R. Torre & Co.

Trademark Trial and Appeal Board

Dec 16, 2004

No. 76383794 (T.T.A.B. Dec. 16, 2004)

12/16/2004
THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE T.T.A.B.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
Trademark Trial and Appeal Board
_____________
In re R. Torre & Company
_____________
Serial No. 76383794
_____________
David S. D’Ascenzo of Kolisch Hartwell, P.C. for R. Torre &
Company.
Mark T. Mullen, Trademark Examining Attorney, Law Office
111 (Craig Taylor, Managing Attorney).
_____________
Before Hanak, Chapman and Drost, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
R. Torre & Company (applicant) seeks to register the
design shown below for “fruit puree base for use in the
preparation of fruit drinks, smoothies and the like.” The
application was filed on March 15, 2002 with a claimed
first use date of April 7, 2000. In its application,
applicant stated as follows: “The drawing is lined for the
colors red and yellow. The drawing consists of red and
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2
yellow regions, with the yellow region including a swirl
design.”
In the final Office Action dated August 18, 2003, the
Examining Attorney -- citing Trademark Rule 2.72(a) --
refused registration “because the drawing displays a mark
that differs from the display of the mark on the specimen.”
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant did not request an oral
hearing.
At the outset, this Board wishes to clarify the issue
on appeal. As just noted, in the final Office Action the
Examining Attorney refused registration “because the
drawing displays a mark that differs from the display of
the mark on the specimen.” At page 4 of its brief,
applicant states that the Examining Attorney’s refusal is
based on “the ground that the submitted specimen does not
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3
show the mark for which registration is sought.” Moreover,
at page 7 of its brief, applicant states that the Examining
Attorney refused registration “on the ground that
applicant’s drawing displays a mark that differs from the
mark shown in the [specimens].” At page 3 of his brief,
the Examining Attorney states as follows: “The sole issue
on appeal is whether applicant’s mark … as it appears on
the drawing page agrees with the mark as it appears on the
specimen of record.”
Based on the above statements by both the applicant
and the Examining Attorney, it would seem clear that the
only issue before this Board is whether the mark as it
appears on the drawing conforms to the mark as it appears
on the specimen of use. However, both the Examining
Attorney and the applicant have construed the sole issue to
encompass a related, but still distinct, second issue. At
page 3 of his brief, the Examining Attorney states as
follows: “Specifically, the issue is whether applicant’s
proposed mark, a swirl design, makes a separate and
distinct commercial impression apart from the many
additional wording and design elements that appear on the
specimen of record.” Likewise, at page 7 of its brief,
applicant states as follows: “The issue to be decided on
this appeal is whether applicant’s mark, as presented on
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4
applicant’s originally and subsequently presented
specimens, provides a separate and distinct commercial
impression, apart from the overlying word marks and design
elements.”
We find that the only issue before this Board is
whether applicant’s mark as shown in its drawing conforms
to the mark shown on applicant’s specimens. Because we
find that it does not, we affirm the refusal to register.
Assuming purely for the sake of argument that the issue
before this Board was whether applicant’s mark, as it
appears on applicant’s specimens, presents a separate and
distinct commercial impression, we would likewise affirm
the refusal to register because as used on the specimens,
applicant’s mark does not present a separate and distinct
commercial impression.
Applicant’s original specimen submitted with its
application is a picture of a cup of applicant’s fruit
puree base. Unfortunately, we are unable to meaningfully
show this specimen because applicant’s mark -– or to be
precise, a portion of applicant’s mark -– simply is not
visible in any reproduction. Suffice it to say, that on
applicant’s original specimen only one half of applicant’s
mark, as shown in applicant’s drawing, is visible. The
other half of applicant’s mark is totally obliterated by
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wording and other design features. To be more specific,
half of applicant’s mark is obliterated by applicant’s word
trademark FRUSIA; the generic wording “whole fruit smoothie
base strawberry”; and the depiction of strawberries.
Applicant’s other specimens suffer from the same defect in
that they show only one half of applicant’s mark as it
appears in applicant’s drawing. In applicant’s additional
specimens, its word trademark FRUSIA blocks a portion of
applicant’s applied for swirl design mark. The only
difference between applicant’s original specimen and
applicant’s additional specimens is that the overlying
generic wording and overlying depiction of fruits vary.
Thus, in one of applicant’s additional specimens the
generic words read “whole fruit smoothie base raspberry”
(emphasis added) and there is a depiction (obviously) of
raspberries as opposed to strawberries.
It must be remembered that “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 re Bose Corp.,
546 F.2d 893, 192 USPQ 213, 216 (CCPA 1976). Thus, if the
mark as it appears on the specimen(s) does not agree with
the mark as shown on the drawing, then the specimen simply
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does not show “trademark use” of the mark as sought to be
registered, that is, as depicted on the drawing page.
In this case, it is blatantly clear that the mark as
shown on the drawing page (the mark sought to be
registered) is not being used on the specimen(s). As
previously noted, only half of the mark as shown on the
drawing page is visible on the specimen(s). Applicant can
simply not register a design mark when the specimen of use
shows only half of the mark as it appears in the drawing.
By way of analogy, if applicant depicted on its drawing
page an eight-letter word mark, it certainly could not
register this eight-letter word mark if only four of the
eight letters were visible on the specimen of use. To hold
otherwise would mean that applicant could register the
hypothetical mark BLUEBIRD if it submitted a specimen of
use that showed only the word BLUE, or only the word BIRD.
As noted earlier in this opinion, we simply cannot
reproduce applicant’s specimen such that the half of
applicant’s mark as shown on the drawing page is visible.
However, there is no dispute that on applicant’s specimens,
applicant’s word trademark FRUSIA, descriptive wording and
other designs (various fruits) are totally superimposed on
half of applicant’s mark such that said half is just not
visible. In this regard, we note that applicant makes the
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following statement at page 6 of its reply brief:
“Applicant does not dispute, and has never disputed, that
there are overlying text and graphic elements over portions
of its mark when the mark is used in commerce [i.e. on the
specimens].” However, applicant attempts to justify this
obliteration of half of its mark on its specimens by
stating that “anytime a mark is a background design mark,
it will inherently have overlying elements when used in
commerce.” (Applicant’s reply brief page 6).
We disagree. Applicant has not cited a single case
where a design mark as shown on the drawing was permitted
to be registered when said design mark on the specimen was
substantially obliterated by wording and/or other designs.
To be clear, applicant has cited the case of In re
Swift Co., 223 F.2d 950, 106 USPQ 286 (CCPA 1955) where
applicant’s design mark, as depicted in the drawing, was
permitted to be registered despite the fact that as shown
in the actual label (specimen of use) there was substantial
wording and other designs between the two elements of
applicant’s design as shown on the drawing. In that case,
applicant’s mark consisted of two dark horizontal bands.
The bottom horizontal band was approximately three times as
thick as the top horizontal band. Between the two dark
horizontal bands, there was a large “void” space that was
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approximately twice as “thick” as the two separate dark
bands combined. As depicted in the specimen of use, there
was in this “void” space the word trademark SWIFT’S
repeated twice along with other wording and smaller
designs.
We find that the Swift case does not dictate a
different result here. In Swift, all of applicant’s design
mark as shown in applicant’s drawing was fully visible in
applicant’s specimen of use. In other words, neither the
trademark SWIFT’S nor the other wording and smaller designs
in any way obliterated a single portion of applicant’s
design as shown in applicant’s drawing. This is in stark
contrast to the present case where applicant’s word
trademark FRUSIA, generic terminology and fruit designs
obliterate approximately half of applicant’s design mark as
shown in applicant’s drawing.
It is for this reason that we sustain the refusal to
register. Put quite simply, applicant’s design mark as it
appears on the drawing page does not agree with “the mark”
as it appears on applicant’s specimen(s). To the extent
that the issue in this case may be construed as to whether
or not applicant’s design makes a “separate and distinct
commercial impression” apart from the wording and other
designs on applicant’s label, we find that it simply cannot
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9
and does not. Even assuming purely for the sake of
argument that half of applicant’s mark as shown on the
specimens makes a “separate and distinct commercial
impression,” this does not mean that applicant’s entire
mark likewise makes a “separate and distinct commercial
impression.” Because only half of applicant’s mark is
visible on the specimen, then applicant’s mark (as shown on
the drawing page) cannot make such a separate and distinct
commercial impression.
Decision: The refusal to register is affirmed.