Greater Anchorage, Inc.

Trademark Trial and Appeal Board

Feb 14, 2011

No. 77561929 (T.T.A.B. Feb. 14, 2011)

THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.

Mailed: February 14, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Greater Anchorage, Inc.
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Serial No. 77561929
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James C. Wray for Greater Anchorage, Inc.

Jennifer M. Martin, Trademark Examining Attorney, Law
Office 116 (Michael W. Baird, Managing Attorney).
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Before Quinn, Bergsman, and Wolfson, Administrative
Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:

Greater Anchorage, Inc. (“applicant”) has filed a use-
based application for the mark depicted below (the “Fur
Rondy design”) for “jewelry, namely, pins, lapel pins and
pendant pins.” Applicant disclaimed the exclusive right to
use the terms “74th,” “Anchorage 2009,” and “Alaska’s 50th.”

2
Applicant described the mark as a “pin consisting of eskimo
(sic) with red snowsuit and peach face, yellow circle, and
blue flag with yellow stars.” Pursuant to a requirement by
the examining attorney, applicant submitted a more detailed
description of the mark1 and a claim of the colors “yellow,
red, blue, black and white” as a feature of the mark. For
purposes of this appeal, the relevant point is the color
claim. The original specimen is identified as a
“photograph of pin on web page.”
The examining attorney has made final a refusal to
register the mark on the basis that the mark as used in the
specimen of record is merely ornamental, and does not
function as an indication of source. Sections 1, 2 and 45,
15 U.S.C. §§ 1051, 1052 and 1127. As the examining
attorney noted, “the applied-for mark, as shown on the
specimen, is merely ornamental because it is merely a
decorative pin. The proposed mark would not be perceived
as a source indicator, but rather it would be seen as an

1 The revised description is: “The mark consists of a figure
wearing red mittens and a red snowsuit with yellow piping design,
a black zipper and boots. The fur around the hood and sleeves
are in white. The figure’s face is peach with black eyes, mouth
and hair. The figure appears on top of a yellow circle design
with the 74th Fur Rondy, Anchorage, 2009 in black appearing around
the circle. Inside the yellow circles is white with the words
Alaska’s 50th in black. The blanket design is blue with yellow
stars.”
3
ornamental feature of the goods.” Final Office Action, May
26, 2009.
In addition, the examining attorney refused
registration on the ground that the specimens of record do
not show the mark as used on the goods and do not show the
mark in color as required under 37 CFR §§ 2.51 and
2.72(a)(1). The substitute specimens were also refused for
not being properly verified, 37 CFR § 2.59(a).
The appeal has been fully briefed.
The Specimen Requirement
In a trademark application, if color is claimed as a
feature of the mark, the specimen and the drawing of the
mark must match and the specimen must show use of the
color. 37 C.F.R. §§ 2.51 and 2.72(a)(1); see TMEP §§
807.12(a) and 904.02(c)(ii) (7th ed. 2010). Applicant
claimed color as a feature of the mark, but has failed to
submit a specimen showing the mark in color. The specimen
filed with the application was a black-and-white copy of a
web page from applicant’s website. The relevant portion of
the web page is shown below.
4

The specimen submitted with applicant’s response to
the first Office action was a black-and-white copy of two
pins, two pendants and a spoon bearing embodiments of the
design.2 The specimen submitted in response to the second
Office action was a duplicate of a previously submitted
specimen. The final specimen submitted did not show a
depiction of the mark but merely relayed background
information about the Anchorage “Fur Rendezvous” event
sponsored by applicant.
Since none of the specimens bearing the mark was in
color, and since the specimens that are in color do not

2 Two other specimens were attached to applicant’s response to
the first Office action, neither of which showed the mark being
used on the goods. One did not show the mark at all, and the
other (an article about the artist who created the design) bore a
photograph of the artist and a rendition of the design. See TMEP
§ 904.04(a) (specimen may not be a “picture” of the mark, such as
an artist’s drawing that merely illustrates what the mark looks
like; specimen must show the mark actually used on or in
connection with the goods in commerce).
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display the mark, the requirement that applicant submit a
specimen showing the mark in color was not fulfilled.3 We
note applicant’s statement that the colors of the jewelry
pieces “are shown in the attached card,”4 and applicant’s
attorney’s statement that “of my own knowledge the pins and
spoon in the previous specimen are in the colors shown in
the attached specimen.”5 However, statements made in
response to an Office action do not substitute for a proper
specimen showing the mark in color.6
The refusal based on the requirement that applicant
submit a proper specimen is affirmed.
The Ornamentation Refusal
A decorative design may be both ornamental and a
trademark when the design serves to advise the purchaser
that the products or services identified by the design
emanate from a single source. In re E. J. Brach & Sons,
256 F.2d 325, 118 USPQ 308, 309 (CCPA 1958); see In re

3 In addition to being in color, for a web page to be acceptable
as a specimen, the mark must appear “in a manner in which the
mark is associated with the goods” and there must be a means for
online ordering of the goods. TMEP § 904.03(i). Here, it is
unclear whether the web page displayed the goods and as noted, it
is not in color.
4 Response to Office Action, February 11, 2009.
5 Response, April 29, 2009.
6 We further note that none of the substitute specimens has been
properly verified under 37 CFR § 2.20. They are not acceptable
for this additional reason. See 37 CFR § 2.59(a) (Filing
Substitute Specimens); TMEP § 904.05 (applicant must verify that
the new specimen was in use in commerce as of the application
filing date).
6
Dimitri’s Inc., 9 USPQ2d 1666, 1667 (TTAB 1988) (“matter
which serves as part of the aesthetic ornamentation of
goods, such as T-shirts, may nevertheless be registered as
a trademark for such goods if it also serves a source-
indicating function”). Whether a design is merely
ornamental or functions as a trademark is a matter of
public perception. 1 McCarthy On Trademarks and Unfair
Competition §7:24 (4th ed. 2006)(“If customers perceive a
design only as pleasing ornamentation, then the design is
not a trademark. If customers perceive a design as not
only attractive, but as an indicator of source, then it is
a trademark”).
When deciding whether a proposed mark is mere
ornamentation, “the size, location, dominance and
significance of the alleged mark as applied to the goods
are all factors which figure prominently in the
determination of whether it also serves as an indication of
origin.” In re Pro-Line, 28 USPQ2d 1141, 1142 (TTAB 1993).
The larger the display relative to the size of the goods,
the more likely it is that consumers will not view the
ornamental matter as a mark. See, e.g., In re Dimitri’s
Inc., 9 USPQ2d at 1667 (SUMO merely ornamental in part
because the wording “appears in large lettering across the
top-center portion of the T-shirts and caps”); In re Astro-
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Gods Inc., 223 USPQ 621, 623 (TTAB 1984) (“ASTRO GODS” and
design unregistrable as merely one of “several prominent
legends”).
Here, applicant’s proposed mark is the entire product
itself; the pins and pendants shown in the specimen of
record are in the form of three-dimensional embodiments of
the mark. The impression likely to govern a prospective
purchaser is that the design is a piece of artwork that may
be worn as a symbol of attendance at applicant’s “Fur
Rondy” festival or as a way of showing allegiance to the
event, and not as a trademark designating goods which
emanate solely from applicant. See International Order of
Job’s Daughters v. Lindeburg & Co., 633 F.2d 912, 208 USPQ
718 (9th Cir. 1980), cert. denied, 452 U.S. 941, 69 L.Ed.
2d 956, 101 S.Ct. 3086, 213 USPQ 1056 (1981) (jewelry
purchased “for its intrinsic functional use and aesthetic
appeal”); cf., In re Eagle Crest Inc., 96 USPQ2d 1227 (TTAB
2010) (ONCE A MARINE, ALWAYS A MARINE - informational
message); In re F.C.F. Inc., 30 USPQ2d 1825, 1827 (TTAB
1994)(rose design packaging for cosmetics not inherently
distinctive because it is simply a refinement of a basic,
common, and well-known form of decoration or ornamentation
for cosmetic packaging).
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An otherwise merely ornamental design may “be found to
be registrable if applicant submits other evidence (such as
evidence of promotion of the matter as a mark, survey
evidence demonstrating purchaser perception of the matter
as a mark, etc.) showing that purchasers recognize that
matter as an indication of the source of the goods.” In re
Pro-Line, 28 USPQ2d at 1142. Likewise, a prior
registration for the mark for other goods or services can
provide a basis for registration of the mark for the
applied-for goods or services. See In re Paramount
Pictures Corp., 217 USPQ 292 (TTAB 1982) (in view of
applicant’s registration of STAR TREK for a number of other
goods, refusal to register mark for towels, sheets, pillow
cases and comforters reversed); In re Olin Corp., 181 USPQ
182 (TTAB 1973) (stylized “O” design, previously registered
as a trademark for skis, held registrable for t-shirts as
identifier of secondary source).
Here, there is no evidence that applicant’s Fur Rondy
design has been used as a trademark for any other goods or
services, that the design has been promoted in connection
with applicant’s jewelry in such a manner and to such an
extent as to create purchaser recognition of the Fur Rondy
design as a trademark, or that applicant holds a
registration for the Fur Rondy design (apart from its
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registration for the words “Fur Rondy”) such that the
distinctiveness of the design carries over to applicant’s
use on jewelry as a secondary source indicator. See In re
Penthouse International Ltd., 565 F.2d 679, 195 USPQ 698
(CCPA 1977) (applicant sought to register its established
mark as a jewelry design which, in light of the record,
functioned as a mark for jewelry).
Decision: The refusal to register the “Fur Rondy”
design for “jewelry, namely, pins, lapel pins and pendant
pins” on the ground that none of the specimens of record
shows use of the mark in color is affirmed.
The refusal to register the Fur Rondy design for
“jewelry, namely, pins, lapel pins and pendant pins” on the
ground that the proposed mark does not function as a
trademark pursuant to Sections 1, 2, 3 and 45 of the Lanham
Act is affirmed.