Hudson Fairfax Group LLC

Trademark Trial and Appeal Board

Nov 21, 2008

No. 76662560 (T.T.A.B. Nov. 21, 2008)

Mailed:
November 21, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Hudson Fairfax Group LLC
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Serial No. 76662560
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Walter D. Ames, Esq. for Hudson Fairfax Group LLC.

Colleen Dombrow, Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney).
_______

Before Seeherman, Drost and Ritchie de Larena,
Administrative Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

On July 5, 2006, Hudson Fairfax Group LLC applied to
register the mark CONTINUUM, in standard character format,
for services ultimately identified as “financial investment
services in the nature of a total portfolio offering
comprising an investment in organizations doing business in
various regions of the world in the nature of a fund for
equity and fixed income investments.” The application is
based on Section 1(a) of the Trademark Act, and claims a
date of first use and first use in commerce as of April 3,
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 76662560
2
2006. Although applicant and the Examining Attorney have
expressed the issue on appeal in different ways, the sole
issue is whether the drawing in applicant’s application is
a substantially exact representation of the mark shown in
the specimens. Specifically, it is the Examining
Attorney’s contention that the specimens show the mark as
INDIA CONTINUUM FUND, and therefore that CONTINUUM, shown
in the drawing, is a mutilation of that mark.
There are some preliminary procedural matters that we
must address. With its reply brief applicant submitted
evidence to show that third parties use INDIA in the name
of mutual funds in order to demonstrate that INDIA cannot
function as a mark for mutual fund services. Although
applicant recognizes that this evidence has been submitted
at a late stage in the appeal, applicant asserts that the
Examining Attorney for the first time in her appeal brief
took the position that INDIA was capable of functioning as
a trademark. Applicant has also indicated that it has no
objection to the Examining Attorney filing a surreply brief
to address this new evidence.
Although applicant obviously wishes to shortcut much
of the appeal process, Trademark Rule 2.142(d) is clear
that the record in the application should be complete prior
to the filing of an appeal. An applicant may file a
Ser No. 76662560
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request for remand in order to attempt to make evidence of
record after an appeal has been filed, see TBMP §1207.02.
If the Board grants such a request, the application is
remanded to the Examining Attorney for further examination,
which would include the opportunity for the Examining
Attorney to submit evidence to respond to that of the
applicant, and for the applicant and the Examining Attorney
to file supplemental briefs directed to such new evidence.
A request for remand must be supported by a showing of good
cause, and the later in the appeal process that the request
is made, the stronger the reason that must be given for
good cause to be found. Here, applicant has not filed a
request for remand, nor has it made the necessary showing
of good cause for such a request to be granted. In this
connection, we note that in both the second Office action,
mailed on June 19, 2007, and the third Office action,
mailed December 4, 2007, the Examining Attorney asserted
that INDIA is a source-indicating term. Applicant’s offer
to allow the Examining Attorney to submit a surreply brief
(which is not provided for by the rules) is not a
satisfactory basis for circumventing the rules and
procedures of the Board. Accordingly, the evidence
submitted by applicant with its reply brief has been given
no consideration.
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Applicant has also stated in its reply brief that it
“readily disclaims any right of exclusivity of either of
the words INDIA or FUND apart from the mark as used.”
Reply brief p. 3, n. 4. Applicant has apparently made this
statement in connection with its argument that seeking
registration for CONTINUUM is not a mutilation of INDIA
CONTINUUM FUND because INDIA and FUND have no source-
indicating capability. We point out that, because the mark
applicant seeks to register is CONTINUUM per se, the issue
of whether a disclaimer of INDIA or FUND would be necessary
is not before us.
This brings us to the substantive issue in this
appeal. Trademark Rule 2.51(a) provides that, in an
application under Section 1(a) of the Trademark Act, “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.” As noted, it is the Examining
Attorney’s position that the drawing, which is for the word
CONTINUUM, is not a substantially exact representation of
the mark used in connection with the services, because the
specimens depict the mark as INDIA CONTINUUM FUND. Because
the words INDIA and FUND do not appear in the drawing, the
Examining Attorney contends that CONTINUUM is a mutilation
of the mark as used.
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There is no dispute that the specimens show the word
CONTINUUM preceded by the word INDIA and followed by the
word FUND, and that all three words are shown in the same
type size and font, in a manner that stands out from the
other wording in the specimens. However, the question
before us is whether CONTINUUM creates a separate
commercial impression, and therefore would not be
considered a mutilation, because the words INDIA and FUND
do not indicate source. In this respect, of the various
“mutilation” cases discussed by the Examining Attorney,1 the
present situation is most similar to that in In re Raychem
Corp., 12 USPQ2d 1399 (TTAB 1989), in which the applicant
sought to register TINEL-LOCK for “metal rings for
attaching a cable shield to an adapter,” and submitted as
specimens of use of that mark a label with TRO6AI-TINEL-
LOCK-RING. The Board found that the specimens supported
use of the mark shown in the drawing. Specifically, the
Board found that RING was a generic term, and that
“[o]rdinarily, even if it is used with a trademark, the

1 In her brief the Examining Attorney presented an extensive
review of the case law involving “mutilated marks,” a review that
drew a compliment from applicant: “[A]pplicant’s counsel
sincerely thanks the Examining Attorney for the collection of
cases that was contained in the Examining Attorney’s Appeal
Brief. It will be maintained in his files as the starting point
for any future consideration of the interesting issue of
trademark mutilation.” Reply brief, p. 1.

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generic name of a product need not be included as part of
the words applicant seeks to register unless it forms a
part of a unitary mark.” Id. at 1400. As for the “TRO6AI”
element shown in the specimen, the Board found this to be a
model number, and that such an element “does not usually
function as a source identifier.” Id. As a result, the
Board found that:
the alpha-numeric designation appearing
on the specimen in front of “TINEL-
LOCK” is not essential to the
commercial impression of “TINEL-LOCK”
as a trademark for applicant's metal
rings. In a similar sense, the generic
term “RING,” although connected to the
model number and the source-identifying
term, “TINEL-LOCK,” by a hyphen,
nonetheless plays no integral role in
forming the portion of applicant's mark
which distinguishes applicant's goods
from those of others.

Id. The Board held that neither the part number nor the
generic term was essential to the commercial impression
created by the mark as shown in the specimens, and
therefore that the mark TINEL-LOCK in the drawing was not a
mutilation of the mark shown in the specimens, and the
specimens showed use of the mark depicted in the drawing.
In the present case, there is no question that FUND is
a generic term for applicant’s services; this has been
acknowledged by both applicant and the Examining Attorney.
Nor can the inclusion of this generic word be considered
Ser No. 76662560
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part of a unitary phrase or mark. As noted in Raychem,
supra, even the use of hyphens connecting the model number
and generic term with the trademark did not result in
TRO6AI-TINEL-LOCK-RING being considered a unitary mark.
As for the word INDIA, the Examining Attorney has
acknowledged that this term is geographically descriptive,
but contends that it is not generic and is capable of
functioning as a trademark, that it “could acquire
significance as a trademark.” Brief, p. 8. However, the
mere fact that a term is not generic does not mean that it
has trademark significance, nor is that the determining
factor in whether the omission of that term results in a
mutilation of the mark as actually used. For example, the
model number shown in the specimen in the Raychem case,
discussed above, was not considered a generic term.
Moreover, in The Institut National des Appellations
D'Origine v. Vintners International Co. Inc., 958 F.2d
1574, 22 USPQ2d 1190 (Fed. Cir. 1992), the Court found,
inter alia, that the mark CHABLIS WITH A TWIST was not a
mutilation despite the fact that the specimen labels also
included the word CALIFORNIA. Although not finding
CALIFORNIA to be a generic term, the Court said
“‘California’ is, moreover, a geographically descriptive
word wholly devoid of trademark significance because it
Ser No. 76662560
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cannot distinguish [the applicant’s] product from others.”
22 USPQ2d at 1197.2
Because the word INDIA in connection with applicant’s
identified services identifies the geographic region in
which applicant invests, it has no trademark significance
as it is used in applicant’s specimens. “INDIA identifies
the country in which this particular CONTINUUM FUND
invests.” Response filed May 8, 2007, p. 6. Consumers
viewing the phrase INDIA CONTINUUM FUND as used in
applicant’s specimens would view INDIA not as a source-
identifying element, but merely as the geographic location
of the investments.
Accordingly, although the words INDIA and FUND appear
in applicant’s specimens in the same size and type style as
the word CONTINUUM, because INDIA and FUND do not have
trademark significance, the word CONTINUUM for which
applicant seeks registration and which appears in the
drawing of the application is not a mutilation of

2 As the Examining Attorney has pointed out, there are factual
differences between the Institut National case and the present
situation, including the requirement of the Bureau of Alcohol,
Firearms and Tobacco that the word CALIFORNIA appear on the wine
labels. However, those differences do not affect the Court’s
finding that the applicant’s mark shown in the drawing was not a
mutilation because the word CALIFORNIA had no trademark
significance, as opposed to being generic.

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applicant’s mark, and applicant’s specimens are acceptable
to show use of the applied-for mark.
Decision: The refusal of registration is reversed.