Thomas Jefferson Foundation, Inc.

Trademark Trial and Appeal Board

Jun 29, 2012

No. 77967242 (T.T.A.B. Jun. 29, 2012)

Mailed: June 29, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Thomas Jefferson Foundation, Inc.
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Serial No. 77967242
Filed on March 24, 2010
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Mary Daton Baril of McGuire Woods LLP for Thomas Jefferson
Foundation, Inc.

Judy M. Helfman, Trademark Examining Attorney, Law Office
114 (K. Margaret Le, Managing Attorney).
_______

Before Kuhlke, Wellington and Greenbaum, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Thomas Jefferson Foundation, Inc. filed an application
to register MONTICELLO (in standard characters) as a
trademark on the Principal Register for “house paint” in
International Class 2.
The examining attorney has refused registration of
applicant’s mark under the provisions of Sections 1, 2 and
45 of the Trademark Act, 15 U.S.C. §§ 1051, 1052 and 1127,
on the ground that the mark, “as used on the specimens of
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77967242
2
record, serves solely as a color designation and does not
serve a trademark function.” Brief, p. 1. In addition,
the examining attorney rejects applicant’s argument that
its mark functions as a trademark because it has secondary
source significance.
The application was originally filed based on
applicant’s intent to use in commerce and it was approved
by the Office for publication in the Official Gazette for
opposition. Upon expiration of the opposition period and
without any opposition having been filed, the Office issued
a Notice of Allowance. Applicant then filed its Statement
of Use (SOU), alleging a date of first use in commerce and
providing the following specimen of use:

Serial No. 77967242
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Applicant describes the specimen in the SOU as the
“front and back of the paint card found at point of
purchase display” and that the mark “is being used pursuant
to a license from applicant to Ralph Lauren.”
The applied-for mark was then refused registration by
the examining attorney who asserted that the mark is merely
a color designation and does not function as a trademark.
In particular, she stated that the proposed mark is “used
to denote one color of paint and to distinguish it from
other colors of paints” and the “impression that MONTICELLO
makes on the relevant public would be solely connected to a
specific shade of yellow paint, and not as a trademark
denoting origin of the identified goods.” Office action
(January 5, 2011).
In response to the refusal to register, applicant
filed the following additional specimens of use:
Serial No. 77967242
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Applicant states that the additional specimens comprise “a
point of purchase placard that shows a photo of the product
with the mark on it.” Applicant also goes on to argue that
its mark “is functioning to identify a secondary source”
because “[t]he word Monticello used in connection with
paint can signify that Monticello authorizes or licenses
the sale of the paint by Ralph Lauren, which is in fact a
licensee of the mark Monticello for use with paint.”
Applicant attached copies of printouts from the Ralph
Lauren Home website explaining the relationship between it
and applicant, including a brief history of the actual
paint colors used in Thomas Jefferson’s home, Monticello.
Serial No. 77967242
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The examining attorney was not convinced by the
additional specimens and, in the July 25, 2011 Office
action, made the refusal “final,” maintaining that “no
specimen of record demonstrates trademark use of the
proposed mark for the identified goods.”
Applicant has appealed and both applicant and the
examining attorney filed briefs. For the reasons explained
below, we reverse the refusal to registration.
Although we disagree with the examining attorney’s
ultimate conclusion, we note that she has correctly set
forth in her brief the statutes and cases governing our
review of this matter given the particular refusal to
register the applied-for mark. In particular, for
determining whether applicant’s MONTICELLO functions as a
trademark, we keep in mind that in order to be registrable,
the term must be perceived by the purchasing public as
identifying and distinguishing the source of the goods.
Section 2 of the Act, 15 U.S.C. § 1052. “The Trademark Act
is not an act to register mere words, but rather to
register trademarks. Before there can be registration,
there must be a trademark, and unless words have been so
used they cannot qualify.” In re Bose Corp., 546 F.2d 893,
192 USPQ 213, 215 (CCPA 1976), citing In re Standard Oil
Co., 275 F.2d 945, 125 USPQ 227 (CCPA 1960). “A critical
Serial No. 77967242
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element in determining whether a term or phrase is a
trademark is the impression the term or phrase makes on the
relevant public.” In re Volvo Cars of North America, Inc.,
46 USPQ2d 1455, 1458 (TTAB 1998). “The question whether
the subject matter of an application for registration
functions as a mark is determined by examining the
specimens along with any other relevant material submitted
by applicant during prosecution of the application.” In re
The Signal Companies, Inc., 228 USPQ 956, 957 (TTAB 1986).
An important function of specimens in a trademark
application is, manifestly, to enable the PTO to
verify the statements made in the application
regarding trademark use. In this regard, the manner in
which an applicant has employed the asserted mark, as
evidenced by the specimens of record, must be
carefully considered in determining whether the
asserted mark has been used as a trademark with
respect to the goods named in the application.

Bose, 192 USPQ at 216 (footnote omitted).
With regard to color designations, the Board has long
held that the use of a proposed mark to identify one
particular style or color shade for the goods, e.g.,
lipstick, paints, etc., does not necessarily render the
term unable to function as a trademark.
The fact that a term may be used as a color or style
designation to identify one particular style or color
of a product and distinguish it from the other colors
or styles of the same type of merchandise does not
necessarily mean that it likewise cannot function as a
trademark to identify such goods from like goods of
others... [T]he criteria for registration of a term
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such as that involved herein are that the term be an
arbitrary designation which does not in itself have a
connotation of color as used on and in connection with
the goods in question and that it is applied in the
manner of a trademark to the product. In the instant
case, there is no question but that the mark “BLANCO”
is used in the manner of a trademark on labels affixed
to the plywood panels.

In re Champion International Corporation, 183 USPQ 318
(TTAB 1974), citing to In re Clairol Inc., 173 USPQ 355,
457 F.2d 509 (CCPA 1972), (other internal citations
omitted). In Champion, the Board noted that applicant was
applying its proposed mark “in the manner of a trademark on
labels affixed to the [goods],” but ultimately refused
registration because the term BLANCO (meaning “white”) was
merely descriptive of the identified goods. In the Clairol
decision, the predecessor of our primary reviewing court
reversed the Board and found SWEDISH CRYSTAL for hair color
products registrable because it was a “coined and
completely arbitrary term” and was used as a trademark
despite also being a color designation and always followed
by wording, “light muted ash.” The Clairol court
instructed that a proper inquiry involves looking beyond
any intent by applicant to use the mark as a color
designation:
...a mark may be used for both a trademark purpose and
a non-trademark purpose and still be a valid
trademark. (Internal citation omitted). We are of the
opinion that the facts in this case-including the
Serial No. 77967242
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manner in which the mark is used, the fact that it is
always used in addition to a shade designation and the
arbitrariness of the mark-evidence a clear intent to
use the mark to indicate the source of the goods. The
cases cited by the board are not controlling on these
facts. The arbitrariness of the mark further tends to
establish that the ordinary purchaser would consider
that the mark indicates origin.

Clairol, 173 USPQ at 355-356.
The facts and evidence, in particular the specimens of
use, demonstrate that applicant’s use of MONTICELLO is akin
to that of the applicant in the Clairol decision. Like
“Swedish Crystal,” the term “Monticello” has no meaning or
suggestive connotation with respect to a color. That is,
unlike, e.g., “lemon” or “banana,” it is not a term that
would describe or even suggest a shade of yellow. Moreover
and more importantly, applicant’s manner of use of
“Monticello” in connection with the identified goods rises
to a level where consumers would view the term as more than
merely being a color designation. To be clear, we point
out that we share the same concerns as the examining
attorney with regard to the original specimen of use,
comprising a paint swatch card merely bearing the wording
“Monticello Yellow” on one side and the color swatch on the
other side. That swatch card alone does not constitute
trademark use because, as shown by the evidence submitted
by the examining attorney, a paint manufacturer such as
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applicant’s licensee may assign terms to various colors and
shades of paint without any intention of using said terms
to identify or distinguish the source of the paint.
However, the additional specimen submitted by applicant,
viewed in its entirety, does constitute proper trademark
use on the identified goods. The point-of-purchase placard
was presumably prepared by applicant’s licensee, Ralph
Lauren, and shows the wording “Monticello ™ Yellow” on a
can of paint. On the adjoining page, the wording “Ralph
Lauren Introduces Monticello ™ Yellow” appears prominently
at the top.1 The term “Monticello” is also used on both
pages in reference to the historic home of Thomas
Jefferson, and discusses how the home inspired the paint.
We find that consumers who receive this point-of-sale
placard will perceive applicant’s use, through its
licensee, of the term “Monticello” as a term used uniquely
by applicant to identify and distinguish applicant as the
source of that particular paint.
We acknowledge the record indicates that applicant
uses “Monticello” to designate a single shade of yellow
paint, rather than to identify a line of various paints in
different colors. Indeed, the record reflects that names

1 The fact that the trademark symbol or superscript ™ is employed
in the specimens should not be viewed, by itself, as elevating
Serial No. 77967242
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of other historic homes, such as Biltmore and Mount Vernon,
are used by others as source identifiers on a series of
various styles or colors of paints. Nevertheless, the fact
that applicant may use Monticello as identifying one
particular color or shade does not prohibit the term from
also being used by applicant in a trademark manner. Again,
“a mark may be used for both a trademark purpose and a non-
trademark purpose and still be a valid trademark.” Clairol
at 355. Simply put, so long as applicant has submitted a
specimen showing proper trademark use of the term
MONTICELLO, and it has, then the mark may be registered.
Because we find that applicant’s mark, MONTICELLO, is
capable of functioning as a trademark and the substitute
specimen of use is acceptable and reflects such trademark
use, we need not discuss the alternative issue of whether
applicant’s mark functions as trademark as a result of any
secondary source attributions.2

applicant’s use of the term “Monticello” to trademark use.
2 We would be remiss, however, if we did not point out that
applicant’s argument that secondary source meaning as a result of
applicant’s use of the term MONTICELLO on other goods is not
supported by the evidence. The record does not establish that
applicant has used the term MONTICELLO on any other goods.
Rather, in its June 22, 2011 response to an Office action,
applicant merely states that it licenses use of the term to
others for use on goods and applicant references its “retail
website” (providing a URL). Printouts from the website showing
use of the mark on other goods were not submitted.
Serial No. 77967242
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Decision: The refusal to register MONTICELLO on the
ground that it fails to function as a mark is reversed.