E.A. Sween Company

Trademark Trial and Appeal Board

Jan 12, 2010

No. 77048091 (T.T.A.B. Jan. 12, 2010)

Hearing: Mailed:
October 27, 2009 January 12, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re E.A. Sween Company
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Serial No. 77048091
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Stephen Baird, Esq. of Winthrop & Weinstine, P.A. for E.A.
Sween Company

Nakia D. Henry, Trademark Examining Attorney, Law Office
111 (Craig D. Taylor, Managing Attorney).
_______

Before Grendel, Walsh and Wellington, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark DELI EXPRESS SAN LUIS, in standard character
form, for “burritos; snack cakes; and snack rolls, namely,
sweet rolls” in International Class 30.1

1 Serial No. 77048091, filed November 20, 2006, based on an
allegation of first use and use in commerce as of January 30,
1990.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77048091
2
At issue in this appeal is the trademark examining
attorney’s final refusal to register applicant’s mark on
the ground that the mark in the drawing is not a
substantially exact representation of the mark as it
appears on the specimen of record. See Trademark Act
Section 1(d)(1), 15 U.S.C. § 1051, 37 C.F.R. § 2.51.
The appeal has been fully briefed and, on October 27,
2009, an oral hearing was held. After careful
consideration of the evidence and arguments of record, we
affirm the refusal to register.
“An application under section 1(a) of the Act … must …
include one specimen showing the mark as used on or in
connection with the goods….” Trademark Rule 2.56(a).
Trademark Rule 2.51(b) provides that (emphasis added):
(b) 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.

The specimen of record is shown below:
Serial No. 77048091
3

The specimen is clearly a photograph of a packaged “sweet
roll.” The portion of the proposed mark consisting of DELI
EXPRESS is in the top left corner of the label, in a red
and yellow border and with the registration symbol ® in the
lower right of the red banner. The portion of the proposed
mark consisting of SAN LUIS, appears to the right with a
green background following a stylized yellow triangle and
is also immediately followed by the registration symbol ®.
Applicant notes that it is the owner of existing
registrations for marks DELI EXPRESS (Reg. Nos. 1220359 and
Serial No. 77048091
4
1265869) and SAN LUIS (Reg. No. 1665521).2 Applicant argues
that its proposed mark is merely a composite of these
previously-registered marks and that it is “free to choose
the elements of its composite mark that it wants to
register,” citing to TBMP § 807.12(d) (2d ed. rev. 2004).
Brief, p. 5. Applicant also argues that the specimen
“depicts the words on the same horizontal plane” and that
“consumers will naturally read the terms together.” Id.
The examining attorney, on the other hand, argues that
the proposed mark “as conveyed on the specimen,
demonstrates two separate commercial impressions, in
particular, the ‘Deli Express’ and the ‘San Luis’
[elements].” Brief, at (unnumbered) p. 3. Accordingly,
the examining attorney concludes, the “proposed mark does
not match or create a substantially exact representation of
the submitted specimen.” Id. at 5.
There is no limitation on the number of trademarks
that may appear on a specimen and serve to identify the
source of the product. See McCarthy on Trademarks and
Unfair Competition, §7.6 (2008). And, as applicant argues,
an owner of previously-registered marks is not prohibited
from combining any (or all) elements of those registered

2 Applicant claimed ownership of these registrations during the
prosecution of the application and submitted copies of other
registrations that it owns.
Serial No. 77048091
5
marks into a single mark and registering said mark so long
as the composite mark appears on the specimen of use in
such a manner that the elements would not be perceived as
constituting multiple marks, i.e., having separate
commercial impressions. The reason for this is that an
application must be limited to one mark. 15 U.S.C.
§1051(a)(1); 37 C.F.R. §2.52; see also, In re International
Flavors & Fragrances Inc., 183 F.3d 1361, 51 USPQ2d 1513
(Fed. Cir. 1999), and authority cited therein. Thus, the
applied-for mark is only registrable if it is a unitary
composite mark engendering a unique and distinct commercial
impression. See In re Walker-Home Petroleum, Inc., 229
USPQ 773 (TTAB 1985).
The question of whether applicant’s proposed mark will
be perceived as a unitary mark, albeit a composite of
elements, or if it will be viewed as constituting multiple
marks is essentially specimen-driven. That is, the issue
is resolved by comparing the specimens to the drawing and
our analysis is necessarily subjective. See In re Jordon
Industries, Inc., 210 USPQ 158 (TTAB 1980) citing In re
Audi NSU Auto Union AG, 197 USPQ 649 (TTAB 1977). The
specimens of use presumably show how the average purchaser
will encounter the mark under normal marketing conditions
and, as such, the specimens are suggestive of the reaction
Serial No. 77048091
6
of the average purchaser to this display of the mark. See
In re Magic Muffler Service, Inc., 184 USPQ 125 (TTAB
1974).
Here, we agree with the examining attorney that the
specimen depicts the two literal portions DELI EXPRESS and
SAN LUIS in such a manner that consumers would not perceive
them as constituting a single composite mark. First, the
DELI EXPRESS portion is not only in a different font but is
contained within a yellow-background, and then a larger red
background, separated from the remainder of the packaging
design by a black bar outlining the top left corner of the
package. The other literal portion, SAN LUIS, is outside
of that border area and is further separated by a fanciful
triangle design and placed upon a green background. The
term CONCHA appears below these two elements in a lighter
green box. Taken together, we find that the impression
left by this specimen is that the two elements, DELI
EXPRESS and SAN LUIS, are two separate trademarks rather
than the single mark shown on the drawing page. Even
accepting applicant’s assertion that DELI EXPRESS is a
house mark, there is nothing about the use of SAN LUIS that
suggests that these two elements together form the
impression of a single trademark. Consumers are more
likely to view DELI EXPRESS as the house mark and SAN LUIS
Serial No. 77048091
7
as a separate trademark indicating perhaps a line of goods,
e.g., food items derived from Mexican or Tex-Mex cuisine.
Again, based on the manner in which they are depicted in
the specimen, we believe the consumer would percieve the
two elements as two different trademarks, rather than a
single trademark.
Accordingly, we find that applicant's drawing of the
mark is not a substantially exact representation of the
mark as used in commerce, Trademark Rule 2.51(a), and that
the examining attorney's requirement for a substitute
specimen was appropriate.
Decision: The refusal to register is affirmed.