Thursday, October 13, 2005

TTAB Reverses Mutilation Refusal of "THE GRAY FOXES" Design Mark

The Gray Foxes, apparently a golf-related association of some sort located in Palmyra, Virginia, convinced the Board to overturn a PTO refusal to register the logo mark shown below for golf towels, hats, and shirts. The Examining Attorney contended that the mark shown in the application drawing did not "agree with the use of the mark on the specimens." In re The Gray Foxes, Serial No. 76544022 (Sept. 30, 2005) [not citable].

The drawing of the mark

The mark as it appears on Applicant's class 25 specimen is shown immediately below. It includes the wording "LAKE MONTICELLO" curved along the lower edge of the logo shown in the drawing above.

The Examining Attorney required that Applicant submit a new specimen "properly showing the mark as used." [She also indicated that Applicant could not submit a new drawing conforming with the specimens because "the character of the mark would be materially altered."]

The Board stated the issue to be whether the mark shown on the drawing "is a substantially exact representation of the mark as used on the specimens. See Trademark Rule 2.51(a)." In other words, is the mark sought to be registered a "'mutilation' or incomplete representation of the mark that is actually used"?

The Examining Attorney maintained that the wording "LAKE MONTICELLO" together with the logo form a composite word-and-design mark that produces a "unified commercial impression 'that is distinctly different than the mark on the drawing.'" She argued that the wording appears "in extremely close proximity beneath [the design]" and she concluded that "spatial proximity in this case is very significant in the commercial connotation of the mark."

The Board noted that an Applicant may seek to register any portion of a composite mark that creates its own separate and distinct commercial impression. It agreed with the Applicant that the fox logo creates a separate commercial impression apart from the wording "LAKE MONTICELLO." Contrary to the PTO's "apparent position," proximity is a consideration but is not controlling.

Here, the phrase "LAKE MONTICELLO" is physically separated from the design, is smaller in size and in slightly different stylization than the words 'THE GRAY FOXES," and is less prominent. Therefore the Board viewed "LAKE MONTICELLO" as a "visually insignificant part of the composite mark," the removal of which "does not disturb any aspect of the visual continuity" of the mark.

The Board also viewed "LAKE MONTICELLO" as "conceptually insignificant" because it is a "nondistinctive geographic term with no inherent trademark significance." "Moreover, this geographic term is not connected in meaning to any other portion of the composite mark. Instead, it performs a purely informational function and contributes nothing of significance to the overall commercial impression of the mark."

Therefore, the Board held that the mark shown in the drawing is a "substantially exact representation of the mark shown on the specimens."

TTABlog comment: I wonder if THE GRAY FOXES are something like the GRAY PANTHERS, only more athletic?

Text Copyright John L. Welch 2005


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