Yale Sportswear Corporation

Trademark Trial and Appeal Board

Jul 3, 2008

No. 78653373 (T.T.A.B. Jul. 3, 2008)

Mailed: July 3, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Yale Sportswear Corporation
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Application Serial No. 78653373
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Maurice U. Cahn of Cahn & Samuels, LLP, for Yale Sportswear
Corporation.

Ada P. Han, Examining Attorney, Law Office 106, (Mary I.
Sparrow, Managing Attorney).
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Before Holtzman, Rogers, and Mermelstein, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:
Yale Sportswear Corporation filed an application for
registration of the mark UPPER 90 (in standard characters)
for “clothing, namely, athletic jerseys, t-shirts, shirts,
tanktops, pants, shorts, sweatsuits, sweatshirts, sweatpants
and team uniforms” in International Class 25.1
On December 12, 2006, following publication for
opposition and issuance of a notice of allowance, applicant
filed a statement of use pursuant to Trademark Rule 2.88.
Upon examination of the statement of use, the examining

1 Filed June 17, 2005, alleging a bona fide intent to use the
mark in commerce under Trademark Act § 1(b); 15 U.S.C. § 1051(b).
THIS OPINION IS A
PRECEDENT OF THE TTAB
Application No. 78653373
2
attorney found that the drawing was not a substantially
exact representation of the mark as used. Trademark Rule
2.51(a). The examining attorney issued and ultimately made
final a requirement for substitute specimens.
Applicant and the examining attorney have filed briefs.
We affirm.
The specimen of use filed by applicant indicates use of
the mark with a degree symbol following “90” so that the
mark appears as Upper 90°. The relevant part of the
specimen is reproduced below:2

2 The specimen is a photograph of a hang tag affixed to what
appear to be a pair of athletic shorts. Although the specimen
comprised an entire image of the shorts, we have reproduced only
the area with the hang tag.
Application No. 78653373
3
Arguments
It is the examining attorney’s contention that the mark
used on the specimen conveys a different commercial
impression from the mark depicted in the drawing:
The degree symbol “°” and the term
“upper 90” as presented on the specimen
are interrelated elements and are not
separable elements that would constitute
separate and distinct commercial
impressions apart from each other.
* * *
To add the degree symbol would
result in the reading of the mark as
“upper ninety degrees,” This would
change the connotation of the mark, as
the degree symbol changes the meaning of
the term “90,” as “90 degrees” could now
refer to a specific temperature or, as
applicant would prefer, to an angle.
Regardless, the degree symbol changes
the significance and connotation of the
term “90.”
* * *
However, without specialized
knowledge, the original applied-for
mark, “Upper 90,” would impart no such
connotation of temperature or angle with
the addition of the degree symbol.

Ex. Att. Br. at 2-5.
Applicant disagrees,
The Examining Attorney presented no
evidence regarding how the mark as
sought to be registered fails to
maintain the essential characteristics
and commercial impression shown in the
specimen. The Examiner merely concluded
that “...the addition of the degree
symbol significantly changes the
commercial impression of the mark, as
the mark would now connote very hot
weather in the upper 90 degrees.”

Application No. 78653373
4
Appl. Br at 5. During examination and in its brief,
applicant argued that
the addition of “°” (a superscripted
degree symbol) did not constitute a
material alteration of the mark of the
drawing. Applicant also produced two
declarations, one from Applicant’s
marketing director and the other from a
soccer coach and player to establish
that in the soccer world, the ordinary
consumer of the goods in this case, the
addition of “°” to UPPER 90 would not
constitute a material alteration.

Appl. Br. at 3.
Applicable Law
“In an application under section 1(b) of the Act, ...
once ... a statement of use under § 2.88 has been filed, the
drawing of the mark must be a substantially exact
representation of the mark as used on or in connection with
the goods and/or services.” Trademark Rule 2.51(b). If the
drawing is not a complete representation of the trademark,
i.e., if the drawing includes less than the mark which is
actually used, registration must be refused. See generally
TRADEMARK MANUAL OF EXAMINING PROCEDURE § 807.12(d) (5th ed. 2007).
But this principle raises an obvious question: what mark is
applicant actually using? The answer is sometimes not
clear, because it is not at all unusual for specimens to
comprise multiple trademarks, artwork, and other matter,
whether registrable or not.
Application No. 78653373
5
Needless to say, it is up to the applicant to choose
what it seeks to register. But what applicant seeks to
register must not only be in use, it must make a distinct
commercial impression as used. In re 1175856 Ontario Ltd.,
81 USPQ2d 1446, 1448 (TTAB 2006)(“[I]t is well settled that
an applicant may seek to register any portion of a composite
mark if that portion presents a separate and distinct
commercial impression....”). That is, the mark as actually
used must not be so entwined (physically or conceptually)
with other material that it is not separable from it in the
mind of the consumer. In re Chem. Dynamics Inc., 839 F.2d
1569, 5 USPQ2d 1828, 1830 (Fed. Cir. 1988).
Discussion
We note at the outset that both applicant and the
examining attorney have confused the issue in this appeal by
discussing whether the drawing in this application could be
amended. The drawing in a trademark application may not be
amended if the amendment constitutes a “material alteration”
of the drawing in the application. Trademark Rule 2.72.
However, the “material alteration” standard is not the issue
in this case because applicant has not attempted to amend
its drawing.3 We look instead to the requirement set out in

3 Although the examining attorney advised applicant in her first
office action that an amendment of the drawing to match the
specimens would constitute a material alteration of the mark in
the drawing, applicant was not prohibited from proffering such an
amendment. The purpose of such an advisory is to indicate the
Application No. 78653373
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Trademark Rule 2.51(b), that “the drawing of the mark must
be a substantially exact representation of the mark as used
on ... the goods....”4
As shown on the specimens of record, applicant is using
the mark UPPER 90°, although it seeks to register only UPPER
90. The question is whether applicant’s use supports such a
registration. To put it succinctly, “[i]t all boils down to
a judgment as to whether that designation for which
registration is sought comprises a separate and distinct
‘trademark’ in and of itself.” Institut des Appellations
d’Origine v. Vintner’s Int’l Co., Inc., 958 F.2d 1574, 22
USPQ2d 1190, 1197 (Fed. Cir. 1992); see also Chem. Dynamics,

USPTO’s preliminary opinion that such an amendment would be
futile, thus saving the time and resources of both the Office and
the applicant. But if applicant wished to proffer such an
amendment, so as to preserve the issue for possible appeal, it
was not prevented from doing so.
Even if applicant had filed a proposed amendment to its
drawing, we agree with the examining attorney that the amendment
would almost surely have been (properly) refused as a material
alteration. Although we cannot rule on a drawing which has not
been submitted, we note that the addition of a drawing element
which would require a further search is generally held to
constitute a material alteration. See In re Pierce Foods Corp.,
230 USPQ 307, 308-09 (TTAB 1986). Moreover, as discussed below,
UPPER 90 and UPPER 90° are significantly different in
connotation, such that an amendment from the former to the latter
would not create the impression of being essentially the same
mark, and would require republication if raised later in
prosecution. In re Hacot-Colombier, 105 F.3d 616, 620, 41 USPQ2d
1523, 1526 (Fed. Cir. 1997), quoting Visa Int’l Serv. Ass’n v.
Life-Code Sys., Inc., 220 USPQ 740, 743-44 (TTAB 1983).
4 The “substantially exact” standard is more stringent than the
“material alteration” standard; in other words, in some
situations, a drawing that is not a substantially exact
representation of the mark as used may nonetheless be amended to
agree with such use, so long as the amendment does not materially
alter the mark in the drawing. See generally TRADEMARK MANUAL OF
EXAMINING PROCEDURE (TMEP), §§ 807.12-807.13 (5th ed. 2007).
Application No. 78653373
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5 USPQ2d at 1829-30. Thus we must consider whether UPPER 90
makes a “separate and distinct commercial impression” from
UPPER 90° as it appears in the specimens.
Although the degree symbol in applicant’s mark is not
physically large, we find that it nonetheless substantially
changes the overall impression of the mark. Without the
degree symbol, it is unclear what the “90” in the drawing
might refer to. However, when viewed on applicant’s
specimens of use, the degree symbol in the mark would
clearly be perceived as modifying the preceding number,
making clear that its meaning is “ninety degrees,”
indicating that it refers to either an angle or a
temperature. As such, the mark might possibly suggest to
the potential purchaser that applicant’s sports clothing is
made for playing in especially hot weather, or indeed that
the mark refers to an angle, as applicant contends.
Thus, the mark in the specimen has a different
connotation, would be pronounced differently (“upper ninety”
vs. “upper ninety degrees,”) and looks slightly different
than the mark sought to be registered. The degree symbol in
this case clearly adds to the meaning of the mark in the
application. Our conclusion is therefore that UPPER 90 does
not form a “separate and distinct” commercial impression.
It cannot be severed from the degree symbol without altering
Application No. 78653373
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the meaning, pronunciation, and, to some extent, the
appearance of the mark.
Applicant argues that the mark is a reference to the
upper corners (i.e., 90 degree angles) of a soccer goal,
(apparently a particularly difficult spot to defend), and
that its customers would understand the mark in the drawing
to be the equivalent of the mark as used in commerce. In
support of this argument, applicant has submitted two
declarations, one from Marie E. Nemphos, applicant’s Vice-
President of Marketing,5 and one from Jennifer Harrison, a
soccer coach who is a “long-standing purchaser of soccer
oriented equipment and clothing.”
In her declaration, Ms. Nemphos states that
4. In the field of athletics, and
particularly soccer, the expression
UPPER 90 is well known as referring to

5 There is a page or pages missing from Ms. Nemphos’ declaration.
What is in the file consists of one page with the first 7 full,
numbered paragraphs. Paragraph 8 ends with an incomplete
sentence and is not continued on the next (or any other) page.
No exhibits to the declaration appear in the file. While the
examining attorney did not specifically point out the obviously
incomplete declaration, she did note in her final Office action
that the attachments referenced in Ms. Nemphos’ declaration did
not appear in the file. This should have alerted applicant to
the fact that the record was not complete. Although the missing
declaration pages and exhibits could have been submitted prior to
appeal, see Trademark Rule 2.64(b), applicant did not avail
itself of this option to correct the record.
Both Ms. Nemphos’ and Ms. Harrison’s declarations were filed
electronically, attached to applicant’s June 12, 2007, response
to the first (SOU) Office action. Electronically-submitted
correspondence is deemed filed upon receipt by the USPTO.
Trademark Rule 2.195(a)(2). Because the records of the Office do
not indicate receipt of the entire declaration, we cannot
consider it to have been filed. Nonetheless, we have given
applicant the benefit of the doubt and considered the single page
of Ms. Nemphos’ declaration despite the lack of a signature.
Application No. 78653373
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the upper corners (the upper 90 degrees)
of the goal.
5. The degree symbol has nothing to
do with temperature in UPPER 90°.
7. Use of the UPPER 90 expression is
not limited to soccer. It is also
applied, but to a lesser degree, to
other goal sports such as lacrosse and
hockey.
8. Based on my understanding in my
capacity as Vice President for
Marketing, to consumers of athletic
clothing, the target consumers for
Applicant’s goods marked with the mark
of this application, UPPER 90 refers to
the upper corner zones formed by the
crossbar....”

Ms. Harrison’s declaration is consistent:
2. I have played soccer and have been
involved with organized soccer programs
for over two decades, including playing
in college and in adult club leagues.
3. I am a long standing purchaser of
soccer oriented equipment and clothing.
4. As I understand it, YALE
SPORTSWEAR CORPORATION has applied for
registration of the trademark UPPER 90.
5. UPPER 90 designates the sweet spot
of a goal. That is, the zones of the
goal where the crossbar meets the
supporting posts in the upper corners.
The 90 degrees is not a temperature but
an angle, the angle of the top two
corners of the goal.
6. Whether UPPER 90, UPPER 90°, UPPER
NINETY, or UPPER NINETY°, to me as a
consumer of soccer/athletic oriented
goods, the connotation and pronunciation
are the same.
7. In the field of athletics and
particularly soccer, UPPER NINETY with
or without the degree symbol “°” has
nothing to do with temperature.
8. In my opinion, consumers of
athletic clothing, seeing UPPER 90 with
or without the degree symbol would not
make any difference. They would be
identical.
Application No. 78653373
10

While we do not doubt the declarants’ veracity or
sincerity, we do not find this evidence persuasive of how
the mark would be perceived by the average consumer of
applicant’s goods. Ms. Nemphos is applicant’s director of
marketing, and is thus well aware of the intended meaning
and commercial impression of the mark. But as we have
previously found in a likelihood of confusion analysis, an
applicant or registrant’s intended interpretation of the
mark is not necessarily the same as the consumer’s
perception of it. Interpayment Svcs. Ltd. v. Docters &
Thiede, 66 USPQ2d 1463, 1465 (TTAB 2003)(“In short, it does
not matter what applicant's intentions were in creating its
mark or what its characterization of its mark is. The fact
remains that the two symbols end up being substantially
identical, and that there is no genuine issue of material
fact that the public will perceive applicant's mark as the
euro symbol.”).
Ms. Harrison’s viewpoint is likewise not that of the
average consumer of the identified goods. By her own
admission, she has been involved in the sport of soccer for
more than twenty years. She is described in applicant’s
brief as “a soccer player and coach.” App. Br. at 3. As
was the case with Ms. Nemphos’ statement, the opinion of Ms.
Harrison – a player and coach steeped in the game – may well
Application No. 78653373
11
not be indicative of the perception of the average consumer
of the identified goods.6
Crucial to applicant’s argument is that purchasers of
its goods are experienced athletes of goal sports – soccer
players in particular – who are familiar with the term UPPER
90 (or UPPER 90°), and would recognize the two to be
equivalent. But as the examining attorney correctly points
out, we must consider the goods as identified in the
application. Cf. In re Elbaum, 211 USPQ 639, 640 (TTAB
1981)(likelihood of confusion). The application at issue
here has no limitations as to the classes of consumers,
channels of trade, or intended uses for the goods. Indeed,
purchasers of many of applicant’s goods need not be soccer
cognoscenti or even athletes; “t-shirts, shirts, tanktops,
pants, shorts, [and] sweatshirts” are commonly purchased by
the general public for non-athletic use. Accordingly, we
may not presume that applicant’s purchasers are soccer
players or athletes. Instead, we consider the marks from
the viewpoint of the general public, including both athletes

6 To the extent Ms. Harrison’s declaration expresses her
perception or opinion, rather than facts of which she has first-
hand knowledge, see, e.g., Harrison Dec. ¶ 8 (“In my opinion,
customers ... seeing UPPER 90 with or without the degree symbol
would not make any difference.”), it is entitled to relatively
little weight. The opinion of one person – no matter how sincere
– on the ultimate issue in this case is of little importance,
especially when that person does not appear to be representative
of all relevant purchasers. While survey evidence is not
required, declarations such as Ms. Harrison’s are not an adequate
substitute for a survey. We therefore cannot assign Ms.
Harrison’s opinions any more significance than that of a single
Application No. 78653373
12
and non-athletes. There is no evidence in this record to
indicate that members of the general public are familiar
with the term “Upper 90” or “Upper 90°,” let alone view them
as “substantially exact.”
Conclusion
After careful consideration, we find that applicant’s
drawing of the mark is not a substantially exact
representation of the mark as used in commerce. Trademark
Rule 2.51(b).
Decision: The refusal to register is accordingly
affirmed.

individual.