Accu-Sort Systems, Inc.

Trademark Trial and Appeal Board

May 3, 2001

No. 75415705 (T.T.A.B. May. 3, 2001)

Paper No. 15
5/3/01
John J. O’
Koenig, P.
Josette M.
112 (Janic
Before Qui
Judges.
Opinion by
Accu-
mark shown
for “autom
such scann
markings o
CIT
THIS DISPOSITION IS NOT
ABLE AS PRECEDENT OF THE
TTABDEB
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Accu-Sort Systems, Inc.
________
Serial No. 75/415,705
_______
Malley and C. Frederick Koenig III of Volpe and
C. for Accu-Sort Systems, Inc.
Beverly, Trademark Examining Attorney, Law Office
e O’Lear, Managing Attorney).
_______
nn, Chapman and Bucher, Administrative Trademark
Bucher, Administrative Trademark Judge:
Sort Systems, Inc. seeks registration of the alleged
below
atic identification scanners and apparatus utilizing
ers for reading labels and other identification
n goods and packaging of goods to facilitate
Serial No. 75/415,705
2
inventory control, tracking, sorting, and/or distribution of
such goods” in International Class 9.1
The Trademark Examining Attorney made final her refusal
of registration on the ground that the specimens of record,
consisting of an adhesive label affixed to the front panel of
the scanners, do not show use of the mark as it appears in the
drawing. The Trademark Examining Attorney focused on the
portion of the label having the letters DRX and the design
features on the right side of the letters.
The Trademark Examining Attorney essentially contends
that the matter presented in applicant’s drawing omits
essential and integral elements from the mark as it appears on
the specimens. According to the Trademark Examining Attorney,
because of the way the bar code design is so merged with the
rest of the composite, the applied-for matter is an incomplete
representation, or a “mutilation,” of the mark as it appears
1 Application Serial No. 75/415,705, filed on January 9, 1998,
with claimed first use and first use in commerce on October 1, 1991.
Applicant indicated by amendment that the lining shown in the
drawing is a feature of the mark and does not indicate color. The
original application papers also included a claim of acquired
distinctiveness based upon an allegation of “substantially
exclusive” use since October 1, 1991.
Serial No. 75/415,705
3
on the specimens. She argues that the stylized bar code
design is fully integrated into the larger composite shown on
the specimens, i.e., that the bar code does not create a
separate and distinct commercial impression as a mark apart
from the letters DRX and the balance of the design features as
seen above.
By contrast, applicant argues that “the BAR CODE design,
STAR design, and DRX word portions on the specimens create
separate and distinct commercial impressions apart from each
other.” (applicant’s brief, p. 3).
The critical question before the Board in this appeal is
whether or not the specimens submitted with this application
actually support registration of the applied-for mark.
Trademark Rule 2.51(a)(1) provides, in 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[.]” After careful consideration of the record
before us in this appeal, including the arguments of applicant
and the Trademark Examining Attorney, we hold that the
requirement for substitute specimens is justified.
Actually, there appears to be agreement between applicant
and the Trademark Examining Attorney with the long-standing
principle that an applicant may apply to register any element
of a composite mark displayed on the specimens of use provided
that element presents a separate and distinct commercial
Serial No. 75/415,705
4
impression as a mark. Specifically, this case turns on
whether or not the applied-for element functions as a mark
judged by the manner of its use on the specimens. The
component is registrable, if indeed it creates a separate and
distinct commercial impression which in and of itself is
indicative of the source of the applicant’s goods and
distinguishes such from those of others. See Institut
National des Appellations D'Origine v. Vintners International
Co., Inc., 958 F.2d 1574, 22 USPQ2d 1190 (Fed. Cir. 1992); In
re Raychem Corp., 12 USPQ2d 1399, 1400 (TTAB 1989); In re San
Diego National League Baseball Club, Inc., 224 USPQ 1067 (TTAB
1983); In re Lear-Seigler, Inc., 190 USPQ 317 (TTAB 1976); and
In re Berg Electronics, Inc., 163 USPQ 487, 487-88 (TTAB
1969). See also, Trademark Manual of Examining Procedure,
Sections 807.14(a) and 807.14(b), and cases cited therein.
As stated by the Court of Appeals for the Federal Circuit
in the case of Institut National, supra at 1197:
‘Mutilation’ is a concept long recognized as a
part of trademark registration case law. In re
Servel, Inc., 181 F.2d 192, 85 USPQ 257, 259-60
(CCPA 1950). The issue must be decided on the
facts of each case.
And later in the Institut National case, the Court cited
Professor McCarthy’s treatise2 saying that the question is
2 The current citation in McCarthy’s treatise on this subject is
3 J.T. McCarthy, McCarthy on Trademarks and Unfair Competition,
§19:59 (4th ed. 1999).
Serial No. 75/415,705
5
“what exactly is the ‘trademark’?”; and further quoted
Professor McCarthy as follows:
It all boils down to a judgment as to whether
that designation for which registration is
sought comprises a separate and distinct
“trademark” in and of itself.
Turning, therefore, to the merits of this appeal,
applicant argues that any such determination of the commercial
impression created by the trademark is most subjective; that
the bar code design herein is centrally located in the
composite shown on the specimens; that the bar code design is
distinct in nature; and that the bar code design creates a
separate commercial impression and is therefore registrable
based upon these specimens, and without the DRX wording or
star design.
Beginning with the language of Trademark Rule 2.51(a)(1),
we note that the drawing image is not a substantially exact
representation of the mark as used on the specimens, even if
one focuses on only that part of the image contained within
the four corners of the bar code.
If one views the bar code image in the drawing and bar
code image on the specimen as both strictly inanimate, two-
dimensional objects, there are several differences.
Serial No. 75/415,705
6
First, the image in the drawing shows a horizontal white
line on what might be deemed to be the trigger line. By
contrast, the specimens show a red line totally filling the
middle area where it intersects with the vertical bars.
Hence, the specimens suggest that behind that red horizontal
line, the vertical brown bars may not be broken in the middle
at all, as seen prominently on the drawing of record.
Second, as presented on applicant’s specimens of record,
the applied-for bar code design is unquestionably shown in
extremely close proximity to the large, italicized DRX
lettering. Both the DRX letters and the bar code design are
of the exact same height and both are presented in the same
shade of brown. The letters DRX, the bar code and the red
line and star design are all physically intertwined. These
spatial and physical relationships alone are critical to how
purchasers of this code scanning device would perceive the
mark when viewing this composite matter. Hence, we agree with
the Trademark Examining Attorney that the mark presented in
Serial No. 75/415,705
7
the drawing is an inseparable element of the entire mark as
shown on the specimens.
As further support for this result, we note that the
image on the drawing appears to be static and two-dimensional.
By contrast, the purchasers who see these specimens will view
the stylized bar code design in a dynamic fashion that
suggests a three-dimensional activity.
Specifically, this technology uses a light source to read
bar code symbologies, not unlike the ubiquitous scanning
technology in retail markets that identifies the Uniform
Product Code (UPC). Hence, consumers throughout the country,
and especially an individual purchasing these high technology
products from applicant, should recognize that a vertical
pattern of repeating wide and narrow bars mixed with wide and
narrow spaces represents a machine-readable bar code.
Although based upon our experiences with UPC symbols, standard
bar codes have continuous, unbroken vertical bars from top to
bottom, the applied-for matter is unmistakably drawn from such
bar code symbology.
The overall impression created by the intertwined
elements of the composite mark, as shown on the specimens, is
anything but static. If the crossing point of the two strokes
of the letter “X” within the DRX lettering were seen as a
light emitting device, there is a bright red line moving
Serial No. 75/415,705
8
toward the right edge of the adhesive label. The red beam of
light cuts directly across the very center of the bar code.
Quite close to the edge of the label, the thin red line
terminates in the center of a bright red, starburst design.3
We find that the instant case is not unlike In re Boyd
Coffee Co., 25 USPQ2d 2052 (TTAB 1993). There, the Examining
Attorney refused registration on the ground that the applied
for silhouette of a cup and saucer sitting on a table top:
was a mutilation of the composite mark in actual use, as
illustrated by the specimens:
In the Boyd Coffee case, the Trademark Examining Attorney
contended that the specimens showed a composite mark featuring
3 This is the design referred to herein as applicant’s “star”
Serial No. 75/415,705
9
the cup and saucer design as well as the sunburst design. In
affirming the refusal of registration in that case, this Board
agreed with the Trademark Examining Attorney that the cup and
saucer design did not present a separate commercial impression,
noting, inter alia, that the sunburst design seemed to be
emanating from the cup. supra at 2053. In fact, the Trademark
Examining Attorney in the Boyd Coffee case had actually named the
overall impression imparted by the specimens as “sunshine-in-a-
cup.” Similarly, we find in the instant case that the specimens
suggest “scanning a bar code.”
And while applicant argues as a point in favor of
registration that its stylized bar code design is “centrally
located” within the composite, such was also obviously the
case with the specimens in the reported decision involving the
image of a coffee cup and saucer.
However, each of these decisions turns on the facts as
presented on these records, and in both cases, the elements
the respective applicants want to extract are in each case
inextricably bound together with other design features within
the composite, as shown on the respective specimens of record.
While three separate elements comprise the composite mark in
the instant case, consumers who encounter this composite
matter for the first time will form a dynamic commercial
design.
Serial No. 75/415,705
10
impression. The lettering, the light beam and the bar code
(especially in view of the logical mental connection between
the bar code design and the activity of bar code
scanners/decoders) are proximate, touching and interacting.
Also helpful to our analysis is the case of In re
Chemical Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828 (Fed.
Cir. 1988). In this case, our principal reviewing court
concurred with the Board that the mark as applied for (the
medicine dropper and droplet alone) could not be registered
based upon the composite image on the specimens, as shown
below:
As we saw in the composite image in the Boyd Coffee case,
this is another example where trade dress involves dynamic,
three-dimensional imagery. The dropper of Chemical Dynamics
is in the foreground where it intersects the handle of the
watering can, and the droplet is logically coming out of the
dropper and falling into the watering can below. Hence, in
Chemical Dynamics, it was determined that in the context of
the design, the applied-for elements were inextricably bound
Serial No. 75/415,705
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up in the interrelated elements comprising the entire
composite, and that applicant’s attempt to separate out the
dropper and droplet portions resulted in an impermissible
mutilation of a single, unified design.
In consequence thereof, a properly verified substitute
specimen, in which the stylized bar code design projects a
separate and distinctive commercial impression, would be
necessary in order for applicant to register such design alone
as a mark for its goods. Given applicant’s failure to comply
with this requirement, we affirm the refusal of the Trademark
Examining Attorney to register this matter.
Decision: The refusal to register is affirmed.