International Flavors & Fragrances

Trademark Trial and Appeal Board

May 19, 1998

No. 74532528 (T.T.A.B. May. 19, 1998)

Hearing: Paper No. 16
May 9, 1996 RLS/TLW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 5/19/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re International Flavors & Fragrances Inc.
________
Serial Nos. 74/532,528, 74/532,529 & 74/591,331
_______
Arthur L. Liberman for International Flavors & Fragrances
Inc.
Linda E. Blohm, Trademark Examining Attorney, Law Office 106
(Mary Sparrow, Managing Attorney)
_______
Before Simms, Seeherman and Hohein, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
International Flavors & Fragrances Inc. (applicant), a
New York corporation, has appealed from the final refusals
in two applications filed by applicant to register the marks
LIVING xxxx FLAVORS and LIVING xxxx FLAVOR for, in each
case, the following goods:
essential oils for use in the
manufacture of flavored foodstuffs,
smoking tobacco compositions, smoking
tobacco articles, chewing tobacco
compositions, chewing gums, oral care
products and beverages, in Class 3; and
Ser Nos. 74/532,528, 74/532,529 & 74/591,331
2
non-synthetic and synthetic flavor
substances for use in the manufacture of
flavored foodstuffs, smoking tobacco
compositions, chewing tobacco
compositions, smoking tobacco articles,
chewing gums, oral care products and
beverages, in Class 30.1
Applicant has also appealed from the final refusal to
register the mark LIVING xxxx for the following goods:
non-synthetic and synthetic fragrances
for use in the manufacture of colognes,
cosmetics, hair preparations,
toiletries, detergents, fabric
softeners, odorants, deodorants,
bleaches, brighteners and air
fresheners, in Class 1; and
essential oils for use in the
manufacture of colognes, cosmetics,
toiletries, hair preparations,
detergents, fabric softeners, odorants,
deodorants, bleaches, brighteners and
air fresheners, in Class 3.2
In the first application, applicant has indicated that:
The meaning of "xxxx" is for a specific
herb, fruit, plant or vegetable as
exemplified by the attached labels and

1 Applications Serial Nos. 74/532,528 and 74/532,529, both filed
June 2, 1994.
2 Application Serial No. 74/591,331, filed October 27, 1994. All
three applications are based upon applicant’s use of its marks in
commerce. The first two applications recite June 1, 1994 as
applicant’s dates of first use and first use in commerce and the
last application recites November 1, 1989 as such dates. In each
application, applicant has claimed ownership of four
registrations covering the marks LIVING FRAGRANCE ("FRAGRANCE"
disclaimed) for various fragrances and essential oils
(Registration No. 1,611,778, issued September 4, 1990, Sections 8
and 15 affidavit filed); LIVING FLOWERS for various fragrances
and essential oils (Registration No. 1,613,442, issued September
18, 1990, Sections 8 and 15 filed); LIVING MINT ("MINT"
disclaimed) for various flavor substances and essential oils
(Registration No. 1,808,736, issued December 7, 1993); and LIVING
FRUIT ("FRUIT" disclaimed) for various essential oils and flavor
substances (Registration No. 1,813,331, issued December 28,
1993).
Ser Nos. 74/532,528, 74/532,529 & 74/591,331
3
as exemplified as follows: LIVING HERB
FLAVORS; LIVING FRUIT FLAVORS; LIVING
MINT FLAVORS; LIVING SPICE FLAVORS;
LIVING RASPBERRY FLAVORS; LIVING
NECTARINE FLAVORS; LIVING PINEAPPLE
FLAVORS; LIVING STRAWBERRY FLAVORS;
LIVING GREEN PEPPER FLAVORS; LIVING RED
PEPPER FLAVORS; LIVING CARAWAY FLAVORS.
By subsequent amendments, applicant has disclaimed exclusive
rights to the use of the words "FLAVORS" and "FLAVOR" and
has asserted that:
The "xxxx" designations are themselves
not part of the mark.
Applicant has appealed from the final requirements of
the Examining Attorney to submit appropriate specimens
showing marks which agree with the various marks shown on
the drawing pages of these three applications--that is, to
submit specimens showing, for example, the precise mark
LIVING xxxx FLAVORS.
Applicant’s attorney and the Examining Attorney have
submitted briefs and an oral hearing was held.
The issue framed by the briefs submitted in this case
is whether applicant has provided acceptable specimens which
"match" or support the marks sought to be registered on the
drawings. In applicant’s brief, applicant has pointed to a
number of subissues including whether use of the designation
"xxxx" is similar to the use of dashes or underlining used
on third-party registrations and applications of record to
represent a so-called "phantom element."
It is the Examining Attorney’s position that the
various marks shown on the drawing pages of the
Ser Nos. 74/532,528, 74/532,529 & 74/591,331
4
applications, for example, LIVING xxxx FLAVORS, differ from
the marks shown on the various specimens, for example,
LIVING GREEN BELL PEPPER FLAVORS. Further, the Examining
Attorney maintains that applicant cannot amend the marks
shown on the drawings to conform to the display of the marks
on the specimens because the character of each of the marks
on the drawings would then be materially altered.
Accordingly, the Examining Attorney made a requirement in
each of these cases for applicant to submit substitute
specimens evidencing use of the particular marks on the
respective drawings:
By submitting a drawing that includes
XXXX and asking the Office to interpret
XXXX as the name of any herb, fruit,
plant, or vegetable, applicant is
attempting to register many different
marks in one application, which is not
permitted. To allow an element of a
drawing of a mark to refer to a large
number of different terms is also
unacceptable because it results in a
mark which will be difficult or
impossible for an Examining Attorney to
search. In the case at issue, in order
to conduct a proper search, the
Examining Attorney would be required to
know of and to search the name [of]
every herb, fruit, plant or vegetable in
existence.
Additionally, third parties would not
have been given proper notice as to the
true content on the proposed mark/marks.
Examining Attorney’s appeal brief, 4-5. Further, it is the
Examining Attorney’s position that the phantom element
Ser Nos. 74/532,528, 74/532,529 & 74/591,331
5
("xxxx") is considered distinctive and cannot be used to
represent other terms.
Applicant, on the other hand, argues that the specimens
submitted are sufficient to support the respective
applications. Initially, applicant offered to submit
amended drawings conforming to the manner in which "phantom
elements" are depicted in other applications and
registrations allowed by this Office. In this regard,
applicant has pointed to at least one registration and two
allowed applications (shown below) where underlining or
dashes were used to represent various model numbers,
geographic areas or years, and where statements accompanied
those allowed marks explaining what the underlining and
dashes represented. Also, by analogy, applicant has pointed
to Trademark Rule 2.51(d) which permits broken lines to be
used in drawings to show matter which is not claimed as part
of a mark.
Ser Nos. 74/532,528, 74/532,529 & 74/591,331
6
The Examining Attorney has attempted to distinguish the
applications and registration noted by applicant by arguing
that here each of applicant’s marks makes "a completely
different commercial impression than is made by [the mark
on] the drawing page." Examining Attorney’s appeal brief,
6. It is the Examining Attorney’s contention that, in the
noted registration and applications, the designations or
terms omitted from the marks do not create a separate
commercial impression. Here, the Examining Attorney
contends, the commercial impression changes depending upon
Ser Nos. 74/532,528, 74/532,529 & 74/591,331
7
which herb, fruit, plant or vegetable name is inserted into
the mark.
After careful consideration of the arguments, and upon
review of relevant authority, it is our opinion that
applicant is entitled to the registrations it seeks, but
that amendments to each of the drawings must be submitted.
We can find no precedent which would prohibit an applicant
from attempting to register marks such as applicant is here
seeking to register--that is, a mark with a so-called
“phantom element” intended to represent a generic or
otherwise unprotectable designation. In fact, applicant has
made of record examples where the Office has permitted such
a practice in the past. Moreover, it seems to us that,
contrary to the Examining Attorney's argument, and depending
upon the descriptive designations or numbers used in those
registered marks, commercial impressions may even vary
somewhat in those registered and published marks as well.
We see no real distinction between the substitution of a
descriptive flavor or fragrance designation such as
"STRAWBERRY" or "MINT" and the substitution of various model
designations, dates or geographic areas in the noted
registration and applications. Finally, with respect to the
Examining Attorney’s argument concerning the difficulty of
searching marks with phantom elements, we observe that while
marks must, of course, be considered in their entireties, it
is nevertheless the case that where the phantom element is a
descriptive or generic term, it is the arbitrary or
Ser Nos. 74/532,528, 74/532,529 & 74/591,331
8
suggestive component of an applicant’s mark which
principally creates or projects the commercial impression
made by the mark as a whole. Thus, in this case, it is the
search of the arbitrary or suggestive word “LIVING” which is
most likely to reveal any potential bars to registration
under Section 2(d) of the Act and not the search of some
other marks having the phantom element but not the arbitrary
or suggestive component. For example, if the mark is
“LIVING GREEN BELL PEPPER,” searching marks with the word
“LIVING” or variations thereof is far more likely to reveal
a potential bar to registration than searching marks which
share only the words “GREEN BELL PEPPER.”
The only question remaining, therefore, is whether we
should permit applicant to register the marks in the form it
has sought or possibly in some other form previously
sanctioned by this Office. As noted, the Examining Attorney
has rejected any proposed amendment to substitute
alternative matter for the designation “xxxx,” arguing that
the "xxxx" portion of applicant’s asserted mark is
distinctive and that an amendment to the drawing would be an
impermissible material alteration.
Subsequent to the oral hearing in this case, the Court
of Appeals for the Federal Circuit handed down an opinion in
In re ECCS, Inc., 94 F.3d 1578, 39 USPQ2d 2001 (1996). Like
this case, that case involved a situation where the original
application was internally inconsistent as to what the mark
was--the specimens displaying one mark and the drawing a
Ser Nos. 74/532,528, 74/532,529 & 74/591,331
9
slightly different mark--which inconsistency the applicant
sought to correct by way of amendment of the drawing.
There, the court permitted an amendment to the drawing to
conform to the manner in which the mark was displayed on the
specimens, even though the Examining Attorney had argued
that to permit such an amendment would be a material
alteration of the mark. Similarly, here we believe that
amendments to applicant’s drawings to delete the designation
"xxxx" and to substitute therefor a different format of the
phantom element should be permitted. Clearly, in light of
the marks actually used by applicant, as shown by the
specimens, applicant’s intent was to show the phantom
element on the drawing of each of its marks and not the
literal expression “xxxx.”
For the sake of consistency, we believe it would be
preferable for applicant to obtain registrations where the
phantom element is represented by either dashes or solid
underlining. Here, because the number of letters in the
word or words to be represented by the phantom element may
vary, solid underlining (rather than dashes) should be used
in place of the "xxxx." In this regard, we note that
applicant has offered to amend its mark to the manner
preferred by this Office. Accordingly, pending submission
of amended drawings in the above-identified applications,
and amended statements (to be printed on the registrations)
which describe and explain the marks by reflecting the use
of the underlining markings (rather than the use of “xxxx”),
Ser Nos. 74/532,528, 74/532,529 & 74/591,331
10
the refusals to register are affirmed. Upon the submission
of amended drawings and amended statements, our decision
will be set aside and these applications will be forwarded
to publication.
Decision: Pending submission of the above-noted
amendments and statements, refusal of registration in each
case is affirmed. Applicant is allowed until 30 days from
the date of this decision in which to submit the amended
drawings and statements.
R. L. Simms
E. J. Seeherman
G. D. Hohein
Administrative Trademark
Judges, Trademark Trial
and Appeal Board