The Children’s Museum of Indiana-polis, Inc.

Trademark Trial and Appeal Board

Jun 15, 2004

No. 76269506 (T.T.A.B. Jun. 15, 2004)

Mailed:
June 15, 2004
Hearing: Paper No. 13
March 9, 2004 Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re The Children’s Museum of Indianapolis, Inc.
________
Serial No. 76269506
_______
Joseph D. Lewis of Barnes & Thornburgh for The Children’s
Museum of Indianapolis, Inc.
Catherine Pace Cain, Trademark Examining Attorney, Law
Office 113 (Odette Bonnet, Managing Attorney).
_______
Before Chapman, Bottorff and Rogers, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
On June 11, 2001, applicant filed the above-captioned
application seeking registration on the Principal Register
of the mark Y-? (in typed form) for goods identified in the
application as “publications, namely, a newspaper column
consisting of articles of general interest by children,
teenagers and young adults,” in Class 16. The application
is based on applicant’s allegation of use of the mark in
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76269506
2
commerce, under Trademark Act Section 1(a), 15 U.S.C.
§1051(a), and January 2000 is alleged in the application as
the date of first use of the mark anywhere and the first
use of the mark in commerce.
At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register the mark absent
applicant’s submission of an acceptable specimen showing
use of the mark on the goods identified in the application.
See Trademark Act Section 1(a)(1), 15 U.S.C. §1051(a)(1),
and Trademark Rule 2.56, 37 C.F.R. §2.56.1 The appeal has
been fully briefed, and an oral hearing was held on March
9, 2004 at which applicant’s attorney and the Trademark
Examining Attorney presented arguments. We affirm the
refusal to register.
The specimen of use submitted by applicant and at
issue on appeal is reproduced below:
1 Trademark Act Section 1(a)(1), in pertinent part, provides that
an application to register a trademark must accompanied by “such
number of specimens or facsimiles of the mark as used as may be
required by the Director.” Trademark Rule 2.56(a), in pertinent
part, requires that an application under Section 1(a) of the Act
must include “one specimen showing the mark as used on or in
connection with the goods.”
Ser. No. 76269506
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Ser. No. 76269506
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Applicant has asserted that the specimen is a photocopy of
a page from The Indianapolis Star, the newspaper in which
applicant’s column appears. (Applicant’s April 4, 2002
response to October 22, 2001 Office action.)2 As an initial
matter, we note that the specimen photocopy does not depict
the entire column, but only the bottom portion of it.3 At
page 1 of its appeal brief, applicant asserts that “[a]t
the top of the column appears Y-PRESS.” Applicant’s
counsel repeated this assertion at the oral hearing.
However, the manner in which Y-PRESS appears (e.g., the
style and size of type) cannot be determined on this
record.4
2 In the same response, applicant also stated that applicant is
not the publisher of The Indianapolis Star newspaper, and that
the newspaper is not the source of applicant’s column. Based on
this statement, the Trademark Examining Attorney withdrew her
previously-issued refusal to register the mark under Trademark
Act Sections 1, 2 and 45 on the ground that the column
constituted only a portion of applicant’s publication and thus
did not constitute separate goods in trade.
3 This is apparent from the discontinuous nature of the text
appearing at the bottom of the first column vis-à-vis the top of
the second column, and from the fact that the top of the
photocopy depicts what appears to be only the bottom portion of a
photograph captioned “Sabrina Wernicke.”
4 Given the nature of the refusal at issue in this case, i.e., a
specimen refusal, it obviously would have been helpful to us and
to the Trademark Examining Attorney if applicant had submitted a
specimen which depicted the column in its entirety. Likewise, it
would have been helpful if the Trademark Examining Attorney had
required submission of such a complete copy of the column,
pursuant to Trademark Rule 2.61(b), 37 C.F.R. §2.61(b). See
generally In re DTI Partnership LLP, 67 USPQ2d 1699 at n.3 (TTAB
2003). As it is, we have only applicant’s counsel’s description
Ser. No. 76269506
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We begin our analysis with the definition of
“trademark” found in Section 45 of the Act, 15 U.S.C.
§1127. That Section, in pertinent part, defines
“trademark” as “any word, name, symbol, or device, or any
combination thereof … used by a person … to identify and
distinguish his or her goods, including a unique product,
from those manufactured or sold by others and to indicate
the source of the goods, even if that source is unknown.”
As the Board has noted previously:
Implicit in this definition is a requirement
that there be a direct association between the
mark sought to be registered and the goods
specified in the application, that is, that the
mark is used in such a manner that it would be
readily perceived as identifying the specified
goods and as distinguishing a single source or
origin for the goods.
In re Safariland Hunting Corp., 24 USPQ2d 1380, 1381 (TTAB
1992). It is settled that “[t]he Trademark Act is not an
act to register mere words, but rather to register
trademarks. Before there can be registration, there must
be a trademark, and unless words have been so used they
cannot qualify.” In re Bose Corporation, d/b/a Interaudio
of the appearance of the entire column, i.e., that the
designation Y-PRESS appears at the top of the column. Although
we have no doubt as to the accuracy of counsel’s statement, a
more complete specimen would have enabled us to assess for
ourselves the mark’s commercial impression as it appears in the
context of the entire column.
Ser. No. 76269506
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Systems, 546 F.2d 893, 192 USPQ 213, 215 (CCPA 1976). See
also In re International Spike, Inc., 196 USPQ 447, 449
(TTAB 1977)(the court’s statement in In re Bose regarding
registrability of words as trademarks applies equally to
registrability of designs). Thus, “[n]ot all words,
designs and symbols used in connection with goods or
services function as trademarks.” In re Chicago Reader
Inc., 12 USPQ2d 1079, 1080 (TTAB 1989).
“To determine whether the term sought to be registered
would be recognized by prospective purchasers as a
trademark or service mark, the specimens of record must be
considered.” Id. As the court has stated:
An important function of specimens in a
trademark application is, manifestly, to enable
the PTO to verify the statements made in the
application regarding trademark use. In this
regard, the manner in which an applicant has
employed the asserted mark, as evidenced by the
specimens of record, must be carefully
considered in determining whether the asserted
mark has been used as a trademark with respect
to the goods named in the application.
(Emphasis in original.) In re Bose, supra, 192 USPQ at
216. Thus, “[t]he mere fact that a designation appears on
the specimens of record does not make it a trademark.” In
re Safariland Hunting Corp., supra.
Ser. No. 76269506
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Review of applicant’s specimen in the present case
shows that the only place thereon in which the mark sought
to be registered appears is at the bottom of the page,
underneath a horizontal line which separates the column
proper (including the identification of the reporters) from
what can only be considered to be merely informational
matter below the line. The Y-? logo appears immediately to
the left of text which is captioned (in bold letters) “Who
we are,” and which reads as follows:
Y-Press is a nonprofit news organization
located in The Children’s Museum of
Indianapolis. Stories are researched, reported
and written by teams of young people ages 10 to
18. For more information, call (317)334-4125
or send an e-mail to ypress@in.net.
Immediately below the Y-? logo is a depiction of a computer
keyboard key with the “@” symbol, which itself appears
immediately to the left of the following additional merely
informational text under the heading “Go online for more”:
Kids’ religious beliefs: If you want to read
more about this topic from a child’s
perspective, check out www.ypress.org. Y-Press
also invites students’ response to a poll
question and wants your comments about kid-
written movie and book reviews.
We find that the facts of this case are very similar
to those at issue in the case of In re Chicago Reader Inc.,
Ser. No. 76269506
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supra. The applicant in that case sought to register CECIL
ADAMS as a trademark for a newspaper column. The specimen
submitted with the application was a photocopy of
applicant’s column, which bore at its top the title “THE
STRAIGHT DOPE.” CECIL ADAMS, the mark sought to be
registered, appeared at the bottom of the column in the
manner of a byline. The Board found that, as used on the
specimen of record, CECIL ADAMS “merely serves to identify
the author of the article and is not used nor would be
recognized as a trademark identifying and distinguishing
applicant’s column.” 12 USPQ2d at 1080. The Board went on
to state as follows:
Moreover, the impression that “Cecil Adams” is
a byline is reinforced by additional
information contained at the bottom of
applicant’s columns:
Is there something you need to get
straight? Cecil Adams can deliver the
Straight Dope on any topic. Write
Cecil Adams, Chicago Reader, PO Box
11101, Chicago 60611
“Cecil Adams” appears to be the name of an
individual, albeit fictitious, and is not used
in the manner of a trademark.
Id.
Similarly in the present case, on the column specimen
submitted by applicant, the designation sought to be
Ser. No. 76269506
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registered appears only at the bottom of the column, in
direct conjunction with information about applicant as an
entity. Although it does not look like a byline, as was
the case in Chicago Reader, the logo applicant seeks to
register, appearing as it does directly adjacent to the
informational text captioned “Who we are,” clearly would be
understood as identifying and referring to applicant as an
entity, i.e., Y-Press. Just as CECIL ADAMS identified the
author of the column rather than the column itself,
applicant’s logo identifies applicant’s Y-PRESS entity
rather than identifying the column per se, and it therefore
does not function as a mark as used on this specimen.
Applicant argues that “[t]here is no requirement that
a trademark for a newspaper column appear in a particular
place in the column. It could be at the beginning, the
middle, the end, or somewhere in-between, as long as it has
source-indicating significance, as does Applicant’s mark
has [sic] here.” (Brief at 3.) As we noted above,
however, “[t]he mere fact that a designation appears on the
specimens of record does not make it a trademark.” In re
Safariland Hunting Corp., supra, 24 USPQ2d at 1381.
Moreover, there is no evidence in the record which
shows that trademarks for newspaper columns typically, or
ever, appear at the bottom of the column, much less that
Ser. No. 76269506
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they ever appear in the manner in which applicant’s logo
appears, i.e., separated from the text of the column by a
horizontal line, and as part of, or in close proximity to,
informational matter such as that which appears next to
applicant’s logo. Thus, this is not a case like In re
National Training Center of Lie Detection, Inc., 226 USPQ
798 (TTAB 1985), in which a slogan appearing in the
masthead of applicant’s publication (“separate and apart
from the title” of the publication) was held to function as
a trademark for the publication. The Board found that
because others in the publishing field utilized such
masthead slogans as marks for their publications (notably,
the slogan ALL THE NEWS THAT’S FIT TO PRINT which appears
on the masthead of The New York Times), purchasers were
more likely to view the applicant’s masthead slogan as a
mark as well. There is no such trade practice evidence in
this case, i.e., evidence that the purchaser (i.e., the
newspaper reader) would be accustomed to looking for, or
finding, a trademark for the column at the bottom of the
column, displayed in the manner in which applicant’s logo
Ser. No. 76269506
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is displayed, next to purely informational matter.5 As
discussed above, applicant’s logo, as it appears on the
specimen column, would be understood to identify and refer
to applicant as an entity, and would not be perceived as a
trademark for the column.
At pp. 2-3 of its brief, applicant argues as follows:
The mark Applicant is seeking to register is
used by the applicant through an entity known
as Y-Press. The newspaper column clearly
refers to “Y-Press” as one indicator of the
source of the column (“Y-Press recently spoke
with two girls there.”). Obviously, the logo
of the mark Y-? is another identifier of Y-
Press, as the Examining Attorney indicates.
Therefore, it is another indicator of the
source of the column.
Applicant has chosen to place Y-? at the
bottom of its column and has further provided
an explanation of “Who We Are.” That’s
precisely the purpose of a trademark – to
identify who its proprietor is. It would be
hard to find a device that more clearly serves
to identify source as a logo that is
accompanied by additional explanatory language.
However, in arguing that its logo is “another
indicator of the source of the column,” and “[t]hat’s
precisely the purpose of a trademark – to identify who its
5 Cf. In re Dun-Donnelley Publishing Corporation, 205 USPQ 575
(TTAB 1979), recon. denied, 208 USPQ 946 (TTAB 1980)(ENGINEERING
CONSTRUCTION WORLD not used as mark for publication, where it
appeared only as part of merely informational matter in the
masthead); accord, American Photographic Publishing Co. v. Ziff-
Davis Publishing Co., 53 USPQ 373 (CCPA 1942).
Ser. No. 76269506
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proprietor is,” applicant has it half-right. A trademark
must identify not only the source of the goods but also
must be used in such a way as to identify the goods
specified in the application. The statutory definition of
“trademark” (see supra) is phrased in the conjunctive: a
trademark is a word, name, symbol etc. which is “used by a
person … to identify and distinguish his or her goods,
including a unique product, from those manufactured or sold
by others and to indicate the source of the goods, even if
that source is unknown.” (Emphasis added.) Trademark Act
Section 45, 15 U.S.C. §1127. As discussed above, the Board
previously has noted that
[i]mplicit in this definition is a requirement
that there be a direct association between the
mark sought to be registered and the goods
specified in the application, that is, that the
mark is used in such a manner that it would be
readily perceived as identifying the specified
goods and as distinguishing a single source or
origin for the goods.
(Emphasis added.) In re Safariland Hunting Corp., supra,
24 USPQ2d at 1381. Thus, not only must a mark identify the
source of the goods, but there also must be “a direct
association between the mark sought to be registered and
the goods specified in the application.” Id. As the court
stated in In re Bose, supra, the issue is “whether the
Ser. No. 76269506
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asserted mark has been used as a trademark with respect to
the goods named in the application. (Italics emphasis in
original; underline emphasis added.) 192 USPQ at 216.6
Clearly, in the Chicago Reader case, the designation
CECIL ADAMS identified the source of the newspaper column,
and the informational matter accompanying the designation
on the specimens further reinforced the impression that
CECIL ADAMS was the source of the column. But because the
designation as it appeared on the specimens identified only
the source of the column, and did not also identify the
column itself, the Board found that it did not function as
a trademark for the column. The same is true here. Even
assuming that applicant’s Y-? logo identifies applicant’s
Y-PRESS entity as the source of the column, it fails to
6 Examples of cases in which it was held that the matter sought
to be registered failed to function as a trademark or service
mark because, as it was used on the specimens, it failed to
identify the goods or services specified in the application, are:
In re Bose Corporation, supra (SYNCOM failed to function as a
trademark for “loudspeaker systems for high-fidelity music
reproduction” because, as it appeared on the specimens, it did
not identify the loudspeakers specified in the application, but
rather identified a “speaker testing computer” used to test the
speakers during their manufacture); In re Universal Oil Products
Co., 476 F.2d 653, 177 USPQ 456 (CCPA 1973)(term not registrable
as service mark where the specimens show use of the term only as
the name of a process, even though applicant is in the business
of rendering services generally and the services are advertised
in the same specimen brochure in which the name of the process is
used); and In re Walker Research, Inc., 228 USPQ 691 (TTAB
1986)(term that merely identifies computer program used in
rendering services does not function as mark to identify market
analysis services).
Ser. No. 76269506
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function as a mark (at least on these specimens) because it
identifies only the source of the column, and not the goods
specified in the application, i.e., the column itself.7
Finally, applicant argues that we should reverse the
Trademark Examining Attorney’s specimen requirement
because, in the case of In re Drilco Industrial Inc., 15
USPQ2d 1671, 1672 (TTAB 1990), the Board noted that it “has
been liberal in assessing the acceptability of materials
which have been submitted as specimens of use.” However,
Drilco stands for the proposition that the Board will be
liberal in assessing whether the type of materials
submitted as specimens (e.g., displays, instruction manuals
or trade show exhibits) are acceptable as specimens. Here,
there is no question that the type of material applicant
has submitted as a specimen, i.e., a photocopy of the
column itself, is an acceptable type of specimen. Thus,
Drilco is inapposite. Neither Drilco, nor any other
7 Applicant’s argument, i.e., that a designation need only serve
to identify the source of the goods in order to function as a
trademark for the goods, is further belied by the well-settled
rule in trade name cases. Clearly, use of a trade name on the
goods identifies the source of the goods, but it does not ipso
facto function as a trademark for the goods merely by virtue of
its performance of such source-identifying function. See, e.g.,
In re Diamond Hill Farms, 32 USPQ2d 1383 (TTAB 1994)(DIAMOND HILL
FARMS, as used on containers for goods, found to be a trade name
that identifies applicant as a business entity rather than a mark
that identifies applicant’s goods and distinguishes them from
those of others).
Ser. No. 76269506
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authority applicant has cited, supports what apparently is
applicant’s real contention, i.e., that we should be
liberal in determining whether the specimen submitted with
the application adequately evidences applicant’s compliance
with the statutory requirement that the matter sought to be
registered in fact is used as a trademark for the goods
identified in the application.
In summary, for the reasons discussed above, we find
that the specimen applicant has submitted fails to evidence
use of the designation Y-? as a trademark for the goods
identified in the application, and that registration of the
mark accordingly must be refused. We have carefully
considered all of applicant’s arguments to the contrary
(including any arguments not specifically addressed in this
opinion), but are not persuaded of a different result.8
Decision: The refusal to register is affirmed.
8 Cf. General Foods Corp. v. Studiengesellschaft Kohle mbH, 972
F.2d 1272, 23 USPQ2d 1839, 1847 (Fed. Cir. 1992).