TTABlog Test: Does "HICCUP" Create a Separate Commercial Impression in These Specimens of Use?

The USPTO refused registration of the mark HICCUP for various entertainment services, on the ground that the drawing (the work HICCUP in standard character form) was not a "substantially exact representation of the mark as used” in commerce, in violation of Trademark Rule 2.51(a). Applicant argued that the word HICCUP creates a separate and distinct commercial impression from the remainder of the verbiage. Reviewing the two specimens of use shown below, how do you think this appeal came out? In re Imaginif, Inc., Serial No. 86803751 (November 21, 2019) [not precedential] (Opinion by Judge Michael B. Adlin).

The first specimen of use, shown above, displays the phrase "Hiccup Hangout" in bold font with a TM after the phrase, while the second (below) shows the terms "The Hiccup Family" and "the whole Hiccup clan." The word "Hiccup" also appears in character names ("Surprise and delight guests with special appearances from the Hiccup family! Choose whether you’d like Rhubarb Hiccup, Sylvestor Hiccup, Razberry Hiccup, Boyzenberry Hiccup or the whole Hiccup clan at your next event!").

The Examining Attorney pointed out that the word HICCUP "is not physically or visually separated from these other words, and is also “conceptually integrated with these other words” in that it “conveys the meaning of a last name rather than its normal dictionary meaning.” Applicant asserted that HICCUP is used in a “variety of different ways” to identify different aspects of applicant’s services, including meeting "members of Kringle’s® family in the Hiccup Hangout™," where the Hiccup family spends time, and meeting the Hiccup family (or “clan”) itself..

The Board observed that an applicant “has some latitude in selecting the mark it wants to register,” and “may seek to register any portion of a composite mark if that portion presents a separate and distinct commercial impression which indicates the source of applicant’s goods or services and distinguishes applicant’s goods or services from those of others.”

The Board sided with applicant: "while the specimens do not depict HICCUP alone, the terms with which the mark is used serve to highlight that the source-identifier in the specimens is the term HICCUP alone, notwithstanding that HICCUP appears with other terms."

We find that consumers encountering HICCUP as it is used in the specimens would view HICCUP as presenting a "separate and distinct commercial impression which indicates the source of" Applicant’s services. In each instance, the specimens reveal that Applicant’s services are provided by the HICCUP family/clan or its members, whether the services are provided in the HICCUP HANGOUT or elsewhere, and whether the services are provided by Rhubarb, Sylvestor, Razberry and Boyzenberry HICCUP all together, individually, or in some other combination. 

The Board deemed its decision here to be consistent with "a number of analogous cases" where, for example, it found that CHABLIS WITH A TWIST was not a mutilation of the mark that was actually used, CALIFORNIA CHABLIS WITH A TWIST; NANOCEUTICAL was supported by a specimen that displayed the term “embedded in the phrase RBC’S NANOCEUTICAL”; TINEL-LOCK was acceptable when the mark on the specimens was TRO6AI-TINEL-LOCK-RING; GRIPLET was supported by a specimen displaying BERG GRIPLET; RESPONSER was okay where the specimen depicted use of MEYER RESPONSER ("Meyer” was the name of the applicant’s president and inventor of the devices for which the mark was used); and DUMPMASTER was registrable based on a specimen depicting mark as DEMPSTER DUMPMASTER in stylized form.

And so the Board reversed the refusal.

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TTABlog comment: I don't like these non-mutilation decisions.

Text Copyright John L. Welch 2019.