Larry D. Morrisv.Starr Map Company, LLC

Trademark Trial and Appeal Board

Nov 24, 2009

No. 94002092 (T.T.A.B. Nov. 24, 2009)

Mailed:
November 24, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Larry D. Morris

v.

Starr Map Company, LLC1
_____

Concurrent Use No. 94002092
_____

David A. Lowe, of Black Lowe & Graham for Larry D. Morris

Robin A. Schachter of Ryan, Swanson & Cleveland, PLLC for
Starr Map Company, LLC
______

Before Seeherman, Quinn and Ritchie, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

On June 14, 2002, Larry D. Morris, doing business as
Town Graphics, (applicant) filed application Serial No.

1 Office records show that Registration No. 2308880 is in the
name of Starr-Sauerbrey Enterprises dba Starr Creative Group, and
the ESTTA cover sheet which Starr Map Company, LLC entered its
appearance bears this name. However, the papers filed by this
company, a Notice of Appearance and a stipulation for time to
file its answer, identify the company as Starr Map Company, LLC.
The court decision, discussed infra, identifies the company as
Starr Map Company, LLC, and all papers filed with the Board and
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Concurrent Use Proceeding No. 94002092
2
76421250 for a concurrent use registration of the mark
DISCOVERY MAP for services that were subsequently amended
to:
Retail store services featuring maps and
guides to local and travel destinations
containing street, merchant,
transportation, landmark and tour
information; distributorships featuring
graphical art for others; retail store
services featuring graphical art for
others; promoting the goods and services
of others by designing and distributing
graphic art and commercial art
advertising materials; online retail
store services featuring electronic
graphic art and commercial art for use
in promoting the goods and services of
others.

Applicant identified Starr Map Company LLC, (hereafter
STARR), the owner of Registration No. 2308880 for DISCOVERY
MAP and design for cartographic services, as having rights
to the mark in the entire United States with the exception
of the State of Washington. By its application, applicant
seeks a geographically restricted registration for its mark,
limited to the State of Washington.
The mark was published for opposition with the
following concurrent use statement:
Subject to Concurrent Use Proceeding
with Registration No. 2308880.
Applicant claims the exclusive right to
use the mark in the area comprising
Washington State.

orders sent by the Board use this designation. Accordingly, we
have used the name Starr Map Company, LLC in this decision.
Concurrent Use Proceeding No. 94002092
3
After the opposition period passed without any
opposition being filed, the subject concurrent proceeding
was instituted. Although Starr entered a notice of
appearance, it did not file an answer or any other papers.
Applicant filed a notice of reliance on a decision by the
superior court of Washington, and a brief.
The court decision, Starr Map Company, LLC v. Larry
Morris and Maria Morris, d/b/a Town Graphics, No. 00-2-
14945-0, was issued by the Superior Court of Washington in
and for King County on March 20, 2002. The opinion states
that the court, “having heard the testimony of the
witnesses, reviewed and considered the exhibits and
considered the legal memoranda and the arguments of counsel,
issued a Memorandum Opinion on February 8, 2002.” After
reviewing the proposals of counsel and after a hearing on
March 13, 2002, the Court ordered, inter alia, that
applicant herein is entitled to exclusive use of the
DISCOVERY MAP mark anywhere in Washington State, and that
Starr may use the DISCOVERY MAP mark anywhere, subject only
to applicant’s area of exclusive use. Starr was enjoined
from using DISCOVERY MAP or variations thereof inside
Washington State. The Court also stated that applicant and
Starr are “entitled to concurrent federal trademark
registration of the DISCOVERY MAP mark specifying their
respective geographical regions of exclusive use.”
Concurrent Use Proceeding No. 94002092
4
In view thereof, we find that applicant, Larry D.
Morris, is entitled to the registration of his mark
DISCOVERY MAP (Serial No. 76421250) for the area of
Washington State, and that Starr Map Company LLC’s
Registration No. 2308880 for the mark DISCOVERY MAP and
design will be restricted to the entire United States except
for Washington State.
Decision:
Registration No. 2308880: This registration, owned by
Starr Map Company LLC, for the mark DISCOVERY MAP and design
for cartographic services will be restricted to the area
comprising the entire United States except for the area
comprising Washington State.
Application Serial No. 764421250: Larry D. Morris is
entitled to the registration of his mark DISCOVERY MAP for
“retail store services featuring maps and guides to local
and travel destinations containing street, merchant,
transportation, landmark and tour information;
distributorships featuring graphical art for others; retail
store services featuring graphical art for others; promoting
the goods and services of others by designing and
distributing graphic art and commercial art advertising
materials; online retail store services featuring electronic
graphic art and commercial art for use in promoting the
Concurrent Use Proceeding No. 94002092
5
goods and services of others” for the area comprising
Washington State.