U-Haul Inter-national, Inc.

Trademark Trial and Appeal Board

Sep 25, 2003

No. 75535232 (T.T.A.B. Sep. 25, 2003)

Mailed: 25 SEP 2003
Paper No. 36
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re U-Haul International, Inc.
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Serial No. 75/535,232
_______
Jeffrey C. Whitley, Assistant General Counsel, for U-Haul
International, Inc.
Richard S. Donnell, Trademark Examining Attorney, Law
Office 106 (Mary Sparrow, Managing Attorney).
_______
Before Seeherman, Walters and Drost, Administrative
Trademark Judges.
Opinion by Drost, Administrative Trademark Judge:
On August 12, 1998, U-Haul International, Inc.
(applicant) applied to register the mark shown below on the
Principal Register for goods ultimately identified as:
Rental services, namely, rental of trucks, trailers,
vans, moving vans, automobiles, recreational vehicles,
automobile freight trailers, ramps, hitches, pads, tow
bars, dollies, carriers, hand trucks, camper jacks,
moving equipment, canoes, boats, boat motors, boat
trailers, vehicles, general storage services;
warehouse and storage space rental services; warehouse
storage services; rental of garage space; parking lot
services; rental of parking spaces; cargo handling;
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 75/535,232
2
cargo unloading; furniture moving services; delivery
of goods by truck, car or van; moving van services;
truck hauling; [and] truck towing in International
Class 39.1
The mark is described as follows:
The mark consists of the specific placement of an
illustration readily identifiable with one of the
fifty United States, the District of Columbia, or one
of the Canadian provinces, on the rear portion of the
side panel of a vehicle, extending from about the top
to about the bottom of the panel and between a point
adjacent to the rear of the side panel and a point
adjacent to the rear axle well.
Applicant has also included a statement that the
“matter shown in dotted lines is not a part of the mark and
serves only to show the position of the mark.”
The examining attorney2 has refused to register
applicant’s mark under Sections 1 and 45 of the Trademark
Act (15 U.S.C. §§ 1051 and 1127) because the application
seeks registration of more than one mark. Because the
examining attorney held that application is for more than
one mark, the examining attorney also required the
1 Serial No. 75/535,232. The application contains an allegation
of a date of first use and a date of first use in commerce of
December 31, 1987.
2 The current examining attorney was not the original examining
attorney in this case.
Ser No. 75/535,232
3
applicant to amend the drawing to show only one mark and to
amend the description of the mark to describe only one
mark. When the refusal and the requirements were made
final, this appeal followed.
The examining attorney’s position is that Trademark
Rule 52 “explicitly states that ‘the drawing must show only
one mark.’” Examining Attorney’s Brief at 12.3 In
addition, the examining attorney held that “the proposed
mark is clearly comprised of [an] element that is subject
to change and unregistrable because it includes more than a
single mark.” Id. In support of his position, the
examining attorney cited the case of In re International
Flavors & Fragrances Inc., 183 F.3d 1361, 51 USPQ2d 1513
(Fed. Cir. 1999) and held:
Relying on the plain language in the description, the
proposed mark, at a minimum, could be one of fifty-
eight possible illustrations. However, the seventy-
two photographs in the record demonstrate that several
states are represented by multiple illustrations and
many cities also have their own representative
illustrations. Other evidence in the record, such as
newspaper articles and email communications, show that
applicant periodically introduces new illustrations
for placement on the side of its vehicles and
equipment, all of which applicant believes will be
incorporated under the mark identified in the present
application. Moreover, additional geographic
designations and places and events of historical or
educational curiosity are also included within the
3 We note that the examining attorney’s requirements for a new
drawing and an amended description of the mark are dependent on
the refusal that applicant is impermissibly seeking registration
for multiple marks in a single application.
Ser No. 75/535,232
4
applicant’s broad description of the mark. Following
the applicant’s logic, and in light of the evidence in
the record, the mark is one of a potentially unlimited
number of illustrations that are constantly evolving
with the creation of new graphics to use on the
applicant’s vehicles.
Examining Attorney’s Brief at 14-15.
Applicant responded to the refusal by submitting
evidence and argument in support of its position that its
mark is registrable on the Principal Register. Applicant
maintains that its “mark is not unlimited, and the mark as
described by Applicant, can be searched against conflicting
marks.” Reply Brief at 2. Applicant’s evidence consisted
of the survey questionnaires of 69 individuals who had
rented a truck for household or business goods within the
previous three years. According to an attorney from the
law firm of Jeffer, Mangels, Butler & Marmaro LLP,
applicant’s law firm at that time, approximately 85.5% of
respondents “associate the mark with a particular company
or companies. Furthermore, well over half (approximately
58%) of the survey respondents identified applicant by name
as a source of Applicant’s Mark.” Lofgren declaration at
6.
Applicant also submitted photographs of the various
displays on the sides of its vehicles and the sides of its
competitor’s vehicles, advertising, promotional materials,
Ser No. 75/535,232
5
newspaper articles, emails, and the declaration of two U-
Haul employees and two independent U-Haul distributors.
Applicant also distinguished the International Flavors
decision on which the examining attorney relied by arguing
that its mark appears in the same location; it conveys the
same commercial impression, it always appears in bold,
vibrant colors, and that since applicant has submitted 79
representations “the public can view the scope of the
mark.” Applicant’s Brief at 22. Applicant goes to
maintain that it “has precisely defined the characteristics
of Applicant’s Mark that establish it as more than just a
concept” and that it is entitled to registration.
Applicant’s Brief at 24.
It has long been held that the “Statute, Rules and
TMEP are all firmly grounded on the principle that a single
application may seek to register only one mark.” In re
Audi NSU Auto Union AG, 197 USPQ 649, 651 (TTAB 1977). The
Federal Circuit has held that an applicant is not permitted
to register more than one mark in the same application.
We agree with the Commissioner that under the Lanham
Act and the rules promulgated thereunder, a trademark
application may only seek to register a single mark.
See, e.g., 15 U.S.C. Section 1051 (1994) ("The owner
of a trademark ... may apply to register his or her
trademark under this chapter on the principal register
established: ... (3) By complying with such rules or
regulations, not inconsistent with law, as may be
Ser No. 75/535,232
6
prescribed by the Commissioner.") (emphasis added).
The language of the relevant regulations also
contemplate that an application may seek to register
only a single mark. See, e.g., 37 C.F.R. Section
2.51(a)(1) (1998) ("In an application under section
1(a) of the [Lanham] Act, the drawing of the trademark
shall be a substantially exact representation of the
mark as used on or in connection with the goods ....")
(emphasis added). Furthermore, the PTO's own
trademark prosecution guidelines make clear that
"[t]here may not be more than one mark on a drawing,
since an application must be limited to one mark."
U.S. Patent and Trademark Office, Trademark Manual of
Examining Procedure Section 807 (2d ed. 1993 rev. 1.1
Aug. 1997) (emphasis added).
International Flavors, 51 USPQ2d at 1516 (punctuation and
emphasis in original).
Current rules and practice similarly prohibit the
registration of more than one mark in a single application.
37 CFR § 2.52(a) (2003) (“A drawing depicts the mark sought
to be registered. The drawing must show only one mark”);
TMEP § 807.03 (May 2003) (“An application must be limited
to one mark”); TMEP § 1214.01 (May 2003) (“Where an
applicant seeks registration of a mark with a changeable or
‘phantom’ element, the examining attorney should refuse
registration under §§ 1 and 45 of the Trademark Act, 15
U.S.C. §§ 1051 and 1127, on the ground that the application
seeks registration of more than one mark”).
Applicant submits that its alleged mark “is a single
mark” and therefore not a phantom mark. Applicant’s Brief
at 9. We start by noting that applicant has included more
Ser No. 75/535,232
7
than seventy photographs of what apparently is the use of
its mark on various vehicles. Since virtually each
photograph is different, applicant’s argument that its mark
is a single mark is difficult to accept. Applicant’s
description of its mark is “an illustration readily
identifiable with one of the fifty states, the District of
Columbia, or one of the Canadian provinces.” A review of
applicant’s photographs of its trucks reveal some of the
following illustrations: rockets, a helicopter, a moose, a
dogsled team, a motorcyclist, cacti, a surfer, a jet
fighter, tigers jumping through flaming hoops, a cowboy,
the Space Shuttle, a fisherman, fish, whitewater rafters,
peaches, a dairy farm, a football player, farm equipment,
hot air balloons, horses, an eagle, a snowmobile driver,
and a steam train. Applicant’s declarant has indicated
that it is not even limited to these depictions of record.
See Burke declaration at 2 (“The ‘unveiling’ of additional
depictions of the Mark is extensively promoted”).
Applicant argues that “Applicant’s mark is not unlimited,
and the mark, as described by Applicant, can be searched
against conflicting marks.” Reply Brief at 2. Considering
just some of the illustrations described above, if the mark
in the application does not encompass unlimited or
Ser No. 75/535,232
8
virtually unlimited illustrations, we are not sure what the
word “unlimited” means.
While applicant attempts to distinguish International
Flavors, we find that the case compels a conclusion that
applicant is seeking to register more than a single mark in
one application. In that case, the marks applied-for were
LIVING XXXX FLAVORS and LIVING XXXX FLAVOR for, inter alia,
essential oils in the manufacture of foodstuffs. The
“XXXX” was identified as a placeholder for “a botanical or
extract thereof.” The Court held that “marks with missing
elements … encompass too many combinations to make a
thorough and effective search possible.” 51 USPQ2d at
1517. The situation is even more ambiguous in the present
case. Unlike the mark in International Flavors, which
consisted of three words with one element missing,
applicant’s alleged mark is simply an illustration on the
side of a vehicle.
We also note that International Flavors does not
require that only marks that have “unlimited”
representations are unregistrable. 51 USPQ2d at 1518
(“[W]e hold that under the Lanham Act, a trademark
registrant may seek to register only a single mark in a
registration application…”). In addition, the Office rules
require that only a single mark may be registered in a
Ser No. 75/535,232
9
single application. Clearly, applicant’s description of
its mark encompasses more than one mark. See also In re
Upper Deck Co., 59 USPQ2d 1688, 1690 (TTAB 2001):
We find applicant’s present attempt to register a
hologram which may have a myriad of shapes, sizes,
contents and the like to encompass an even larger
number of combinations than the XXXX-containing word
marks in In re International Flavors. The specimens
themselves show the varying commercial impressions
created by the holograms as used on the trading cards.
The design may be a baseball field, a racing flag, or
whatever applicant adopts for that particular card.
The constructive notice which the Court found
fundamental to federal registration would be virtually
non-existent were applicant permitted to register “a
hologram” as applied to trading cards.
Accord In re Elvis Presley Enterprises Inc., 50 USPQ2d 1632
(TTAB 1999) (Applicant not permitted to register a mark
consisting of “the likeness and image of Elvis Presley” in
a single application when the mark was intended to cover
any image of Elvis Presley).
The Board has held that an applicant was impermissibly
seeking the registration of multiple marks when it sought
“to register all combinations and permutations of green,
amber and red squares in a grid.” In re Hayes, 62 USPQ2d
1443, 1446 (TTAB 2002). The Board found that a thorough
and effective search of that mark was not possible. Id.
Even more so in the instant case, a search here is not
possible because, as indicated above, the range of images
Ser No. 75/535,232
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that could be associated with applicant’s design is
virtually unlimited.
Applicant relies heavily on the survey questionnaires
mentioned above in an attempt to show “that consumers
recognize Applicant’s Mark as a single mark that identifies
Applicant and its services and distinguishes them from the
services of others.” Applicant’s Brief at 12. In that
survey, the respondents were shown a representation of the
drawing in this application and told that the truck “has a
representation or depiction, identifiable with one of the
U.S. states, on the rear portion of the side panel.”
Lofgren declaration, Ex. A. We do not find the survey to
be persuasive.
First, even if a large percentage of respondents
associate applicant’s design with a single company, that
would not constitute an exception to the requirement that
an applicant can only apply for one mark in a single
application. Elvis Presley Enterprises, 50 USPQ2d at 1633-
34 (“This is not the first time that an attempt has been
made to claim that the likeness and image of Elvis Presley
in general serves as a mark. Such an attempt was rejected
in the past, and we, like the Examining Attorney, reject it
now. See Estate of Elvis Presley v. Russen, 513 F. Supp.
1339, 211 USPQ 415, 439 (D.N.J. 1981)).”
Ser No. 75/535,232
11
Second, applicant argues that its mark “is recognized
as a single service mark” apparently because 85.5% of
respondents “associated Applicant’s mark with a particular
company or companies.” Applicant’s Brief at 9-10. The
evidence that applicant has presented does not suggest that
its alleged mark is a single service mark. Indeed, the
evidence shows that applicant is using numerous designs on
the side of its vehicles. In addition, applicant’s survey
does not indicate that 85.5% of the respondents in the
survey associate applicant’s alleged mark with a particular
company as applicant argues in its reply brief (page 2).
As applicant’s main brief correctly notes, the survey
respondents associated the design “with a particular
company or companies.” Applicant’s Brief at 10 (emphasis
added). To the extent that applicant is arguing that this
evidence demonstrates that its alleged mark functions as a
service mark, the application has not been refused
registration on this basis and the evidence is not relevant
to the refusal of record.
Even if we view the survey in the context of the issue
of whether applicant has applied for a single mark, the
survey does not support applicant’s argument. The majority
of survey respondents either did not associate the alleged
mark with any particular company or companies or, if they
Ser No. 75/535,232
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did, the respondents associated it with more than one
company or they had no opinion as to whether the alleged
mark was associated with one or more than one company.
These results, if anything, suggest that the respondents do
not view the alleged mark appearing on the vehicles as a
mark, but as multiple designs from different sources.
In addition, applicant relies on Levi Strauss & Co. v.
GTFM Inc., 196 F. Supp.2d 971, 62 USPQ2d 1394 (N.D. Calif.
2002). However, in that case the court found that the
marks in the Levi’s Tab registrations are “specific,
definite, and clear.” 62 USPQ2d at 1401. Indeed, while
applicant has argued that its mark is similar, the
registrant in the Levi Strauss case was not claiming
anything displayed on its tab. The trademarks in that case
were “a small, rectangular tab of a defined dimension
extending from the seam of a garment.” Levi Strauss, 62
USPQ2d at 1401. In effect, the mark was the tab and its
location. Applicant in the instant case is not claiming a
rectangular sign design on the rear side panel of a
vehicle. Indeed, a comparison of the drawing and the
designs on the vehicles show that applicant’s designs are
painted on the rear side of applicant’s vehicles without
any line separating the design from the rest of the
material on the side of the vehicles. Unlike the Levi
Ser No. 75/535,232
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Strauss case, the applicant’s mark is described as varying
illustrations associated with states and provinces
displayed on the side of its vehicles.
Regarding applicant’s other evidence, even if consumer
recognition would justify the registration of more than one
mark in a single application, the evidence that applicant
has submitted is equivocal regarding whether the public
recognizes the designs on applicant’s vehicles as anything
other than decorative pictures. For example, the email
communications that applicant has received indicate that
members of the public often consider the designs on
applicant’s vehicles as mere decorations. See, e.g. (1) “I
would like to see a U-Haul with seals and walruses and
polar bears and orca whales on it”; (2) “How about
Wolves??? They can be really cool looking!!!”; (3) “Native
Americans”; (4) “You guys should think about doing a
fishing graphic. Fly fishing is one of the fastest growing
sports in America”; and (5) “You should picture the Earth
from space, showing the Internet as trails of light
zigzagging across the United States.”
Finally, applicant argues that its design “always
appears in bold, vibrant colors and includes the name of
the applicable U.S. state or Canadian province with the
illustration of the mark.” Applicant’s Brief at 21.
Ser No. 75/535,232
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Neither of these characteristics are a feature of the mark
applicant has applied to register and therefore they do not
provide any basis for concluding that applicant’s alleged
mark is registrable.
Decision: The examining attorney’s refusal to register
applicant’s mark because it impermissibly seeks to register
more than one mark in a single application under Sections 1
and 45 of the Trademark Act is affirmed. Similarly, the
examining attorney’s requirements for a drawing that
depicts a single mark and a description of the mark that
describes only a single mark are affirmed.