Simoniz USA, Inc.

Trademark Trial and Appeal Board

May 5, 2000

No. 75240400 (T.T.A.B. May. 5, 2000)

LKM
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MAY 5, 00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Simoniz USA, Inc.
________
Serial No. 75/240,400
_______
John C. Linderman and Daniel M. Barbieri of McCormick, Paulding
& Huber LLP for applicant.
Michael S. Levy, Senior Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).
_______
Before Hanak, Hairston and McLeod, Administrative Trademark
Judges.
Opinion by McLeod, Administrative Trademark Judge:
An application has been filed by Simoniz USA, Inc. to
register the mark DR. SIMO for “providing extended warranty
protection programs for the interior and exterior surfaces of
automotive vehicles.”1
Registration was refused under Sections 1, 2, 3 and 45 of
the Trademark Act, 15 U.S.C. Sections 1051, 1052, 1053 and 1127,
on the ground that applicant’s proposed mark does not function
as a service mark to identify and distinguish applicant’s

1 Application Serial No. 75/240,400, filed February 12, 1997, alleging
dates of first use of November 20, 1996.
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2
services from those of others.2 When the refusal was made final,
applicant appealed. An oral hearing was not requested.
The Senior Attorney argues that the applied-for mark does
not function as a service mark as shown on the specimens of
record.3 According to the Senior Attorney, the proposed mark
only identifies the character of Dr. Simo. While the name of a
character may be registered as a service mark, the Senior
Attorney contends that the specimens of use filed with the
application do not demonstrate proper service mark use. The
Senior Attorney maintains, among other things, that the words
DR. SIMO are no more prominent than other wording on the
specimens, and that there is no reason for consumers to “pluck”
DR. SIMO from the specimens and recognize that element as a
service mark.
Applicant takes the opposite position. According to
applicant, the DR. SIMO name functions as a service mark as
shown on the specimens of record. In addition to the words
“SIMONIZ EP3,” applicant maintains that the DR. SIMO name is the
only other prominent term used on the specimens. Applicant
submits that the words DR. SIMO are a bright feature in contrast

2 The Senior Attorney’s final refusal also required specimens which
show acceptable use of the mark in commerce under 37 C.F.R. Section
2.56. It is the view of the Board that this requirement is
encompassed within the statutory refusal in this case.
3 The Senior Attorney objects to untimely evidence submitted by
applicant with its appeal brief. The objection is sustained and the
evidence has been given no consideration. See Trademark Rule
2.142(d).
Ser No. 75/240,400
3
to darker background colors on the specimens. Applicant also
argues, among other things, that the DR. SIMO name is similar to
applicant’s SIMONIZ mark, and that DR. SIMO was selected for the
specific purpose of creating brand identity.4
The name of a living or fictitious person may be registered
as a service mark if the name is used in the sale or advertising
of services to identify and distinguish the services from those
of others. However, the mere appearance of a personal or
fictitious name in an advertisement for a particular service
does not necessarily create a direct association between the
name and the services offered. In re Hechinger Investment Co.
of Delaware, Inc., 24 U.S.P.Q.2d 1057 (T.T.A.B. 1991) and cases
cited therein. The critical question is whether the applied-for
mark, as used on the specimens, will be recognized in itself as
an indication of origin for the particular service. That is,
does the name create a commercial impression separate and apart
from the other material appearing on the advertisement. In re
Morganroth, 208 U.S.P.Q. 284, 287 (T.T.A.B. 1980). The
commercial impression as a service mark must be readily apparent
from the use of the name. It must not blend in with other
matter so well that it is difficult or impossible to discern

4 Applicant submits that its application for registration of the Dr.
Simo character was approved for publication without any objection from
the Senior Attorney. However, the Board is not bound to the position
taken by the Senior Attorney with respect to that application, and our
decision is based on the particular record before us. In re John
Harvey & Sons Ltd., 32 U.S.P.Q.2d 1451 (T.T.A.B. 1994).
Ser No. 75/240,400
4
which element is supposed to constitute a service mark. In re
McDonald’s Corp., 229 U.S.P.Q. 555, 556 (T.T.A.B. 1985).
After careful review of the specimens of record and the
arguments presented, we find that the applied-for mark does not
function as a service mark. The mere fact that applicant
selected the DR. SIMO name to function as a service mark is
unpersuasive if there is no acceptable service mark use in
advertising or promotional materials. See McDonald’s, supra.
In this case, the DR. SIMO name appears in small print on the
character’s nametag, and directly underneath or adjacent to an
illustration of the character.5 We agree with the Senior
Attorney that the commercial impression created by the specimens
is solely that of the name of a character, rather than an
indication of origin for applicant’s warranty services. That
is, the position, size and location of the words DR. SIMO in
close proximity to the character call attention to the character
alone, rather than conveying service mark significance.
While the applied-for mark also appears within the text of
written promotional materials, the DR. SIMO name is less
prominent than other items appearing on the specimens. It is
unlikely that consumers will even notice the DR. SIMO name

5 Applicant relies, in part, upon a folder insert entitled “The
Company History,” which displays the DR. SIMO name within quotation
marks (“DR. SIMO”). However, this specimen technically does not agree
with the application drawing as required under Section 1 of the
Trademark Act, 15 U.S.C. Section 1051. See TMEP Section 807.14.
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within the text, let alone attribute service mark significance.
In this regard, the Senior Attorney is correct in his
observation that consumers are more likely to attribute service
mark significance to the prominent words “SIMONIZ EP3” or
“SIMONIZ” shown on the specimens. Similarly, applicant’s
contention that the ellipses and quotes appearing on the
specimens create an association between the applied-for mark and
services is unpersuasive. To the contrary, the quotes lead
consumers to the large character illustration on the
posterboard, or to the prominent “SIMONIZ EP3” service mark
shown on the specimens.
DECISION
Accordingly, the refusal to register is affirmed.
E. W. Hanak
P. T. Hairston
L. K. McLeod
Administrative Trademark
Judges, Trademark
Trial and Appeal Board

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