Scheucher, Karl F.

Trademark Trial and Appeal BoardApr 22, 2014

No. 85529532 (T.T.A.B. Apr. 22, 2014)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: April 22, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Scheucher, Karl F. _____ Serial No. 85529532 _____ Kenneth L. Mitchell of Woodling, Krost and Rust for Karl F. Scheucher. Marlene Bell, Trademark Examining Attorney, Law Office 118 (Thomas Howell, Managing Attorney). _____ Before Bergsman, Lykos, and Masiello, Administrative Trademark Judges. Opinion by Masiello, Administrative Trademark Judge: Karl F. Scheucher, an individual U.S. citizen, filed an application under Trademark Act § 1(b), 15 U.S.C. § 1051(b), to register on the Principal Register the mark SIPS, in standard character form, for a variety of goods in International Class 9.1 After initial examination, applicant filed an allegation of use under Trademark Act § 1(c), 15 U.S.C. § 1051(c), accompanied by a specimen of use of the mark. The examining attorney accepted the allegation of use but refused registration under §§ 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051 and 1127, 1 Application Serial No. 85529532, filed on January 31, 2012. Serial No. 85529532 2 on the ground that the specimen of use did not demonstrate use of the mark that applicant seeks to register. The examining attorney explained that the mark on the specimen differed materially from the drawing of the mark in the application. See Trademark Rule 2.51(b), 37 C.F.R. § 2.51(b).2 She also advised applicant that amending the drawing to conform to the mark as shown on the specimen would be impermissible under 37 C.F.R. § 2.72(b)(2),3 which prohibits amendments that would “materially alter the mark.” The examining attorney therefore required applicant to submit a substitute specimen of use, but also advised applicant that he could withdraw his allegation of use and demonstrate use of the mark at a later date.4 Applicant declined to file a substitute specimen and did not withdraw his allegation of use. The examining attorney accordingly made her refusal final, and applicant brought this appeal. Applicant and the examining attorney have filed their briefs on appeal, and applicant has filed a reply brief. The specimen of use in the record is shown below: 2 “In an application under section 1(b) of the Act, the drawing of the mark must be a substantially exact representation of the mark as intended to be used on or in connection with the goods and/or services specified in the application, and once an amendment to allege use under § 2.76 or a statement of use under § 2.88 has been filed, the drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods and/or services.” 3 “In an application based on a bona fide intention to use a mark in commerce under section 1(b) of the Act, the applicant may amend the description or drawing of the mark only if: … (2) The proposed amendment does not materially alter the mark.” 4 Office action of September 14, 2012, p. 2. Serial No. 85529532 3 The allegation of use indicates that the items depicted are examples of applicant’s goods. The critical portion of the image is shown below, enlarged: Serial No. 85529532 4 The mark appearing on applicant’s goods consists of the words SCALABLE INTELLIGENT POWER SUPPLY, with the initial letters of the four words greatly emphasized inasmuch as they are presented in a bold lettering style that is much larger in size than the other lettering of the mark. Despite the great emphasis given to the letters S, I, P, and S, the examining attorney contends that the mark that applicant uses, as shown on the specimens, is not the mark that applicant has sought to register, as set forth in the application. Applicant, in response, contends: The mark on the drawing is the exact representation of the mark on the specimen. … Applicant has applied to register SIPS which is a logical selection of a portion of the composite mark shown in the specimen which presents a separate and distinct commercial impression indicating a source of the goods. … Applicant’s mark is not a mutilation. … [I]t is respectfully suggested that the applicant has latitude to select the mark it wants to register as long as the mark is not a mutilation. … The mark is SIPS and the specimens show the mark in bold, large capital letters which are at least a factor of 10 times the size of the remainder of the letters, to wit, “calable,” “ntelligent,” “ower” and “upply.” The mark SIPS is shown in a dominant way in the specimens submitted and create a separate and distinct commercial impression that cannot be misinterpreted.5 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, 5 Applicant’s brief at 5-6. Serial No. 85529532 5 e.g., In re Chemical Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828 (Fed. Cir. 1988); Institut National des Appellations D’Origine v. Vintners Int’l. Co., Inc., 954 F.2d 1574, 22 USPQ2d 1190, 1197 (Fed. Cir. 1992). Of particular interest in the present case is the way in which prior cases have determined what constitutes a “separate” commercial impression. In In re Chemical Dynamics, the applicant used the mark shown below, but sought to register only the portion representing an eyedropper: The Court, in affirming the Board’s refusal of registration, explained: The three elements of the background – the dropper, the droplet, and the watering can – are interrelated elements of a single unified design. We agree with the Board that these elements constitute ‘a unitary mark which creates a single commercial impression and that to try to separate out the eyedropper portion of the mark results in an impermissible mutilation.’ 5 USPQ2d at 1830 (emphasis supplied). The case before us is substantially similar to In re Miller Sports Inc., 51 USPQ2d 1059 (TTAB 1999). There, the applicant sought to register the mark shown below on the left, but the specimen of use showed use of the mark on the right: Serial No. 85529532 6 The Board, in affirming the examining attorney’s refusal of registration, explained: [I]t 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.’ 51 USPQ2d at 1061 (emphasis supplied). Turning to the case before us, the mark shown in the application’s drawing of the mark is manifestly not, as applicant contends, “the exact representation” of the mark that applicant is actually using (at least to the extent that such use is demonstrated by the specimen of record). The question is whether the letters SIPS, as they appear on the specimen, constitute an element creating a separate and distinct commercial impression. If we consider only the large, boldfaced lettering on the specimen, we will, of course, see the letters SIPS. But that would require that we cast a blind – or at least myopic – eye on the remainder of the mark. The words Serial No. 85529532 7 “Scalable Intelligent Power Supply” are there and we cannot pretend that they are not. If we try to separate the bold-faced letters from the other lettering, we will have, on the one hand, SIPS, but on the other hand the unknown designations “calable,” “ntelligent,” “ower” and “upply.” No reasonable customer will perceive the mark on the specimen in this way, when the puzzle is so easily solved by combining the initial letters S, I, P, and S with the letters that immediately follow them. Just as in In re Chemical Dynamics, the letters SIPS and the other letters with which they are commingled “are interrelated elements of a single unified [phrase].” 5 USPQ2d at 1830. To paraphrase In re Miller Sports, “the word [Scalable] flows from the initial [S]… and the [S] is an integral part of the word [Scalable],” 51 USPQ2d at 1061, and one may say the same about the words “Intelligent,” “Power,” and “Supply.” We find the cases cited by applicant to be distinguishable. In re Big Pig, 81 USPQ2d 1436 (TTAB 2006) dealt with a specimen that showed the word PSYCHO scrawled across an underlying logo that included images and other wording. PSYCHO was displayed “in a different color, type style, and size” and had “the look of graffiti painted over a logo.” Id. at 1440. The specimen in In re Berg Electronics, Inc., 163 USPQ 487 (TTAB 1969) showed the designation BERG overlaid upon the mark GRIPLET, with the two words presented in different colors, sizes and styles of lettering. In re National Institute for Automotive Service Excellence, 218 USPQ 744 (TTAB 1983) dealt with the separability of a background graphic design from wording that was overlaid upon it. Similarly, In re 1175856 Ontario Ltd., 81 Serial No. 85529532 8 USPQ2d 1446 (TTAB 2006) dealt with the separability of a mark from a minor graphic curve that appeared near it on the specimen. Institut National des Appellations D’Origine, supra, addressed the separability of the mark CHABLIS WITH A TWIST from the geographic designation CALIFORNIA that appeared immediately above it in a different size and style of lettering, and was required by law to appear somewhere on the label. 22 USPQ2d at 1197. In none of the cases cited by applicant did the asserted mark consist of letters that, on the specimen, combined with other letters to form other easily recognized words. Applicant’s specimen of use shows the mark that applicant is using. That mark is substantially different from the mark that applicant has applied to register. We find that the mark in applicant’s application is a mutilation of the mark that applicant actually uses, and that the specimen of use does not support applicant’s allegation that he is using the mark that he seeks to register. The examining attorney’s requirement that applicant submit another specimen of use to support his allegation of use was well founded, and her refusal to register the mark on that basis was correct. Decision: The refusal to register is affirmed.