J. Russell Phelps

Trademark Trial and Appeal Board

Apr 13, 2004

No. 76274519 (T.T.A.B. Apr. 13, 2004)

Mailed: April 13, 2004
Paper No. 14
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re J. Russell Phelps
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Serial No. 76274519
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John Burton, Esq. for J. Russell Phelps.
LaVerne T. Thompson, Trademark Examining Attorney, Law
Office 116 (Meryl Hershkowitz, Managing Attorney).
_______
Before Hohein, Chapman and Rogers, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
On June 21, 2001, J. Russell Phelps (an individual
U.S. citizen) filed an application to register the mark GRR
on the Principal Register for “jewelry” in International
Class 14. The application was based on applicant’s
assertion of a bona fide intention to use the mark in
commerce. The mark was published for opposition on
November 13, 2001; and a Notice of Allowance issued on
February 5, 2002. Applicant filed a Statement of Use on
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76274519
2
March 22, 2002, along with one specimen, alleging a date of
first use of June 8, 2001 and a date of first use in
commerce of March 15, 2002. The original specimen is a
photograph of a jeweler’s ring tray, with several empty
slots and several slots holding gold rings with GRR marked
thereon, as shown below:
With its August 12, 2002 response to the first Office
action, applicant submitted a second specimen in the form
of one actual gold ring with GRR thereon.1
The Examining Attorney refused registration under
Sections 1, 2 and 45, 15 U.S.C. §§1051, 1052 and 1127 of
the Trademark Act, on the ground that the proposed mark is
1 Applicant requested that the actual ring specimen be returned
to applicant if possible. (Applicant’s August 29, 2002 response
to first Office action, p. 2.) The USPTO discourages the filing
of bulky specimens as explained in Trademark Rule 2.56(d) and
TMEP §904.03 (3d ed. 2002). When bulky specimens are filed the
USPTO will generally create a facsimile that meets the
requirements and destroy the original bulky specimen. That was
not done in this case and the actual ring is currently in the
file.
Applicant is advised that the actual ring specimen forms part
of the record and must remain with the application file until the
case is finally decided including any appeals of the final Board
decision. Thereafter, when the Board case is terminated, the
Board will certainly attempt to have the actual ring returned to
applicant’s attorney. (The Board does not pay the cost of
insuring any mail that it sends out.)
Ser. No. 76274519
3
merely ornamental and does not function as a mark as used
on the goods.
When the refusal was made final, applicant appealed.
Briefs have been filed. Applicant did not request an oral
hearing.
Applicant contends that his mark GRR is inherently
distinctive, and is not mere ornamentation or background
design; that the mark is a combination of three distinctive
source indicating letters, and it “creates a separate
commercial impression that identifies the product and
distinguishes it from those sold by others” (brief, p. 2);
that the specimens show trademark use of applicant’s mark;
and the fact that third party rings are engraved with
initials has little relevance here because applicant’s mark
functions as a symbol of the origin of the goods.
It is the Examining Attorney’s position that consumers
would perceive the proposed designation as a decorative or
merely ornamental feature of the goods; that the size,
location, dominance and significance of the proposed mark
as applied to the goods must be considered in determining
whether it is merely ornamentation; that the conspicuous
use of initials on rings is a common and well-known form of
ornamentation for such goods; and that applicant’s argument
that the three letters GRR are a combination of three
Ser. No. 76274519
4
distinctive source indicating letters is unsupported by any
evidence.
In support of her contention that the designation GRR
does not indicate source, but rather is merely ornamental,
the Examining Attorney submitted (i) printouts of two pages
from a “Google” search for “rings with initials” (29,500
hits), and (ii) printouts from four web sites, specifically
www.raru.com; www.custom-monograms.com; www.commerce.la-
place-vendome.com; www.usastores.com, all to establish that
signet or monogram rings frequently carry the initials of a
person, school, business, fraternity, etc.; and that
consumers are aware of such use. The Examining Attorney
specifically contends that in this case, applicant’s only
use of his proposed mark is shown as initials prominently
engraved on the surface of a signet ring; and that
consumers would not perceive the initials as being the
source of the ring but rather as mere ornamentation in the
usual form of initials on the top plate of the ring.
The test when determining whether a mark is mere
ornamentation, or ornamentation that also functions as an
indicator of source, involves consideration of factors such
as the size, location, dominance and significance of the
alleged mark as applied to the goods. See In re Pro-Line
Ser. No. 76274519
5
Corp., 28 USPQ2d 1141 (TTAB 1993). See also, TMEP §1202.03
(3d ed. 2002).
We agree with the Examining Attorney’s conclusion that
applicant’s use of GRR as applied to jewelry (and
particularly rings) would be perceived by consumers as
merely an ornamental feature of the goods. The evidence
submitted by the Examining Attorney shows that ornamenting
rings with initials or monograms is common in the industry;
but the record is devoid of any evidence that consumers
would perceive these initials as indicating the source of
the rings, rather than being perceived as simply the
ornamental initials GRR. (For example, there is no
evidence of applicant’s use of GRR as a trademark for his
goods such as use in advertisements, or placed on the
inside of the ring band as a trademark, or on a box or
label for the goods.) See In re Pro-Line Corp., supra,
(BLACKER THE COLLEGE SWEETER THE KNOWLEDGE for t-shirts,
sweatshirts and shirts held mere ornamentation); In re
Dimitri’s Inc., 9 USPQ2d 1666 (TTAB 1988)(SUMO for t-shirts
and baseball-style hats held mere ornamentation); In re
Astro-Gods Inc., 223 USPQ 621 (TTAB 1984)(ASTRO GODS and
design for t-shirts held mere ornamentation); and In re
Original Red Plate Co., 223 USPQ 836 (TTAB 1984)(YOU ARE
SPECIAL TODAY for ceramic plates held mere ornamentation).
Ser. No. 76274519
6
Cf. In re Watkins Glen International, Inc., 227 USPQ 727
(TTAB 1985)(a checkered flag design for various items of
clothing and patches for application to clothing held to be
an ornamental design, but also an indication of origin of
the goods).
As a final matter, in his brief on appeal applicant
raised for the first time a request that if registration of
his mark on the Principal Register is denied, then
“Applicant seeks the Board’s approval to amend its [sic-
his] application for registration on the Supplemental
Register….” (Brief, p. 5.) The Examining Attorney objects
to such action as it was not timely raised by applicant and
the merits of such an amendment have not been addressed by
the Examining Attorney.
Applicant has never actually filed an amendment
requesting that the application be amended to seek
registration on the Supplemental Register, and never
requested it even as an alternative until his brief on the
case. Inasmuch as this option was not raised by applicant
until the time of his appeal brief, and hence this option
was not considered by the Examining Attorney, we agree with
the Examining Attorney’s contention that this request came
too late in the proceeding to remain an option for
applicant. Applicant’s request for leave to amend his
Ser. No. 76274519
7
application to the Supplemental Register is denied. See
Trademark Rule 2.142(d); and In re Petite Suites, Inc., 21
USPQ2d 1708 (Comm. 1991).
Decision: The refusal to register under Sections 1, 2
and 45 of the Trademark Act as mere ornamentation is
affirmed.