Big O Tires, Inc.

Trademark Trial and Appeal Board

Sep 27, 2001

No. 75679587 (T.T.A.B. Sep. 27, 2001)

9/27/01

Paper No. 13
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Big O Tires, Inc.
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Serial No. 75/679,587
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Marsha G. Gentner and Leesa N. Weiss of Jacobson, Price,
Holman & Stern for Big O Tires, Inc.

Ann Kathleen Linnehan, Trademark Examining Attorney, Law
Office 114 (Margaret Le, Managing Attorney).
_______

Before Hairston, Holtzman and Rogers, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

An application has been filed by Big O Tires, Inc. to
register the mark shown below,

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/679,587
2
for “tires for land vehicles” in class 12; “retail store
services featuring automotive tires, parts, and
accessories” in class 35; and “vehicle maintenance and
repair services” in class 37.1 The application contains the
statement that “The mark consists of a representation of
the legendary fictional character known as ‘Big Foot’ or
‘Sasquatch.’”
The Trademark Examining Attorney has refused
registration on the ground that the drawing filed with the
application is not a substantially exact representation of
applicant’s mark.
When the Examining Attorney made the refusal final,
applicant appealed. Both applicant and the Examining
Attorney filed briefs, but an oral hearing was not
requested.
In connection with its class 12 goods, applicant
submitted as a specimen a card which is affixed to
applicant’s tires in the tire dealer’s showroom. The lower
portion of the specimen is reproduced below.

1 Serial No. 75/679,587, filed April 12, 1999, alleging a date of
first use and date of first use in commerce of October 1997.
Ser No. 75/679,587
3

In connection with the services in classes 35 and 37,
applicant submitted as a specimen a copy of an
advertisement, the lower portion of which is reproduced
below.

Ser No. 75/679,587
4
The Examining Attorney maintains that the drawing is
not a substantially exact representation of the mark as
used on the specimens for either class 12 or classes 35 and
37. In particular, the Examining Attorney argues that:
The applicant indicates that the mark sought to
be registered is the legendary figure of the deep
woods known as “Big Foot” or “Sasquatch.”
(footnote omitted) The drawing displays
“Sasquatch” with a distinct facial expression
and four visible fingers without the picture of
of a tire. However, this differs from the
display of the mark on the specimen for both
Classes 35 and 37 where a different facial
expression exists on “Sasquatch,” the fourth
finger is hardly visible, the gorilla’s
“beard” is more rounded in shape, and, most
importantly, the picture of a tire is an
integral part of the mark. The specimen for
Class 12 features “Sasquatch” in a different
pose, with a different facial expression, with
a tire, and with a construction hat on his head.
(emphasis in original) (Brief, p. 2).

Applicant, on the other hand, argues that what it
seeks to register is a representation of a legendary
fictional character; that “some artistic license” is
required in order for applicant to comply with the Office
drawing requirements; and that “the specimens are a
‘substantially exact representation’ of the mark depicted
in the drawing filed with the application.” Further,
applicant maintains that any differences in applicant’s
mark in the drawing and the mark depicted in the specimens
are not significant, and the fact that a tire is absent
Ser No. 75/679,587
5
from the mark on the drawing is of no consequence since
applicant does not seek to register a mark which includes a
tire, and a tire would, in any event, be descriptive of
applicant’s goods and services. Finally, applicant
requests that, if the Board finds that the specimen for
classes 35 and 37 is acceptable, but that the class 12
specimen is not acceptable, the application be remanded to
the Examining Attorney to allow applicant to delete class
12 from its application.
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[.]” Moreover, 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. Vintners International Co.,
Inc., 954 F.2d 1574, 22 USPQ2d 1190 (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
Ser No. 75/679,587
6
1969); In re Tekelec-Airtronic, 188 USPQ 694 (TTAB 1975);
In re Lear Seigler, 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, sections 807.14(a) and 807.14(b) and cases cited
therein.
In this case, we agree with the Examining Attorney
that the mark in the drawing is not a substantially exact
representation of the mark in actual use, as illustrated by
the specimens of record.
The mark in the drawing consists simply of the Big
Foot character’s face and the fingers of what appears to be
his right hand, posed in such a manner as to suggest the
creature is peering around an object or corner.
On the class 12 specimen, however, in addition to the
face of Big Foot, part of the upper body and the left arm
and hand of the character are shown, while the right hand
is obscured. The character is also shown wearing a
construction hat and leaning over a tire. Contrary to
applicant’s contention, these differences are not
insignificant. Rather, they result in an image of Big Foot
which is dissimilar to the image of Big Foot shown on the
drawing. Stated differently, the mark in the drawing is a
Ser No. 75/679,587
7
different representation of the mark as used on the class
12 specimen.
Turning then to the specimens for classes 35 and 37,
while the representation of the Big Foot character himself
on this specimen is very similar to the representation of
Big Foot on the drawing, i.e., the face and the fingers on
one hand are shown and the pose is similar, there is also a
tire design on the specimen. In fact, the Big Foot
character appears to be peering from behind the tire. The
Big Foot character and the tire design are so merged
together in presentation that the character cannot be
regarded as a separable element creating a separate and
distinct commercial impression. In other words, the mark
in the drawing is an incomplete representation of the mark
as used on the specimen for classes 35 and 37.
We are not persuaded by applicant’s arguments in
support of registration in this case. We recognize that
Big Foot is a fictional character and that any artistic
rendering of him will require a certain degree of creative
license. The fact remains, however, that once a rendering
is completed, the drawing must be the same or substantially
the same as the artistic rendering of the Big Foot
character illustrated by the specimens.
Ser No. 75/679,587
8
Also, with respect to the specimens in classes 35 and
37, the question here is not whether the tire design is
descriptive of applicant’s services such that had it been
included on the drawing a disclaimer thereof would have
been required. Rather, the question is whether the tire
design is so merged with the representation of Big Foot
that they form a single commercial impression. For the
reasons stated above, we find that they do.
In view of our decision herein, applicant’s
alternative request for remand of this case to the
Examining Attorney is denied as moot.2
Decision: The refusal to register on the ground that
the drawing of the mark is not a substantially exact
representation of the mark used on applicant’s goods and
services, as illustrated by the specimens of record, is
affirmed.

2 Even had we ruled in applicant’s favor in regard to classes 35
and 37, the request to remand would have been denied as
inapposite, for such a ruling would merely have resulted in
refusal of registration for class 12 alone and there would have
been no need to delete that class.