Bermark Inc.

Trademark Trial and Appeal Board

Aug 31, 2004

No. 76406106 (T.T.A.B. Aug. 31, 2004)

Mailed: August 31, 2004
Paper No. 11
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Bermark Inc.
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Serial No. 76406106
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Myron Amer of Myron Amer, P.C. for Bermark Inc.
Ann K. Linnehan, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______
Before Seeherman, Hohein and Rogers, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Bermark Inc. has filed an application to register the
mark "SILK TREND RUGS OF NORTH AMERICA" as a trademark for
"rugs".1
Registration has been finally refused under Sections 1,
2 and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052 and 1127,
on the ground that "the proposed mark is used solely as a trade
name, and not as a trademark," for applicant's goods.
1 Ser. No. 76406106, filed on May 8, 2002, which is based on an
allegation of a date of first use anywhere and in commerce of November
1, 2000. The word "SILK" and the phrase "RUGS OF NORTH AMERICA" are
disclaimed.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76406106
2
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
As indicated in, for example, In re Univar Corp., 20
USPQ2d 1865, 1866 (TTAB 1991):
It is well settled that, in appropriate
circumstances, a name may function as both a
trade name and as a trademark .... The
question of whether a name used as a trade
name ... also performs the function of a
trademark ... 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). ....
Applicant, while acknowledging such in its initial brief,
stresses, however, that as formerly set forth in "TMEP 1202.02,"
the "[f]actors to be considered in determining this issue may
include the presence of an entity designator in a name sought to
be registered and the proximity of an address."2 Applicant
argues, in view thereof, that even if the specimen of record,
which is a label affixed to applicant's goods and is the sole
2 The Examining Attorney correctly points out in her brief, however,
that the section cited by applicant "is from an outdated version of
the Trademark Manual of Examining Procedure". The section which,
instead, currently deals with the "Refusal of Matter Used Solely as a
Trade Name" is TMEP Section 1202.01 (3d ed. 2d rev. 2003). That
section provides, inter alia, that "[t]he presence of an entity
designator in a name sought to be registered and the proximity of an
address are both factors to be considered in determining whether a
proposed mark is merely a trade name." Other factors, as indicated
therein, which are nonetheless to be considered in determining whether
a name "independently projects a separate commercial impression," and
thus functions as a trademark, include a name's "presentation in a
distinctively bolder, larger and different type of lettering and, in
some instances, its additional use in a contrasting color."
Ser. No. 76406106
3
evidence of its manner of use of "SILK TREND RUGS OF NORTH
AMERICA," arguably shows the use thereof as a trade name
identifying applicant's business, such name also functions as a
trademark identifying and distinguishing applicant's goods
because the name contains no entity designator and is not used in
proximity to an address. Consequently, given that such name "at
the very least ... serves a double function of a trademark and of
a trade name," applicant maintains that the name is registrable
as a mark.3
We agree with the Examining Attorney, however, that the
specimen of record evidences only trade name use of the name
"SILK TREND RUGS OF NORTH AMERICA." As the Examining Attorney
correctly notes, while Section 45 of the Trademark Act, 15 U.S.C.
§1127, defines a "trademark" as "any word, name, symbol, or
device, or any combination thereof," which serves "to identify
and distinguish [a person's] ... goods ... from those
3 Applicant also contends in its initial brief that, in light of the
assertedly "inconsistent positions that have been taken by the
examining attorney in the examination of this application," the name
"SILK TREND RUGS OF NORTH AMERICA" should be found to be registrable
inasmuch as such would not be perceived as merely a trade name.
Specifically, applicant urges that it is "most significant" that the
Examining Attorney required a disclaimer of the word "SILK" and the
phrase "RUGS OF NORTH AMERICA" "because the public would perceive the
words involved (except the word [']Trend') as being descriptive of the
goods," yet "in her final refusal [she] argues that the words are a
trade name that do not convey source-identification of the goods."
While the Examining Attorney, in her brief, simply contends that
"[s]uch an argument houses little merit given that the applicant was
invited to submit a substitute specimen showing proper use of the
proposed mark as a trademark to overcome the substantive refusal to
register the proposed mark," suffice it to say that we see no
inconsistency in the Examining Attorney's finding that, when
considered in its entirety, the name which applicant seeks to register
is used solely as a trade name and her further finding that, if
considered to be a trademark, portions thereof are descriptive and
must therefore be disclaimed.
Ser. No. 76406106
4
manufactured or sold by others and to indicate the source of the
goods, even if that source is unknown," such section also defines
"trade name" as meaning "any name used by a person to identify
his or her business or vocation." Here, the label submitted as
applicant's specimen of use contains two displays of the name
"SILK TREND RUGS OF NORTH AMERICA." In one instance, such name
is displayed horizontally, at the top of the label, and in the
same size and style of capitalized lettering, as a portion of an
informational statement which appears in the following context:
MADE IN BELGIUM
IMPORTED BY SILK TREND RUGS OF NORTH AMERICA
PILE: 65% POLYESTER + 35% VISCOSE
In the second manner of display, the name is again part of an
informational statement, but is set forth vertically, on the left
hand side of the label, and is shown in essentially the same size
and style of print, although certain words are capitalized as
indicated below:
Imported by Silk Trend Rugs of North America
Made in Belgium by n.v. Weverij Bulckaert
As the Examining Attorney persuasively observes in her
brief, "[t]he manner of use of applicant's mark ... is not such
that potential purchasers would readily perceive the subject
matter as identifying and distinguishing the applicant's goods
and indicating their source." In particular, she accurately
observes that, based on the uses shown by the specimen of record:
In each place the proposed mark immediately
follows the terms "imported by." The
proximity of these terms indicates that the
proposed mark is the name of an entity that
Ser. No. 76406106
5
imports the product (the rugs).
Additionally, the style of the lettering for
the proposed mark is not distinctively
different from the lettering surrounding each
depiction of the proposed mark on the
specimen. Nor is the lettering used to
depict the proposed mark bolder or larger.
The proposed mark [thus] fails to project a
separate commercial impression. ....
The manner of use of applicant's
[proposed] mark on the specimens is not such
that potential purchasers would readily
perceive the subject matter as identifying
and distinguishing the applicant's goods and
indicating their source. See Section 45 of
the Trademark Act ....
With respect to applicant's contention that controlling
weight should be given to the fact that, as used, "its proposed
mark does not include an entity designator (such as 'Inc.' or
'Co.') and is not in close proximity to an address," the
Examining Attorney maintains that:
These factors are not and should not be the
only factors to be considered in determining
this issue. Indeed, the use of terms such as
"imported by" and the lack of distinct
lettering should not be altogether dismissed
in analyzing the function of the proposed
mark in this instance.
Applicant, in its reply brief, nevertheless reiterates that the
mere absence of an entity designator in the name "SILK TREND RUGS
OF NORTH AMERICA," together with the lack of proximity of such
name to an address on the specimen of use, compels a finding that
the name performs the source-identifying function of a trademark.
Applicant also contends that the Examining Attorney has failed
"to state why the absence of [such] circumstances ... warranted
reaching a conclusion in variance with TMEP Section 1202.01."
Applicant's assertions, however, are simply unfounded. The cited
Ser. No. 76406106
6
section of the TMEP, as noted previously, not only sets forth
several factors, in addition to the presence or absence of an
entity designator in a name and the proximity of the name to an
address, which are to be considered in determining whether matter
is used solely as a trade name, but provides that the
determination thereof "requires consideration of the way the mark
is used, as evidenced by the specimens."
Here, it is clear that the Examining Attorney
considered the relevant factors and, as explained in her brief,
found that the absence of an entity designator and a business
address was outweighed, in the context in which the name "SILK
TREND RUGS OF NORTH AMERICA" appears on the specimen, by the
presence of the phrase "imported by," which immediately precedes
such name, and the absence of any distinguishing manner of
stylization, which would serve to set the name apart from the
other informational matter appearing on the specimen. The
Examining Attorney, therefore, properly concluded that the name
"SILK TREND RUGS OF NORTH AMERICA" functions only as a trade name
used by applicant in the marketing of its rugs and does not also
serve a trademark function. See, e.g., In re Diamond Hill Farms,
32 USPQ2d 1383, 1384 (TTAB 1994) ["[b]ecause of the way DIAMOND
HILL FARMS is depicted on the specimen ..., the commercial
impression is that it is informational, i.e., the name of the
producer of the goods, and is part of the other informational
material, such as ... the weight of the potatoes"; consequently,
"DIAMOND HILL FARMS would be perceived by purchasers and
prospective purchasers as a trade name serving to identify
Ser. No. 76406106
7
applicant as a business entity rather than a mark which
identifies and distinguishes applicant's [raw potatoes] ... from
those of others"].
Decision: The refusal under Sections 1, 2 and 45 is
affirmed.