Schering AG

Trademark Trial and Appeal Board

Jan 29, 1998

No. 74077096 (T.T.A.B. Jan. 29, 1998)

Paper No. 31
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 1/28/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Schering Aktiengesellschaft
___________
Serial No. 74/077,096
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Marilyn Matthes Brogan of Curtis, Morris & Safford for
applicant.
Linda E. Blohm, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
____________
Before Seeherman, Quinn and Walters, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Schering Aktiengesellschaft seeks registration of the
mark PROGRESS for “herbicides for agricultural, domestic and
other related uses.”1
The Examining Attorney has finally refused registration
on the ground that the specimens, consisting of several
identical labels (which appear to be labels affixed to

1 Serial No. 74/077,096, in International Class 5, filed July 10, 1990,
based on a bona fide intention to use the mark in commerce. Following
publication of the mark for opposition and issuance of a notice of
allowance, applicant filed its statement of use on June 15, 1994,
alleging first use and first use in commerce on May 6, 1994.
Serial No. 74/077,096
2
containers for the goods), do not show use of the mark as it
appears in the drawing. The Examining Attorney’s position
is that the mark in the drawing, PROGRESS, is an incomplete
representation, i.e., a mutilation, of the mark as used on
the specimens because it omits the term, BETAMIX. The
relevant portion of the label is reproduced below.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We reverse the refusal to register.
Trademark Rule 2.51(a)(2) provides, in part, that “once
a statement of use ... has been filed, the drawing of the
trademark shall be a substantially exact representation of
the mark as used on or in connection with the goods[.]” The
mere fact that two or more elements form a composite mark
does not necessarily mean that those elements cannot be
registered separately. To the contrary, it is well settled
that an applicant may apply to register any element of a
composite mark if that element, as shown in the record,
presents a separate and distinct commercial impression which

Serial No. 74/077,096
3
indicates the source of applicant’s goods or services and
distinguishes applicants goods or services from those of
others. See, e.g., Institut National des Appellations
D’Origine v. Vintners International Co., Inc., 958 F.2d
1574, 22 USPQ2d 1190, 1197 (Fed. Cir. 1992), citing In re
Servel, Inc., 181 F.2d 192, 85 USPQ 257 (CCPA 1950); In re
Berg Electronics, Inc., 163 USPQ 487 (TTAB 1969); In re
Tekelec-Airtronic, 188 USPQ 694 (TTAB 1975); In re Lear
Siegler, Inc., 190 USPQ 317 (TTAB 1976); and In re San Diego
National League Baseball Club, Inc., 224 USPQ 1067 (TTAB
1983). See also, Trademark Manual of Examining Procedure,
sections 807.14 and 807.14(b) and cases cited therein.
The standard enunciated herein for determining whether
the mark in the drawing is a mutilation of the mark as used,
as evidenced by the specimens, is the same regardless of
whether the application is filed under Section 1(a) of the
Act, based upon use of the mark in commerce, or, as herein,
under Section 1(b) of the Act, based upon a bona fide
intention to use the mark in commerce, with specimens
submitted in connection with a statement of use.
In support of her conclusion that BETAMIX is an
essential and integral part of the mark as used on the
specimens, the Examining Attorney argues that PROGRESS does
not create a commercial impression distinct and separate
from BETAMIX PROGRESS, and that the two terms, BETAMIX and
Serial No. 74/077,096
4
PROGRESS, appear in close proximity to one another and are
depicted in the identical style and size lettering; that, as
such, the term PROGRESS is not separately identifiable as a
mark apart from the phrase BETAMIX PROGRESS absent
applicant’s demonstrating that BETAMIX is a house mark or
used in conjunction with other terms or that PROGESS is used
alone; and that applicant did not submit such evidence.
Applicant asserts that BETAMIX PROGRESS, as the phrase
appears on the specimens, is not a unitary phrase possessing
a distinct commercial impression; rather, the specimens
demonstrate applicant’s use of PROGRESS as a trademark.2
Applicant states that BETAMIX is a house mark of applicant.
Additionally, the record includes applicant’s statement,
confirmed by the Examining Attorney, that it owns
Registration No. 1,212,121 for the mark BETAMIX for “sugar
beet herbicide”3 and the Examining Attorney’s statement that
applicant also owns Registration No. 1,865,143 for the mark

2 Along with its notice of appeal herein, applicant submitted a request
for reconsideration. The Board remanded the application to the
Examining Attorney, who, upon reconsideration, reinstated the final
refusal. Following reinstitution of the appeal, applicant submitted a
second request for remand and reconsideration along with several
exhibits. The Board denied the request for remand on the ground that
the evidence submitted therewith could have been submitted prior to the
appeal. Thus, the Examining Attorney did not consider this evidence,
nor do we consider this evidence as part of the record in our
determination herein.
3 According to the records of the PTO, this registration issued on
October 12, 1982 (Sections 8 & 15 accepted and acknowledged,
respectively), in International Class 5, alleging dates of first use and
first use in commerce of April 14, 1981.
Serial No. 74/077,096
5
BETAMIX PROGRESS4 for the same goods as identified herein.5
In this case, it is our view that the elements asserted
by the Examining Attorney to be the mark, BETAMIX and
PROGRESS, are not so merged together in either presentation
or significance that PROGRESS cannot be regarded as a
separable element creating a separate and distinct
commercial impression. We find that applicant has
adequately established that BETAMIX is a house mark by its
uncontradicted statement to that effect and the evidence
that applicant owns a registration for the mark BETAMIX
alone, for essentially the same goods as herein. Further,
although appearing together in the same size and type
letters on the same line on the specimen, we note that
BETAMIX appears to be a fanciful term, in contrast with the
term PROGRESS, which has a suggestive connotation in and of
itself when applied to the goods. In this respect, in view
of the distinctly different connotations of the two terms,
by preceding PROGRESS in the phrase BETAMIX PROGRESS,
BETAMIX gives the appearance of a house mark. The two terms

4 According to the records of the PTO, this registration issued on
November 29, 1994, in International Class 5. Filed based upon an
allegation of a bona fide intention to use the mark in commerce, a
statement of use was filed alleging dates of first use and first use in
commerce of May 6, 1994.
5 While there is no copy of either noted registration in the record, we
will consider them properly of record as both applicant and the
Examining Attorney acknowledge the existence of these registrations and
neither objects to our consideration thereof. Applicant also indicates
its ownership of several pending applications for other marks including
the term BETAMIX. However, the Examining Attorney notes that these
Serial No. 74/077,096
6
do not appear to flow one from the other. Thus, we find
that PROGRESS forms a commercial impression separate from
the BETAMIX element.
Therefore, we conclude that PROGRESS, as used on the
specimens, functions as a mark in and of itself. As such,
it is not a mutilation of the mark as depicted on the
specimens.
Decision: The refusal to register on the ground that
the specimens do not evidence use of the mark in the
application is reversed. The application shall be forwarded
for issuance of the registration on the Principal Register
in due course.
E. J. Seeherman
T. J. Quinn
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board

applications have been abandoned. We find these references to abandoned
applications unpersuasive in our consideration of the issue herein.