Glaxo Group Ltd.

Trademark Trial and Appeal Board

May 18, 1999

No. 75086222 (T.T.A.B. May. 18, 1999)

Paper No. 14
PTH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MAY 18, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Glaxo Group Limited
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Serial No. 75/086,222
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Thomas J. Moore of Bacon & Thomas for Glaxo Group Limited.
Alec Powers, Trademark Examining Attorney, Law Office 105
(Thomas Howell, Managing Attorney).
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Before Hanak, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Glaxo Group Limited seeks registration of the mark
shown below for “pharmaceutical preparations and
substances, namely, anesthetics and analgesics.”
Ser No. 75/086,222
2
The application was filed on April 10, 1996, based on a
bona fide intention to use the mark in commerce. In an
amendment to allege use filed January 21, 1997, applicant
submitted several specimens which consist of identical
boxes for the goods. Panels from one of the boxes are
reproduced below:
Applicant has described the mark as follows: “The mark
comprises the design of a stylized letter V.”1 We should

1 We note that applicant initially provided the following
description of the mark: “The mark consists of a shaded
arrowhead design, pointing down.”
Ser No. 75/086,222
3
note that, on the specimens, the letters in the word
“ULTIVA” are purple and the design element gradually
changes color from pink or light purple at its widest point
to blue and then to purple at its narrowest point.
The Trademark Examining Attorney has made final a
requirement for substitute specimens, arguing that the
specimens of record do not show use of the mark as it
appears in the drawing.
Applicant has appealed from the requirement.2 Both
applicant and the Examining Attorney have filed briefs, but
an oral hearing was not requested. We affirm the
requirement for substitute specimens.
It is essentially the Examining Attorney’s position
that the mark shown in the drawing is a fully shaded
arrowhead design pointing downward; that this design forms
part of the letter “V” in the term “ULTIVA”; and that,
therefore, the design shown in the drawing does not create
a separate and distinct commercial impression because it
appears on the specimens as part of the term “ULTIVA.”.

2 We note applicant’s contention that the final requirement to
provide substitute specimens was premature. However, inasmuch as
the requirement for substitute specimens was first made in an
Office action dated March 29, 1997, applicant’s contention is not
well taken. See TMBP Section 1201.02.
Ser No. 75/086,222
4
Applicant, however, argues that purchasers, upon
seeing the boxes for its goods, would be drawn to the
“gradually changing color” design which is much larger and
clearly stands out from the term “ULTIVA.”
Trademark Rule 2.51 (a)(1) provides, in pertinent
part, that “the drawing of the trademark shall be a
substantially exact representation of the mark as used on
or in connection with the goods[.]” 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, e.g., In re Chemical Dynamics Inc., 839
F.2d 1569, 5 USPQ2d 1828 (Fed. Cir. 1988); and Institut
National des Appellations D‘Origine v. Vitners
International Co., Inc., 954 F.2d 1574, 22 USPQ2d 1190,
1197 (Fed. Cir. 1992), citing In re Servel, Inc., 181 F.2d
192, 85 USPQ 257 (CCPA 1950); In re Berg Electronics, Inc.,
163 USPQ 487 (TTAB 1969); In re Tekelec-Airtronic, 188 USPQ
694 (TTAB 1975); In re Lear Siegler, Inc., 190 USPQ 317
(TTAB 1976); and In re San Diego National League Baseball
Club, Inc., 224 USPQ 1067 (TTAB 1983). See also, Trademark
Manual of Examining Procedure, Section 807.14(b).
Ser No. 75/086,222
5
In this case, we find that the design shown in the
drawing, whether characterized as an arrowhead or a
stylized letter “V”, cannot be regarded as a separable
element creating a separate and distinct commercial
impression from the actual letter “V” in the term ULTIVA.
The design shown in the drawing encompasses a highly
stylized letter “V” and applicant has acknowledged as much
in its description of the mark, i.e., “a stylized letter
V.” With respect to applicant’s contention that purchasers
would be drawn to the “gradually changing color” of the
design, we note that applicant has not claimed color as a
feature of the mark. As shown in the drawing, and as set
forth in the description of the mark, applicant seeks to
register a design which forms a highly stylized letter “V”
which is an integral part of the actual letter “V” in the
term ULTIVA as presented on the specimens. Therefore, the
specimens of record do not support registration of the
design in the drawing.
Ser No. 75/086,222
6
Decision: The requirement for substitute specimens is
affirmed.
E. W. Hanak
P. T. Hairston
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial and
Appeal Board