Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE BOYD COFFEE COMPANY
Serial No. 74/021,106
January 29, 1993
John M. McCormack of the firm of Kolisch, Hartwell, Dickinson, McCormack & Heuser for applicant.
Trademark Examining Attorney
Law Office 9
(Sidney Moskowitz, Managing Attorney)
Before Rice, Simms and Hanak
Boyd Coffee Company (applicant), an Oregon corporation, has appealed from the final refusal of the Trademark Examining Attorney to register the mark shown below
for coffee brewers and tap water conditioners, in Class 11. [FN1] The Examining Attorney has refused registration because the mark sought to be registered is assertedly a mutilation of the actual mark used on applicant's goods. That mark is shown below.
The Examining Attorney notes that the drawing of the mark sought to be registered shows only the cup and saucer design while the mark as actually used includes that design as well as a sunburst design. The Examining Attorney has therefore made final a requirement that applicant submit substitute specimens which use only the mark sought to be registered (cup and saucer design only). [FN2]
Applicant, on the other hand, argues that the cup and saucer design sought to be registered has a separate commercial impression from the sunburst, which, according to applicant, is a distinctive and separable element of applicant's mark. [FN3] According to applicant, the removal of the sunburst does not destroy the commercial impression generated by the cup and saucer design sought to be registered.
Upon careful consideration of the arguments of applicant and the Examining Attorney, it is our opinion that the cup and saucer design and the sunburst design are integral features of a unitary mark and that, at least on this record, the cup and saucer design does not create a separate and distinct commercial impression which performs a trademark function of identifying the source of applicant's goods apart from the remainder of the design. From the promotional material of record, we note that applicant always uses the cup and saucer design with the sunburst design. The Examining Attorney argues, reasonably we believe, that the sun's rays appear to be emanating from the cup. According to the Examining Attorney, the mark imparts a "sunshine-in-a-cup impression." We note that applicant has submitted no facts supporting its claim that purchasers would recognize this cup and saucer design alone. We agree with the Examining Attorney, therefore, that the mark actually used creates one commercial impression; that is, the cup and saucer and the sunburst design are interrelated elements in one unified mark.
It should be noted that we have decided this case on the relatively sparse record before us. In this regard, we note that the Examining Attorney did not press an earlier requirement that applicant submit new specimens which make more visible the mark as actually used on the goods. From the brochures of record, the mark as used on the goods is not clearly visible. However, the brochures do contain a depiction of the composite mark in several places. In two illustrations of the mark on these brochures (not on the goods themselves), the cup and saucer design appears in white while the sunburst design appears in either a bright or a pale yellow. In the other illustration, both the cup/saucer and the sunburst design appear in white and black. We frankly acknowledge that applicant would have a stronger case for registrability of the cup and saucer design were it to be displayed on applicant's goods against a sunburst design in a different color or shade, so that the cup and saucer design stood out from the rest of the design. However, because the photographs of applicant's goods in this brochure do not clearly show how applicant's mark is used on the goods themselves and because applicant has not argued that the cup and saucer design is used against a sunburst design in a contrasting shade or color, much less included a statement to that effect in its application, we have decided this case on the assumption that the composite mark is used without such contrast.
*2 Finally, we should state that this decision is somewhat subjective and that there is little pertinent case law on which to base our judgment. Many of the so-called "mutilation" cases involved attempts by applicants to register designs or backgrounds apart from words with which they are used. See, for example, Jimlar Corp. v. Army and Air Force Exchange Service, 24 USPQ2d 1216 (TTAB1992), In re Speroulias, 227 USPQ 166 (TTAB1985), In re Volante International Holdings, 196 USPQ 188 (TTAB1977), In re The Library Restaurant, Inc., 194 USPQ 446 (TTAB1977), and Permatex Company, Inc. v. California Tube Products, Inc., 175 USPQ 764 (TTAB1972). See also J.T. McCarthy, Trademarks and Unfair Competition, § 7.8 (2d ed. 1984). However, the recent case of In re Chemical Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828 (Fed.Cir.1988), does provide some support for the result reached in this case. See also TMEP Section 807.13(a) (1986). Cf. Dena Corp. v. Belvedere International Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed.Cir.1991).
Decision: The refusal of registration is affirmed.
FN1. Application Serial No. 74/021,106, filed January 22, 1990, claiming use since July 1984. In the original application, while applicant paid just one filing fee, the application contained goods in more than one class. The Examining Attorney informed applicant of this fact and applicant filed an amendment covering the above-identified goods as well as coffee servers in Class 21. The Examining Attorney noted that applicant had added a class of goods but had not paid an additional filing fee. Applicant was requested to submit this fee but no additional fee was ever submitted. Also, applicant submitted only $100 to cover the appeal fee for one class of goods. After inquiry, applicant's attorney informally advised the Board to consider this appeal with respect to its Class 11 goods only, that is, coffee brewers and tap water conditioners.
FN2. While the Examining Attorney had earlier stated that applicant could, as an alternative, submit a new drawing of the mark which agrees with the specimens (cup and saucer design with sunburst), the Examining Attorney later advised applicant that it could not amend the drawing because to do so would constitute a material alteration of the original mark in the drawing. See Trademark Rule 2.72(a).