Herschend Adventure Holdings, LLC

Trademark Trial and Appeal Board

Jan 15, 2019

EX (T.T.A.B. Jan. 15, 2019)

Mailed: January 15, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Herschend Adventure Holdings, LLC1
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Serial No. 87562135
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F. Richard Rimer Jr. of Seyfarth Shaw LLP,
for Herschend Adventure Holdings, LLC.

Linda M. Estrada, Trademark Examining Attorney, Law Office 104,
Dayna Brown, Managing Attorney.
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Before Mermelstein, Shaw, and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:

Applicant Herschend Adventure Holdings, LLC seeks registration on the
Principal Register of the mark , described as follows: “The mark consists

1 Application Serial No. 87562135 was filed August 9, 2017, by Pink Adventure Group, Inc.
Assignment to Herschend Adventure Holdings, LLC in a merger effective July 2, 2018, was
recorded with the USPTO Assignment Recordation Branch on August 23, 2018, at
Reel/Frame 6421/0113.
This Opinion Is Not a
Precedent of the TTAB
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of the color pink as applied to vehicles, brochures and websites (the mark consists of
the color pink alone – the broken lines indicate the position of the mark and do not
form part of the mark).” The application recites the following services:
• “On-line transportation reservation and travel ticket reservation services;
Organisation of travel; Organization of travel and boat trips; Travel and
transport information service; Travel guide and travel information services;
Travel guide services; Travel information; Travel information services;
Travel ticket reservation service; Escorting of travellers; Making
reservations and bookings for transportation for tourists; Providing
information about travel, via the Internet; Providing transport for guided
tours; Providing transport for sightseeing tours; Providing transport for
sightseeing tours by land vehicle; Transport services for sightseeing tours,”
in International Class 39; and
• “Education services, namely, providing in-person verbal instruction in the
fields of historical, cultural, geological, plant, and animal facts about a tour
location; Arranging and conducting guided hiking tours; Conducting guided
tours of a geographical location lead by travel guides versed in historical,
cultural, geological, plant and animal facts about the geographical
location,” in International Class 41.
The application was filed pursuant to Trademark Act Section 1(a), 15 U.S.C.
§ 1051(a), alleging first use anywhere and use in commerce as of December 31, 1965.
The Examining Attorney refused registration on the following grounds:
1. The proposed mark differs on the drawing and specimen. Trademark Act
Sections 1 and 45, 15 U.S.C. §§ 1051 and 1127; Trademark Rules
2.34(a)(1)(iv) and 2.56(a), 37 C.F.R. § 2.34(a)(1)(iv) and 2.56(a). The
Examining Attorney also required an amended drawing and description of
the mark, stating that the drawing must display the manner in which the
mark is used in connection with the services, and the description must
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indicate the specific position of the color. See March 30, 2018 Final Office
Action.
2. Applicant seeks to register multiple marks. Trademark Act Sections 1 and
45, 15 U.S.C. §§ 1051 and 1127; Trademark Rule 2.52, 37 C.F.R. § 2.52.
3. The proposed mark consists of non-distinctive trade dress which fails to
function as a service mark, and Applicant has not established that it has
acquired distinctiveness for the identified services. Trademark Act Sections
1, 2, 3, and 45, 15 U.S.C. §§ 1051-53 and 1127; Trademark Act Section 2(f),
15 U.S.C. § 1052(f).
Applicant timely appealed after the refusal to register was made final. We affirm
the refusal under Trademark Act Section 2(f) and the requirement for an amended
drawing and description of the mark, and reverse as to the other grounds.
I. Drawing of the Mark and Specimens of Use
Trademark Act Section 1(a)(1) requires an applicant to submit specimens of its
mark as used; see also Trademark Rules 2.34(a)(1)(iv) and 2.56(a) (“An application
under section 1(a) of the Act . . . must . . . include one specimen per class showing the
mark as used on or in connection with the goods or services.”). An applicant also is
required to submit a drawing, which “must be a substantially exact representation of
the mark as used on or in connection with the goods and/or services.” Trademark Rule
2.51(a), 37 C.F.R. § 2.51(a).
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A. Applicant Must Submit an Amended Drawing and Description
As explained in Trademark Manual of Examining Procedure (“TMEP”)
§ 1202.05(d)(ii) (Oct. 2018):
As with color used on goods, a color service mark does not
consist of color in the abstract. Rather, the mark consists
of color used in a particular manner, and the context in
which the color is used is critical to provide notice of the
nature of the mark sought to be registered.
Here, the Examining Attorney required an amended drawing displaying the
manner in which the mark is used in connection with the services, and an amended
description of the mark indicating the specific position of the color. See March 30,
2018 Final Office Action. We find these requirement to be consistent with TMEP
§ 1202.05(d)(ii), which also provides that:
If an applicant who seeks to register a single color as a
service mark used on a variety of items not viewed
simultaneously by purchasers, e.g., stationery, uniforms,
pens, signs, shuttle buses, store awning, and walls of the
store, submits a drawing that displays the mark as a solid-
colored square with a dotted peripheral outline, the
application will receive a filing date. However, the
examining attorney will generally require the applicant to
submit a single amended drawing showing how the mark
is used in connection with the services. The applicant must
also submit a detailed description of the mark identifying
the color and describing its placement.
Applicant’s drawing and description of its mark as “the color pink as
applied to vehicles, brochures and websites” are so vague as to comprehend the color
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pink applied in any manner to vehicles, brochures, and websites. They are insufficient
to provide notice of the scope of rights Applicant claims.
The Examining Attorney submitted examples of other single-color registrations.
These include a registration owned by AT&T Intellectual Property II, L.P. for
telecommunications and other services.2 The description of the mark states: “The
mark consists of the color green as used on promotional materials, product displays,
brochures, website [sic], television commercials, billboards, and other advertising for
telecommunications services. The matter shown in dotted lines serves to show
positioning of the mark and is not part of the mark.” The drawing is:

Another example, registered for education services, is described as follows:3 “The
mark consists of the color orange as applied to the website through which services
are marketed. The matter depicted in broken lines is used to show the position of the
mark and is not claimed as a feature of the mark.” The drawing is:

2 Registration No. 4219637 on the Supplemental Register, March 30, 2018 Final Office Action
at TSDR 5-7.
3 Registration No. 4618885 on the Supplemental Register, id. at TSDR 10-12.
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One more example is a robin’s-egg shade of blue used by Tiffany (NJ) LLC on
catalog covers for retail store and mail order catalog services.4 In that registration,
the description of the drawing includes a statement that: “The
matter shown in broken lines represents covers of various sizes and serves to show
the positioning of the mark.”
All of these registrations differ from the subject application in that they
specifically display and describe the placement of the color in which the owner claims
service mark rights. Indeed, the same is true of Applicant’s existing registration made
of record by the Examining Attorney.5 That registration, reciting some of the same
services identified in the subject application in International Classes 39 and 41, is for

4 Registration No. 2416794 on the Principal Register, id. at TSDR 2-4; March 1, 2018
Response to Office Action, Appendix CA, TSDR 26-32.
5 Registration No. 5188950 on the Principal Register, March 30, 2018 Final Office Action at
TSDR 13-15.
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the mark with a claim of acquired distinctiveness in whole and
the following description:
The mark consists of the color pink as applied to the
exterior surface of a land vehicle. The matter shown in
dotted or broken lines in the nature of the configuration of
the vehicle is not claimed as part of the mark and only
shows the position or placement of the mark as used in
connection with the services.
With its March 1, 2018 Response to Office Action, Applicant submitted copies of
numerous third-party color registrations in support of its arguments that its drawing
and specimens are acceptable. The Examining Attorney persuasively distinguishes
many of them in her brief.6 One that Applicant argues is not distinguished is owned
by United Parcel Service of America, Inc. (“UPS”) for “transportation and delivery of
personal property by air and motor vehicle.”7 Like the subject application, the mark
in the UPS registration is drawn as a dashed-line square , but the placement
of the color mark is specifically described:
The mark consists of the color chocolate brown, which is
the approximate equivalent of Pantone Matching System
462C, as applied to the entire surface of vehicles and
uniforms. The mark consists of the color brown alone. The
broken lines indicate the position of the mark and do not
form part of the mark. (emphasis added).

6 6 TTABVUE 12-13.
7 Registration No. 2901090 on the Principal Register. Reply Brief at 7-8, 8 TTABVUE 8-9;
March 1, 2018 Response to Office Action, Appendix ZA, TSDR 33-37.
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As the Board has often said, each case must be decided on its own merits and we
are not bound by the allowance of prior registrations. In re Nett Designs Inc., 236 F.3d
1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). But here, the third-party registrations
of record – including those on which Applicant relies – only serve to underscore the
deficiencies in its application. We affirm the requirement to submit an amended
drawing displaying the manner in which the mark is used in connection with the
services, and an amended description indicating the specific placement of the color.
B. The Proposed Mark Differs on the Drawing and Specimens
We also must determine whether the mark as shown in the drawing is a
substantially exact representation of the mark shown in the specimens, that is, if
they “are basically the same marks creating the same impressions.” In re Schechter
Bros. Modular Corp., 182 USPQ 694, 695 (TTAB 1974). “[E]ach case presents its own
unique circumstances and requires a judgment as to that particular designation.” In
re 1175856 Ontario Ltd., 81 USPQ2d 1446, 1448 (TTAB 2006).
As noted above, Applicant’s proposed mark is and its specimens,
described as “website, brochures, and land vehicles bearing mark,” are:

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Although we have found the drawing and description of the mark unacceptable,
we find that the color pink is the same in the drawing and the specimens. Therefore,
we reverse the refusal on the ground that the proposed mark differs on the drawing
and the specimens.
II. Applicant Seeks To Register Multiple Marks
Under the Trademark Act, an application may seek to register only a single mark.
In re Int’l Flavors & Fragrances Inc., 183 F.3d 1361, 51 USPQ2d 1513, 1516. Once
again, we have found the drawing and description of the mark improper in that the
application does not seek to register a color used in a particular way. Nonetheless, we
find that Applicant seeks only to register the color pink alone, applied in some
unspecified fashion to vehicles, brochures, and websites. We therefore reverse the
refusal to register on the basis that Applicant seeks to register multiple marks.
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III. Applicant Has Not Established Acquired Distinctiveness
Finally, we consider the refusal to register the mark under Trademark Act Section
2(f). Color marks are never inherently distinctive. Wal-Mart Stores Inc. v. Samara
Bros. Inc., 529 U.S. 205, 54 USPQ2d 1065, 1068 (2000); Qualitex Co. v. Jacobson
Prods. Co., 514 U.S. 159, 34 USPQ2d 1161, 1162-63 (1995); In re Forney Indus., Inc.,
127 USPQ2d 1787, 1793 (TTAB 2018) (“Colors alone cannot be inherently
distinctive.”); In re Florists’ Transworld Delivery Inc., 106 USPQ2d 1784, 1792 n.6
(TTAB 2013) (“FTD”). In order to obtain a registration on the Principal Register, it is
Applicant’s burden to demonstrate that its mark has acquired distinctiveness. See
Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1007-08
(Fed. Cir. 1988); FTD, 106 USPQ2d at 1792. Any claim to color per se used as a service
mark must be specific as to use and include evidence of acquired distinctiveness for
each claimed use. TMEP § 1202.05(g) (citing In re Thrifty Inc., 274 F.3d 1349, 61
USPQ2d 1121, 1124 (Fed. Cir. 2001) (stating that “evidence submitted to
demonstrate acquired distinctiveness of a color may show consumer recognition with
respect to certain objects (e.g., blue vehicle rental centers), but not for other objects
(e.g., blue rental cars)”)).
Six interrelated factors are weighed together to determine whether a mark has
acquired secondary meaning: (1) association with a particular source by actual
purchasers (typically measured by customer surveys); (2) length, degree, and
exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and
number of customers; (5) intentional copying; and (6) unsolicited media coverage of
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the product embodying the mark. Converse, Inc. v. ITC, 909 F.3d 1110, 128 USPQ2d
1538, 1546 (Fed. Cir. 2018). “By their nature color marks carry a difficult burden in
demonstrating distinctiveness and trademark character.” In re Owens-Corning
Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417, 424 (Fed. Cir. 1985). Accordingly, the
burden Applicant bears to establish that the color pink has acquired distinctiveness
and is perceived as a designation of source for its services is a heavy one.
In support of its claim of acquired distinctiveness, Applicant submitted with its
application a declaration from Shawn Wendell, president and owner of original
applicant Pink Adventure Group, Inc. (“PAG”). Mr. Wendell testified in part that
PAG, directly or through its subsidiaries:
• Has used the applied-for mark on vehicles since 1965, on brochures since at
least 1988, and on websites since at least 1998 (¶ 3, TSDR 14);
• Has at least 80 vehicles bearing the mark used to advertise and provide the
identified services in Arizona and Nevada (¶ 7, TSDR 15);
• Distributed nearly two million brochures advertising the services and
including the mark between 2009 and 2014 (¶ 8, TSDR 15);
• Gave tours in a vehicle bearing the mark to more than one million
passengers between 2009 and 2013 (¶ 9, TSDR 15-16);
• Had more than 1.2 million unique visitors to its website bearing the mark
between 2011 and 2014 (¶ 10, TSDR 16);
• Spent more than $2 million on advertising between 2009 and 2013,
including nearly $370,000 for brochures (¶ 11, TSDR 16-17); and
• “PAG believes that the Mark has become distinctive, as applied to vehicles,
websites and brochures, through applicant’s substantially exclusive and
continuous use in commerce for at least the five years immediately before
the date of this statement, in conjunction [with] advertising and providing
the Services.” (¶ 30, 25 TSDR).
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Mr. Wendell also averred to numerous mentions of Applicant and its services in
the media (¶¶ 14-29, 18-24 TSDR). Applicant submitted copies of consumer reviews,
print stories, and seven television and radio news segments devoted to its services,
among other evidence. In each instance, however, the focus is on the pink color of the
vehicles Applicant uses to provide its services, not its brochures or website. The
record demonstrates that Applicant has acquired distinctiveness in the color pink as
applied to the exterior of vehicles for tour and travel guide services, as reflected in its
existing Registration No. 5188950, issued under Trademark Act Section 2(f). There
is no evidence, however, that Applicant has acquired distinctiveness in the color pink
as applied to brochures and websites for its identified services.
The Examining Attorney argues that: “Applicant’s extensive sales and promotion
may demonstrate the commercial success of applicant’s services, but not that relevant
consumers view the matter as a mark for these services.”8 We agree. Here, the raw
numbers alone (length of use, website visitors, and brochures distributed) are
insufficient to meet the heavy burden to establish that consumers recognize
Applicant’s use of the color pink on brochures and websites as a service mark. See,
e.g., FTD, 106 USPQ2d at 1793-94 (finding evidence insufficient to establish
secondary meaning in color black); In re Ferris Corp., 59 USPQ2d 1587, 1592 (TTAB
2001) (finding evidence insufficient to establish secondary meaning in color pink). We
affirm the refusal on the ground that the mark lacks distinctiveness.

8 6 TTABVUE 21.
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Decision: The refusal to register is affirmed on the grounds that the applied-for
mark is not inherently distinctive and Applicant has not established that it has
acquired distinctiveness for all of the identified applications under Trademark Act
Sections 1, 2, 3, and 45. We also affirm the requirement to submit an adequate
drawing and description of the mark. We reverse the refusal on the grounds that
Applicant seeks to register multiple marks and that the proposed mark differs on the
drawing and specimen.