McCaffrey & Associates, Inc.

Trademark Trial and Appeal Board

Feb 3, 1998

No. 74496104 (T.T.A.B. Feb. 3, 1998)

Paper No. 21
EWH/YMO
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB FEB. 3, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re McCaffrey & Associates, Inc.
________
Serial No. 74/496,104
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Arnold B. Silverman attorney for applicant.
Doritt Carroll, Trademark Examining Attorney, Law Office 106
(Mary Sparrow, Managing Attorney)
_______
Before Simms, Hanak and Hairston, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
McCaffrey & Associates, Inc. (applicant) seeks
registration of HAPPY HOLIDAYS FROM for “postcards.” The
intent-to-use application was filed on March 3, 1994.
On May 19, 1995 applicant submitted a statement of use
along with three specimens (i.e. identical postcards)
showing use of the mark which applicant stated first
occurred on November 11, 1994. Reproduced below are both
the “picture” side of the postcard and the “address” side of
the postcard.
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Subsequently, the Examining Attorney refused
registration pursuant to sections 1, 2 and 45 of the Lanham
Trademark Act on the basis that “the proposed mark does not
function as a trademark.” (Office Action No. 1, page 1). The
Examining Attorney noted that “the intended mark merely
serves as a holiday greeting message. Because holiday
messages are commonly conveyed by postcards, the public
would not recognize HAPPLY HOLIDAYS FROM as a source
indentifier or as a mark…” (Office Action No. 1, page 1).
When the refusal was made final, applicant appealed to
this Board. Applicant and the Examining Attorney filed
briefs. Applicant did not request a hearing.
It has been noted that “as a matter of competitive
policy, it should be close to impossible for one competitor
to achieve exclusive rights” in common phrases or slogans.
1 J. McCarthy, McCarthy on Trademarks and Unfair
Competition, Section 7:23 at page 7-33 (4th ed. 1997).
Applicant has never disputed that HAPPY HOLIDAYS is a
very widely used greeting. However, applicant appears to be
of the view that this widely used expression is limited to
greeting cards. At page two of its supplemental brief,
applicant states that “greeting cards … [are] adapted to be
mailed in an envelope … [and hence are] totally different
from a postcard.” (original emphasis). In addition,
applicant contends that the widespread “holiday greeting
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card use of HAPPY HOLIDAYS by others is different from the
trademark HAPPY HOLIDAYS FROM, as the former is a self
contained message, whereas the latter is an arbitrary
usage.” (Supplemental brief page 3).
We disagree with both of applicant’s contentions.
While it is true that most greeting cards are indeed
inserted in envelopes, by the same token, postcards can
serve as greeting cards. For example, the Examining
Attorney has made of record from the NEXIS database an
article appearing in the Houston Cronicle of December 20,
1992 which references a “Happy Holidays postcard.” As for
applicant’s contention that HAPPY HOLIDAYS is different from
HAPPY HOLIDAYS FROM because “the former is a self-contained
message, whereas the latter is an arbitrary usage,” we note
that applicant has simply made of record no evidence
supporting this contention. We do acknowledge that the
phrase HAPPY HOLIDAYS can stand alone, whereas the phrase
HAPPY HOLIDAYS FROM is almost always followed by the name of
the person (John Smith), a family (the Jones), a
company/institution or a geographic location (San Francisco,
New York etc.). However, merely because the phrase HAPPY
HOLIDAYS FROM is followed by an additional word(s) by no
means causes the phrase HAPPY HOLIDAYS FROM to be an
arbitrary expression when applied to postcards functioning
as greeting cards. We note that the Examining Attorney has
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made of record evidence showing what are, obviously, cards
using the very common expression HAPPY HOLIDAYS FROM
followed by one of the aforementioned types of designations.
For example, a story appearing in The Boston Globe of
December 23, 1993 references a postcard bearing the message
“Happy Holidays from NBC” where the words “From NBC” were
replaced with “From CBS.”
Before concluding, we wish to address two final
arguments raised by applicant. First, applicant notes that
on the address side of its postcard it depicts “in very
small print” HAPPY HOLIDAYS FROM followed by the TM
designation as well as the generic term “postcards.”
(Applicant’s supplement brief page 2). Even assuming that
consumers would notice the forgoing on the address side of
the card, which applicant concedes is depicted “in very
small print,” the fact that applicant is making “proper”
trademark use of HAPPY HOLIDAYS FROM does not mean that
consumers would view HAPPY HOLIDAYS FROM as a source
indicator, and it certainly does not mean that appliant can
appropriate to the exclusion of its competitors the right to
use the common greeting HAPPY HOLIDAYS FROM. See 1 J.
McCarthy, McCarthy on Trademarks and Unfair Competition,
Section 3:3 at page 3-7 (4th ed. 1997). Following
applicant’s logic, presumably applicant could obtain
trademark rights to the expression MERRY CHRISTMAS for
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postcards merely by affixing it to the card and placing
after it the designation TM and the generic term “postcard.”
Finally, as for applicant’s argument that “there is
direct precedent supporting applicant’s position in the
present case” because applicant owns Reg. No. 1,906,522 for
PEACE AND JOY FROM for postcards, suffice it to say that we
have no knowledge as to the record in that case; that each
case must be decided on its own merits; and that in any
event, the Board is not bound by the actions of an Examining
Attorney in allowing the registration of PEACE AND JOY FROM
for postcards. (Applicant’s initial brief page 7).
Decision: The refusal is affirmed.
Rany L. Simms
Elmer W. Hanak
Paula T. Hairston
Administrative Trademark
Judges, Trademark Trial
and Appeal Board