Mastronardi Produce, Ltd.

Trademark Trial and Appeal Board

Sep 21, 2011

No. 77322943 (T.T.A.B. Sep. 21, 2011)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: September 21, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Mastronardi Produce, Ltd.
________

Serial No. 77322943
_______

Kurt Koenig of Koenig & Associates for Mastronardi Produce,
Ltd.

Shaila E. Settles, Trademark Examining Attorney, Law Office
114 (K. Margaret Le, Managing Attorney).
_______

Before Quinn, Cataldo and Wolfson,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Mastronardi Produce, Ltd. filed an application, as
amended, to register in standard characters the mark MEDLEY
on the Supplemental Register for “fresh, raw and
unprocessed tomatoes, fresh tomatoes; raw tomatoes;
unprocessed tomatoes; fresh, raw and unprocessed
vegetables” in International Class 31.1

1 Application Serial No. 77322943 was filed on November 6, 2007,
on the Principal Register, based upon applicant’s assertion of a
bona fide intent to use the mark in commerce. Applicant
subsequently filed an allegation of use asserting April 17, 2009
Ser. No. 77322943
2
The trademark examining attorney has refused
registration on the Supplemental Register on the ground
that the mark as it appears in the drawing is not a
substantially exact representation of the mark as it
appears on the specimen submitted with the allegation of
use.2 When the requirement was made final, applicant
appealed. Applicant and the examining attorney filed main
briefs on the issue under appeal and applicant filed a
reply brief.
The specimen submitted in connection with the Class 31
goods is reproduced below.

as a date of first use of the mark in commerce, and amended the
application to seek registration on the Supplemental Register.
2 As noted in the Board’s October 15, 2010 order clarifying the
issue on appeal, various other matters were raised during
prosecution of the involved application but subsequently were
resolved or withdrawn.
Ser. No. 77322943
3
It is well-settled that an applicant may seek to
register any portion of a composite mark if that portion
presents a separate and distinct commercial impression
which indicates the source of applicant’s goods or services
and distinguishes applicant’s goods or services from those
of others. See Institut National des Appellations
D’Origine v. Vintners International Co. Inc. 958 F.2d 1574,
22 USPQ2d 1190, 1197 (Fed. Cir. 1992); and In re Chemical
Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828 (Fed. Cir.
1988). If the portion of the mark sought to be registered
does not create a separate and distinct commercial
impression, the result is an impermissible mutilation of
the mark as used. See, e.g. In re Miller Sports Inc., 51
USPQ2d 1059 (TTAB 1999).
As noted by our primary reviewing Court in Chemical
Dynamics, supra at 1829, quoting 1 J. T. McCarthy,
Trademarks and Unfair Competition §19:17 (2d ed. 1984), the
issue of mutilation “all boils down to a judgment as to
whether that designation for which registration is sought
comprises a separate and distinct ‘trademark’ in and of
itself.” In making these determinations, we are mindful of
the fact that in an application under Section 1 of the
Trademark Act, the applicant has some latitude in selecting
the mark it wants to register. TMEP §807.12(d) (7th ed.
Ser. No. 77322943
4
October 2010).
In this case, we agree with the examining attorney
that the mark as it appears on the specimen for applicant’s
goods consists of the words GOURMET MEDLEY. We are not
persuaded that the term MEDLEY in applicant’s specimen
creates a commercial impression and thus a trademark that
is separate and distinct from the term GOURMET. Cf.
Institut National des Appellations D’Origine, supra.
Rather, the terms GOURMET and MEDLEY appear next to one
another approximately the same size in highly similar font
in such a manner as to create the impression of the single
mark GOURMET MEDLEY. We are not persuaded by applicant’s
argument that because “the word GOURMET is obviously devoid
of any source-indicating significance and would require a
disclaimer if it were to be included,”3 individuals
encountering the specimen for its goods will recognize that
its mark consists only of MEDLEY. First, applicant’s
assertions regarding the source-indicating ability of the
term GOURMET are not supported by evidence. More
importantly, the disclaimer of matter in a mark does not
have the effect of removing the matter from the mark. See
Bordon, Inc. v. W.R. Grace & Co., 180 USPQ 157 (TTAB 1973).

3 Applicant’s brief, unnumbered p. 3.

Ser. No. 77322943
5
On the contrary, regardless of the significance of the term
GOURMET as applied to applicant’s goods, individuals
viewing the specimen for applicant’s goods will see that
the mark consists of the unitary phrase GOURMET MEDLEY. In
a similar fashion, the slight differences in font and
capitalization between the two terms comprising the mark do
not suffice to create a separate and distinct commercial
impression in the term MEDLEY such that it would be
perceived as a mark, particularly inasmuch as it is
immediately preceded by GOURMET in the specimen of use
submitted by applicant. The proximity of these terms to
one another in applicant’s specimen and the manner in which
they are displayed creates a single commercial impression
in the mark GOURMET MEDLEY.
In short, the mark as it is displayed in applicant’s
drawing omits a salient feature of the mark as it is used
by applicant on the specimen for its goods, namely, the
term GOURMET. As a result, the drawing of the mark is an
impermissible mutilation of the mark as used on or in
connection with the goods. See In re Miller Sports Inc.,
supra.
In view of the foregoing, we find that the mark shown
in the drawing is a mutilation of the mark as shown on
applicant’s specimen for its goods.
Ser. No. 77322943
6
Decision: The refusal to register on the ground that
the mark in applicant’s drawing does not match the mark as
displayed on the specimen submitted with applicant’s
allegation of use is affirmed.