Mook Kim

Trademark Trial and Appeal Board

Jul 14, 2006

No. 78483075 (T.T.A.B. Jul. 14, 2006)

Mailed: July 14, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re In Mook Kim
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Serial No. 78483075
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Mark D. Hansing of McKee, Voorhees & Sease, PLC for In Mook
Kim

Kim Saito, Trademark Examining Attorney, Law Office 102
(Thomas V. Shaw, Managing Attorney).
_______

Before Holtzman, Drost and Kuhlke, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

In Mook Kim has filed an application to register, on
the Principal Register, the mark shown below,

for services ultimately recited as “Instruction and
training in the martial arts including the instruction of
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 78483075
2
Tae Kwon Do and Instruction in the tournament rules and
procedures for, and conduct of, the sport of Tae Kwon Do”
in International Class 41. The application was filed on
September 14, 2004, based upon allegations of first use on
September 15, 1970 and use in commerce on May 12, 1971. 15
U.S.C. §1051(a).
The examining attorney has refused registration of the
mark on the ground that the mark shown in the drawing does
not agree with the use of the mark on the specimens. In
view of the differences between the mark sought to be
registered and the mark shown in the specimens, the
examining attorney required that applicant submit
substitute specimens properly showing the mark as used or
to amend the filing basis of the application to Section
1(b). In addition, the examining attorney stated that
applicant may not submit an amended drawing to conform to
the display of the mark on the specimens because the
character of the mark would be materially altered.
When the refusal was made final, applicant appealed.
Briefs have been filed, but applicant did not request an
oral hearing. We reverse the refusal to register.
The sole issue before us is whether the mark, as it
appears in the drawing in the application, is a
Ser No. 78483075
3
substantially exact representation of the mark as used on
the specimens. Trademark Rule 2.51(a).
The mark as it appears on applicant’s specimens (one
in color, one in black and white) is reproduced below.

As described by the applicant the mark in the drawing
consists of a “representation of [a] fist grabbing [a]
chevron, [a] split circle surrounding that combination, two
concentric circles, and stars on each side of the fist.”
Br. p. 4. Applicant states that “The only difference
between the specimen and the drawing is the removal [of]
‘KIM’S ACADEMY OF TAE KWON DO’ from the white background
between the two concentric circles, removal of three Korean
letters or characters in that same white area, and removal
of two Korean characters in the white area in the chevron
on each side of the fist.” Id. The three Korean
characters translate into English as “Tae Kwon Do” and the
two Korean characters translate into English as “Tae” and
“Kwon.” Id. Applicant is seeking to register the graphic
design without the English and Korean wording.
The examining attorney contends that the “English
wording and Korean characters are integrated element [sic]
Ser No. 78483075
4
in the applicant’s mark.” Br. unnumbered p. 4. As the
basis for this contention, the examining attorney argues
that “in the specimen, the English wording and the Korean
characters crowd the outer circle virtually hiding the two
five-pointed stars whereas the drawing shows an open
expanse in the outer circle” and “the fist design is
flanked by two Korean characters again giving the mark a
cluttered appearance rather than the clean, empty space in
the drawing.” Id. Further, she states that “the
additional words on the submitted specimen indicate the
source of the services by including the name and type of
the business in two languages printed in bold, capital
letters”, thus “[w]ithout the Korean characters and English
wording, the mark in the drawing does not have the same
commercial impression as the mark depicted in the
specimens” and even “[a]ssuming that the lettering is not
distinguishable...the lettering still provides a visual cue
to consumers that there is some writing in the outer
circle.” Br. unnumbered p. 5. The examining attorney
distinguishes the cases cited by applicant noting that in
In re Esso Standard Oil Co., 305 F.2d 495, 134 USPQ 402
(CCPA 1962), the written elements “were clearly separable
and distinct elements from the background display” and in
In re National Institute for Automotive Service Excellence,
Ser No. 78483075
5
218 USPQ2d 744, 745 (TTAB 1983) “the Board reasoned that at
a distance the design stood out separate from the words and
provided a means of ready recognition” by contrast to the
present case where “When viewed from a distance, the design
portion of the applicant’s mark does not provide a means of
ready recognition apart from the associated wording.” Br.
unnumbered p. 6. The examining attorney points to In re
Library Restaurant, Inc., 194 USPQ 446 (TTAB 1997) as a
similar example were the “wording was so intimately related
in appearance to the other elements in the mark that the
design by itself was not a separable element.” Id.
It is applicant’s contention that the mark as shown in
the drawing creates a separate and distinct commercial
impression apart from the English and Korean wording.
Applicant argues that the deletion of this element is not a
mutilation because the “design of a clenched fist, around
[a] horizontal chevron, over a split circle, surrounded by
two concentric circles, and two spaced apart stars, is not
a ‘common basic shape’” and “creates ‘a visual impact
separate and apart from the word superimposed thereon.”
Br. p. 5. In support of this contention, applicant points
to several examples of use in the record where the mark is
displayed on different items, e.g., a patch, letterhead,
poster, etc., and emphasizes that the wording and lettering
Ser No. 78483075
6
are not distinguishable but the graphic design is.1
Applicant distinguishes In re Library, supra, by noting the
large gap left between the quill and ink bottle and several
books when the wording was removed, and In re Miller Sports
Inc., 51 USPQ2d 1059 (TTAB 1999), by noting that the M and
skater design were merged into the entire word.
Trademark Rule 2.51(a)(1) provides that “the drawing
of the trademark shall be a substantially exact
representation of the mark as used on or in connection with
the goods.” The issue in this case concerns the deletion
of the wording “KIM’S ACADEMY OF TAE KWON DO” and the
Korean characters, that appear in the specimens.2 The
question is whether the mark sought to be registered is a
“mutilation” or an incomplete presentation of the mark that

1 We note applicant’s request that we take judicial notice “that
a 3 or 4 inch diameter patch, worn by thousands over thirty
years, with letters an inch or less tall would be perceived from
a distance where the words would not be readable.” However, this
is not the type of fact of which we may take judicial notice.

2 We note the split circle in the middle did not reproduce well
in the depiction of the specimens in this decision, however, it
is visible in the examining attorney’s brief and the depiction of
the split circle in the specimens is not in dispute. We also
note the slight differences in the graphic elements between the
drawing and the specimens, namely, the extra knuckle on the hand
in the drawing and the slightly higher placement of the stars in
the specimens. Again, these differences are not in dispute, and
the examining attorney found the graphic elements in the
specimens to be a substantially exact representation of the
graphic elements in the drawing. “As used on the specimen, the
design element is the same as the drawing...” Br. unnumbered p.
3.
Ser No. 78483075
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is actually used. See, e.g., In re Miller Sports Inc.,
supra.
It is well settled that an applicant may seek to
register any portion of a composite mark if that portion
presents a separate and distinct commercial impression
which indicates the source of applicant’s goods or services
and distinguishes applicant’s goods or services from those
of others. See Institut National des Appellations
D’Origine v. Vintners International Co. Inc., 958 F.2d
1574, 22 USPQ2d 1190, 1197 (Fed. Cir. 1992); and Chemical
Dynamics Inc., 939 F.2d 1569, 5 USPQ2d 1828 (Fed. Cir.
1988). If the portion of the mark sought to be registered
does not create a separate and distinct commercial
impression, the result is an impermissible mutilation of
the mark as used.
As noted by our primary reviewing Court in Chemical
Dynamics, supra, 5 USPQ2d at 1829, quoting 1 J.T. McCarthy,
Trademarks and Unfair Competitions §19:17 (2d ed. 1984),
the issue of mutilation “all boils down to a judgment as to
whether that designation for which registration is sought
comprises a separate and distinct ‘trademark’ in and of
itself.”
We agree with the applicant that the design shown in
the drawing creates a separate commercial impression apart
Ser No. 78483075
8
from the English and Korean wording. The fact that the
wording is in close proximity to the graphic elements does
not dictate that those elements cannot be registered
separately. While proximity is a consideration, it is the
overall commercial impression of the mark that is
controlling. We find the facts of this case more similar
to In re Esso, supra, and In re National Institute, supra,
than to In re Library, supra. The wording in the circle is
more akin to wording appearing within a background design
as was the case in In re Esso, rather than acting almost as
a bookend and a shelf in In re Library. Although the stars
also appear in the circle, they are easily distinguishable
as part of the graphic design and not part of the wording.
In addition, the Korean characters appearing on what the
applicant refers to as a chevron, and what appears to be a
diploma, are hardly noticeable. By contrast, we find the
graphic elements visually distinctive and draw the
observer’s attention away from the wording.
Accordingly, we find that the graphic design creates a
separate and distinct commercial impression apart from the
wording “KIM’S ACADEMY OF TAE KWON DO” and the Korean
characters, and that it therefore may be registered as a
mark.
Ser No. 78483075
9
In view of the foregoing, we find that the mark shown
on the drawing is a substantially exact representation of
the mark shown on the specimens.
Decision: The refusal to register is reversed.