Ekstrom Industries, Inc.

Trademark Trial and Appeal Board

Sep 20, 2004

No. 76222945 (T.T.A.B. Sep. 20, 2004)

Mailed:
20 September 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Ekstrom Industries, Inc.
________
Serial No. 76222945
_______
William M. Hanlon, Jr. of Young & Basile, P.C. for Ekstrom
Industries, Inc.
LaVerne T. Thompson, Trademark Examining Attorney, Law
Office 116 (Meryl Hershkowitz, Managing Attorney).
_______
Before Simms, Rogers, and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On March 12, 2001, Ekstrom Industries, Inc.
(applicant) applied to register the mark OPTI-LOCK, in
typed form, on the Principal Register for goods currently
identified as “Lockable metal cover for an optical
communication port on an electric watthour meter” in
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE
TTAB
Ser. No. 76222945
2
International Class 6.1 The application was originally
based on applicant’s bona fide intention to use the mark in
commerce. The mark was published for opposition on April
16, 2002. Subsequently, applicant submitted an amendment
to allege dates of use anywhere and in interstate commerce
of November 4, 2002.
The examining attorney (Brief at 2) has refused
registration on the ground that “the display of the mark on
the drawing differs from the display of the mark on the
specimen” citing 37 CFR § 2.72(b). The examining attorney
asserts (Brief at 3) that the “drawing displays the mark as
OPTI-LOCK. The specimen displays the mark as OPTI-LOCK,
which appears below the wording EKSTROM… The wording
EKSTROM appears in the same type font, in the same size
pitch as OPTI-LOCK. The additional wording appears in such
close proximity to the proposed mark it creates the
commercial impression that the mark is unitary. That is
two elements th[at] come together to create a whole mark.”
1 Serial No. 76222945. At the time the application was published
for opposition, the goods were identified as a “Lockable non-
metal cover for an optical communication port on an electric
watthour meter” in International Class 17. After publication,
applicant called to the examining attorney’s attention an
amendment that had changed the goods from “non-metal” to “metal.”
The examining attorney (Brief at 2 n.1) noted that on “July 25,
2003[,] the applicant submitted an amendment to change the
classification and the identification of goods, which has been
accepted. Pending the disposition of the appeal, the application
will be republished in the amended class.”
Ser. No. 76222945
3
Applicant responds by arguing (Reply Brief at 1) that
the “mark is not physically connected by lines or other
design features. The actual goods are small and the
Applicant’s corporate name (Ekstrom) is on the goods above
the marks as a further source identifier of the goods.”
We begin our discussion by focusing on a comparison of
the mark in the drawing and the specimens. The drawing
consists of the term OPTI-LOCK in typed form. The
specimens show the mark applied to the goods themselves
approximately in the manner shown below:
EKSTROM
OPTI-LOCK
DO NOT REMOVE
PAT. PEND.
USPTO rules (37 CFR § 2.51(b)) require:
In an application under section 1(b) of the Act, the
drawing of the mark must be a substantially exact
representation of the mark as intended to be used on
or in connection with the goods and/or services
specified in the application, and once an amendment to
allege use under §2.76 or a statement of use under
§2.88 has been filed, the drawing of the mark must be
a substantially exact representation of the mark as
used on or in connection with the goods and/or
services.
The examining attorney’s position (Brief at 5) is that
the “removal of EKSTROM from the mark is an incomplete
representation of the mark, essentially a mutilation of the
mark as it appears on the drawing.”
Ser. No. 76222945
4
“‘Mutilation’ is a concept long recognized as a part
of trademark registration case law.” Institut National des
Appellations D’Origine v. Vintners International Co., 958
F.2d 1574, 22 USPQ2d 1190, 1197 (Fed. Cir. 1992). In cases
of an alleged “mutilation” of the mark, the “determinative
factor is whether or not the subject matter in question
makes a separate and distinct commercial impression apart
from the other element(s).” TMEP § 807.14(b) (3rd ed. May
2003). See also Institut National, 22 USPQ2d at 1197. The
question of whether a mark is a mutilation “boils down to a
judgment as to whether that designation for which
registration is sought comprises a separate and distinct
'trademark' in and of itself." Id. TMEP § 807.14(b)
informs examining attorneys that:
[I]n an application under § 1 of the Trademark Act,
the applicant has some latitude in selecting the mark
it wants to register. The mere fact that two or more
elements form a composite mark does not necessarily
mean that those elements are inseparable for
registration purposes. An applicant may apply to
register any element of a composite mark used or
intended to be used if that element presents, or will
present, a separate and distinct commercial impression
apart from any other matter with which the mark is or
will be used on the specimen.
Cases have frequently held that an applicant’s use of
its corporate name or house mark along with another
trademark does not create a unitary mark. See, e.g., In re
Servel, Inc., 181 F.2d 192, 85 USPQ 257, 260 (CCPA 1950)
Ser. No. 76222945
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(“The courts in a proper case may recognize the right to
registration of one part of an owner’s mark consisting of
two parts.” SERVEL functions as a mark apart from the term
INKLINGS); Textron Inc. v. Cardinal Engineering Corp., 164
USPQ 397, 399 (TTAB 1969) (“While the record does show that
Textron’s principal or house mark ‘HOMELITE’ appears on its
chain saws as well as in all of its advertising literature,
there is no statutory limitation on the number of
trademarks that one may use on or in connection with a
particular product to indicate origin”); In re Emco, Inc.,
158 USPQ 622, 623 (TTAB 1968) (“It is concluded that the
law and the record support applicant’s position that
‘RESPONSER’ is registrable without addition of the surname
‘MEYER’”); and In re Barry Wright Corp., 155 USPQ 671, 672
(TTAB 1967) (“[I]t is clear that the notation ‘8-48’ stands
out as a distinguishable element separate and apart from
the statement ‘ANOTHER 8-48 FROM MATHATRONICS’”).
Even when terms have been physically joined in the
specimens, case law recognizes that these terms can be
separately registered if the evidence of record indicates
that they will be recognized as distinct trademarks. See
In re Raychem Corp., 12 USPQ2d 1399, 1400 (TTAB 1989)
(Board held that the “fact that hyphens connect both the
part number and the generic term to the mark does not,
Ser. No. 76222945
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under the circumstances presented by this case, create a
unitary expression such that ‘TINEL-LOCK’ has no
significance by itself as a trademark”); In re Berg
Electronics, Inc., 163 USPQ 487 (TTAB 1969) (GRIPLET
creates a separate commercial impression despite
overlapping with house mark BERG); In re Dempster Brothers,
Inc., 132 USPQ 300 (TTAB 1961) (Despite specimens showing
the terms DEMPSTER DUMPMASTER sharing the same first and
last letters, DUMPMASTER separately registrable).
In this case, applicant correctly describes its goods
as “small.” Indeed, the printed material set out
previously takes up the great majority of the space on the
goods. While the examining attorney relies on the fact
that the term OPTI-LOCK is in “close proximity” to the
corporate name EKSTROM, it would be difficult to display
them otherwise on goods of this small size. In addition,
mere proximity “does not endow the whole with a single,
integrated, and distinct commercial impression.” Dena
Corp. v. Belvedere International Inc., 960 F.2d 1555, 21
USPQ2d 1047, 1052 (Fed. Cir. 1991). While the term OPTI-
LOCK does appear below applicant’s corporate name or house
mark EKSTROM, the terms are physically separated on two
different lines. This point would seem to favor the marks
creating a separate rather than a unitary impression. Id.
Ser. No. 76222945
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Furthermore, while the examining attorney notes that
the words EKSTROM and OPTI-LOCK are in the same type font
and style, it is also true that the display is a simple
block style that is only marginally bigger and thicker than
the other printed matter on the goods. In addition, while
the terms share a type style, this simple style would
hardly be noticed.
Another point the examining attorney makes (Brief at
4) is that “the wording EKSTROM OPTI-LOCK has no meaning
other than trademark significance.” According to the
examining attorney (Brief at 5), EKSTROM “appears to be a
surname.” OPTI-LOCK appears to have some suggestive
meaning when used with a “lockable metal cover for an
optical communication port.” There is nothing unusual
about using more than one trademark on a product. Textron,
164 USPQ at 399 (“[J]udicial notice may be taken of the
fact that it is a common practice for manufacturers to
apply both a house mark and a product mark to their various
items of merchandise”). While the terms EKSTROM and OPTI-
LOCK have trademark significance, there is nothing in their
meanings that unites them. Thus, there is no reason to
assume that prospective purchasers would view the terms
here as a unitary mark as opposed to two separate marks.
Ser. No. 76222945
8
Therefore, we conclude that the term OPTI-LOCK, as
used on the specimen, creates a commercial impression
separate and apart from the mark EKSTROM.
Decision: The refusal to register is reversed.