Kupa, Inc.

Trademark Trial and Appeal Board

Sep 9, 2003

No. 76411536 (T.T.A.B. Sep. 9, 2003)

Mailed:
9/9/03
Paper No. 10
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Kupa, Inc.
________
Serial No. 76/411,536
_______
G. Donald Weber, Jr. for Kupa, Inc.
William. T. Verhosek, Trademark Examining Attorney, Law
Office 114 (K. Margaret Le, Managing Attorney).
_______
Before Cissel, Seeherman and Bucher, Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
On June 4, 2002, applicant, a California corporation,
filed the above-identified application. In the heading of
the application the mark is identified as “PURPLE (The
Color).” In the first line of the application, applicant
states that it “has adopted and is using the color purple
as a trademark for… [an] …“electric nail filing system.”
Applicant goes on to state that the mark was first used in
connection with these products on June 1, 1984 and was
first used in interstate commerce in connection with them
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76/411,536
2
on July 1, 1984. Applicant seeks registration pursuant to
the provisions of Section 2(f) of the Trademark Act.
What appears to be the drawing page submitted with the
application presents applicant’s name, address, date of
first use and goods at the top, and at the center of the
page appear the words “The Color PURPLE.”
The specimen of use is a printed advertisement for
applicant’s electric nail-filing tool, an implement used in
providing manicures and pedicures. A color photograph of
the product in displayed under the interesting admonition
“Except No Imitations!” The housing for the machine is
purple, and a handwritten notation “THE COLOR PURPLE” is
circled, with an arrow pointing to the purple housing shown
in the illustration.
The Examining Attorney refused registration under
Section 2(e)(1) of the Lanham Act on the ground that
applicant’s mark, “The Color PURPLE,” is merely descriptive
of a characteristic or feature of applicant’s goods, namely
that they are colored purple. Applicant was advised that
its allegation of five years’ use is insufficient evidence
of acquired distinctiveness, but that the Examining
Attorney would consider additional evidence relating to
secondary meaning.
Ser No. 76/411,536
3
In addition to refusing registration, the Examining
Attorney addressed several informalities. He noted that
the mark displayed in the drawing, i.e., the words “The
Color PURPLE,” does not appear on the specimen, and
required applicant to submit a specimen that shows use of
the mark as it appears on the drawing. He also required
applicant to amend the identification-of-goods clause to
eliminate the indefinite term “systems,” and suggested that
applicant might adopt, if accurate, “electric nail filing
machine,” in Class 7. Additionally, applicant was advised
that the drawing was unacceptable because it is not typed
entirely in capital letters.
On the same day that the first Office Action was
mailed, the Office received a communication from applicant
noting that on the filing receipt it received from the
Office, the mark was listed as “stylized words, letters, or
numbers.” Applicant advised that this designation was not
correct, and explained that the mark is the color purple,
rather than a word mark.
Responsive to the Office Action, applicant amended the
identification-of-goods clause to read “electric nail
filing machine in International Class 07,” and argued that
the refusal based on descriptiveness was not well taken.
Applicant argued that even though the Examining Attorney
Ser No. 76/411,536
4
understood that applicant’s intention is to register the
color purple as applied to its products, he was treating
the mark as if it were a word mark, rather than as the
color mark that it is. Contending that the corrected
filing receipt issued by the Office on August 6, 2002
identifies the mark as a sensory mark with no drawing,
applicant argued that even if it “did submit a so-called
‘drawing page,’ the Examining Attorney was officially on
notice that the drawing page should have been ignored, as
such, and treated as a description of the mark and that the
specimen submitted with the application should have been
considered as the mark to be examined.” Applicant took
issue with the Examining Attorney’s statement that
applicant could not amend the drawing to conform to the
display on the specimens because the character of the mark
would be materially altered. Applicant offered to provide
a color strip or a color swatch in lieu of a drawing page,
if one were required by the Examining Attorney, and
contended that the Examining Attorney was aware of what
applicant’s mark is, and therefore that amending the
drawing would not constitute a material alteration.
Applicant requested that the Examining Attorney reconsider
the refusal to register, as well as the requirement for
Ser No. 76/411,536
5
substitute specimens, “which the Examining Attorney admits
[are] based upon an unintended situation.”
As a final matter, apparently in response to the
Examining Attorney’s request for information relating to
acquired distinctiveness, applicant provided information
relating to the length of the use of its mark, its
advertising expenses and sales amounts.
The Examining Attorney accepted applicant’s amendment
and evidence of distinctiveness, and noted that because
applicant had not submitted an acceptable typed drawing of
the mark, the mark would be considered to be in special
form. With respect to applicant’s argument that the
drawing page should not be treated as such, but only as a
description of the mark, the Examining Attorney argued that
if no drawing had been submitted, applicant should have
been denied a filing date. Maintaining his position that
the mark applicant applied to register is displayed on the
drawing page as a word mark, he made final the requirement
for a substitute specimen showing that mark used in
connection with applicant’s goods.
Applicant timely filed a Notice of Appeal. Applicant
then filed its appeal brief, the Examining Attorney filed
his, and applicant filed a reply brief. Applicant did not
request an oral hearing before the Board.
Ser No. 76/411,536
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Although the sole issue before us in this appeal is
whether the Examining Attorney’s requirement for substitute
specimens is proper, the question that applicant posits is
whether applicant was required to submit a drawing with its
application. Applicant asserts that it was not required to
do so, and therefore its specimen should be considered to
be acceptable.
Applicant’s position is clear: the Examining Attorney
clearly understood that applicant intended to register the
color purple, as applied to electric nail filing machines,
rather than the words shown on what the Examining Attorney
views as the drawing page, but he is “slavishly” adhering
to form over function by treating the mark as a word mark
just because what he views as the drawing page depicts it
as such. Applicant contends that what it provided was a
description of its mark, rather than a drawing of it.
Applicant argues that the Examining Attorney’s contention
that color marks must be depicted in a drawing “is in
error. A black and white drawing, i.e., color lining is
not required in sensory marks…” (brief, p. 6.)
Applicant’s arguments are not well taken.
Section 1(a)(2), which provides for the filing of
applications based on use in commerce, states that the
application must include, inter alia, a drawing of the
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mark. The only exception to this is found in Trademark
Rule 2.52(a)(3), which provides that the applicant is not
required to submit a drawing if the applicant’s mark
consists only of a sound, a scent, or other completely non-
visual matter.
Trademark Manual of Examining Procedure Section
1202.05(d) (3d ed., revised June 2002) is equally clear:
All marks, other than sound and scent marks,
require a drawing. TMEP Section 807. An application
for a color mark that is filed without a drawing will
be denied a filing date. 37 C.F.R. Section
2.21(a)(3). Similarly, an application for a color
mark with a proposed drawing page that states “no
drawing” or sets forth only a written description of
the mark will be denied a filing date. The drawing
provides notice of the nature of the mark sought to be
registered. Only marks that are not capable of
representation in a drawing, such as sound or scent
marks, are excluded from the requirement for a
drawing. Color marks are visual, and should be
depicted in a black and white drawing, accompanied by
a detailed written description of the color and how it
is used. 37 C.F.R. Section 2.52(a)(2)(v); TMEP
Sections 807.09(a) and (c).
Section 1202.05(d) goes on to explain the proper
manner in which to depict color marks such as the mark
applicant states it intended to apply to register:
1202.05(d)(i) Drawings of Color Marks in Trademark
Applications
In most cases, the drawing will consist of a
representation of the product or product package. The
drawing of the mark must be a substantially exact
representation of the mark as used or intended to be
used on the goods. 37 C.F.R. Section 2.51. A
depiction of the object on which the color is used is
Ser No. 76/411,536
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needed to meet this requirement. The object depicted
on the drawing should appear in broken lines. The
broken lines inform the viewer where and how color is
used on the product or package, while at the same time
making it clear that the shape of the product, or the
shape of the package, is not claimed as part of the
mark. 37 C.F.R. Section 2.52(a)(2)(ii); TMEP Section
807.10. In the absence of a broken-line drawing, the
Office will assume that the mark is a composite mark
consisting of the product shape, or the packaging
shape, in a particular color.
Contrary to applicant’s repeated assertion, the color
of applicant’s goods does not constitute a “sensory mark,”
for which no drawing would be necessary. Rule 2.52(a)(3)
restricts such marks to sounds, scents, or “other
completely non-visual marks.” Color marks are nothing if
not visual. The rule permitting omission of the drawing
requirement when the mark is a sound, a scent, or something
else that is non-visual has no application to the facts in
the case before us.
We note further that the Board is not bound by the
mischaracterization of applicant’s mark in the “corrected”
filing receipt. To permit a clerical error to determine
whether the legal requirements of the statute and the rules
have been met would clearly be unwarranted. Applicant
cites no legal authority for such a proposition.
We therefore cannot adopt applicant’s argument that
because no drawing is required in this case, the page
submitted with the application which otherwise would appear
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to be a drawing should be considered to be a statement
describing the mark. If this were the case, as noted
above, the application should not even have been given a
filing date.
As an additional comment, even if a description of a
color mark were allowed to be submitted as a “drawing,” we
would find that the words “The Color PURPLE” which appear
in the center of the drawing page represent a word mark,
rather than a description. One looking at these words on
the drawing page would not be made aware that the applicant
is seeking to register as a mark a purple color to be
applied to the entirety of applicant’s product. The very
terseness of the phrase “The Color PURPLE,” as well as the
odd use of capital letters, make it appear to be a word
mark. In addition, the phrase, “the color purple’ has some
significance as the title of a well-known book and movie,
and frequently such titles are used as trademarks for other
goods and services.
As noted previously, applicant argues that the
Examining Attorney was well aware of the mark for which it
intended to apply. However, one could reach this
conclusion only upon a viewing of the entire application,
and specifically, the specimen, which shows applicant’s
Ser No. 76/411,536
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product colored purple, with the words “THE COLOR PURPLE’
handwritten on the specimen to point to that fact.
Under In re ECCS Inc., 94 F.3d 1578, 39 USPQ2d 2001
(Fed. Cir. 1996), if there was an “internal inconsistency”
between the mark shown in the drawing and the one shown in
the specimen, one would look to the specimen to determine
what the mark actually was. However, subsequent to the
ECCS decision, the U.S. Patent and Trademark Office issued
a notice of final rulemaking by which certain of the rules
applicable to drawings were amended. The stated purpose
for such amendments was “to prohibit amendments that
materially alter the mark on the original drawing.” 64
Fed. Reg. 48900, 48902 (Sept. 8, 1999). In particular,
Trademark Rule 2.52(a) was amended to add the language “A
drawing depicts the mark sought to be registered.” Now, if
an application is filed with a drawing page showing a mark
which differs from the mark in the written application or
the specimen, the drawing controls, and the drawing may not
be amended if the amendment is a material alteration of the
mark shown on the drawing page. See Trademark Rule 2.72(a)
and In re Who? Vision Systems, Inc., 57 USPQ2d 1211 (TTAB
2000).
In the case at hand, amending the drawing would not be
appropriate because a proper drawing showing applicant’s
Ser No. 76/411,536
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nail filing machine in dotted lines with lining for the
color purple would constitute a material alteration of the
original drawing depicting the mark as words. Clearly the
commercial impressions of the words “The Color PURPLE” and
the color purple applied to the entire surface of a nail
filing machine are different. Applicant does not argue
otherwise.
For the same reason, the mark shown on the specimen
submitted with the application does not agree with the mark
shown on the drawing, so the requirement for a substitute
specimen which does agree with the drawing is proper.
DECISION: The requirement under Section 1 of the Act
for specimens which show the mark sought to be registered
used in connection with the goods set forth in the
application is affirmed.