Larry Harmon Pictures Corp.

Trademark Trial and Appeal Board

Nov 15, 2001

No. 74468324 (T.T.A.B. Nov. 15, 2001)

11/15/01
Paper No. 34
HRW

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Larry Harmon Pictures Corporation
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Serial No. 74/468,324
_______

J. Allison Strickland of Fross Zelnick Lehrman & Zissu,
P.C. for Larry Harmon Pictures Corporation.

Elizabeth J. Winter, Trademark Examining Attorney, Law
Office 113 (Meryl L. Hershkowitz, Managing Attorney).
_______

Before Hanak, Wendel and Bottorff, Administrative Trademark
Judges.

Opinion by Wendel, Administrative Trademark Judge:

Larry Harmon Pictures Corporation has filed an
application to register ANOTHER FINE MESS for “T-shirts.”1

1 Serial No. 74/468,324, filed December 10, 1993. The
application was filed as an intent-to-use application and
originally encompassed goods in Classes 21, 24 and 25. By
amendment goods in Class 16 were added. A notice of allowance
issued for these goods on December 19, 1995. After several
extensions of time, a statement of use was filed December 3,
1998. The goods at this point were restricted to T-shirts. The
dates of use provided by applicant were at least as early as
October 1998. The refusal of registration issued after
submission of the statement of use and the accompanying
specimens.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 74/468,324
2
Registration has been finally refused under Sections
1, 2, and 45 on the ground that the proposed mark is
ornamental, as used on the goods, and does not function as
an indicator of the source of the goods.
The refusal has been appealed and both applicant and
the Examining Attorney have filed briefs. An oral hearing
was not requested.
The specimens of record show the mark being used on T-
shirts in the following manner:

Applicant argues that the ornamentation refusal is
improper because “the mark is recognized as an indicator of
secondary source or sponsorship for the goods because the
term ‘another fine mess’ is considered the ‘trademark’
saying of Oliver Hardy of the comic duo Laurel and Hardy.”
Ser No. 74/468,324
3
(Brief p. 3). Applicant is in fact the owner of the right
of publicity associated with Laurel and Hardy and owns
registrations for the mark LAUREL AND HARDY. Applicant
contends that persons who know the characters of Laurel and
Hardy would be the main purchasers of applicant’s T-shirts;
that these persons would be well aware of the practice of
the merchandising use of marks on T-shirts which are
primarily used to identify other goods or services,
especially in the field of entertainment; that these
persons would associate applicant’s use of the mark ANOTHER
FINE MESS with the “trademark” phrase of Hardy; and that
because the mark would be recognized as referring to Laurel
and Hardy, the mark serves a source-identifying function as
well as an ornamental function.
Applicant has submitted evidence to support its
contention that an association would be made by the
relevant public of the phrase “another fine mess” with the
Hardy character of the Laurel and Hardy team. While a
substantial amount of this material cannot be taken into
consideration because it is either from unidentified
sources, such as the newspaper articles in Exhibit A, or
from foreign sources, such as several of the excerpts
Ser No. 74/468,324
4
retrieved from the Nexis database in Exhibit D,2 the
following evidence is acceptable for review:
While it was, naturally enough, Stan’s idea to make
the film, he was unhappy with the result and remade
it in 1930 as Another Fine Mess. Then it was made
with sound, including what was to become the most
quoted fade-out line in movie history from Ollie to
Stan: “Here’s another fine mess you’ve gotten us
into!”
F. L. Guiles, Stan: The Life of Stan Laurel;

The sketch became the foundation for the later Laurel
& Hardy short subjects Duck Soup 1927 and Another Fine
Mess 1930 – the latter version introducing Ollie’s
memorable lament.
W. D. Gehring, Laurel & Hardy;

Headline: Another fine mess Saturday
Let’s see. How many people can remember the line
“That’s another fine mess you got me into” from the
Stan Laurel and Oliver Hardy movies?
The Fresno Bee (September 21, 2000);

Headline: Laurel & Hardy followers yuk it up
Unfortunately, Laurel and Hardy, both long deceased...
could not be at the event to enjoy the follies. But
had they been, fans bet Hardy would have looked at
them and said “Another fine mess.”
The News Tribune (July 22, 2000);

Headline: Yet Another Fine Mess
Remember that inevitable scene in Laurel and Hardy
films when Ollie would turn to Stan and say: “Well,
here’s another fine mess you’ve gotten me into!”?
Direct (March 1, 2000);

Then we shake our heads, point fingers at each other
and, like Ollie in so many of the Laurel and Hardy
classics, say, “Here’s another fine mess you’ve gotten
me into.”
Anchorage Daily News (December 2, 1999);

2 The issue being the perception of the mark by the public in the
United States, the relevant material is that which has been in
circulation in the United States.
Ser No. 74/468,324
5

The first thing that comes to mind as I see President
Clinton bumbling into foreign policy is the old Laurel
and Hardy plaint, “Well, here’s another fine mess
you’ve gotten us into.”
The Cincinnati Enquirer (April 10, 1999).

Applicant argues that this evidence establishes that
ANOTHER FINE MESS is the “signature phrase” associated with
Laurel and Hardy and thus serves a source-indicating
function. Applicant further points to the evidence of
record showing that it has licensed the mark to Kenneth
Cole for use in its advertising in the variation “That’s
another fine mess shoe’ve gotten us into” as a reflection
of the fame of the phrase and of the advertiser’s
confidence that the public would make the association with
Laurel and Hardy, despite the slight variation.
The Examining Attorney maintains that the proposed
mark, as used on the specimen of record, is part of the
aesthetic ornamentation of the goods. She notes that the
phrase is shown at the top of a picture of Laurel and Hardy
and considers the phrase to function merely as a caption or
subtitle for the scene portrayed on the T-shirt. As such,
she argues that the wording is simply “part of the thematic
whole of the ornamentation of applicant’s T-shirts and does
not evoke the commercial impression of a source indicator.”
(Brief p.3). She maintains that in order to show that the
Ser No. 74/468,324
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proposed mark serves as an identifier of a secondary
source, applicant must provide evidence to show that
proposed mark would be recognized as a mark through its use
with other goods or services. But, according to the
Examining Attorney, applicant has failed to provide any
evidence that the wording ANOTHER FINE MESS has been used
with other goods or services such that it would be
perceived as a trademark or service mark or as an
identifier of a secondary source. Applicant’s evidence is
said to show at best the use of the phrase in connection
with Laurel and Hardy.
The Examining Attorney argues that a “signature
phrase”, as ANOTHER FINE MESS is argued to be, is not
necessarily the equivalent of a trademark. In the first
place, she refers to the evidence made of record consisting
of excerpts of stories retrieved from the Nexis database
in which the phrase “Another fine mess” is shown to have
been used in various contexts without any reference to
Laurel and Hardy. Second, even if recognized as a
signature phrase of Laurel and Hardy, she insists that this
is not the same as a trademark which is used to identify
and distinguish a person’s goods and that while the phrase
has been used as the title of a single film, this is
excluded from the scope of potentially registrable subject
Ser No. 74/468,324
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matter. Finally, she argues that there is no evidence of
record that purchasers would recognize the phrase as a
trademark or that it has been promoted as a mark. In
addition, she questions whether purchasers would make the
association of the phrase with Laurel and Hardy when used
alone, as it is sought to be registered, and not in
conjunction with the photographs of the duo and/or the mark
LAUREL AND HARDY.
It is well settled that matter which serves as part of
the aesthetic ornamentation of goods, such as T-shirts, may
nevertheless be registered as a trademark for such goods,
if it also serves a source-indicating function. In re Pro-
Line Corp., 28 USPQ2d 1141 (TTAB 1993); In re Dimitri’s
Inc., 9 USPQ2d 1666 (TTAB 1988). Such ornamental matter
may be found to additionally serve a source-indicating
function, and hence to be registrable, if, for example, it
names the secondary source of the goods or if, at the time
of its first use as ornamentation, it was already a
recognized trademark of applicant for services or other
goods. In re Astro-Gods Inc., 223 USPQ 621 (TTAB 1984); In
re Paramount Pictures Corp., 213 USPQ 1111 (TTAB 1982) and
In re Olin Corp., 181 USPQ 182 (TTAB 1973).
As the Board stated in the Olin Corp. case at pages
182-183:
Ser No. 74/468,324
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It is a matter of common knowledge that T-shirts are
“ornamented” with various insignia, including college
insignias, or “ornamented” with various sayings such
as “Swallow Your Leader.” In that sense what is sought
to be registered could be construed to be ornamental.
If such ornamentation is without any meaning other
than as mere ornamentation it is apparent that the
ornamentation could not and would not serve as an
indicia of source. Thus, to use our own example,
“Swallow Your leader” probably would not be considered
as an indication of source.
The “ornamentation” of a T-shirt can be of a special
nature which inherently tells the purchasing public
the source of the T-shirt, not the source of
manufacture but the secondary source. Thus, the name
“New York University” and an illustration of the Hall
of Fame, albeit it will serve as ornamentation on a T-
shirt will also advise the purchaser that the
university is the secondary source of that shirt. It
is not imaginable that Columbia University will be the
source of an N.Y.U. T-shirt. Where the shirt is
distributed by other than the university the
university’s name on the shirt will indicate the
sponsorship or authorization by the university.
In the case before us, the T-shirt is ornamented with
applicant’s trademarks, and considering the nature of
T-shirts, that particular ornamentation can serve as
an indication of a secondary source of origin. The
matter sought to be registered is an arbitrary symbol
and can and does function as a trademark. As used on
the T-shirts, we conclude that the mark serves as an
identifier of a secondary source and as such is
registrable.

Thus, in the Olin Corp. case, an arbitrary design
which was applied to the face of the T-shirts was found
registrable on the basis that the design had previously
been registered as a trademark by the applicant for skis.
It was this association which caused the mark, as used on
the T-shirts, to function as an identifier of a secondary
source.
Ser No. 74/468,324
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In Paramount Pictures Corp., supra, the MORK & MINDY
mark was held registrable for decalcomanias, on the basis
primarily of its significance as a indicator of source or
origin in the proprietor of the Mork & Mindy television
series, although it was also noted to have already been
registered as a trademark for various collateral products.
The Board stated that while the names MORK & MINDY were
certainly part of the ornamentation of the decals, they
also indicated source in the same manner as the design in
the Olin Corp. case.
In Watkins Glen International, Inc, 227 USPQ 727 (TTAB
1985), a flag design was found registrable for various
clothing items on the basis that the design comprised the
dominant portion of the applicant’s prior registered
service mark for organizing and conducting vehicular racing
contests and thus was likely to be perceived not only as an
attractive ornamental design but also as an indication of
origin. Once again the similarity to the Olin Corp. case
was noted, in that public association of the design with
the applicant with respect to its auto racing services
would cause the design to function as an indicator of
source when used on collateral clothing items.
By comparison, in In re Astro-Gods Inc., supra, the
designation ASTRO GODS and design, sought to be registered
Ser No. 74/468,324
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for T-shirts, was found to be nothing more than part of the
thematic whole of the ornamentation of the applicant’s
shirts. The Board pointed out that the designation was not
a recognized mark of applicant at the time it was first
used ornamentally on T-shirts nor had it since been
promoted in such a manner to create recognition of it as a
trademark. Although applicant in some instances used a
copyright notice containing applicant’s trade name Astro
Gods on the bottom of the T-shirts, the Board was not
persuaded that purchasers would make an association between
the designation and applicant’s name in the copyright
notice such that ASTRO GODS would be viewed as an
indication of origin.
Similarly, in In re Dimitri’s Inc, supra, the
designation SUMO was found to be nothing other than part of
the thematic whole of the ornamentation of the applicant’s
hats and T-shirts. The Board noted that the designation
SUMO was always used in connection with stylized
representations of sumo wrestlers and as such had a highly
suggestive significance in relation to the rest of the
ornamental matter on the goods. The statements of a
relatively small number of customers with respect to an
association of SUMO with applicant were found insufficient
Ser No. 74/468,324
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to conclude that that designation functioned as a trademark
for the goods.
As shown to be true in these prior cases, where an
alleged mark serves as part of the aesthetic ornamentation
of the goods, the size, location, dominance and
significance of the alleged mark as applied to the goods
are all factors which figure in the determination of
whether this matter also serves as an indication of source.
See In re Dimitri’s, supra. Applying these factors to
applicant’s proposed mark, ANOTHER FINE MESS, and its use
on T-shirts, it would appear at first blush that the phrase
functions simply as a title or caption for the scene
illustrated on the shirts. As such, the situation would be
no different from the latter cases discussed above. The
phrase would serve as no more than part of the thematic
whole of the ornamentation on the shirt, as argued by the
Examining Attorney.
We cannot ignore, however, applicant’s contentions
that ANOTHER FINE MESS, as used on these shirts, has a
significance beyond that of merely captioning the scene
portrayed on the goods. We find the evidence submitted by
applicant sufficient to establish that “another fine mess”
was the signature phrase of the comic duo of Laurel and
Hardy. While the Examining Attorney has introduced
Ser No. 74/468,324
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evidence of the use of the phrase by persons without making
any reference to Laurel and Hardy, applicant’s evidence is
sufficient to convince us that many persons would be so
familiar with the phrase that they would be prone to using
it in connection with every day occurrences, without giving
credit to the source of the phrase. Moreover, we agree
with applicant that the purchasers of applicant’s T-shirts
would be likely to be persons who are familiar with Laurel
and Hardy and that these purchasers would be apt to make
the association between the phrase and the Hardy character
of the Laurel and Hardy team.
The question which remains is whether the presence of
this signature phrase serves to perform the function of
identifying a secondary source for the goods. It is true
that the phrase does not directly name any secondary source
for the goods. Moreover, there is no evidence of record
that the phrase already is a recognized trademark of
applicant for any services or other goods, as in the Olin
Corp. and Watkins Glen cases. The designation LAUREL AND
HARDY would appear to fall within these categories, but not
ANOTHER FINE MESS.
We do not believe, however, that the qualifications
for serving as an indicator of a secondary source are so
limited. As we quoted from the Olin Corp. case:
Ser No. 74/468,324
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The ornamentation of a T-shirt can be of a special
nature which inherently tells the purchasing public
the source of the T-shirt, not the source of
manufacture but the secondary source. [Emphasis
added].

Here we have convincing evidence that the phrase ANOTHER
FINE MESS points uniquely to the comic duo of Laurel and
Hardy. The relevant purchasing public would make the
association between the signature phrase and the
performers. Furthermore, this public would certainly be
familiar with the merchandising practice of using images or
the names of entertainment persons or the characters they
portray as the indication of secondary source on collateral
items such as T-shirts, decals and the like. It was on
this basis that the names MORK & MINDY, the characters in a
television series, were found to function as an indicator
of secondary source in the Paramount Pictures case.
While the use of a signature phrase is one step
removed from the use of character names or images, we do
not think the identification of source is any less
positive. The phrase ANOTHER FINE MESS points
distinctively to the comic team of Laurel and Hardy and
thus inherently tells the public the secondary source of
the T-shirts, just as clearly as would the names LAUREL AND
HARDY. See Lone Ranger, Inc. v. Cox, 124 F.2d 650, 52 USPQ
146 (4th Cir. 1942)(Distinctive call “Hi, yo Silver”
Ser No. 74/468,324
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associated by public with radio program Lone Ranger).
Moreover, we find the evidence of record sufficient to
establish that this association of ANOTHER FINE MESS and
Laurel and Hardy would be so strong that persons would
perceive the phrase as an indicator of secondary source of
the goods, even when used alone, as the phrase is sought to
be registered. ANOTHER FINE MESS functions as a mark for
applicant’s T-shirts, since although it may be part of the
aesthetic ornamentation of the goods, it also serves a
source-indicating function.
In making our determination of the registrability of
this signature phrase, we have been guided by the general
principle set forth in Paramount Pictures Corp., supra at
1113, that
while not every sign used on a product, or on
its label, package, etc., functions as an indication
of source of the product on which it is used – e.g.,
some are merely part of the aesthetic ornamentation –
the broad and liberal interpretation of our law is
that, where such a sign also serves a source
indicating function, it should be regarded as
acceptable subject matter for registration. [Citations
omitted].

Decision: The refusal to register under Sections 1, 2 and
45 is reversed.