Edward J.Hennessey

Trademark Trial and Appeal Board

Jul 14, 2006

No. 76500430 (T.T.A.B. Jul. 14, 2006)

Mailed:
July 14, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Edward J. Hennessey
________

Serial No. 76500430
_______

Robert M. Skolnik, Esq. for Edward J. Hennessey.

Tricia Sonneborn, Trademark Examining Attorney, Law Office
11o (Chris A. F. Pedersen, Managing Attorney).
_______

Before Seeherman, Walters and Walsh, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Edward J. Hennessey has appealed from the final
refusal of the Trademark Examining Attorney to register
SURF WAX as a trademark for candles.1 On March 17, 2003,
applicant filed his application pursuant to Section 1(b) of
the Trademark Act, based on an asserted intention to use
the mark in commerce. The application was subsequently

1 Application Serial No. 76500430, filed March 17, 2003.

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76500430
2
approved by the Examining Attorney, and was published for
opposition. Thereafter, a Notice of Allowance issued, and
applicant filed a Statement of Use. When the Examining
Attorney examined the Statement of Use, she determined that
the specimen submitted therewith did not support the mark
shown in the drawing. She advised applicant that he could
not cure this problem by amending the drawing to ORIGINAL
SURF WAX CANDLE, as this would be a material alteration of
the mark shown in the drawing, and required that he submit
a substitute specimen showing the mark as it appeared in
the drawing. When applicant failed to do this, she issued
a final Office action, and it is from this action that
applicant has appealed.
The appeal has been fully briefed. Applicant
originally requested an oral hearing, but later withdrew
that request.
We note that there has been substantial argument about
whether an amended drawing would be acceptable, or whether
it would constitute a material alteration of the mark shown
in the original drawing. We point out, as the Examining
Attorney has done, that applicant never submitted an
amended drawing, and therefore the issue of whether an
amended drawing would have been acceptable is not before
us. The Examining Attorney’s comments regarding whether
Ser No. 76500430
3
the drawing could be amended were simply advisory: in the
Office action requiring a specimen that would show use of
the mark depicted in the drawing, the Examining Attorney
simply advised applicant that he could not cure the
deficiency in the specimen by amending the drawing.2
Applicant also apparently acknowledges this, because in his
reply brief he states that “if the appellant’s position is
sustained, the drawing is adequate.” p. 3.
Trademark Rule 2.51(b) requires, in pertinent part, that
in an application under section 1(b) of the Act, the drawing
of the mark must be a substantially exact representation of
the mark as intended to be used on or in connection with the
goods and/or services specified in the application, and once
a statement of use under §2.88 has been filed, the drawing
of the mark must be a substantially exact representation of
the mark as used on or in connection with the goods and/or
services. Thus, the question before us is whether the mark
shown in the drawing, SURF WAX in standard character form,
is a substantially exact representation of the mark as used.
To determine this, we must look at applicant’s specimen,
reproduced below, since this is the only example he has
provided of his use of the mark.

2 The Examining Attorney also advised applicant that he could
not withdraw the Statement of Use. Rule 2.88(g).
Ser No. 76500430
4

The words SURF WAX appear as part of the central
design element, under the picture which is bordered on the
top by the name TED SHRED’S. SURF WAX borders this picture
on the bottom, and is included in the phrase ORIGINAL SURF
WAX CANDLE. It is the appearance of SURF WAX in the phrase
that has raised the objection by the Examining Attorney.
It is her position that consumers would not perceive SURF
WAX as a separate mark, but would see it only as part of
the phrase ORIGINAL SURF WAX CANDLE. Because, she asserts,
applicant is attempting to separate out and register words
that are an integral part of an entire phrase, the mark
shown in the drawing, SURF WAX, is a mutilation of the
actual mark, ORIGINAL SURF WAX CANDLE, and may not be
registered.
In response, applicant relies on Section 807.14 of the
Trademark Manual of Examining Procedure, which states that
the drawing of the mark must be a substantially exact
representation of the mark as actually used as shown by the
specimen filed with the statement of use. Applicant does
Ser No. 76500430
5
not discuss why his drawing is a substantially exact
representation, but goes on to quote extensively from
Section 807.14(a) of the Trademark Manual, which concerns
“material alteration” of a mark. The issue of material
alteration, however, deals with whether an amended drawing
would change the character of the mark shown in the
original drawing. Although there is some relationship
between the concepts of whether a mark shown in the drawing
is a substantially exact representation of the mark shown
in the specimen, and whether an amended drawing would be a
material alteration of the mark shown in the original
drawing, we reiterate that the issue of whether, if
applicant had submitted an amended drawing, it would have
been a material alteration of the mark, is not before us.
Applicant DID NOT submit an amended drawing. The only
issue we must consider is whether applicant’s drawing for
SURF WAX is a substantially exact representation of the
mark shown on the specimen.3
The cases which have dealt with the question of
whether a mark shown in the drawing is a substantially
exact representation of the mark shown in the specimen have

3 Similarly, the question of whether SURF WAX is merely
descriptive of the scent of a candle that smells like surf wax is
not before us.

Ser No. 76500430
6
generally been concerned with whether the drawing is a
mutilation of that mark. The question of mutilation, in
turn, depends on whether the mark shown in the specimen can
be considered a composite mark in which the element sought
to be registered creates a commercial impression separate
and distinct from the other elements of the mark. See In
re San Diego National League Baseball Club, Inc., 224 USPQ
1067 (TTAB 1983), and cases cited therein.
Viewing the mark as it appears on the specimen, we
agree with the Examining Attorney that SURF WAX is depicted
in the same size, color and type font as ORIGINAL and
CANDLE, and even follows the same curve along the bottom of
the picture. The commercial impression, therefore, is that
of a unitary phrase, ORIGINAL SURF WAX CANDLE. Consumers
would not view SURF WAX, as shown in this phrase, as a
separate element. See In re Miller Sports Inc., 51 USPQ2d
1059 (TTAB 1999)(specimen, shown below, depicting figure of
skater forming part of letter “M” in MILLER
( does not support mark
shown in drawing); In re San Diego National League Baseball
Club, Inc., supra, (specimen showing SAN DIEGO PADRES
REPORT, with SAN DIEGO, PADRES, and REPORT in three
Ser No. 76500430
7
different sizes and styles of lettering, with SAN DIEGO and
PADRES more similar in size than PADRES and REPORT, and SAN
DIEGO and PADRES grouped together on one line and REPORT on
a separate line, does not support PADRES REPORT shown in
drawing); and In re New Yorker Cheese Company, 130 USPQ 120
(TTAB 1961) (specimens showing words MARKA, DOBRA and
SZYNKA in column superimposed on outline of Poland
unacceptable to show use of applied-for mark DOBRA).
Applicant has argued that the words ORIGINAL and
CANDLE in its specimen have no substantial or material
effect on the mark. This argument was made in the context
of applicant’s position that the addition of these words
would not be a material change to the mark SURF WAX. As we
have already pointed out, the issue of whether an amendment
to the drawing to depict the mark as ORIGINAL SURF WAX
CANDLE is not before us because applicant did not submit an
amended drawing. However, we have considered these
arguments to the extent that they have an impact on the
question of whether SURF WAX creates a separate commercial
impression.
We agree that even though the word CANDLE is shown in
the same type style, size and color as the other words,
because it is a generic term it does not have any trademark
significance whatsoever. Further, because generic terms do
Ser No. 76500430
8
not have to be included in trademarks (and, indeed, in many
cases applicants have been required to disclaim generic
matter), the fact that this word is not in the drawing does
not affect the registrability of the applied-for mark. See
In re Raychem Corp., 12 USPQ2d 1399 (TTAB 1989). However,
the word ORIGINAL, as used in the mark, does have
significance, such that it forms part of a unitary
expression with SURF WAX. Applicant has asserted, without
any evidence in support, that “original” is “so widely
used.” Brief, p. 9. Applicant merely states that “a
recent search of the Trademark Office database records
revealed approximately 6000 pending and registered marks
having ‘original’ as part of the mark,” Id., but never made
the results of such a search of record.4 In any event, even
merely descriptive words that are used in a unitary phrase
cannot be omitted from the drawing, such that only a
portion of the phrase would be registered. See In re Jane
P. Semans, 193 USPQ 727 (TTAB 1976), in which the Board
rejected the contention of the applicant therein that the
word "Krazy" was registrable apart from the composite

4 As an informational point, to be considered as evidence copies
of the third-party registrations and applications (and not merely
a search summary) would have had to be made of record during the
prosecution of the application. Moreover, third-party
applications have evidentiary value only to show that they were
filed.

Ser No. 76500430
9
phrase "Krazy Mixed-Up," because of the descriptive nature
of the term "Mixed-Up" for food seasonings.
In summary, we find that SURF WAX, as used as part of
the phrase ORIGINAL SURF WAX CANDLE in the specimen, does
not create a separate commercial impression, and therefore
applicant has not submitted a specimen showing use of the
mark SURF WAX which is depicted in the drawing.
Decision: The refusal of registration is affirmed.