Hoover Precision Products, Inc.

Trademark Trial and Appeal Board

Nov 6, 2000

No. 75333163 (T.T.A.B. Nov. 6, 2000)

Oral Hearing: Paper No.
14
June 6, 2000
GHD/gdh
11/6/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Hoover Precision Products, Inc.
________
Serial No. 75/333,163
_______
Thomas M. Galgano and Daniel P. Burke of Galgano & Burke for
Hoover Precision Products, Inc.
Vivian M. First, Trademark Examining Attorney, Law Office 104
(Sidney I. Moskowitz, Managing Attorney).
_______
Before Hohein, Hairston and Chapman, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Hoover Precision Products, Inc. has filed an
application to register the mark shown below
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/333,163
2
for "precision, semi-precision and specialty balls for use as
pen tips."1
Registration has been finally refused on the ground
that the mark sought to be registered, as shown on the
drawing, "is an unacceptable mutilation of the applicant's
trademark" as shown on the specimens of use, and that
applicant must therefore submit properly verified "substitute
specimens showing use of the mark as it appears on the
drawing." The specimens of record, which appear to be
portions of the cartons in which applicant's goods are
packaged, evidence the following manner of use:
Applicant has appealed. Briefs have been filed2 and
an oral hearing was held. We affirm the refusal to register.

1 Ser. No. 75/333,163, filed on July 30, 1997, which alleges dates of
first use of May 1, 1990. In the application as originally filed,
applicant claims, pursuant to Section 2(f) of the Trademark Act, 15
U.S.C. §1052(f), that "[t]he mark has become distinctive of the goods
through the applicant's substantially exclusive and continued use
[thereof] for at least the five years immediately before the date of
this statement."
2 Although applicant, in its brief, alternatively maintains that its
mark, as such appears on the drawing, is "capable of serving as a
trademark and, therefore, at a minimum, should be registrable on the
Supplemental Register," the Examining Attorney correctly points out
in her brief that "[s]ince the record does not contain an amendment
Ser. No. 75/333,163
3
As a preliminary matter, we observe that there
appears to be no disagreement by either applicant or the
Examining Attorney 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 Raychem Corp., 12 USPQ2d

to the Supplemental Register, the issue is not properly raised during
this appeal." Moreover, and in any event, it is consideration of the
specimens of record, rather than a matter of the particular register
on which registration is sought, which is determinative of whether
the specimens evidence use of the mark which applicant seeks to
register or whether applicant has "mutilated" its mark. Accordingly,
no further consideration will be given to applicant's alternative
contention.
In addition, inasmuch as Trademark Rule 2.142(d) provides in
relevant part that, since the record in an application should be
complete prior to the filing of an appeal, the Board will ordinarily
not consider additional evidence submitted thereafter, we sustain the
Examining Attorney's objection in her brief to "the untimely
submission of applicant's letterhead evidence (Exh. A of applicant's
brief)," which evidence was submitted for the first time with
applicant's brief.
Ser. No. 75/333,163
4
1399, 1400 (TTAB 1989); Tekelec-Airtronic, 188 USPQ 694, 695
(TTAB 1975); and In re Berg Electronics, Inc., 163 USPQ 487,
487-88 (TTAB 1969).
Turning, therefore, to the merits of this appeal,
applicant argues among other things that as a manufacturer of
ball bearings for various uses, including "pen ball tips," it
"uses a logo which consist[s] of the words TSUBAKI and HOOVER
which are positioned over the face of the ball bearing and
polygonal base" on which such a bearing rests. According to
applicant, "HOOVER is the first and main component of
Applicant's name and TSUBAKI (with a 'T' having an elongated
top leg) is a contraction of the name of its parent company
Tsubakimoto Precision Products, Co., Ltd." Applicant argues
that as so used, the ball bearing design which it seeks to
register creates a separate and distinct commercial
impression. In particular, applicant asserts that such is the
case because:
Applicants' [sic] ball bearing design
is not a common basic shape. While it does
represent a circular ball bearing, the
shading thereof is distinctive. Similarly,
the incomplete polygonal base has a
distinctive shape and is uniquely shaded.
Indeed, it is respectfully submitted that
the ball bearing background design is
either inherently distinctive and/or
distinctive as a result of secondary
meaning - namely as a result of the
continuous use thereof since 1990.

Ser. No. 75/333,163
5
We concur with the Examining Attorney, however, that
the ball bearing design which applicant seeks to register "is
an unacceptable mutilation of the applicant's mark" as shown
on the packing carton specimens. Rather than being
"uncommon," such design, including the shading, is obviously
highly suggestive or illustrative of a ball bearing, whether
as displayed on a stand or base or as representative of a pen
ball tip. Applicant's design, as actually used on the
specimens, plainly functions as a background or vehicle for
the display of the word marks "TSUBAKI" and "HOOVER," and none
of the advertising literature furnished by applicant
demonstrates that the design alone is promoted as a mark. As
the Examining Attorney accurately points out in her brief with
respect to the evidence offered by applicant:
The statement of "substantially
exclusive and continuous use" does not
indicate that the ball bearing design was
used separately from the word [HOOVER and
the word] TSUBAKI and curved lines design
so as to create its own distinct impression
in the minds of consumers. As to the
submitted advertisements, they do not show
the ball bearing design alone in the manner
depicted in the drawing because they
include the word HOOVER inserted into the
base element of the design.
We consequently find that there is nothing in the
record which substantiates applicant's position that the ball
bearing design it seeks to register, as it is actually used on
Ser. No. 75/333,163
6
the specimens, presents a separate and distinct commercial
impression which, in and of itself, functions as a mark
indicative of the source of applicant's goods. Absent,
therefore, properly verified substitute specimens showing use
of the mark as it appears on the drawing, such mark is not
registrable.
Decision: The refusal to register is affirmed.
G. D. Hohein
P. T. Hairston
B. A. Chapman
Administrative Trademark
Judges,
Trademark Trial and Appeal
Board