Dritex, Inc.

Trademark Trial and Appeal Board

Mar 10, 2003

No. 76120514 (T.T.A.B. Mar. 10, 2003)

Mailed:
March 10, 2003
Paper No. 9
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Dritex, Inc.
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Serial No. 76/120,514
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Keith A. Vogt of Niro, Scavone, Haller & Niro, Ltd. for
Dritex, Inc.
Christopher L. Buongiorno, Trademark Examining Attorney,
Law Office 109 (Ronald R. Sussman, Managing Attorney).
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Before Seeherman, Quinn and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the mark DRITEX (in typed form) for “installation of
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76/120,514
2
drywall and painting of residential homes and commercial
buildings.”1
The Trademark Examining Attorney has issued a final
refusal of registration on the ground that, as it appears
on the specimens of record, the matter applicant seeks to
register would not be perceived as a service mark but
merely as applicant’s trade name. Trademark Act Sections
1, 2, 3 and 45.
Applicant has appealed the final refusal. Applicant
and the Trademark Examining Attorney filed main appeal
briefs, but applicant did not file a reply brief and has
not requested an oral hearing.
We reverse the refusal to register.
A designation used merely as a trade name cannot be
registered under the provisions of the Trademark Act. See
In re Diamond Hill Farms, 32 USPQ2d 1383 (TTAB 1994).
However, a designation may function both as a trade name
and as a mark, and if it functions as a mark it may be
registered, even if it also functions as a trade name. See
In re Walker Process Equipment Inc., 233 F.2d 329, 110 USPQ
1 Serial No. 76/120,514, filed August 31, 2000. The application
is based on use in commerce under Trademark Act Section 1(a), 15
U.S.C. §1051(a); April 30, 1981 is alleged as the date of first
use of the mark anywhere, and August 31, 1992 is alleged as the
date of first use of the mark in commerce.
Ser. No. 76/120,514
3
41 (CCPA 1956). The question of whether a designation
functions as a mark as well as a trade name is one of fact,
and is determined from the manner in which the designation
is used on the specimens of record and its probable impact
on purchasers and potential purchasers. In re Diamond Hill
Farms, supra.
Applicant’s specimens consist of copies of proposals
to install drywall and provide painting services, such as
the example reproduced on the next page:
Ser. No. 76/120,514
4
After careful review of these specimens and
consideration of the arguments presented by applicant and
by the Trademark Examining Attorney, we conclude that the
specimens suffice as evidence that applicant uses DRITEX as
Ser. No. 76/120,514
5
a service mark as well as a trade name. In the heading of
the document, the wording DRITEX, INC. appears in
substantially larger type than the address and phone
number, and it is further set apart by being presented
flush left rather than being indented like the address and
telephone number. DRITEX, INC. prominently stands out from
the presentation of the merely informational matter in the
address and telephone number lines of text, and purchasers
accordingly are likely to view it as serving more than the
mere informational purpose of identifying applicant’s name.2
It is true that DRITEX appears in conjunction with,
and in the same size and style as, the corporate designator
INC.3 Although that fact weighs in favor of a finding that
DRITEX is merely a trade name, it is not dispositive.
Likewise, it is not dispositive that no logo or other
design element appears in conjunction with DRITEX. In
2 The language appearing toward the end of the document, i.e.,
“Respectfully submitted by Dritex, Inc.,” clearly is merely trade
name usage. However, the presence of that wording does not
detract from the service mark usage of DRITEX in the document’s
heading, and it is that usage upon which we base our reversal of
the refusal to register in this case.
3 We are not persuaded by applicant’s contention that the word
DRITEX would be perceived as being separate from the word INC.
due to the presence of an extra space between the comma after
DRITEX and INC. Any such “extra” space is not readily apparent;
there appears to be one space, as would be proper after the
comma. If such extra space exists and would be perceived, it
likely would be viewed merely as a typographical error rather
than as an attempt to separate DRITEX from INC.
Ser. No. 76/120,514
6
short, neither the presence of the INC. nor the absence of
a design element, nor both of those facts together,
mandates a finding that applicant is not using DRITEX as a
service mark as well as a trade name.
The determination of whether DRITEX would be viewed as
a service mark as well as a trade name is, necessarily,
somewhat subjective. Our impression, and the impression we
believe purchasers will have upon viewing the specimens, is
that the designation DRITEX appears thereon in a manner
which is sufficiently prominent and distinguishable from
the other, merely informational, matter on the specimens
that it would be viewed as a source indicator as well as
applicant’s trade name.
Decision: The refusal to register is reversed.