Miller Sports, Inc.

Trademark Trial and Appeal Board

May 18, 1999

No. 75143020 (T.T.A.B. May. 18, 1999)

Paper No. 10
CEW
THIS DISPOSITION IS CITABLE
AS PRECEDENT OF THE TTAB MAY 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 Miller Sports, Inc.
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Serial No. 75/143,020
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Bradley P. Heisler, Esq. for applicant.
Rudy R. Singleton, Trademark Examining Attorney, Law Office
109 (Deborah S. Cohn, Managing Attorney).
____________
Before Simms, Seeherman and Walters, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Miller Sports, Inc. seeks registration of the mark
shown below for “in-line skates, ice skates and frames for
skates.”1

1 Serial No. 75/143,020, in International Class 28, filed July 31, 1996,
based on use of the mark in commerce, alleging first use and first use
in commerce on October 1, 1994.
Serial No. 75/143,020
2
The Examining Attorney has finally refused
registration on the ground that the specimens, consisting
of several identical labels, do not show use of the mark as
it appears in the drawing. The Examining Attorney’s
position is that the mark in the drawing is an incomplete
representation, i.e., a mutilation, of the mark as used on
the specimens. The label submitted as a specimen is
reproduced below.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
The sole issue before us is whether the mark, as it
appears in the drawing of record in the application, is a
mutilation of the mark as used, as evidenced by the
specimens of record.
The Examining Attorney contends that the mark in the
drawing consists of a design forming the letter “M” (“M and
skater design”); that the M and skater design as shown in
the specimens is an integral part (i.e., the first letter)
of the word “Miller”; that, except for the skater design
Serial No. 75/143,020
3
forming the initial stroke of the “M,” the “M” appears on
the label in the same font and color as the remaining
portion of the word “Miller”; and that, therefore, the
design shown in the drawing does not create a separate and
distinct commercial impression because it appears on the
specimens as part of the word “Miller.”
In support of its position that the mark in the
application drawing creates a separate and distinct
commercial impression, applicant submitted one of its
brochures advertising its skates and accessories, namely,
caps, T-shirts and a skate bag. While all of the
accessories have, as ornamentation, the same design
appearing on the labels submitted as specimens, the backs
of the T-shirts also show, as ornamentation, the design
which is the applied-for mark herein. Applicant contends
that “[c]ompanies such as applicant often sell accessories
such as hats and shirts ornamented with their marks to
customers who enjoy their primary goods [and] [c]ustomers
buy the accessories because they identify with the marks
placed prominently on the accessories.” (Applicant’s
brief, p. 7.) Applicant concludes that, therefore, its
applied-for mark “is used alone to decorate shirts because
[it] has created a commercial impression on [applicant’s]
skates customers separate from the term ‘Miller.’”
Serial No. 75/143,020
4
Citing the case of Institut National des Appellations
D’Origine v. Vintners Int’l. Co., Inc., 954 F.2d 1574, 22
USPQ2d 1190 (Fed. Cir. 1992) (CHABLIS WITH A TWIST held to
be registrable separately from “California Chablis with a
Twist”), applicant contends the following:
[T]he term “Miller” is a very common surname in
the United States. Hence, the word “Miller” is
not inherently capable of creating a strong and
distinctive commercial impression on customers.
Rather, it is the distinctive portion of the
specimens, the “M and design” mark, which
functions as a trademark and creates the
commercial impression separate and distinct from
the term “Miller.”
(Applicant’s brief, p.6.)
Trademark Rule 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 record, 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 USPQ2d
1828 (Fed. Cir. 1988); and Institut National des
Appellations D’Origine v. Vintners Int’l Co., Inc., supra
at 1197 (Fed. Cir. 1992), citing In re Servel, Inc., 181
Serial No. 75/143,020
5
F.2d 192, 85 USPQ 257 (CCPA 1950); In re Berg Electronics,
Inc., 163 USPQ 487 (TTAB 1969); In re Tekelec-Airtronic,
188 USPQ 694 (TTAB 1975); In re Lear Siegler, Inc., 190
USPQ 317 (TTAB 1976); and In re San Diego National League
Baseball Club, Inc., 224 USPQ 1067 (TTAB 1983). See also,
Trademark Manual of Examining Procedure, sections 807.14(a)
and 807.14(b) and cases cited therein.
In this case, it is our view that the elements
asserted by the Examining Attorney to be the mark, the word
“Miller” with the design of a skater as the initial stroke
in the letter “M”, are so merged together in presentation
that the M and skater design cannot be regarded as a
separable element creating a separate and distinct
commercial impression. The word “Miller” flows from the
initial M and skater design, and the M and skater design is
an integral part of the word “Miller.” We find that the
applied-for mark, M and skater design, does not form a
commercial impression separate and distinct from the entire
word “Miller”. Therefore, the applied-for mark, M and
skater design, as used on the specimens, does not function
as a mark for the identified goods in and of itself. As
such, it is a mutilation of the mark as depicted on the
specimens.
Serial No. 75/143,020
6
We are not persuaded otherwise by applicant’s
arguments. While the brochure submitted by applicant shows
an advertisement indicating that applicant offers T-shirts
with the applied-for mark as ornamentation thereon, this
brochure does not demonstrate use of the applied-for mark
on the goods identified in this application. Further, we
find applicant’s contentions regarding the applied-for mark
on T-shirts to be unavailing. Applicant is essentially
arguing that it would not use the applied-for mark on
accessories such as T-shirts if the applied-for mark did
not function as a mark for applicant’s primary products,
skates. This contention assumes, rather than proves, that
the applied-for mark is perceived as a mark separate and
apart from the mark shown on the labels submitted as
specimens. Nor do we find the facts herein analogous to
the facts in Institut National des Appellations D’Origine
v. Vintners Int’l. Co., Inc., supra. Rather than omitting
a geographically descriptive adjective which appeared on
the wine label involved therein in smaller print and on a
different line from the applied-for mark, the case before
us involves a design that comprises the initial letter of a
single word. It is immaterial that the word may be a
surname.
Serial No. 75/143,020
7
Decision: The refusal to register on the ground that
the specimens do not evidence use of the mark in the
application is affirmed.
R. L. Simms
E. J. Seeherman
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board