Sunkist Growers, Inc.

Trademark Trial and Appeal Board

Nov 22, 2002

No. 75277895 (T.T.A.B. Nov. 22, 2002)

Mailed: November 22, 2002
Paper No. 24
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Sunkist Growers, Inc.
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Serial No. 75/277,895
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Kevin G. Smith of Sughrue Mion, PLLC for Sunkist Growers,
Inc.
Linda M. King, Trademark Examining Attorney, Law Office 101
(Jerry Price, Managing Attorney).
_______
Before Walters, Chapman and Rogers, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
Sunkist Growers, Inc. filed, on April 21, 1997, an
application to register the mark THE ULTIMATE DIET DRINK on
the Principal Register for “fresh fruit” in International
Class 31. Applicant based its application on Section 1(b)
of the Trademark Act, asserting a bona fide intention to
use the mark in commerce. The mark was published for
opposition on November 25, 1997, and as no opposition was
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75/277895
2
filed, the Office issued a notice of allowance on February
17, 1998. Following the grant of several extensions of
time to file a statement of use, applicant filed its
statement of use on August 3, 2000, claiming dates of first
use and first use in commerce of September 1997.
The Examining Attorney required a new specimen, citing
Trademark Rule 2.56 and contending that the specimens of
record are unacceptable because they fail to show use of
the mark on or in connection with “fresh fruit.” In
response, applicant argued that the photograph of a point-
of-purchase display, as well as the hangtag/coupon
submitted as specimens each clearly depict the goods and
the mark and are sufficient to show use in connection with
the identified goods, as required by Trademark Rule
2.56(a). Applicant further argued that merely because the
specimens show that the mark is also used in association
with a brand of spring water does not disqualify the
specimens as supporting applicant’s use of the mark for
“fresh fruit.”
In the Final Office action, the Examining Attorney
again required that applicant submit a specimen showing use
of the mark on or in connection with the identified goods
under Trademark Rule 2.56. She explained, “the proposed
mark is clearly used in connection with the applicant’s
Ser. No. 75/277895
3
lemons used with the Misty Mountain spring water to make
lemon water. It does not show valid trademark use for the
lemons standing alone.” (Emphasis in original)(Final
Office action, p. 1.)
Applicant has appealed, and briefs have been filed.
Applicant did not request an oral hearing.
As explained above, the specimens submitted by
applicant are a photograph of a point-of-purchase display,
and a hangtag/coupon, photocopies of which are reproduced
below (in reduced form):
Two Sides of Hangtag/Coupon
Ser. No. 75/277895
4
Point-of-Sale Display
The sole issue before the Board is whether either of
the two specimens submitted with applicant’s statement of
use is an acceptable specimen of use of the mark THE
ULTIMATE DIET DRINK for the goods set forth in the
application, “fresh fruit.”1
Trademark Rule 2.56(a) reads as follows:
An application under section 1(a) of the
Act, an amendment to allege use under §2.76,
and a statement of use under §2.88 must each
include one specimen showing the mark as
used on or in connection with the goods, or
in the sale or advertising of the services
in commerce.
1 To be clear for the record, neither the issue of whether this
slogan, THE ULTIMATE DIET DRINK, functions as a trademark, nor
the issue of whether applicant, Sunkist Growers, Inc., is the
sole owner of the mark, is before the Board. The only basis for
refusal the Examining Attorney has chosen to articulate, citing
Trademark Rule 2.56, is her requirement for a substitute specimen
on the ground that both specimens are inadequate to show use of
the mark in connection with the identified goods.
Ser. No. 75/277895
5
Applicant contends that both specimens submitted with
its statement of use comply with the rule in that they each
show use in connection with the goods.
The Examining Attorney contends that the specimens are
unacceptable because neither specimen shows use of the mark
for applicant’s goods standing alone; that consumers are
likely to perceive the mark as referring to the drink which
results from combining applicant’s lemons with another
party’s spring water; that the mark is “more of a marketing
slogan for this arrangement [a joint promotion with the
owner of Misty Mountain spring water], rather than being a
trademark for applicant’s goods” (brief, unnumbered p. 3);
and that the mark THE ULTIMATE DIET DRINK is used only to
promote the use of the two goods together to create a soft
drink, but there is no specimen showing use of the mark for
lemons standing alone.
As explained previously, the Examining Attorney
acknowledged that the specimens show the mark used in
connection with applicant’s goods “fresh fruit” (more
specifically, lemons), but she rejects the specimens
because they do not show use only for lemons. We find no
statutory citation, case law2 or other authority to support
2 The Examining Attorney cited the case of In re Packaged Ice
Inc., 50 USPQ2d 1361 (TTAB 1999). However, that case involved a
Ser. No. 75/277895
6
such a requirement for specimens. The specimens submitted
by applicant meet the criteria set forth in Trademark Rule
2.56(a). See also, TMEP §§904.04 and 904.06 (Third edition
2002). Applicant’s point-of-sale display, as well as its
hangtag/coupon, are both associated directly with
applicant’s goods “fresh fruit,” albeit the mark THE
ULTIMATE DIET DRINK is apparently also associated with
Misty Mountain spring water. Further, on the specimens,
the mark is prominently displayed and is associated with or
related to applicant’s goods; the specimens are designed to
catch the attention of purchasers; and the purchasing
public will associate the mark with applicant’s goods (even
if there is also an association with the other named
entity’s spring water).
Decision: The refusal to register based on a
requirement for an acceptable specimen is reversed.
statutory refusal to register the mark under Sections 2 and 45 of
the Trademark Act on the ground that the matter did not function
as a mark.