IN RE PERFETTI VAN MELLE BENELUX BV, 77306624 (TTAB 2-8-2011)
In re Perfetti Van Melle Benelux BV
Serial No. 77306624United States Patent and Trademark OfficeTrademark Trial and Appeal Board
Mailed: February 8, 2011Page 1
THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B.
George W. Lewis of Jacobson Holman for Perfetti Van Melle Benelux BV.
Elissa Garber Kon, Trademark Examining Attorney, Law Office 106 (Mary I. Sparrow, Managing Attorney).
Before Walters, Zervas and Wellington, Administrative Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Perfetti Van Melle Benelux BV seeks registration on the Principal Register of its mark (as amended and shown below) for “confectionery, namely, candy and chewing gum,” in International Class 30.[fn1] The application includes a disclaimer of BREATH apart from the mark as a whole.Page 2
The application was filed on the basis of intent-touse under Trademark Act Section 1(b), 15 U.S.C. § 1051(b). The mark was published for opposition, a notice of allowance was issued, and, on March 5, 2009, applicant filed a statement of use, alleging first use and use in commerce as of January 1, 2009, along with a specimen of use.
At issue in this appeal is the Trademark Examining Attorney’s final refusal to register applicant’s mark, under Trademark Act Sections 1 and 45,15 U.S.C. §§ 1051 and 1127, on the ground that the specimen does not show the mark in use in commerce as a trademark because the mark in the drawing is not a substantially exact representation of the mark as it appears on the specimen of record.
The appeal is fully briefed. After careful consideration of the evidence and arguments of record, we affirm the refusal.Page 3
The mark appears as follows in the specimen of record:
Section 1 of The Trademark Act requires that an applicant submit "specimens or facsimiles of the mark as used in commerce." 15 U.S.C. § 1051. Trademark Rule 2.51(b),37 C.F.R. § 2.51(b), provides:
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.
To determine whether the mark in the drawing is a substantially exact representation of the mark as actually used, one question is whether the “designation for which registration is sought comprises a separate and distinct ‘trademark’ in and of itself.”Institut Nat’l Des AppellationsD’Origine v. Vinters Int’l Co., 958 F.2d 1574, 22 USPQ2d 1190, 1197 (Fed. Cir. 1992) (CALIFORNIA not part of mark CHABLIS WITH A TWIST as shown on wine label and,Page 4
moreover, it is geographically descriptive and, thus, devoid of trademark significance). This is clearly a judgment call. Id. See also In re Chemical Dynamics Inc.,839 F.2d 1569, 5 USPQ2d 1828 (Fed. Cir. 1988).
In other words, we must ask “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.” In re Yale Sportswear Corp.,88 USPQ2d 1121, 1123 (TTAB 2008). In Yale, the Board also made the following relevant statements about determining this issue:
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). (Id.)
Applicant contends that “the extraneous matter in the specimens is a depiction of the goods and the wording ‘chewing gum’” (Request for Reconsideration, 1/25/2010); and that “[a]pplicant has a family of PURE marks … forPage 5
several PURE branded products [and] [g]iven applicant’s use of the PURE mark for different product lines, the mark of the instant application would have a requisite commercial impression.” (Id.) Applicant states that it is not arguing that “the commercial impression is MENTOS PURE BREATH as one continuous word expression. The contention is that the word elements as they appear on the drawing in form and position create a commercial impression.” (Brief, p. 4.)
The examining attorney outlined the following reason for her refusal (Office Action, 7/24/2009):
In this case, the specimen displays the mark as MENTOS with the wording PURE FRESH PURE BREATH and a mint design to the lower right, while the drawing shows the mark as MENTOS with PURE BREATH to the lower right. On the specimen, PURE FRESH PURE BREATH is visually unitary. MENTOS appears in blue and white with the red wording CHEWING GUM underneath it. PURE FRESH appears in the same blue and white, while PURE BREATH appears in red and fits squarely next to FRESH and under PURE. The positioning of PURE BREATH with PURE FRESH renders them visually unitary. Consumers would not pick out PURE BREATH apart from PURE FRESH, in association with MENTOS. There is simply too much visual separation and too many other registrable elements between MENTOS and PURE BREATH for consumers to perceive these two elements as forming one mark.
We agree with the examining attorney that the mark for which applicant seeks registration is not a substantially exact representation as the mark in the specimen of record. We perceive as one unitary mark on the specimen, the wordPage 6
MENTOS with the “crinkle” background and the word CHEWING GUM below and to the right of MENTOS and in different font and color (“MENTOS design mark”). Below this mark we perceive as a separate unitary mark a white rectangle with a picture of applicant’s chewing gum forming a left border to the rectangle and, inside the rectangle, the larger and dominant word PURE above the smaller words FRESH PURE BREATH (“PURE and rectangle design mark”). On the lower line, FRESH is visually separate from PURE BREATH because FRESH is larger and a different color and, as such, we agree that PURE BREATH stands out as a unitary phrase in this second mark. Nonetheless, PURE BREATH remains an integral part of the mark formed by the white rectangle and picture of the chewing gum. Applicant cannot replace the phrase CHEWING GUM in the first noted mark with the phrase PURE BREATH simply because CHEWING GUM is the generic term for some of the goods. Moreover, even if we consider both noted marks to be a single mark on the specimen, PURE BREATH is separated by too much significant wording and design matter from the MENTOS portion of the mark. The mark herein that results from removing that wording and design matter is not by any stretch of the imagination a substantially exact representation of the mark shown on the specimen of use.Page 7
We are not persuaded otherwise by applicant’s argument that the wording in the mark and specimen herein is analogous to the wording in the mark in In re Raychem Corp., 12 USPQ2d 1399 (TTAB 1989), in which applicant sought registration of the mark TINEL-LOCK for “metal rings for attaching a cable shield to an adapter”; and submitted a label showing an alpha-numeric designation, TRO6AI-TINEL-LOCK-RING, and, as additional evidence, a brochure containing multiple references in the text to TINEL-LOCK. The Board concluded that TRO6AI, a model number, and RING, the name of the goods, are not essential to the commercial impression of the mark; and the hyphens do not, under the circumstances presented in this case, create a unitary expression such that ‘TINEL-LOCK’ has no significance by itself as a trademark.” (Id. at 1400.) We find the cases distinguishable on their facts. In the case before us there are significant registrable design elements and nondescriptive wording, such as PURE separating PURE BREATH and MENTOS and crinkle design from each other to conclude that the mark shown in applicant’s drawing has significance by itself as a trademark.
Similarly, we are not persuaded by applicant’s argument that it has a family of PURE marks. First, the mark in this application must be registrable based on itsPage 8
use as shown in the specimens of record and not on the basis of the use of other marks. Also, the concept of a family of marks is more relevant in the context of a likelihood of confusion analysis and, moreover, applicant has not established a family of marks.[fn2]
After careful consideration, we find that applicant's drawing of the mark is not a substantially exact representation of the mark, shown on the specimen of record, as used in commerce. Trademark Rule 2.51(b).
Decision: The refusal to register is affirmed.
[fn1] Serial No. 77306624, filed October 17, 2007. The application includes the statement that “the mark consists of the stylized word ‘mentos’ with the words ‘PURE BREATH’ underneath, and a design with a miscellaneous overlapping circular pattern in the background, fading from dark to light moving downward. Color is not claimed as a feature of the mark.
[fn2] “A family of marks is a group of marks having a recognizable common characteristic, wherein the marks are composed and used in such a way that the public associates not only the individual marks, but the common characteristic of the family, with the trademark owner. Simply using a series of similar marks does not of itself establish the existence of a family. There must be a recognition among the purchasing public that the common characteristic is indicative of a common origin of the goods.” J J Snack Foods Corp. v.McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991).