Productive Products International, Inc.

Trademark Trial and Appeal BoardJan 29, 2009

No. 78903442 (T.T.A.B. Jan. 29, 2009)

Mailed: 29 January 2009 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Productive Products International, Inc. ________ Serial No. 78903442 _______ David G. Boutell of Flynn, Thiel, Boutell & Tanis, P.C. for Productive Products International, Inc. Kapil K. Bhanot, Trademark Examining Attorney, Law Office 108 (Andrew Lawrence, Managing Attorney). _______ Before Hairston, Drost, and Wellington, Administrative Trademark Judges. Opinion by Drost, Administrative Trademark Judge: On June 8, 2006, Productive Products International, Inc. (applicant) applied to register the mark DIRT GRABBER, in standard character form, on the Principal Register for goods identified as “plastic film mat having a tacky surface for removing dust and dirt from footwear” in Class 27. Serial No. 78903442. The application contains a disclaimer of the term “Dirt” and allegations of a date of THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser. No. 78903442 2 first use anywhere of January 31, 1997, and in commerce of February 28, 1997. The examining attorney1 has finally refused registration on the ground that the mark on the specimen catalog page is not a substantially exact representation of the mark in the drawing as required by 37 CFR § 2.51(a). The specimen shows the mark used in the manner shown below: USPTO rules, specifically 37 CFR § 2.51(a), require that in “an application under section 1(a) of the Act, the drawing of the mark must be a substantially exact representation of the mark as used on or in connection with 1 Another examining attorney prosecuted the application through the final refusal. Ser. No. 78903442 3 the goods and/or services.” TMEP § 807.12(d) (5th ed. September 2007) summarizes the requirements for the mark in the drawing when compared to the mark in the specimen. In an application under §1 of the Trademark Act, the mark on the drawing must be a complete mark, as evidenced by the specimen. When the representation on a drawing does not constitute a complete mark, it is sometimes referred to as "mutilation." This term indicates that essential and integral subject matter is missing from the drawing. An incomplete mark may not be registered. “‘Mutilation’ is a concept long recognized as a part of trademark registration case law.” Institut National des Appellations D’Origine v. Vintners International Co., 958 F.2d 1574, 22 USPQ2d 1190, 1197 (Fed. Cir. 1992). The question of whether a mark is a mutilation “boils down to a judgment as to whether that designation for which registration is sought comprises a separate and distinct ‘trademark’ in and of itself." Id. See also In re 1175856 Ontario Ltd., 81 USPQ2d 1446, 1448 (TTAB 2006). TMEP § 807.12(d) informs examining attorneys that: [I]n a §1 application, an applicant has some latitude in selecting the mark it wants to register. The mere fact that two or more elements form a composite mark does not necessarily mean that those elements are inseparable for registration purposes. An applicant may apply to register any element of a composite mark if that element presents, or will present, a separate and distinct commercial impression apart from any other matter with which the mark is or will be used on the specimen. Ser. No. 78903442 4 “[I]t is up to the applicant to choose what it seeks to register. But what applicant seeks to register must not only be in use, it must make a distinct commercial impression as used.” In re Yale Sportswear Corp., 88 USPQ2d 1121, 1123 (TTAB 2008). In Yale Sportswear, applicant sought to register the mark UPPER 90 but the mark on the specimen was displayed as UPPER 90°. The board found that they were not substantially exact. 88 USPQ2d at 1125. “Although the degree symbol in applicant’s mark is not physically large, we find that it nonetheless substantially changes the overall impression of the mark. Without the degree symbol, it is unclear what the ‘90’ in the drawing might refer to.” Id. at 1123. In another case, the applicant sought to register the mark KRAZY but the board affirmed the refusal to register because the word “Krazy” was “a part of the unitary phrase “KRAZY MIXED-UP”, and that, as used, it does not function as a trademark in and of itself.” In re Semans, 193 USPQ 727, 729 (TTAB 1976) (specimen below): Ser. No. 78903442 5 The board specifically determined that “‘KRAZY MIXED-UP’ is a unitary phrase, of which ‘KRAZY’ is an integral part, it is used by applicant as a single composite mark, it is a play on a unitary colloquial expression, and there is nothing in the record to suggest that customers and prospective purchasers of applicant's goods separate the phrase into component parts and utilize ‘KRAZY’ alone to call for and refer to the goods.” Id. Other cases have recognized exceptions to finding that the mark in the drawing is a mutilation of the mark as shown on the specimen. Some examples include: (1) The two components include a corporate name or house mark along with another trademark or a descriptive term. See In re Servel, Inc., 181 F.2d 192, 85 USPQ 257, 260 (CCPA 1950)(“The courts in a proper case may recognize the right to registration of one part of an owner’s mark consisting of two parts.” SERVEL functions as a mark apart from the descriptive term INKLINGS) and In re Royal BodyCare Inc., 83 USPQ2d 1564, 1569 (TTAB 2007) (NANOCEUTICAL functions as trademark apart from the house mark “RBC’s’” in possessive form). (2) The other component is a surname. In re Emco, Inc., 158 USPQ 622, 623 (TTAB 1968) (“It is concluded that Ser. No. 78903442 6 the law and the record support applicant’s position that ‘RESPONSER’ is registrable without addition of the surname ‘MEYER’”). (3) The component is a non-descriptive element that is part of a phrase. In re Barry Wright Corp., 155 USPQ 671, 672 (TTAB 1967) (“[W]e cannot agree with the examiner that purchasers would necessarily associate ‘8-48’ with a computer having eight storage registers and forty-eight memory steps… [I]t is clear that the notation ‘8-48’ stands out as a distinguishable element separate and apart from the statement ‘ANOTHER 8-48 FROM MATHATRONICS’”). (4) The other component is a part number. In re Raychem Corp., 12 USPQ2d 1399, 1400 (TTAB 1989) (“Applicant therefore need not include either the part number or the generic term in the drawing, because neither is essential to the commercial impression created by the mark as shown in the specimens.” Refusal to register TINEL-LOCK on the ground that the mark in the drawing did not agree with the mark TRO6AI-TINEL-LOCK-RING on the specimen reversed). (5) The other component includes geographically descriptive material required by regulation. Institut National des Appellations D'Origine, 22 USPQ2d at 1197 (CHABLIS WITH A TWIST not a mutilation of CALIFORNIA CHABLIS WITH A TWIST because evidence “shows clearly that Ser. No. 78903442 7 ‘California’ is not a part of the trademark. The fact that the BATF regulations require it to appear on the label has nothing whatsoever to do with the question of what is the trademark… ‘California’ is, moreover, a geographically descriptive word wholly devoid of trademark significance because it cannot distinguish Vintners’ product from others”). (6) The mark sought to registered, even though overlapping the other components, is displayed differently. In re Big Pig, Inc., 81 USPQ2d 1436, 1440 (TTAB 2006)(“[T]he word PSYCHO is displayed in a different color, type style, and size such that it stands out from the remaining words [BUBBALOU’S BODACIOUS BAR-B-Q] and design element”). With this overview, we begin our analysis. We look at the expression as used on the specimen, TAKMAT DIRT GRABBER. The examining attorney argues that the “term TAKMAT is not generic for the applied for goods and therefore when combined as shown on the specimen as TAKMAT DIRT GRABBER, is not a substantially exact representation of the mark as shown in connection with the goods.” Brief at unnumbered pp. 5-6. Applicant argues that “its omission of the descriptive word TAKMAT is not a mutilation of the mark because the descriptive expression TAKMAT is not a Ser. No. 78903442 8 critical element of the mark such that its removal changes the overall look and feel of the mark.” Brief at 2.2 While not necessarily agreeing with applicant’s assertion that the term TAKMAT is descriptive, we conclude that the mark DIRT GRABBER is not a mutilation of the mark as used on the specimen, TAKMAT DIRT GRABBER. First, the case law leads us to conclude that there is no per se rule that non-generic words on the same line in a plain type font necessarily results in a unitary mark. “While proximity is a consideration, it is the overall commercial impression of the mark that is controlling.” 1175856 Ontario, 81 USPQ2d at 1448. As discussed above, there are numerous exceptions to this rule. Second, there is simply nothing linking the words together. This is not a case where the words are “a play on a unitary colloquial expression” as in Semans. 193 USPQ at 729. The type font as used on the specimen is so plain that we have no reason to understand that purchasers will assume that all non- generic words in block print compose a unitary expression. Third, while the examining attorney argues that “each reference to DIRT GRABBER in the specimen is prefaced with TAKMAT” (Brief at 3), the examining attorney acknowledges 2 We sustain the examining attorney’s objection to the new evidence attached to applicant’s brief. 37 CFR § 2.142(d). Ser. No. 78903442 9 that there are uses on the specimen of the term TAKMAT in all uppercase letters while the term “Dirt Grabber” is displayed in title case form. The specimen also shows use of the term TAKMAT separately. The use is more similar to the use of a primary or house mark (even though it does not appear to be such a mark). Finally, the expression “Dirt Grabber” appears to be unitary expression to the extent that it refers to an item that “grabs dirt.” TAKMAT would not be a recognized modifier of the other component DIRT GRABBER. See In re San Diego National League Baseball Club, Inc., 224 USPQ 1067, 1070 (TTAB 1983)3 (“‘SAN DIEGO’ serves as a modifier” of PADRES REPORT). It is not otherwise apparent how TAKMAT is united with DIRT GRABBER except by proximity. While a mat that “grabs dirt” may be referred to as a “tacky mat” or perhaps “Takmat,” that possibility does not make the entire phrase TAKMAT DIRT GRABBER a unitary term. In short, TAKMAT is not essential or integral subject matter such that it must be included in the drawing. Therefore, we conclude that the term DIRT GRABBER is used on the specimen in a manner that creates a commercial impression separate and apart from the term TAKMAT. 3 The holding in another part of this case was overruled in In re WNBA Enterprises LLC, 70 USPQ2d 1153 (TTAB 2003). Ser. No. 78903442 10 Decision: The refusal to register is reversed.