disclaimer that refers to specific, identifiable words or
other matter is justified. As it stands, the proffered
disclaimer provides no indication of what applicant intends
to disclaim, and we therefore have no basis upon which to
determine whether whatever it is in which applicant claims
no exclusive rights constitutes “an unregistrable component
of a mark otherwise registrable,” in the words of Section 6
of the Act.
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DECISION: The drawing and disclaimer requirements and
the refusal to register are affirmed.

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