Ahlstrom Corp.

Trademark Trial and Appeal Board

Jun 19, 2001

No. 75362796 (T.T.A.B. Jun. 19, 2001)

06/19/01 Paper No. 12
RLS/krd
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T T A BUNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re A. Ahlstrom Corporation
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Serial No. 75/362,796
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Robert A. Vanderhye of Nixon & Vanderhye P.C. for A.
Ahlstrom Corporation.
Janice L. McMorrow, Trademark Examining Attorney, Law
Office 104 (Sidney Moskowitz, Managing Attorney).
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Before Simms, Hanak and Drost, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
A. Ahlstrom Corporation (applicant), a corporation of
Finland, has appealed from the final refusal of the
Trademark Examining Attorney to register the asserted mark
AHL for “machines and equipment for the pulp and paper
industry, namely, agitators, mixers, digesters, thickeners,
bleaching towers, presses, feeders, pulp screeners, pulp
centrifugal cleaners, and replacement parts therefor.”1
1 Application Serial No. 75/362,796, filed September 25, 1999,
based upon applicant’s bona fide intention to use the mark under
Ser. No. 75,362,796
2
Applicant and the Examining Attorney have submitted briefs
but no oral hearing was requested.
It is the Examining Attorney’s position that the mark
shown on the drawing of this application –- AHL -– does not
match the mark on the specimens filed with applicant’s
amendment to allege use, shown below.
Section 1(b) of the Act, 15 USC § 1051(b). Applicant
subsequently filed an amendment to allege use asserting first use
“since about 1990.”
Ser. No. 75,362,796
3
The Examining Attorney contends that the mark on the
drawing is an incomplete representation of the mark or
marks shown on applicant’s acceptable specimens of record,
wherein these letters appear only as a part of unitary
marks. Because these letters are assertedly an inseparable
part of the marks AHLSTROM and AHLSORTER and do not project
a separate and distinct commercial impression, it is the
Examining Attorney’s position that the mark sought to be
registered is a “mutilation” of the mark or marks shown on
the specimens of record. The Examining Attorney maintains
that applicant may not register a non-separable component
which is never used as a separate mark and does not have a
separate and distinct commercial impression.
Furthermore, the Examining Attorney argues that the
fact that applicant uses these letters as a prefix in a
number of marks does not entitle applicant to register the
prefix alone without proof that the prefix creates a
separate commercial impression. While the Examining
Attorney concedes that some of applicant’s marks support
its assertion that the letters AHL are used with
descriptive or generic terms, the Examining Attorney argues
that these unitary marks have separate and distinct
commercial impressions such that these letters are
inseparable, even when combined with descriptive or generic
Ser. No. 75,362,796
4
matter. Because applicant has not submitted specimens
showing the asserted mark AHL used in such a manner as to
create a distinct and separable commercial impression, the
Examining Attorney has made final her requirement for
substitute specimens.2
Even with respect to the mark AHLSelect (shown below),
the Examining Attorney maintains that that mark is unitary
as well. In addition to noting that the asserted mark
AHLSelect is being used on promotional material not
appropriate as trademark specimens, the Examining Attorney
points to the fact that the italicized word “Select” is in
similar size type on the same line and that this mark
appears as one word because there is no space between the
prefix AHL and the word “Select.”
2 This is so, according to the Examining Attorney, because
applicant cannot amend the drawing to conform to the display of
Ser. No. 75,362,796
5
Applicant, on the other hand, argues that the letters
AHL project a distinct commercial impression in its marks.
Applicant points to the fact that AHL is a prefix which is
“commonly” used with a descriptive or generic word.
Applicant’s marks are just like there was a
hyphen between the “AHL” and the other words, and
because the other words are typically generic
terms they are recognized as distinctly different
from the “AHL”.
Appeal brief, 3. Applicant has also argued that where
there is a family of marks, the prefix (or suffix) is
registrable even if that prefix is used with other
elements. Applicant has in particular pointed to the
AHLSelect mark which applicant contends would be viewed as
two different marks because of the “vast differences” in
type styles in this mark. Finally, applicant asks us to
resolve any doubt in this case in its favor.
The issue in this case is whether the asserted mark as
it appears on the drawing is a “mutilation,” or an
incomplete representation, of the mark actually used, as
evidenced by the specimens submitted with applicant’s
amendment to allege use. In other words, does the mark on
the drawing create a separate and distinct commercial
the mark on the specimens. If that is done, the character of
applicant’s mark would be materially altered, she argues.
Ser. No. 75,362,796
6
impression so that these letters are separately
registrable?
Trademark Rule 2.51(a)(2) provides, in part, that
“Once a statement of use ... has been filed, the drawing of
the trademark shall be a substantially exact representation
of the mark as used on or in connection with the goods[.]”
The fact that two or more elements form a composite mark
does not necessarily mean that those elements cannot be
registered separately. In this regard, it is well
established that an applicant may apply to register an
element of a composite mark only if that element, as shown
in the record, 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. See, for example, In re Chemical
Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828 (Fed. Cir.
1988); Institut National des Appellations D’Origine v.
Vintners International Co., Inc., 958 F.2d 1574, 22 USPQ2d
1190 (Fed. Cir. 1992); In re Miller Sports Inc., 51 USPQ2d
1054 (TTAB 1999); In re San Diego National League Baseball
Club, Inc., 224 USPQ 1067 (TTAB 1983); and In re Berg
Electronics, Inc., 163 USPQ 487 (TTAB 1969). See also
Trademark Manual of Examining Procedure, Sections 807.14
and 807.14(b), and authorities discussed therein. Where
Ser. No. 75,362,796
7
the mark shown on the specimens of record depicts a unitary
mark which creates a single commercial impression, the
attempt to separate part of that mark, as noted above, is
termed a “mutilation” of the mark.
In determining whether the element sought to be
registered creates a separate and distinct commercial
impression, one must look to the specimens of record. In
re Audi NSU Auto Union AG, 197 USPQ 649, 650 (TTAB 1977).
The issue thus becomes whether the specimens of record
establish use of the mark shown on the drawing of the
application. This is necessarily a somewhat subjective
determination based upon the impact of the asserted mark on
potential purchasers. See In re Wendy’s International,
Inc., 227 USPQ 884 (TTAB 1985).
Upon careful consideration of this record and the
arguments of the attorneys, we conclude that the asserted
mark AHL is not a substantially exact representation of the
marks (AHLSTROM and AHLSORTER) used on the goods, as
evidenced by the specimens of record. The specimens show
use of these letters only as part of a unitary mark and do
not show the asserted mark as it appears on the drawing.
Because the asserted mark is always used in unitary marks,
we cannot say that these letters alone create a separate
and distinct impression such that they are separately
Ser. No. 75,362,796
8
registrable as a trademark for applicant’s goods.
Therefore, the letters AHL shown in the drawing of the mark
are a mutilation of the marks shown on the specimens of
record. In order for applicant to register these letters,
applicant must file specimens showing use of these letters
per se, or at least demonstrating that this part of
applicant’s marks forms a separate and distinct commercial
impression.
Applicant’s argument that the specimens show use of
these letters by themselves is unavailing. Nor is
applicant’s argument that its marks should be considered as
if the letters AHL were separated from the remaining
elements of its mark by a hyphen. Aside from the fact that
this is not the way applicant’s marks are portrayed on the
specimens, this Office has long considered hyphenated marks
to be unitary marks. See TMEP § 1213.04(b) and authority
cited there.
Moreover, we have no evidence on which we could base a
finding that these letters are separately recognized by
consumers. Cf. In re Chemical Dynamics, supra, at 1830
(Vice president’s conclusory statement that element of a
mark created a distinct commercial impression held
insufficient; absence of facts from which customer
recognition could be inferred also held significant);
Ser. No. 75,362,796
9
Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d
1342, 196 USPQ 289, 291 n. 8 (CCPA 1977) (In distinguishing
another case, Court noted that the applicant in that case
had used “look for” advertising to promote customer
recognition); and In re Anton/Bauer Inc., 7 USPQ2d 1380,
1383 (TTAB 1988) (Applicant offered no evidence to show
promotion of its background designs “in a way that would
set those designs apart from the word mark for which they
serve as background.”).
Applicant’s reliance upon the Institut National des
Appellations D’Origine case is unavailing. Rather than
omitting a geographically descriptive adjective which
appeared on applicant’s wine labels in smaller print and on
a different line from the applied for mark, in the case
before us the asserted mark comprises the initial letters
of various word marks, all shown on the same line and in
the same size type.
With respect to the AHLSelect mark shown on
applicant’s Selection Guide, we agree with the Examining
Attorney that those brochures are merely advertising and do
not suffice under Trademark Rule 2.56 as acceptable
specimens of use. See In re Bright of America, 205 USPQ 63
(TTAB 1979); In re Ultraflight, 221 USPQ 903 (TTAB 1984);
and TMEP §§ 905.05 and 905.07. Accordingly, while we agree
Ser. No. 75,362,796
10
that even this showing does not support applicant’s attempt
to register the letters AHL by themselves, these brochures
do not show proper trademark use.
Finally, we note that the Court of Appeals for the
Federal Circuit has held that a mark with a “phantom”
element is unregistrable. See In re International Flavors
& Fragrances Inc., 183 F.3d 1361, 51 USPQ2d 1513 (Fed. Cir.
1999). In that case, the Court noted that under Section 22
of the Trademark Act, 15 USC § 1072, registration serves as
constructive notice to the public of the registrant’s
ownership of the mark and thus precludes another user from
claiming innocent misappropriation as a trademark
infringement defense. To make constructive notice
meaningful, the mark as registered must accurately reflect
the mark that is used in commerce. The Court stated that
“phantom” marks with missing elements encompass too many
potential combinations and permutations to make a thorough
and effective search possible and, therefore, the
registration of these marks does not provide adequate
notice to competitors and the public. Id. at 1367-68, 51
USPQ2d at 1517-18. Some may view applicant’s proposed mark
as one which contains a “phantom” element because the mark
as used contains an element(s) that would not be revealed
in any search of the register of the letters AHL. Thus,
Ser. No. 75,362,796
11
registration of applicant’s proposed mark may run counter
to International Flavors.3
Decision: The refusal of registration is affirmed.
3 We also note our familiarity with In re ECCS, Inc., 94 F.3d
1578, 39 USPQ2d 2001 (Fed. Cir. 1996), In re Dekra e.V., 44
USPQ2d 1693 (TTAB 1997), and recently amended Trademark Rule
2.72, but need not consider their applicability to this case.