Thursday, January 14, 2010

Test Your TTAB Judge-Ability on this Specimen of Use

Here's a not so deli-cate appellate situation: Applicant seeks to register the mark DELI EXPRESS SAN LUIS in standard character form for "burritos; snack cakes; and snack rolls, namely, sweet rolls." Examining Attorney Nakia D. Henry refused registration on the ground that the mark in the drawing (i.e., DELI EXPRESS SAN LUIS) is not a substantially exact representation of the mark as it appears on the specimen (shown immediately below). See Section 1(d)(1) of the Act, and Trademark Rule 2.51. Would you affirm or reverse the refusal? In re E.A. Sween Company, Serial No. 77048091 (January 12, 2010) [not precedential].

Applicant E.A. Sween Company owns registrations for SAN LUIS and for DELI EXPRESS. It argued that the applied-for mark "is merely a composite of these previously-registered marks and that it is 'free to choose the elements of its composite marks that it wants to register,' citing to TBMP Sec. 807.12(d)...."

The question is whether Sween's proposed mark "will be perceived as a unitary mark, albeit a composite of elements, or if it will be viewed as constituting multiple marks." The analysis is "necessarily subjective."

The Board affirmed the refusal to register, ruling that DELI EXPRESS and SAN LUIS are depicted "in such a manner that consumers would not perceive them as constituting a single composite mark." It noted the different colors and fonts, the border around DELI EXPRESS, and the triangle design between the two phrases.

Taken together, we find that the impression left by this specimen is that the two elements, DELI EXPRESS and SAN LUIS, are two separate trademarks rather than the single mark shown on the drawing page. Even accepting applicant's assertion that DELI EXPRESS is a house mark, there is nothing about the use of SAN LUIS that suggest that these two elements together form the impression of a single trademark.

And so the Board found that the drawing of the mark is not a "substantially exact representation of the mark as used in commerce" and it affirmed the refusal.

TTABlog comment:
How did you do? Do you think you have what it takes to be a TTAB judge? Why not?

TTABlog further comment: A commenter says the Board was wrong here in view of a prior, non-precedential Board decision in In re Jordan Outdoor Enterprises, Ltd., Serial No. 78298898 (August 9, 2006) [not citable] [TTABlogged here]. I think the Board got it wrong in Jordan when it found that the specimen below supported registration of the mark REALTREE HARDWOODS GREEN HD.

TTABlog reader comment: A reader has e-mailed the following comment to me regarding how to reconcile Sween with Jordan:

(1) The question in Jordan was whether applicant’s decision in its drawing to delete two literal elements [BILL JORDAN’S and HIGH DEFINITION] “mutilated” the mark as actually used. On that issue, there exists a whole line of cases such as In re Miller Sports Inc., 51 USPQ2d 1059 (TTAB 1999). There was no such issue in the Sween case.

(2) We all know the famous expression about pornography, "I know it when I see it." Jordan talks about the fact that the triangle was overlapping, and the Office should give applicant some deference in selecting for the drawing in its applicant for registration what it considers to be its mark. By contrast, Sween points out the obvious – these are two distinct trademark, on the same plane, yes, but somewhat more remote, e.g., citing to In re Audi NSU Auto Union AG, 197 USPQ 649 (TTAB 1977). Perhaps this panel would have followed Jordan with the following specimen image (and of course, to be similar to Jordan, would have been asked by the Trademark Examining Attorney to focus solely on the question of whether applicant was free to leave out of a typed drawing “Quality Since 1955,” without mutilating the image as used):

Steve Baird, counsel for Applicant Sween, comments here at the Duets Blog.

Text Copyright John L. Welch 2010.


At 7:27 AM, Anonymous Anonymous said...

I think the TTAB got it right. Colors, fonts, designs... Other than being on the same face of the package what's to bring the "elements" of this "composite mark" together other than wishful thinking? The tone of the blog post is questioning the outcome, but if something's amiss here I'm missing it.

At 8:54 AM, Blogger John L. Welch said...

I meant the tone to be neutral. I agree with you: the Board got it right. I don't even think it was a close call. Perhaps my attempt at humor caused the problem?

At 8:56 AM, Blogger John L. Welch said...

I changed the attempted pun "deli-cate" to "not so del-cate". Maybe that's a better tone.

At 9:48 AM, Anonymous Anonymous said...

I think the Board, "anonymous," and JLW are all wrong based on prior Board precedent. See In re Jordan Outdoor Enterprises, LTD., 2006 WL 2558005, *3 (T.T.A.B. August 9, 2006). This case is VERY analagous from my quick morning review of things. If you could post the image of the specimen in the cited case, your readers could compare. And no, i was not involved in either case. What say thee JLW?

At 9:55 AM, Blogger John L. Welch said...

Who are ye? Please don't call me "thee." It makes me sound even older.

At 10:45 AM, Anonymous Orrin A. Falby said...

The TTAB got it right. No need to go into why. Its so obvious. I don't understand why they did not simply file two separate applications. But then again, they went through an appeal. LOL!!

BTW John, thou aren't that old:-)

At 11:21 AM, Anonymous Anonymous said...

William Morris, Trademark Counsel for Under Armour, Inc. Hey John. As to which decision is ultimately right/wrong, well, i don't know if there is a correct answer b/c my belief that one is wrong is based on what the Board has previously said. I do not believe these decisions can be easily reconciled, and the outcome here has to be frustrating for the applicant in light of the Board's prior precedent.

At 7:47 PM, Anonymous Steve Baird said...

John, not even a close call, hmmm? William, thanks for removing your mask, I appreciate your comments. Since I represented Applicant in this specimen matter, I have a lot of thoughts about the decision and the "necessarily subjective" specimen determinations, in general, too. I propose that if it would be reasonable for a consumer seeing the specimen to request the product by asking for a "Deli Express San Luis" concha or sweet roll, then the specimen must be considered to show use of the mark:


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