Signal Investment & Management Co.

Trademark Trial and Appeal Board

Sep 24, 2007

No. 78443991 (T.T.A.B. Sep. 24, 2007)

Mailed:
Sept. 24, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Signal Investment & Management Co.
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Serial No. 78443991
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Douglas T. Johnson of Miller & Martin PLLC.

Gina Hayes, Trademark Examining Attorney, Law Office 112
(Angela Bishop Wilson, Managing Attorney).
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Before Hairston, Grendel and Bergsman, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark DURABLE DEFENSE 4 WAY (in standard character
form) for “sunscreens and sunblocks” in Class 3.1
At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register applicant’s mark due
to applicant’s asserted failure to submit an acceptable

1 Serial No. 78443991, filed on June 30, 2004.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 78443991
2
specimen of use. Citing Trademark Rule 2.51(b), 37 C.F.R.
§2.51(b), the Trademark Examining Attorney contends that
the specimen submitted with applicant’s Statement of Use is
unacceptable because the mark as depicted thereon is not a
substantially exact representation of the mark depicted in
the application drawing.2
The specimen of record is a photograph of the product
label, the pertinent portion of which is reproduced below.

2 The Trademark Examining Attorney also cites Trademark Rule
2.72(b)(1) as a basis of the refusal. However, Rule 2.72 in
general pertains to the requirements for amending the drawing of
the mark. Rule 2.72(b)(1) in particular requires that, in an
intent-to-use application, any proposed amendment to the drawing
of the mark must be supported by the specimen of use. In this
case, applicant is not seeking to amend the drawing of its mark,
and Rule 2.72 therefore is inapposite.

Ser. No. 78443991
3
To clarify what may be difficult to read on this
reproduction, we note that there is a “tm” symbol following
the words “Durable Defense.” The four bullet points to the
right of “4 Way” read “UVA/UVB Protection,” “Eight Hour
Waterproof,” “Non-Irritating,” and “Rubs In Easily.”3
The issue on appeal is whether the standard character
mark depicted on applicant’s drawing page is a
substantially exact representation of the mark as actually
used on the goods as shown by the specimen submitted with
applicant’s statement of use, as required by Trademark Rule
2.51(b). See generally TMEP §807.12(a). We find that it
is not.
Specifically, we find that it is the designation
DURABLE DEFENSE that will be perceived as the mark. The
designation “4 Way” would not be perceived as part of the
DURABLE DEFENSE mark, but rather as a direct reference to
the four bullet points and the accompanying informational
text appearing immediately to its right. The informational
text sets out four features or characteristics of the

3 The specimen photograph actually is a photograph of three
bottles of the product, with three different labels reflecting
different versions of the product. For our purposes, the labels
on the three bottles are the same as the bottle depicted above
except that the text to the right of some of the bullet points is
different on each bottle. On the bottles not pictured above, the
various bullet points display wording such as “Hypoallergenic,”
“Dries Instantly,” and “Titanium Dioxide.”

Ser. No. 78443991
4
goods, and purchasers will readily understand the
designation “4 Way” as referring to or describing those
four characteristics, not as part of the DURABLE DEFENSE
trademark.
“4 Way” and “Durable Defense” appear in a similar
type font and size as compared to other text on the label.
That fact supports applicant’s argument, but it clearly is
countered and outweighed by the fact that the two
designations appear on two separate lines. Moreover, while
applicant is free to place the “TM” symbol where it
chooses, the fact that the symbol appears on the first line
immediately adjacent to DURABLE DEFENSE enhances the
likelihood that purchasers will view DURABLE DEFENSE as the
mark, not DURABLE DEFENSE 4 WAY.
Applicant also is correct in noting that the text
accompanying the four bullet points is merely informational
and without trademark significance, and that it therefore
need not be (and indeed should not be) included in the
drawing of the mark. However, the issue in this case is
not whether applicant has “mutilated” the mark by omitting
the informational text. Rather, the issue is whether the
designation “4 Way” would be perceived as part of the mark
in the first place. The four bullet points and
accompanying informational text are not part of the mark as
Ser. No. 78443991
5
depicted in the drawing, but their presence and location on
the label nonetheless is highly relevant to our
determination of what purchasers are likely to understand
to be the significance of the designation “4 Way” as it
appears on the label. “4 Way,” appearing on the label
immediately adjacent to the four bullet points, would be
viewed as referring to, and as shorthand for, the four
characteristics or features of the goods listed with the
four bullet points.
Further supporting a finding that “4 Way” would be
viewed as being tied to the four bullet points, rather than
to DURABLE DEFENSE, is the fact that “4 Way” is presented
vertically, with the “4” stacked on top of the “Way” and
the composite being horizontally centered on and
essentially the same height as the four bullet points.
Applicant is correct in noting that “4 Way” is adjacent to
“Durable,” but we find that it is even more adjacent to and
visually connected to the four bullet points.
Finally, applicant notes that it seeks to register its
mark in standard character form, which entitles applicant
to some leeway in the manner in which it displays the mark
on the specimen. We find, however, that leeway is not so
extensive as to encompass the visual and contextual
Ser. No. 78443991
6
disconnect between 4 WAY and DURABLE DEFENSE as they appear
on applicant’s label.
For these reasons, we find that the mark as it appears
in applicant’s drawing, DURABLE DEFENSE 4 WAY, is not a
substantially exact representation of the mark as it
appears and would be perceived by purchasers viewing
applicant’s specimen label, which is DURABLE DEFENSE.
Therefore, the Trademark Examining Attorney’s requirement
for an acceptable specimen is proper, and the refusal to
register based on applicant’s failure to comply with such
requirement must be affirmed.

Decision: The refusal to register is affirmed.