Fabwell, Inc.

Trademark Trial and Appeal Board

Oct 7, 1999

No. 75088578 (T.T.A.B. Oct. 7, 1999)

Paper No. 12
RFC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB OCT. 7,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Fabwell, Inc.
________
Serial No. 75/088,578
_______
Terence J. Linn of Van Dyke, Gardener, Linn & Burkhart, LLP
for Fabwell, Inc.
Allison S.Berman, Trademark Examining Attorney, Law Office
104 (Sydney Moskowitz, Managing Attorney).
_______
Before Simms, Cissel and Quinn, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On April 15, 1996, applicant applied to register the
mark shown below
Ser No. 75/088578
2
on the Principal Register for "vinyl siding," in Class 19.
The application was based on applicant’s claim of first use
of the mark on April 1, 1995, and first use of the mark in
interstate commerce on the same day.
The specimens submitted with the application are
labels used on containers for applicant’s goods. A copy of
such label, reduced somewhat in size, is shown below.
The Examining Attorney noted that the drawing
submitted with the application shows only the stylized
presentation of the letter "F," whereas the specimens
display the entire mark "FABWEL." In view of this, she
required applicant to submit substitute specimens which
show the stylized presentation of the letter "F" used as a
mark for the goods set forth in the application.
Ser No. 75/088578
3
Applicant responded to the requirement for substitute
specimens by describing its mark as a stylized letter "F,"
and took the position that the specimens of record show
trademark use of the letter by itself. Applicant claimed
ownership of Registration No. 1,579,760. The mark there is
the same mark sought to be registered by means of this
application, but the goods are not the same. Instead, they
are identified as various metal and fiberglass products, as
well as accessories for vehicles. Applicant argued that it
used the letter alone and in the advertising of other
products, and included with its response examples of such
promotional use of the letter by itself. Applicant
contended that these materials show that applicant and its
predecessor-in-interest have tried to generate a separate
and distinct commercial impression for the stylized letter
"F."
The Examining Attorney acknowledged applicant’s
amendment to describe the mark and the claim of ownership
of the prior registration, but she was not persuaded by the
arguments with respect to the requirement for substitute
specimens. The second Office Action made final the
requirement for specimens which show use of the mark
presented in the drawing as a trademark for applicant’s
vinyl siding.
Ser No. 75/088578
4
Applicant timely filed a Notice of Appeal, along with
a request for reconsideration. Included with the request
for reconsideration was a declaration from applicant’s vice
president of marketing to the effect that applicant has
used the stylized "F" logo as a service mark and as a
trademark for a variety of services and goods, and that in
the opinion of the the declarant, the stylized presentation
of the letter creates a separate and distinct commercial
impression apart from the commercial impression created by
the word "FABWEL" as a whole.
A copy of the prior registration of which applicant
claimed ownership was included, as well as a copy of
another registration, No. 2,055,513, issued to applicant on
April 22, 1997, for the same stylized letter "F." In that
registration, the services are identified as "plastic
molding services."
Also attached were additional printed advertising
materials for applicant’s vinyl siding. The advertising,
however, shows the stylized letter "F" as the initial
letter in the word "FABWEL," rather than as a separate
trademark for applicant’s goods.
The appeal was instituted, but action on it was
suspended, and the application was remanded to the
Examining Attorney for consideration of applicant’s
Ser No. 75/088578
5
reconsideration request. The Examining Attorney maintained
the requirement for substitute specimens, however, so the
application was returned to the Board for resumption of
action on the appeal. Both applicant and the Examining
Attorney filed briefs.
The sole issue before the Board in this appeal is
whether the specimens submitted with this application show
the mark sought to the registered used as a trademark for
the goods specified in the application. After careful
consideration of the record before us in this appeal and
the arguments of applicant and the Examining Attorney, we
hold that the requirement for substitute specimens is
justified.
Trademark Ruled 2.51 (a)(1) provides, in part, that
"the drawing of the trademark shall be a substantially
exact representation of the mark as used on or in
connection with the goods[.]" It is well settled that an
applicant may apply to register any element of a composite
mark if that element, as shown in the specimens, presents a
separate and distinct commercial impression which indicates
the source of applicant’s goods or services and
distinguishes applicant’s goods or services from those of
others. See, e.g., In re Chemical Dynamics Inc., 839 F.2d
1569, 5 USPQ 2d 1828 (Fed. Cir. 1988); and Institut
Ser No. 75/088578
6
National des Appellations D’Origine v. Vintners Int’l Co.,
Inc., supra at 1197 (Fed. Cir. 1992), citing In re Survel
Inc., 181 F.2d 192, 85 USPQ 257 (CCPA 1950); In re San
Diego National League Baseball Club, Inc., 224 USPQ 1067
(TTAB 1983); In re Lear-Seigler, Inc., 190 USPQ 317 (TTAB
1976); In re Tekelec-Airtronic, 188 USPQ 694 (TTAB 1975);
and In re Berger Electronics, Inc., 163 USPQ 487 (TTAB
1969). See also, Trademark Manual of Examining Procedure,
Sections 807.14 (a) and 807.14 (b), and cases cited
therein.
In the case now before the Board, the stylized letter
argued by applicant to be its trademark for vinyl siding is
so merged with the rest of the word "FABWEL" on the
specimens of record that the letter design cannot be
regarded as a separable element which creates a separate
and distinct commercial impression. The letter, as used on
the specimens, does not function in and of itself as a mark
for the identified goods. As such, the drawing represents
a mutilation of the mark which the specimens show is used
on applicant’s goods.
Applicant’s arguments to the contrary are not
persuasive. To begin with, applicant argues that the
Examining Attorney "does not analyze whether the subject
matter sought to be registered, standing alone, functions
Ser No. 75/088578
7
as a designator of commercial origin…" Further, applicant
contends that "[t]he proper analysis, in the instant case,
is to assess whether the stylized F is independently
capable of denoting commercial origin." (brief, p.5).
These arguments represent an obvious misunderstanding
of the test to be applied in determining whether the
drawing is a substantially exact representation of the mark
which the specimens show to be in use. The question is not
whether the mark shown in the drawing, if it were "standing
alone," is "independently capable" of denoting commercial
origin. Indeed, if the mark shown in the drawing were
shown standing alone on the specimens submitted with the
application, it is unlikely that the Examining Attorney
would have required the submission of substitute specimens.
Moreover, independent capability to designate commercial
origin is not the issue. The issue is whether the
specimens show the mark in the drawing used in a way that
it actually functions to identify applicant's products.
Contrary to applicant's arguments, as we noted above, the
specimens in this case do not present the stylized "F"
sought to be registered in such a way that it creates a
separate, distinct commercial impression apart from that
created by the complete word "FABWEL."
Ser No. 75/088578
8
The issue is not whether the remaining term "ABWEL"
would be registrable if the "F" were removed from the word
"FABWEL," but rather simply whether the stylized letter
itself creates a separate and distinct commercial
impression.
Registration is not mandated by the fact that
applicant uses the mark shown in the drawing by itself in
advertising materials, or by the fact that applicant has
registered that mark for other goods. We must presume that
in order to obtain those registrations, applicant
demonstrated use of the mark in connection with those
products. If the instant application included specimens
showing use of the term sought to be registered as a mark
for the goods set forth in this application, substitute
specimens would not be required.
Lastly, the declaration submitted in support of
registration does not persuade us to reach a different
result. The contention of applicant’s vice president that
the stylized letter sought to the registered functions
independently as a designation of origin for applicant’s
vinyl siding is simply not supported by the specimens of
record. Applicant’s use and registration in connection
with other products and services does not overcome the
statutory requirement for this application to be supported
Ser No. 75/088578
9
by specimens which show the mark sought to be registered
used in connection with the goods specified in this
application.
Decision: The requirement for specimens showing the
mark sought to be registered used in connection with vinyl
siding is affirmed.
R. L. Simms
R. F. Cissel
T. J. Quinn
Administrative Trademark Judges,
Trademark Trial & Appeal Board
Ser No. 75/088578
10