Lush Ltd.

Trademark Trial and Appeal Board

Dec 7, 2001

No. 75535140 (T.T.A.B. Dec. 7, 2001)

12/07/01

Paper No. 15
EWH

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

Trademark Trial and Appeal Board
____________

In re Lush Ltd.
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Serial No. 75/535,140
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Frederick H. Rabin of Fish & Richardson for Lush Ltd.

Jeffrey S. Molinoff, Trademark Examining Attorney, Law
Office 107 (Thomas Lamone, Managing Attorney).
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Before Hanak, Wendel and Holtzman, Administrative Trademark
Judges.

Opinion by Hanak, Administrative Trademark Judge.

Lush Ltd. (applicant) seeks to register BALLISTIC for
“non-medicated bath salts containing effervescent
materials, perfumes, emollients, moisturizers and oil for
the skin.” The application was filed on August 13, 1998
with a claimed first use date of July 1994. As substitute
specimens of use, applicant filed the following:

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/535,140
2
The Examining Attorney has refused registration on the
basis that applicant’s specimens of use “do not show use of
the mark [BALLISTIC] as depicted on the drawing page of the
application.” (Examining Attorney’s brief page 1). It is
the position of the Examining Attorney that applicant’s
mark is not BALLISTIC per se, but rather is THE BALLISTIC
BARREL. (Examining Attorney’s brief page 2).
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant requested and then waived
an oral hearing.
The leading case dealing with a situation where an
applicant attempts to register what is arguably only a part
of its trademark is In re Servel, Inc., 181 F.2d 192, 85
USPQ 257 (CCPA 1950). In that case, applicant sought to
register SERVEL despite the fact that the specimens of use
showed that the title of applicant’s periodical was SERVEL
INKLINGS. In reversing the refusal to register SERVEL per
se, the Court stated that “the courts in a proper case may
recognize the right to registration of one part of an
owner’s mark consisting of two parts.” 85 USPQ at 260.
In view of the holding in Servel, this Board has been
quite liberal in allowing applicants to register what are
arguably only portions of the trademarks shown on the
specimens of use. For example, this Board allowed
registration of DUMPMASTER based upon the following
specimen of use:
Ser No. 75/535,140
3

In so doing, this Board stated that “there can be no
question but that the composite shown above constitutes two
distinct terms, each of which is capable of distinguishing
applicant’s goods from like goods, if they were to be used
separably as trademarks.” In re Dempster Bros., Inc., 132
USPQ 300 (TTAB 1961). In allowing registration of
DUMPMASTER per se, the Board was not troubled by the fact
that the words DEMPSTER and DUMPMASTER were totally
intertwined in that they shared the same large first letter
and the same large final letter (i.e. the D and the R).
In a more recent decision, this Board allowed the
registration of the mark TINEL-LOCK based upon the
following specimen of use:

Ser No. 75/535,140
4
In so doing, the Board was not concerned with the fact that
the mark sought to be registered (TINEL-LOCK) was joined
with hyphens to the model number (TRO6AI) and the generic
term (RING). In re Raychem Corp., 12 USPQ2d 1399 (TTAB
1989).
In stark contrast to the Dempster and Raychem cases,
in the present case the mark sought to be registered
(BALLISTIC) is physically separated from the two other
elements in the substitute specimen, namely, the words THE
and BARREL. It has long been held that words such as “the”
and “a” have little if any source identifying significance.
As for the word “barrel,” while it is not descriptive of
applicant’s bath salts, it is a generic term for the
containers which applicant claims house the salts, namely,
barrels. In this regard, we note that the Examining
Attorney has never disputed that applicant’s bath salts are
packaged in barrels. (Examining Attorney’s brief page 6).
In view of the foregoing, we find that as depicted in
applicant’s substitute specimens of use, the word BALLISTIC
functions as a source identifying word, that is, as a
trademark. Consumers viewing applicant’s specimen labels
on barrels containing bath salts would, in our judgment,
accord very little weight to the word THE and would view
the word BARREL as simply indicating that the bath salts
come in a barrel. We recognize that applicant’s
identification of goods does not contain a limitation that
applicant’s bath salts will always be sold in barrels.
Ser No. 75/535,140
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However, in both the Dempster and Raychem cases, this Board
looked to the applicants’ advertising which on many
occasions used DUMPMASTER per se and TINEL-LOCK per se.
Obviously, said advertising could have been changed at any
time. Nevertheless, this Board accorded said advertising
some evidentiary value in finding that DUMPMASTER and
TINEL-LOCK functioned as trademarks by themselves. While
it is theoretically possible that in the future applicant
could package its bath salts in, for example, boxes as
opposed to barrels, then it would make no commercial sense
to use the phrase THE BALLISTIC BARREL.
Decision: The refusal to register is reversed.

Holtzman, dissenting.
I respectfully dissent from the reasoning and
conclusion of the majority that the word BALLISTIC, alone,
functions as a mark for applicant's goods. It is well
settled that a particular element of a composite mark is
registrable only if that element creates a separate and
distinct commercial impression as a mark. See In re Berg
Electronics, Inc., 163 USPQ 487 (TTAB 1969) citing In re
Schenectady Varnish Company, Inc., 126 USPQ 395 (CCPA
1960). I find that the designation THE BALLISTIC BARREL is
visually and conceptually a unitary expression and I agree
Ser No. 75/535,140
6
with the Examining Attorney that the single word BALLISTIC,
as shown on the specimens, does not make a commercial
impression separate and apart from the other two words in
the phrase.
In deciding that the word BALLISTIC is a registrable
mark, the majority points to the physical separation of the
individual words on applicant's specimens as well as the
lack of trademark significance of the word THE and the
genericness of the word BARREL in relation to the
containers for applicant's goods.
Applicant's substitute specimens, the only evidence of
applicant's use of the phrase sought to be registered, show
that the words THE BALLISTIC BARREL convey a unitary
impression. No single word stands out visually more than
the other. Each word appears in the same size, style,
color and display. In addition, it is quite clear, despite
the physical separation of the words, that the designation
is intended to be read as a unitary three-word phrase and
that the meaning is conveyed by the phrase as a whole.
See, for example, in In Ipco Corp. v. Blessings Corp., 5
USPQ2d 1974 (TTAB 1988), wherein the Board found that the
opposer's use of word CONFIDENCE on its brochures did not
constitute a separate mark and would be perceived as an
"integral and natural" part of the phrase "CONFIDENCE TO
Ser No. 75/535,140
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ENJOY A NORMAL AND ACTIVE LIFE," notwithstanding the
appearance of the word CONFIDENCE in a larger size and in a
different color than the rest of the phrase.
I do not believe that the cases cited by the majority
(In re Servel, 181 F.2d 192, 85 USPQ 257 (CCPA 1950), In re
Dumpster Bros., Inc., 132 USPQ 300 (TTAB 1961) and In re
Raychem Corp., 12 USPQ2d 1399 (TTAB 1989)) support the
analysis of the majority or ultimately the registration of
this mark.
The majority relies on the following statement from
the Court's opinion in Servel: "The courts in a proper case
may recognize the right to registration of one part of an
owner's mark consisting of two parts." However, the key
wording in that quote is "a proper case" meaning of course
a case in which the part sought to be registered functions
separately as a mark. Thus, Servel does not authorize what
the majority permits here, the extraction of one word from
an otherwise unitary phrase for registration as a separate
mark.
The majority notes that the Board in Dempster Bros.,
"was not troubled by the fact that the words DEMPSTER and
DUMPMASTER were totally intertwined...." However, in that
case, the Board based its decision not on the physical
relationship of the words but on applicant's persuasive
Ser No. 75/535,140
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evidence (such as advertisements, media references,
purchase orders, purchaser affidavits) showing that
DUMPMASTER alone was promoted and perceived as a separate
mark. There is no evidence in the present record to
indicate that the word BALLISTIC would be perceived as a
separate mark. The only evidence of applicant's use in
this case is the specimens and, as noted above, those
specimens show that the words THE BALLISTIC BARREL convey a
unitary visual and connotative impression.
The majority also relies on the Raychem case wherein
the Board found that the designation TRO6AI-TINEL-LOCK-
RING, despite the hyphenation, did not create a unitary
expression and that therefore neither the stock number
"TRO6AI" nor the generic term "RING" were deemed "essential
to the commercial impression" of TINEL-LOCK as a mark.
Applying the reasoning of Raychem to the present case,
there is no question that the words "THE" and "BARREL" are
integral elements of the unitary expression THE BALLISTIC
BARREL and that they are essential to the commercial
impression created by the phrase. Thus, the fact that
those words, standing alone, may be generic or have no
trademark significance does not justify registration of
BALLISTIC alone.
Ser No. 75/535,140
9
The Board in In re Jane P. Semans, 193 USPQ 727 (TTAB
1976), addressed this very issue, rejecting the applicant's
contention in that case that the word "KRAZY" was
registrable apart from the composite phrase KRAZY MIXED-UP
because of the descriptive nature of the term "MIXED-UP."
The Board affirmed the refusal to register KRAZY alone
pointing out that "...'KRAZY MIXED-UP' is a unitary phrase,
of which 'KRAZY' is an integral part,..." and further
noting that "there is nothing in the record to suggest that
customers and prospective purchasers of applicant's goods
separate the phrase into component parts and utilize
'KRAZY' alone to call for and refer to the goods." 193
USPQ at 727. Similarly here also, there is nothing in the
record to suggest that those seeking applicant's goods
would separate the word "BALLISTIC" from the phrase THE
BALLISTIC BARREL and use that word to call for applicant's
goods.
For the above reasons, I would find that BALLISTIC
does not function as a mark separate and apart from the
entire phrase THE BALLISTIC BARREL and I would affirm the
refusal to register.