J. R. Simplot Co.

Trademark Trial and Appeal Board

Sep 8, 1999

No. 74735210 (T.T.A.B. Sep. 8, 1999)

Paper No. 16
PTH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB SEPT. 8,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re J. R. Simplot Company
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Serial No. 74/735,210
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Aaron Retzer of Epstein, Edell & Retzer for J. R. Simplot
Company.
Henry S. Zak, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
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Before Seeherman, Hairston and Bottorff, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
J. R. Simplot Company has appealed the final refusal
of the Trademark Examining Attorney to register the phrase
BIG SKY ANIMAL HEALTH, with the words “ANIMAL HEALTH”
disclaimed, for distributorship services in the field of
veterinary products.1 Registration has been refused under

1 Application Serial No. 735,210, filed September 28, 1995
asserting a bona fide intention to use the mark in commerce, and
Ser No. 74/735,210
2
Sections 1, 2, 3, and 45 of the Trademark Act on the ground
that applicant uses the phrase as a trade name, rather than
as a service mark.
A designation used merely as a trade name cannot be
registered under the provisions of the Lanham Act. See GAF
Corporation v. The Tappan Company, 197 USPQ 696 (TTAB 1977)
and cases cited therein. Applicant submits that, assuming
arguendo, the phrase sought to be registered functions as a
trade name as it is used on the specimens of record, it
also functions as a service mark and is, therefore,
entitled to registration. Applicant points out that a term
may function as both a trade name and a service mark.
Martahus v. Video Duplication Services Inc., 3 F.3d 417, 27
USPQ2d 1846 (Fed. Cir. 1993).
The question of whether a designation used as a trade
name also functions as a service mark is one of fact, and
is determined from the manner in which the designation is
used and the possible impact on purchasers and prospective
purchasers. In re Univar Corp., 20 USPQ2d 1865 (TTAB
1991). In this case, we must make that determination from
the specimens of record which are advertising flyers. One
of the flyers is reproduced below, in reduced size.

subsequently amended to allege first use and first use in
commerce in October 1995.
Ser No. 74/735,210
3
Ser No. 74/735,210
4
In support of his position that the phrase BIG SKY
ANIMAL HEALTH is used only as a trade name, the Examining
Attorney points out that the address information appears
directly under the designation; that the lettering style of
BIG SKY ANIMAL HEALTH is not distinctive; and that no logo
or design element appears therewith. Thus, the Examining
Attorney argues that the phrase is used only as a trade
name.
In this case, however, we agree with applicant that
BIG SKY ANIMAL HEALTH performs a service mark function.
First, BIG SKY ANIMAL HEALTH appears at the top of the
flyer in slightly larger and darker lettering than the
address information and is somewhat removed therefrom.
Also, no corporate designation, e.g., “Co.” or “Inc.”,
appears with BIG SKY ANIMAL HEALTH.2 Further, we note that
applicant’s name, J. R. Simplot Company, appears in the
bottom right-hand corner of the flyer and customers and
prospective customers are likely to regard this as the name

2 The inclusion of a corporate designator in a name sought to be
registered is a factor which often leads to a finding solely of
trade name use, especially when the name appears near a corporate
address. See In re Univar Corp., 20 USPQ2d 1865 (TTAB 1991) and
cases cited therein.
Ser No. 74/735,210
5
of the business and use BIG SKY ANIMAL HEALTH when calling
for and referring to the services.
We find, therefore, that BIG SKY ANIMAL HEALTH
identifies and distinguishes applicant’s distributorship
services in the field of veterinary products.
Decision: The refusal to register is reversed.
E. J. Seeherman
P. T. Hairston
C. M. Bottorff
Administrative Trademark Judges
Trademark Trial and Appeal Board