Taylor-Listug, Inc.

Trademark Trial and Appeal Board

Jan 30, 2004

No. 76357740 (T.T.A.B. Jan. 30, 2004)

Mailed: January 30, 2004
Paper No. 9
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Taylor-Listug, Inc.
________
Serial No. 76357740
_______
Peter K. Hahn of Luce, Forward, Hamilton & Scripps for
Taylor-Listug, Inc.
David H. Stine, Trademark Examining Attorney, Law Office
114 (Margaret Le, Managing Attorney).
_______
Before Cissel, Hairston and Bucher, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the mark SIGNATURE, in typed form, for “musical
instruments, namely guitars.”1
The Trademark Examining Attorney has finally refused
1 Application Serial No. 76357740, filed January 10, 2002, and
alleging first use anywhere and first use in commerce at least as
early as January 15, 1986.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76357740
2
registration under Section 2(e)(1) of the Trademark Act, on
the ground that the mark is merely descriptive of
applicant’s identified goods. In addition, the Examining
Attorney has issued a final requirement that applicant
submit a substitute specimen.
Applicant has appealed. Briefs have been filed2, but
an oral hearing was not requested.
We turn first to the mere descriptiveness refusal
under Section 2(e)(1). A term is deemed to be merely
descriptive of goods or services, within the meaning of
Trademark Section 2(e)(1), if it forthwith conveys an
immediate idea of an ingredient, quality, characteristic,
feature, function, purpose or use of the goods or services.
2 Applicant submitted with its appeal brief a list of third-party
registrations of the mark SIGNATURE for various goods and
services, including certain musical instruments. The Board does
not take judicial notice of registrations which reside in the
U.S. Patent and Trademark Office and the submission of a mere
list of third-party registrations is insufficient to make them
properly of record. Rather, plain copies of the registrations
themselves or the electronic equivalent thereof must be
submitted. Moreover, under Trademark Rule 2.142(d), evidence
submitted for the first time with a brief on appeal is normally
considered by the Board to be untimely and therefore given no
consideration. In view thereof, we will not consider the third-
party registrations listed in applicant’s brief in reaching our
decision. We hasten to add that even if we had considered these
registrations, our decision herein would be the same. The Board
is not bound by prior decisions of Trademark Examining Attorneys
to register particular marks, and each case must be decided on
its own merits, on the basis of the record therein. See In re
Nett Designs Inc., 23 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001) [“Even if some prior registrations had some characteristics
similar to [applicant’s] application, the PTO’s allowance of such
prior registrations does not bind the Board or this court.”].
Ser No. 76357740
3
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
217-18 (CCPA 1978). A term need not convey an idea of each
and every specific feature of the applicant’s goods or
services in order to be considered merely descriptive; it
is enough that the term describe one significant attribute,
feature or property of the goods or services. Whether a
term is merely descriptive is determined not in the
abstract, but in relation to the goods or services for
which registration is sought, the context in which it is
being used on or in connection with those goods or
services, and the possible significance that the term would
have to the average purchaser of the goods or services
because of the manner of its use. In re Bright-Crest,
Ltd., 204 USPQ 591, 593 (TTAB 1979).
It is the Examining Attorney’s position that the mark
SIGNATURE is merely descriptive of applicant’s guitars
because it immediately describes a significant feature
thereof, namely that the guitars bear the signature of a
celebrity or noted musician. In support of the mere
descriptiveness refusal, the Examining Attorney submitted
the following excerpts from the NEXIS database which
include the term signature (highlighted) in connection with
guitars:
Barry Zito is, as usual, unplugged. He’s on a
Ser No. 76357740
4
stool, strumming a signature Dave Matthews guitar
in the dining room of his San Francisco Marina
flat – right where the martini will be once his
pet renovation project is ….
(USA Today; October 4, 2002);
There’s also a Black Sabbath costume contest
for a chance at winning a Tony Iommi Signature
SG guitar. Tickets are free, available only
At Quonset Hut or The Exchange locations.
(The Plain Dealer; October 18, 2002);
Chomping a permanent piece of Dentyne, he
modeled a signature Dale Earnhart Budweiser
guitar, sloshed beer on his roadie’s shirt
for comical effect, and after being handed
items including homemade CD’s and ….
(Chicago Daily Herald; October 21, 2002);
In response to the number of women guitarists
around these days, many traditional guitar
companies are marketing signature guitar lines
for women artists.
(Chicago Tribune; October 30, 2002); and
Eric Johnson solos note-for-note. She’s also
the star of a series of MVP instructional
videos (mvphomevideo.com), and she has her
own signature model from Zion Guitar
Technology.
(Guitar Player; November 1, 2002).
According to the Examining Attorney, “these excerpts
clearly show it is not uncommon within the relevant trade
for manufacturers [of guitars] to offer models which bear
the signature of a well known musician or other
celebrity… .” (First Office Action, p. 2). In addition,
the Examining Attorney argues that because the applicant
owns a prior registration for the mark DAN CRARY SIGNATURE
MODEL (Registration No. 2,252,080) for guitars wherein
Ser No. 76357740
5
“SIGNATURE MODEL” is disclaimed, this is further evidence
that the term SIGNATURE is merely descriptive of guitars.
Applicant, in urging reversal of the refusal to
register, argues that purchasers and prospective purchasers
of guitars, upon seeing the mark SIGNATURE thereon, would
not immediately believe that there was a signature on the
guitars. In particular, applicant maintains:
Many times an item can be seen as an individual’s
signature item. Artists and musicians are often
known for signature items – none of which bear
the written signature. Examples include Clint
Black’s black hat and the musician Pink’s signature
pink hair. In view of this, Applicant submits
the mark SIGNATURE would simply be suggestive
that guitars in the signature series would be
of a type that could be someone’s signature item.
(emphasis in original) (Brief, pp. 2-3).
After careful consideration of the evidence of record
and the arguments of applicant and the Examining Attorney,
we find that the term SIGNATURE is merely descriptive of a
feature or characteristic of applicant’s guitars.
Specifically, it immediately and directly informs
purchasers that applicant’s guitars bear the signatures of
musicians.
Applicant does not dispute that each label affixed to
its guitars bears the signature of a musician. In point of
fact, applicant’s label specimen, which is reproduced
infra, bears the signature of the well-known musician Jewel
Ser No. 76357740
6
Kilcher. When purchasers of guitars encounter the term
SIGNATURE, especially as used on a label affixed to a
guitar which bears the signature of a musician, we have no
doubt that the mark immediately informs them of a
significant feature of the guitar, namely, that the guitar
is a signature model, that is, it bears the signature of a
musician.
Accordingly, applicant’s mark, when applied to
applicant’s goods, is merely descriptive of them within the
meaning of Section 2(e)(1) of the Trademark Act. Whether
the term SIGNATURE may have another meaning in relation to
different goods or in other contexts is not relevant to our
inquiry.
We turn next to the requirement that applicant submit
a substitute specimen. In his final office action at
page 2, the Examining Attorney states:
… the drawing displays the mark as SIGNATURE.
However, this differs from the display of the
mark on the specimen, where it appears as
SIGNATURE MODEL. The applicant cannot amend
the drawing to conform to the display on the
specimen because the character of the mark
would be materially altered.
…
Therefore, the applicant must submit a
substitute specimen that shows actual
trademark use of the specific mark [SIGNATURE]
as it appears on the drawing. (citations
omitted).
Ser No. 76357740
7
It is applicant’s position, however, that the term
SIGNATURE makes a separate and distinct commercial
impression from the descriptive term “model,” and that
therefore applicant’s specimen is acceptable.
Trademark Rule 2.51(a) provides, in part, that “the
drawing of the trademark shall be a substantially exact
representation of the mark as used on or in connection with
the good[s].” Moreover, 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 indicates
the source of applicant’s goods and distinguishes
applicant’s goods from those of others. See, e.g., In re
Chemical Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828 (Fed.
Cir. 1988); and Institut National des Appellations
D’Origine v. Vintners International Co., Inc., 954 F.2d
1574, 22 USPQ2d 1190 (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). See also,
Trademark Manual of Examining Procedure, sections 807.14(a)
and (b) and cases cited therein. Applicant’s label
specimen is reproduced below:
Ser No. 76357740
8
In this case, we agree with the Examining Attorney
that the term SIGNATURE does not create a separate and
distinct commercial impression. As we have found, the term
SIGNATURE is merely descriptive of applicant’s guitars.
The term model is also merely descriptive, if not generic,
of guitars. The two-word combination SIGNATURE MODEL
connotes a kind of guitar, i.e., a “signature model.” This
is different from the connotation of SIGNATURE alone.
Thus, the Examining Attorney’s requirement for a substitute
specimen was proper.
Decision: The refusal to register under Section
2(e)(1) is affirmed; and the requirement for a substitute
specimen is affirmed.