Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE UNIVAR CORPORATION
Serial No. 73/786,565
September 19, 1991
Hearing: August 12, 1991
Bruce E. O'Connor and Jeffrey M. Sakoi of Christensen, O'Connor, Johnson & Kindness for applicant
Robert J. Crowe
Trademark Senior Attorney
Law Office 7
(David Shallant, Managing Attorney)
Before Rooney, Cissel and Hohein
An application has been filed by Univar Corporation to register the name "UNIVAR" as a trademark and a service mark for a variety of goods and services in International Classes 1, 3, 4, 5, 39 and 42. [FN1]
Registration has been finally refused under Sections 1, 2, 3, and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1052, 1053 and 1127, on the ground that the name "UNIVAR" is used solely as a trade name and not as a trademark and a service mark. [FN2]
Applicant has appealed. Briefs have been filed and an oral hearing was held. We reverse.
It is well settled that, in appropriate circumstances, a name may function as both a trade name and as a trademark and/or a service mark. The question of whether a name used as a trade name or as a part thereof also performs the function of a trademark and/or a service mark is one of fact and is determined from the manner in which the name is used and the probable impact thereof upon purchasers and prospective customers. See, e.g., In re Walker Process Equipment Inc., 233 F.2d 329, 110 USPQ 41, 43 (CCPA 1956); In re Unclaimed Salvage & Freight Co., Inc., 192 USPQ 165, 167 (TTAB 1976); and In re Lytle Engineering & Mfg. Co., 125 USPQ 308 (TTAB 1960). As more particularly stated in In re Letica Corp., 226 USPQ 276, 277 (TTAB 1985):
There is no question that the name of a corporation, or a salient feature thereof, may serve a trade name function, a trademark function, or both. In re Walker Process Equipment Inc., 233 F.2d 329, 110 USPQ 41 (CCPA 1956); In re Lytle Engineering & Manufacturing Co., 125 USPQ 308 (TTAB 1960). However, it is also plain from the legislative history of the Trademark Act that there was a clear intention by the Congress to draw a line between indicia which perform only trade name functions and indicia which perform or also perform the function of trademarks or service marks. In re Canadian Pacific Limited, 754 F.2d 992, 224 USPQ 971, 974, note 6 (Fed.Cir.1985); In re Pennsylvania Fashion Factory, Inc., 588 F.2d 1343, 200 USPQ 140, 141 (CCPA 1978). Thus, trade names qua trade names do not qualify for registration. The determination whether the subject matter of an application for registration falls on one side or the other of this critical line depends primarily on the use evidenced by the specimens submitted with the application for registration. Pennsylvania Fashion Factory, supra, 200 USPQ at 141, although other evidence bearing on the question of what impact such use is likely to have on purchasers and prospective purchasers may also be considered. See, e.g., In re Seafood Supply Co., 216 USPQ 900, 901 (TTAB 1982); In re U.S. Bicentennial Society, 197 USPQ 905, 907 (TTAB 1978).
*2 The specimens for the goods, which are labels affixed to product containers, show the name "UNIVAR" used in the following context: [FN3]
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
Similarly, the specimens for the services, which are advertising materials, display use of the name "UNIVAR" in the following manner: [FN4]
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
Applicant, in addition, has made of record a copy of its "Graphics Standards Manual," which sets forth the specifications for typefaces, colors and spacial relationships for its various corporate signatures, including those illustrated above. [FN5] Although some deviations from the guidelines are permitted, any exceptions require prior consultation with the "corporate identity coordinator" for the particular subsidiary involved.
While conceding that, in the case of the specimens for the goods, its use of a partial address is a factor indicative of trade name usage, applicant maintains that other factors mandate a finding of trademark and service mark use for the name "UNIVAR". Applicant argues that it consistently uses the mark "UNIVAR" on the specimens in the logo set forth above. Such use, applicant stresses, is in a unique stylization and in significantly bolder lettering than the surrounding words. Applicant further notes that the location of the logo containing the mark "UNIVAR" is dictated by its graphics standards, with the distinctive format, typeset and location of the logo serving to set it and the mark "UNIVAR" apart from other words on the specimens and thereby helping to create a separate commercial impression for the mark "UNIVAR". Because its consistent use of the mark "UNIVAR" in the distinctively displayed logo clearly indicates that the term is being used as a trademark and as a service mark and not just as a trade name, applicant asserts that the name "UNIVAR," as used on the specimens, serves to identify its goods and services and to distinguish them from the goods and services offered by others. Applicant consequently contends that the name "UNIVAR" functions as a trademark and a service mark and is therefore registrable.
With respect to use of the mark "UNIVAR" as part of the informational phrase "subsidiary of Univar," applicant principally relies upon In re Firstamerica Corp., 127 USPQ 94, 95 (TTAB 1960), in which the mark "FIRSTAMERICA" was found to create an impression separate and apart from the other informational matter with which it appeared due to its use "in type entirely different than the other wording". Applicant emphasizes that, in a similar manner, it has gone to great lengths to create a separate commercial impression for the mark "UNIVAR" by always using it in a distinctive logo and by not using it in conjunction with the balance of its full corporate name, Univar Corporation. Applicant thus maintains that the word "UNIVAR" creates an impression separate and apart from the portions of the logo and other text on the specimens that are in different typeset and boldness and that "UNIVAR" accordingly functions and is registrable as a trademark and as a service mark.
*3 The Examining Attorney, on the other hand, argues that notwithstanding applicant's good intentions both to standardize the presentation of its corporate name and to use the name in bold lettering so that it is prominently displayed on its labels and advertising material, the only conclusion that can be drawn from applicant's actual use, as manifested by the specimens, is that the name "UNIVAR" designates a corporate parent company that has a subsidiary. Such a conclusion is inevitable, according to the Examining Attorney, because the words "subsidiary of" always precede the name "UNIVAR"; those words have a plain and readily understood meaning in the world of business; and their meaning is by no means obscured by the fact that the name "UNIVAR" appears in bold print.
The Examining Attorney contends that the facts in this case "fall squarely within those of" In re Signal Companies, Inc., 228 USPQ 956, 958-59 (TTAB 1986), in which the Board, finding that "corporations commonly employ phrases such as the one used here for the purpose of providing information about the company, i.e., to inform the public that a company is a subsidiary of or affiliated with a particular parent company or group of companies," held that the phrase "ONE OF THE SIGNAL COMPANIES," as used on the specimens, merely conveyed information about a business relationship and as such was a trade name use rather than use as a mark. Similarly, the Examining Attorney finds that as used on the specimens in this case, the name "UNIVAR" is used only as a trade name, noting that:
Applicant has argued its case for registration as if the words "subsidiary of" can be or should be ignored for two reasons. First, applicant has taken pains to be consistent in its use of the phrase "subsidiary of UNIVAR." Second, the name "UNIVAR" is used in a bolder print style than the words "subsidiary of." The first argument should not be given any weight. Consistent use of a trade name as a trade name without any trademark [or service mark] use remains trade name use. The second argument would carry some weight in this determination if the phrase "subsidiary of" were so obscured by the bold lettering of the name "UNIVAR" that the reader would not perceive them. However, that is not the case here. The commercial impression of the proposed mark is informational. It is information about a business relationship.
Applicant, in reply, urges that its graphic standards manual evidences its intent to do something more than simply inform an observer of the business relationship between itself and its subsidiary, Van Waters & Rogers, Inc. Applicant insists it uses its distinctive logo consistently not only to convey to the public information regarding a business relationship but, in addition, to convey a distinct and separate commercial impression in the term "UNIVAR" that is the essence of trademark and service mark usage. Had it merely intended to provide information concerning its relationship to Van Waters & Rogers, Inc., applicant asserts that it would have used the name "UNIVAR" in, for example, the same smaller and lighter style of type in which the words "subsidiary of" appear.
*4 We agree with applicant that the name "UNIVAR," as used on the specimens, functions as a trademark and as a service mark and not just as a trade name. In this regard, we note that applicant has not used its full corporate name [FN6] nor has it merely capitalized the name [FN7] or utilized it in the same style of lettering. [FN8] Instead, applicant has created a logo in which the name "UNIVAR" appears in a significantly bolder, larger and distinctively different style of type, without the designation "Corporation," and is often displayed in a contrasting color. The graphic scheme employed by applicant serves to set off the logo and the name "UNIVAR" from the balance of the other words and indications appearing on the specimens and thereby creates a separate and distinct commercial impression for the mark "UNIVAR". See, e.g., Book Craft, Inc. v. BookCrafters USA, Inc., 222 USPQ 724, 727 (TTAB 1984) ["[t]hat the invoices ... plainly show ... service mark use is apparent from the fact that ... the words 'BookCrafters, Inc.' appear in larger letters and a different style of print"]; Alford Mfg. Co. v. Alfred Electronics, 136 USPQ 390, 395 (TTAB 1962), aff'd, 333 F.2d 912, 142 USPQ 168, 171 (CCPA 1964) ["junior party ... used 'ALFORD' in the manner of a trademark by displaying it on the nameplates for its goods in a style of lettering larger than the other portions of its trade name, and in such a way as to create a separate and independent impression"]; and In re Lytle Engineering & Mfg. Co., supra [" 'LYTLE' is applied to the container for applicant's goods in a style of lettering distinctly different from the other portion of the trade name and is of such nature and prominence that it creates a separate and independent impression"]. [FN9] The impact of the manner in which the designation "UNIVAR" is used on the specimens is such that it functions as a trademark and a service mark apart from its significance as applicant's trade name.
While we concur with the Examining Attorney that the name "UNIVAR" designates the corporate parent of a subsidiary company, Van Waters and Rogers, Inc., we disagree with the contention that the phrase "subsidiary of," in which the mark "UNIVAR" appears on the specimens, must be so obscured or otherwise insignificant as to preclude its perception in order for there to be trademark and service mark use of the name "UNIVAR". We observe that unlike the situation in the case relied upon by the Examining Attorney, applicant is not seeking to register the informational phrase "SUBSIDIARY OF UNIVAR" nor does such phrase appear in considerably smaller but otherwise undifferentiated print. Rather, as previously pointed out, the mark "UNIVAR" independently projects a separate commercial impression, due to its presentation in a distinctively bolder, larger and different type of lettering and, in some instances, its additional use in a contrasting color, and thus does more than merely convey information about a corporate relationship. See In re Firstamerica Corp., supra ["the notation 'FIRSTAMERICA' is in type entirely different than the other wording and is so set out that it creates an impression separate and apart from the entire title"]. Consequently, it is manifest that purchasers and prospective customers for applicant's goods and services would perceive the name "UNIVAR," in light of its manner of use on the specimens, as a trademark and a service mark and would not exclusively regard the term as applicant's trade name.
*5 Decision: The refusal to register is reversed.
L. E. Rooney
G. D. Hohein
R. F. Cissel
Members, Trademark Trial and Appeal Board
R. F. Cissel
I would affirm the refusal to register. Irrespective of the intent of applicant that "UNIVAR" be perceived as a trademark and service mark, the size and style of the lettering used and the consistency in the way the word is used by applicant, I regard the term sought to be registered as a trade name only. The underlying principle for which the Signal case, mentioned above by the majority, stands is that a phrase providing information concerning the relationship between a parent company and its subsidiary simply conveys this information and is not perceived as an indication of the source of goods or services. As used by applicant, "UNIVAR" is identified as a business entity which is the parent of Van Waters & Rogers, Inc. I can find no basis upon which to conclude that any other significance would be attributed to it. To do so would require that the words "subsidiary of" be ignored. "UNIVAR" is shown in precisely the same size and style of lettering in which the name of its subsidiary corporation is shown, and even its address, complete with zip code, is shown below it on some of the specimens. That the words "subsidiary of" are shown in smaller lettering does nothing to change my perception of the word "UNIVAR". The absence of the word "Corporation" does not alter the significance of the term sought to be registered.
To contend that "UNIVAR" creates a separate commercial impression unrelated to that of the other words on the specimens does not seem to me to be justified by the evidence. Simply put, all the specimens tell us about "UNIVAR" is that it is a company which is the parent of another company and that it is located in Seattle, Washington, 98104. I can find no basis upon which to conclude that the term would be perceived as identifying and distinguishing either goods or services. I would therefore affirm the refusal to register.
FN1. Serial No. 73/786,565, filed on March 10, 1989, based upon use in commerce. The rather lengthy identifications of the goods and services, and their respective dates of first use, have no bearing upon the issue in this appeal and therefore have not been set forth in this opinion.
FN2. In particular, Section 45 provides in relevant part that the term "trade name" means "any name used by a person to identify his or her business or vocation" while the term "trademark" is defined as including "any word, name, symbol, or device, or any combination thereof-- ... used by a person ... to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown". Similarly, the term "service mark" is defined in pertinent part as meaning "any word, name, symbol, or device, or any combination thereof-- ... used by a person ... to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown".
FN3. The specimens for the goods in International Class 3 and some of those for the goods in International Class 1 reveal a minor variation, as depicted below, in which the letter "i" in the name "UNIVAR" is dotted:
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
FN4. The only substantive difference between the specimens for the goods and those for the services is that the former include the "Seattle, WA 98104" address.
FN5. In particular, the manual states on page A2 that:
These signatures link each subsidiary with the parent company in order to reinforce visually the fact that Univar is a family of companies.
The company names appear in the same custom-lettered version of Handel Gothic that is used for the Univar name. The words "subsidiary of" are a custom-lettered Extra Light version of Handel Gothic. These are the only typefaces that should be used. Do not use these typefaces in any relationships other than those shown here; they should not be rearranged or re-spaced. The signatures should not be reproduced with the height of the initial capital letters smaller than 1/8 ".
The color selected for the standardized presentation of the corporate logo is a Bronze, identified in the Pantone Matching System as PMS 139. This is the preferred color to use for the word "Univar" whenever it appears as part of the corporate or subsidiary signature.
When it is not possible to use Univar Bronze for the logotype, these guidelines should be followed: the logotype should be reproduced black on light-colored background or in white reversed out of a color. It should not be reproduced in any other color.
The Van Waters signature and the words "subsidiary of" should appear in VW & R Green (PMS 340) or in black.
FN6. The presence of a corporate designator in a name sought to be registered is a factor which frequently leads to a finding solely of trade name use, especially when the name appears in close proximity to a corporate address. See, e.g., In re Arkansas Rice Growers Cooperative Ass'n., 185 USPQ 185 (TTAB 1975) and In re Maguire, 122 USPQ 398 (TTAB 1959).
FN7. See, e.g., In re Antenna Specialists Co., 408 F.2d 1052, 161 USPQ 284 (CCPA 1969), aff'g 150 USPQ 820 (TTAB 1966); In re Walker Process Equipment Inc., supra, aff'g 102 USPQ 443 (Comm'r Pats.1954); and In re Perma-Life Mufflers, Inc., 123 USPQ 584 (TTAB 1959).
FN9. Although the Board in In re Letica Corp., supra, held that the name "LETICA," which was used on the goods as part of the corporate designation "LETICA Corp.," was no more than trade name use, the Board in dicta conceded with respect to "a more distinctive logo" used in various renditions in applicant's advertising for its goods that, "had applicant presented specimens demonstrating use of LETICA in the same form as that on the advertising brochure on or in connection with the molded plastic containers [for which registration of the mark was sought], ... applicant's mark might have qualified for trademark registration on the same basis of Lytle Engineering and other decisions, i.e. that the use is trademark as well as trade name use."