Hickory Hill Lakes, Inc.

Trademark Trial and Appeal Board

Dec 19, 2000

No. 75027373 (T.T.A.B. Dec. 19, 2000)

12/19/00
Paper No. 19
EJS
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Hickory Hill Lakes, Inc.
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Serial No. 75/027,373
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Gilbert N. Henderson and Leslie K. Batté of Biebel & French
for Hickory Hill Lakes, Inc.
Steven Foster, Trademark Examining Attorney, Law Office 107
(Thomas Lamone, Managing Attorney)
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Before Simms, Seeherman and Rogers, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Hickory Hill Lakes, Inc. has appealed from the final
refusal of the Trademark Examining Attorney to register
HICKORY HILL LAKES U.S.A., depicted in typed drawing form,
as a mark for “entertainment services, namely conducting
band competitions.”1 “U.S.A.” has been disclaimed. The
1 Application Serial No. 75/027,373, filed December 4, 1995.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/027,373
2
refusal is based on the Examining Attorney’s requirement
for acceptable specimens.
The application was filed based on an intention to use
the mark; it was published in the Official Gazette and a
Notice of Allowance issued. Applicant subsequently filed a
Statement of Use, and the Examining Attorney refused to
accept the specimens because the services advertised in the
specimens had not yet occurred. Applicant thereupon
submitted substitute specimens which the Examining Attorney
also found unacceptable because they did not show use of
the mark shown in the drawing. It is from the requirement
for acceptable specimens that this appeal has been taken.
Briefs have been filed by applicant and the Examining
Attorney; an oral hearing was not requested.
It should be noted that, although during examination
the Examining Attorney objected to both the original and
the substitute specimens and argued the unacceptability of
both sets of specimens in his brief, applicant’s brief has
discussed only the acceptability of its substitute
specimens. Accordingly, we will focus our comments on
these specimens alone.
It is the Examining Attorney’s position that the mark
shown in the substitute specimens does not support the mark
shown in the drawing because, in the specimens, the term
Ser No. 75/027,373
3
USA is on a different line from the words HICKORY HILL
LAKES. The Examining Attorney asserts that the way in
which the words are depicted in the specimens creates a
different commercial impression from the mark shown in the
drawing. The Examining Attorney also points out that the
drawing shows U.S.A. with periods and the specimens show
USA without periods, although he concedes that this portion
of the drawing could be amended.
First, we find that the fact that U.S.A. is depicted
with periods in the drawing and without them in the
specimens is an immaterial difference. See In re Finlay
Fine Jewelry Corp., 41 USPQ2d 1152 (TTAB 1996) (NEW YORK
JEWELRY OUTLET not a material alteration of NY JEWELRY
OUTLET). Trademark Rule 2.51(b)(2) provides that, once a
statement of use has been filed, the drawing of a service
mark shall be a substantially exact representation of the
mark as used in the sale or advertising of the services.
The term “USA”, as used in applicant’s specimens, is a
substantially exact representation of “U.S.A.” as depicted
in the drawing.
The more important question is whether applicant’s
specimens show use of the mark HICKORY HILL LAKES U.S.A.
depicted in the typed drawing. To determine this, we must
turn to the specimens themselves. We reproduce below, in
Ser No. 75/027,373
4
reduced size, the relevant portion of the specimen
brochure.
Although the phrase HICKORY HILL LAKES USA does not
appear together on one line anywhere in the brochure, we do
not find this to be a fatal flaw. As applicant points out,
Ser No. 75/027,373
5
the phrase obviously continues on more than one line
because it cannot fit on a single line. Thus, in the
Friday schedule it is shown as
Hickory Hill Lakes
USA Talent Round Up
while in the Sunday schedule it is shown as
Hickory Hill Lakes
USA Talent Round
Up Winner
and in the text, under the heading
Hickory Hill Lakes
USA Talent Round Up
it is referred to as
Country Concert ’96 will host Hickory
Hill Lakes USA Talent Round Up. The
round up will consist of country music
talent winners from….
Because of the different ways the phrase is broken in
the brochure, consumers are not likely to regard HICKORY
HILL LAKES, as used in the phrase HICKORY HILL LAKES USA
TALENT ROUND UP, as the trademark, and to view USA as
merely modifying the phrase TALENT ROUND UP.2 Rather, they
will recognize that the phrase is broken as it is to
accommodate such items as the star designs, or the “New for
‘96” flash design. No one would suggest that because “Up
2 In saying this, we are aware that HICKORY HILL LAKES is
depicted in other parts of the brochure as a separate trademark.
Ser No. 75/027,373
6
Winner” appears on a separate line from “USA Talent Round,”
consumers will view “Up Winner” as distinct from the
preceding words; for similar reasons, we think that USA, as
used in the specimens, does not project a separate
commercial impression from HICKORY HILL LAKES.
Moreover, it must be remembered that the phrase
“talent round up” which follows HICKORY HILL LAKES USA has
a descriptive significance for the services. Immediately
following the reference to the “Hickory Hill Lakes USA
Talent Round Up,” the text uses the term “round up” in a
generic manner, and mentions that it will consist of
“country music talent contest winners.” Accordingly,
consumers will be well aware of the descriptive nature of
the phrase. Further, “USA” is not generally used as an
adjective, the way “U.S.” is used, but as a place name,
often following an address. Thus, because of the way “USA”
is used in the specimens, consumers will not view “USA” as
modifying the phrase “Talent Round Up,” but as part of the
preceding words HICKORY HILL LAKES.
We find, therefore, that the specimens are adequate to
show use of the mark sought to be registered.
Decision: The refusal of registration is reversed.