Greg LeBlanc, Inc.

Trademark Trial and Appeal Board

Jun 18, 1998

No. 75028266 (T.T.A.B. Jun. 18, 1998)

Paper No. 10
GHD/TF
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 6/18/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Greg LeBlanc, Inc.
________
Serial No. 75/028,266
_______
R. Bennett Ford, Jr. and William David Kiesel of Roy, Kiesel &
Tucker for applicant.
Andrew P. Baxley, Trademark Examining Attorney, Law Office 104
(Sidney I. Moskowitz, Managing Attorney)
_______
Before Cissel, Hanak and Hohein, Administrative Trademark Judges.
Opinion by Hohein, Administrative Trademark Judge:
Greg LeBlanc, Inc. has filed an application to register
the mark "POLLY’S PRICE" for "retail automobile dealership"
services.1
Registration has been finally refused on the ground
that "the specimens [of use] display the mark as HOME OF POLLY’S
PRICE" rather than "POLLY’S PRICE". Stated otherwise, the
Examining Attorney has finally refused registration on the basis

1 Ser. No. 75/028,266, filed on May 29, 1996, which alleges dates of
first use of March 3, 1995. The word "PRICE" is disclaimed.
Ser. No. 75/028,266
2
that the mark "POLLY’S PRICE" constitutes a mutilation of the
unitary composite mark "HOME OF POLLY’S PRICE" as shown in the
three identical advertisements, one of which is reproduced below
(in reduced size), which applicant submitted as specimens of
service mark use of the mark it seeks to register.
Although also stating, in his final refusal, that "the phrase GET
POLLY’S PRICE[!] which appears in the specimens does not function
as a service mark because it appears in small typeface in
comparison to other matter in the specimens," the Examining
Attorney added, however, that even "[a]ssuming for [the] sake of
argument that use of GET POLLY’S PRICE[!] in the specimens showed
Ser. No. 75/028,266
3
service mark use, said wording would be unacceptable to show
service mark use [of the mark POLLY’S PRICE] for the identical
reasoning set forth" with respect to the mark "HOME OF POLLY’S
PRICE".
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We reverse the refusal to
register.
As a preliminary matter, we observe that both applicant
and the Examining Attorney are essentially in agreement with the
long-standing principle that an applicant may apply to register
any element of a composite mark displayed on the specimens of use
if that element presents a separate and distinct commercial
impression as a mark; that is, the element in and of itself
functions as a mark since, as shown by the manner of its use on
the specimens, it creates a separate impression which is
indicative of the source of the applicant’s goods or services and
distinguishes such from those of others. See, e.g., Institut
National des Appellations D’Origine v. Vintners International Co.
Inc., 958 F.2d 1574, 22 USPQ2d 1190, 1197 (Fed. Cir. 1992),
citing In re Servel, Inc., 181 F.2d 192, 85 USPQ 257, 259-60
(CCPA 1950); In re Tekelec-Airtronic, 188 USPQ 694, 695 (TTAB
1975); and In re Berg Electronics, Inc., 163 USPQ 487, 487-88
(TTAB 1969). Furthermore, we note that, on appeal, the Examining
Attorney states that, "for purposes of this brief, the examining
attorney will consider GET POLLY’S PRICE! to be a service mark."
The Examining Attorney adds, however, that such consideration
"does not change his position that that the mark [POLLY’S PRICE]
Ser. No. 75/028,266
4
in the drawing is not a substantially exact representation of the
mark[s] as ... used in commerce, and further, constitutes a
mutilation of the mark[s] as ... used in commerce."
Turning, therefore, to the merits of this appeal, it is
the Examining Attorney’s position that because slogans, such as
the marks "HOME OF POLLY’S PRICE" and "GET POLLY’S PRICE!" are
considered to be unitary phrases, a combination of only certain
of the components thereof may not be registered separately where,
as here, the applicant’s specimens show use of the combination of
the components solely as elements of the separate slogans.
Specifically, and citing Trademark Rule 2.51(b)(1), which
mandates that in the case of an application based upon use in
commerce, "the drawing of a service mark shall be a substantially
exact representation of the mark as used in the sale or
advertising of the services," the Examining Attorney argues that
(footnote omitted):
[T]he mark in the drawing, POLLY’S
PRICE, is not a substantially exact
representation of the marks in the specimens
because additional matter that appears in the
marks in the specimens creates two different
composite marks, GET POLLY’S PRICE! and HOME
OF POLLY’S PRICE, both of which are unitary
slogans. The mark in the drawing, POLLY’S
PRICE, represents a thing, while the marks in
the specimens, GET POLLY’S PRICE! and HOME OF
POLLY’S PRICE represent a command which
directs purchasers to obtain that thing and a
place where one can obtain that thing,
respectively. As such, the marks in the
specimens form different marks from the mark
in the drawing and therefore [the mark
POLLY’S PRICE is] ... not [in either instance
a] substantially exact representation[ ] ...
[thereof]. TMEP Section 807.14.
Ser. No. 75/028,266
5
Elements of composite marks as used on
specimens are registrable where those
elements create separate and distinct
commercial impressions. TMEP Section 807.14
and cases cited therein. The Trademark Trial
and Appeal Board has held, however, that
portions of unitary word marks do not create
a separate and distinct commercial
impression. Particularly noteworthy is the
Board’s decision in In re Morganroth, 208
USPQ 284 (TTAB 1980). Therein, the Board
affirmed a refusal to register NATUR-ALL-IZE
YOUR HAIR COLORING when the applicant’s only
use of the proposed mark was as a portion of
a slogan NATUR-ALL-IZE YOUR HAIR COLORING
WITH ANOTHER NEW SERVICE. The examining
attorney submits that affirming the refusal
of registration would be consistent with this
decision.
The applicant has not submitted
specimens which show the mark POLLY’S PRICE
used as a separate mark. As used in
commerce, GET POLLY’S PRICE! and HOME OF
POLLY’S PRICE each create a single commercial
impression. As noted hereinabove, where a
unitary mark creates a single commercial
impression, an attempt to separate a portion
of that mark is an impermissible mutilation.
In re Chemical Dynamics, Inc., 5 USPQ[2d]
1828, 1830 (Fed. Cir. 1988). Because the
mark in the drawing omits the wording GET and
HOME OF, which are essential and integral to
creating the commercial impressions [conveyed
by] the applicant’s unitary slogans, the mark
in the drawing constitutes an impermissible
incomplete representation or mutilation of
the mark as used in commerce. TMEP Section
807.14(b).
Though admittedly the additional wording
that expands the mark in the drawing to the
slogans GET POLLY’S PRICE! and HOME OF
POLLY’S PRICE is rather diluted, the
examining attorney submits that the slogans
that the applicant uses in its specimens are
unitary nonetheless and create single
commercial impressions. Therefore, their
component parts cannot be registered
separately.
Ser. No. 75/028,266
6
Applicant, on the other hand, contends that its
specimens demonstrate that the phrase "POLLY’S PRICE" creates a
separate and distinct commercial impression and thus functions as
a mark. In particular, applicant maintains that: (emphasis in
original):
As depicted in the specimens, the phrase
"POLLY’S PRICE" designates a thing. In
contrast, the composite mark "HOME OF POLLY’S
PRICE" refers to a place where consumers can
obtain the thing. In further contrast, the
composite mark "GET POLLY’S PRICE" is an
instruction to consumers to acquire the
thing. Thus, the composite marks rely on the
core commercial impression of "POLLY’S
PRICE," and in doing so, contribute to and
reinforce the separate and distinct
commercial impression created by "POLLY’S
PRICE."
Additionally, applicant’s use of the
mark "POLLY’S PRICE" as the common component
of two different composite marks in one
advertisement provides further support for
concluding that "POLLY’S PRICE" creates a
separate and distinct commercial impression.
Dual use of "POLLY’S PRICE" in one
advertisement highlights the mark.
Furthermore, the contrast between the two
composite marks in one advertisement, with
"POLLY’S PRICE" being the common feature,
contributes to and reinforces the separate
and distinct commercial impression created by
"POLLY’S PRICE."
....
The separate and distinct impression
created by "POLLY’S PRICE" is further
demonstrated by considering the elements of
the two composite marks in isolation. "HOME
OF" and "GET" are far too common to create a
distinct commercial impression. Thus, the
other elements in the composite marks must
rely upon "POLLY’S PRICE" for their
distinctiveness. ....
Ser. No. 75/028,266
7
We would agree with the Examining Attorney that, if
applicant’s specimens solely displayed the slogan "HOME OF
POLLY’S PRICE" or only showed the slogan "GET POLLY’S PRICE!,"
applicant’s attempt to register just the words "POLLY’S PRICE"
would not be "a substantially exact representation of the mark as
used in the sale or advertising of the services," as required by
Trademark Rule 2.51(b)(1), and thus would constitute a mutilation
of the featured slogan. Indeed, while each of the slogans "HOME
OF POLLY’S PRICE" and "GET POLLY’S PRICE!" is a unitary
composite, it simply goes too far for the Examining Attorney to
postulate, where the applicant’s specimens utilize both of such
marks and also prominently display a parrot design, an immutable
rule that:
Just as registrable slogans are
considered unitary and should not be broken
up to require disclaimers, see section
1213.06, the examining attorney submits that
slogans are unitary and should not be broken
up to register components thereof. Rather,
the examining attorney submits that each
slogan is a separate mark that should be
registered individually. The examining
attorney further submits that applicant’s
attempt to register POLLY’S PRICE standing
alone, rather than each of the slogans
separately, is merely an impermissible and
transparent attempt to register all present
and future slogans featuring the wording
POLLY’S PRICE in one application. See In re
Audi NSU Auto Union AG, 197 USPQ 649 (TTAB
1977).
We concur, instead, with applicant that its specimens
demonstrate that the words "POLLY’S PRICE" create a separate and
distinct commercial impression which functions as a mark for
applicant’s retail automobile dealership services. Specifically,
Ser. No. 75/028,266
8
when the unitary composite mark "HOME OF POLLY’S PRICE" is used,
in the same advertisement, in conjunction with the unitary
composite mark "GET POLLY’S PRICE!," and both of such slogans are
displayed in association with a parrot which is obviously named
"Polly,"2 it is plain that, given the admittedly "rather diluted"
or commonplace nature of the words "GET" and "HOME OF" as
components of advertising slogans, the source-signifying
component in each of the slogans is the words "POLLY"S PRICE".
As such, those words, in the context of applicant’s specimen
advertisements, present a separate and distinct commercial
impression as a mark for applicant’s services and are therefore
registrable.
Decision: The refusal to register is reversed.
R. F. Cissel
E. W. Hanak
G. D. Hohein
Administrative Trademark Judges,
Trademark Trial and Appeal Board

2 In view of the ubiquitous saying "Polly want a cracker," we agree
with applicant that Polly is "a name which is synonymous with parrots"
and thus would be readily understood as naming the parrot depicted in
applicant’s advertising of its services.