Kristin A. Harris

Trademark Trial and Appeal Board

Jan 23, 2015

No. 77807042 (T.T.A.B. Jan. 23, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: January 23, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Kristin A. Harris
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Serial No. 77807042
_____

Matthew T. Holman for Kristin A. Harris.

Ronald L. Fairbanks, Trademark Examining Attorney, Law Office 119 (J. Brett
Golden, Managing Attorney).

Before Seeherman, Wolfson and Adlin, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Kristin A. Harris (“Applicant”) seeks registration of CELIABRATE, in standard
characters, for:
Appliques in the form of decals; Decalcomanias; Decals;
Food wrappers; Gift bags; Gift boxes; Gift cards;
Motivational cards; Occasion cards in International Class
16;

Shirts; T-shirts; Tee shirts in International Class 25;

Bakery desserts; Bakery goods; Bakery products;
Brownies; Chocolate candies; Cookies; Macaroons; Sweets
in International Class 30; and

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Providing a web site featuring information on health and
nutrition; Providing a web site featuring medical
information; Providing a website featuring content
regarding healthy living and lifestyle wellness; Providing
a website featuring information concerning alternative
health and healing; Providing an on-line computer
database featuring information regarding health and
nutrition; Providing health information; Providing
information on maintaining a healthy lifestyle and losing
weight; Providing medical information in International
Class 44.1

The Examining Attorney refused registration on the ground that the specimens
submitted in support of Applicant’s Statement of Use do not show use of the mark
in commerce, specifically because the mark as shown in the specimens “disagrees”
with the mark in the drawing. After the refusal became final, Applicant appealed
and Applicant and the Examining Attorney filed briefs.2
The Specimens
Applicant’s April 1, 2013 Statement of Use is supported by the specimens
reproduced below:

1 Application Serial No. 77807042, filed August 18, 2009, based on an intent to use the
mark in commerce under Section 1(b) of the Act. Following issuance of a Notice of
Allowance, Applicant filed a Statement of Use alleging first use dates of March 10, 2013 for
the Class 30 goods and March 30, 2013 for the goods and services in Classes 16, 25 and 44.
2 Applicant’s objections to the Examining Attorney’s brief are overruled. While Trademark
Rule 2.142(b)(2) requires “an alphabetical index of cited cases,” the required index is for the
Board’s convenience, and we do not regard it as being so essential that the failure to comply
with the requirement should result in our not considering the brief. To the contrary, not
having the brief and benefit of the Examining Attorney’s arguments would impose a burden
on the Board. In any event, even if we were to regard the failure to provide an index of
cases as a basis for not considering the brief, this would not result in our treating “this
appeal as unopposed,” thus treating the lack of an acceptable brief as a withdrawal of the
refusal. We would still consider the appeal on the merits. Finally, Applicant’s contention
that the Examining Attorney’s brief impermissibly “fails to completely and clearly present
each argument” is also not well-taken.
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SOU Specimen No. 1.
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4
SOU Specimen No. 2.

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SOU Specimen No. 3.

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SOU Specimen No. 4.
In response to the May 4, 2013 Office Action finding that the mark as shown
in these specimens disagrees with the mark in the drawing, Applicant submitted
additional specimens, explaining that “the specimens originally submitted along
with the statement of use do not contain all material visible when viewing my
company’s website at www.kristanns.com using an internet browser. In particular,
the instances of the CELIABRATE mark standing alone that appear in the upper
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middle of each specimen submitted herewith do not appear in those original
specimens.” Declaration of Kristin Harris in Support of Applicant’s November 4,
2013 Office Action response (“Harris Dec.”) ¶ 2. The following is a representative
example of one of these supplemental specimens:
Supplemental Specimen No. 1.
In addition, Applicant’s November 4, 2013 Office Action response includes
supplemental specimens not previously provided, specifically “a page on my
company’s website to highlight and explain the mark,” which “has been included as
part of my company’s website since it was launched prior to the submission of the
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statement of use.” Harris Dec. ¶ 3. These specimens include this “screen capture”
(hereafter Supplemental Specimen No. 2):

and this “printout” (hereafter Supplemental Specimen No. 3):3

3 Applicant’s November 4, 2013 Office Action response includes additional substitute
specimens not reproduced here, and the “SOU Specimen No. __” and “Supplemental
Specimen No. __” designations used herein are only for purposes of this decision and
convenience. These designations are not used in Applicant’s Statement of Use or November
4, 2013 response, and do not reflect the order in which the original or substitute specimens
were submitted.
Serial No. 77807042
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Supplemental Specimen No. 3. As set forth in Supplemental Specimen Nos. 2 and 3,
“celiabrate” is highlighted as the name for Applicant’s “philosophy on gluten-free
living. Celebrating celiac disease and a gluten-free lifestyle while steadfastly
refusing to ever sacrifice flavor, texture or aroma.”
Arguments
The Examining Attorney argues that the original and supplemental
specimens include the marks CELIABRATE LOVE!, CELIABRATE LIFE!,
CELIABRATE INSPIRATION! and CELIABRATE BLISS!, which are “unitary”
expressions, but that CELIABRATE alone, the mark in the drawing, is not being
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used as a mark.4 While CELIABRATE! appears alone as a “tab” on some of the
supplemental specimens, next to the “Gluten,” “Celiac Disease” and “Shop” tabs,
according to the Examining Attorney the CELIABRATE! tab “merely displays the
backstory on what inspired the applicant to pursue creating gluten-free treats and
come up with the term ‘Celiabrate’ that she uses in (sic) slogan ‘Celiabrate Life!’,”
but is mere advertising and not used as a mark. Examining Attorney’s Appeal Brief
at 9-10. The Examining Attorney does not contend that Applicant’s website
specimens are unacceptable for any other reason, such as that they do not
constitute displays associated with Applicant’s goods and services.
Applicant argues that CELIABRATE is used alone, as a mark, in the
specimens, and that where it is used in a “composite” mark, it is separable from the
composites’ other elements such as “Life!” and “Bliss.” Applicant stresses that
CELIABRATE is inherently distinctive and that the Examining Attorney does not
contend otherwise.
Decision
The drawing of Applicant’s mark “must be a substantially exact
representation of the mark as used on or in connection with the goods and/or
services,” as shown by the specimens. Trademark Rule 2.51(b). At the same time,
however, because Applicant seeks registration under Section 1, she “has some
latitude in selecting the mark [she] wants to register,” and “may seek to register
any portion of a composite mark if that portion presents a separate and distinct

4 The Examining Attorney informed Applicant that if she attempted to amend the mark in
the drawing to conform to the mark(s) in the specimens, the amendment would constitute a
material alteration, and Applicant has not attempted to amend the mark in the drawing.
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commercial impression which indicates the source of applicant’s goods or services
and distinguishes applicant’s goods or services from those of others.” In re 1175856
Ontario Ltd., 81 USPQ2d 1446, 1448 (TTAB 2006); see also, In re Chemical
Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828, 1830 (Fed. Cir. 1988) (in context of
an attempt to register the “background portion” of a mark, holding that the
applicant “must show that the portion sought to be registered creates a separate
and distinct commercial impression, which thereby performs the trademark
function of identifying the source of the merchandise to consumers”). Indeed, in
appropriate cases we “may recognize the right to registration of one part of an
owner’s mark consisting of two parts.” In re Servel, Inc., 181 F.2d 192, 85 USPQ
257, 260 (CCPA 1950).
Here, as the Examining Attorney correctly points out, Applicant’s specimens
reveal use of CELIABRATE LIFE!, CELIABRATE INSPIRATION!, CELIABRATE
LOVE! and CELIABRATE BLISS!, at least at times as phrases. In fact, in several
places these phrases appear in their entirety on the same line, in the same font and
with the same emphasis, and in other places these entire phrases, rather than their
constituent words, are separated from each other, such as on “KristAnn’s Badge
Decal” in SOU Specimen No. 1 and “KristAnn’s Badge T Shirt” in SOU Specimen
No. 2. In addition, CELIABRATE LIFE! appears as a phrase under “KristAnn’s” at
the top of each of Applicant’s SOU Specimens and Supplemental Specimens
reproduced herein. However, we agree with Applicant that this does not end the
inquiry as to the commercial impression of the term CELIABRATE.
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While this is a close case, the specimens of record reveal that CELIABRATE
itself presents a separate and distinct commercial impression which identifies the
source of Applicant’s goods and services, and distinguishes them from those of
others. For example, while the CELIABRATE! tab in Applicant’s Supplemental
Specimens does not clearly show use of CELIABRATE alone in connection with
Applicant’s goods, it does constitute use of the mark in the drawing in connection
with Applicant’s Class 44 services. Indeed, clicking on the CELIABRATE! tab takes
users to the “What does Celiabrate mean?” page of Applicant’s website, which
provides information on health and nutrition, and the CELIABRATE! tab is next to
other tabs which take users to pages providing information on gluten and celiac
disease. Applicant’s services include “providing a web site featuring information on
health and nutrition” as well as “medical information.” When viewing the
information about gluten and celiac disease, consumers are presented with the
CELIABRATE! mark in the center of the top of those webpages.5
As for Applicant’s goods, the common thread between Applicant’s specimens
for its goods in Classes 16, 25 and 30 is CELIABRATE, the mark in the drawing. In
fact, the logo on Applicant’s badge decal and t-shirt includes an outer circle on
which CELIABRATE LIFE!, CELIABRATE LOVE! and CELIABRATE BLISS!
appear consecutively, and the description of the badge decal begins with

5 The exclamation point appearing on the CELIABRATE! tab is insignificant from a
trademark perspective and does not change the commercial impression of the
CELIABRATE mark. See TMEP § 807.12(a)(iii) (2014) (“Generally, extraneous, non-
distinctive punctuation marks that appear on the specimen may be omitted from the
drawing, if the matter on the drawing makes an impression separate and apart from the
punctuation marks that appear on the specimen.”) and TMEP § 807.14(c) (“Punctuation,
such as quotation marks, hyphens, periods, commas, and exclamation marks, generally
does not significantly alter the commercial impression of the mark.”).
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“Celiabrate™ Inspiration!” and ends with “celiabrate everything!”. SOU
Specimen Nos. 1 and 2. The packaging for Applicant’s chocolate gift box bears the
phrase CELIABRATE LIFE!, and the description to the left of the picture of the
product on Applicant’s website begins with “Celiabrate™ Bliss!”. Because it is
used often and consistently, in various ways, in these specimens, CELIABRATE
will be perceived as a source identifier. If CELIABRATE was always used with a
single specific word or trademark component then Applicant’s source identifier
would be more readily perceived as the combination of CELIABRATE with that
particular consistently used component, such as CELIABRATE LIFE!. But because
Applicant uses the word CELIABRATE consistently and repeatedly throughout the
specimens, with and without various additional terms, we find that CELIABRATE
alone presents a separate and distinct commercial impression which indicates the
source of Applicant’s goods and services. And even if the “Celiabrate!” tab and use of
“Celiabrate!” alone at the top of the “What does Celiabrate mean?” page do not
constitute use in connection with Applicant’s goods (as opposed to her services),
these uses nonetheless support our finding that CELIABRATE alone makes a
separate and distinct commercial impression. See generally, In re Raychem Corp., 12
USPQ2d 1399, 1400 (TTAB 1989) (“Such independent significance is in fact
supported by applicant’s use of the mark without the part number or generic
designation in its advertising materials.”). Indeed, as a coined term, “celiabrate” is
more likely to make a commercial impression than the less distinctive terms “life,”
“love,” “bliss,” “inspiration” and “everything.”
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This commercial impression made by CELIABRATE alone is reinforced by
Applicant’s placement of the ™ symbol immediately following CELIABRATE in the
descriptions of each of Applicant’s products. “Though not dispositive, the ‘use of the
designation ‘TM’ … lends a degree of visual prominence to the term’”
CELIABRATE. In re Sones, 590 F.3d 1282, 93 USPQ2d 1118, 1124 (Fed. Cir. 2009)
(quoting In re Dell Inc., 71 USPQ2d 1725, 1729 (TTAB 2004)).
Applicant’s declaration provides further support for our finding that
CELIABRATE presents a separate and distinct commercial impression. Therein,
she states
I routinely receive inquiries from customers who are
curious about the CELIABRATE mark. These inquiries
began before the launch of my company’s website, and
have always focused exclusively on the literal
CELIABRATE mark. To date, no customer has ever
mentioned any of the additional words or design elements
present on the products, product labels and/or website
pages when inquiring about or discussing the
CELIABRATE mark. In response to my customers’
curiosity and inquiries about the CELIABRATE mark I
created a page on my company’s website to highlight and
explain the mark ….

Harris Dec. ¶ 3. In an analogous situation, this Board reversed a refusal to register
DUMPMASTER alone based on a specimen depicting the mark as
, stating:
The record shows that applicant has consistently used the
term “DUMPMASTER”, per se, in its advertisements to
refer to its products; that purchasers and prospective
purchasers used that designation alone in making
reference to applicant’s product; that purchasers have
ordered applicant’s product by the term
“DUMPMASTER”, alone; that writers in various trade
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journals referred to applicant’s product by the designation
“DUMPMASTER”; and that purchasers do in fact
recognize “DUMPMASTER” as being a brand of
equipment made only by applicant.

In re Dempster Brothers, Inc., 132 USPQ 300 (TTAB 1961)
Finally, in a variety of analogous circumstances, we have allowed owners of a
composite mark to register separately one or more of its several elements. See e.g.,
In re Servel, Inc., 85 USPQ at 257 (reversing refusal to register SERVEL where
specimen depicted mark as SERVEL INKLINGS, in part because “’Servel’ is a
“coined and arbitrary term”); In re Royal BodyCare, Inc., 83 USPQ2d 1564 (TTAB
2007) (reversing refusal to register NANOCEUTICAL, where specimen depicted
mark “embedded in the phrase RBC’S NANOCEUTICAL”); In re Raychem Corp., 12
USPQ2d at 1399 (reversing refusal to register TINEL-LOCK for metal rings for
attaching a cable shield to an adapter where mark as used on specimens was
TRO6AI-TINEL-LOCK-RING); In re EMCO, Inc., 158 USPQ 622 (TTAB 1968)
(reversing refusal to register RESPONSER where specimen depicted use of MEYER
RESPONSER).
Decision: The refusal to register Applicant’s mark because the specimens do not
support use of the mark shown in the drawing is reversed.