Pennsylvania State Police

Trademark Trial and Appeal Board

Mar 18, 2004

No. 76087228 (T.T.A.B. Mar. 18, 2004)

Mailed: Paper No. 8
March 18, 2004 GFR
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Pennsylvania State Police
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Serial No. 76087228
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Bryan H. Opalko of Buchanan Ingersoll, P.C. for
Pennsylvania State Police.
George M. Lorenzo, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pedersen, Managing Attorney)
_______
Before Simms, Chapman and Rogers,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
The Pennsylvania State Police [applicant], an agency
of the state of Pennsylvania, seeks to register the mark
set forth below for goods in six different classes:
This Opinion is Not
Citable as Precedent
of the TTAB
Ser No. 76087228
2
The application was filed based on applicant's
allegation of its intent to use the mark in commerce for
the various goods.1 After applicant and the examining
attorney agreed to certain amendments, including a
disclaimer of PENNSYLVANIA, the application was approved
and the mark was published for opposition. A notice of
allowance issued and applicant filed a statement of use
alleging use of the mark for all the goods listed in the
notice of allowance. The specimens included certain
photographs of some of the goods and certain sales flyers
or similar material, which include photographs of other
goods.
Following review of the statement of use, the
examining attorney refused registration of applicant's
mark, on the ground that, as used, the proposed mark in
fact functions only as ornamental matter. In addition, the
examining attorney refused registration on the ground that
the specimens of use do not show use of the mark in the
drawing submitted with the application. Specifically, the
specimens show use of the mark with the word TROOPER just
1 The goods are "metal key chains," in Class 6; "watches," in
Class 14; "collectable trading card sets," in Class 16; "drinking
glasses, shot glasses, mugs, coffee cups, travel mugs,
commemorative and collectable plates," in Class 21; "hats,
jackets, shirts, shorts, sweatshirts, sweatpants," in Class 25;
and "miniature model vehicles, sports balls, and Christmas tree
ornaments," in Class 28.
Ser No. 76087228
3
below the eight-pointed crest design in the middle of the
mark. In regard to the latter ground for refusal, the
examining attorney also noted that applicant could not
amend the drawing to add the word TROOPER, because that
would result in an impermissible material alteration of the
mark as applied for.
The application was reassigned to a new examining
attorney who withdrew the ornamentation refusal but
repeated and made final the specimen refusal. The new
examining attorney reiterated that applicant could not
amend the mark to add the word TROOPER2 and could overcome
this refusal only by submitting appropriate substitute
specimens, i.e., specimens showing use of the mark devoid
of the word TROOPER.
A notice of appeal was filed and applicant and the
examining attorney have filed briefs. Applicant did not
request an oral hearing. We affirm the refusal.
The examining attorney argues that the mark shown in
an application based on use of the mark in commerce must be
a "substantially exact representation of the mark as used
on or in connection with the goods or services, as shown by
2 Applicant did not at any time offer to add the word TROOPER to
the mark and, therefore, the question whether it could do so is
not an issue for this appeal.
Ser No. 76087228
4
the specimens," citing as support therefore 37 C.F.R. §§
2.51(a)(1) and 2.51(b)(1). Brief, unnumbered p. 3. While
acknowledging that an "element of a composite mark… may be
[separately] registrable… if that element presents a
separate and distinct commercial impression," the examining
attorney contends that the mark in the application drawing
is an incomplete mark because it is missing essential and
integral subject matter that appears in the mark on the
specimens. Id. Finally, the examining attorney argues
that all of the exhibits submitted by the applicant to
overcome the ornamentation refusal show use of the mark
with the words PENNSYLVANIA STATE POLICE TROOPER and that
applicant "has not presented any evidence that PENNSYLVANIA
STATE POLICE (and design) is used separate from the word
TROOPER, as to create its own distinct impression in the
minds of consumers." Brief, unnumbered p. 4.
Applicant argues that the mark shown in the
application drawing "is depicted in unaltered form in the
specimens" and "was not extended, enlarged, lengthened, or
otherwise modified to permit inclusion of the word
'TROOPER.'" Brief, p. 3. Applicant also asserts that
specimens need not exactly match the drawing of the mark
and, looking at the question from the other side, argues
Ser No. 76087228
5
that the drawing need only be a substantially exact
representation of the mark shown by the specimens. Id.
Applicant's explanation of the absence of the word
TROOPER from the mark in the application drawing is that
TROOPER is not a part of the mark to be registered because
it "is essentially a grade or rank designation included
within the field of the mark for informational purposes."
Brief, pp. 3-4.3 Further, applicant argues that the "entire
and exact" mark in the drawing is illustrated in the
specimens, none of the elements of the mark in the drawing
are missing in the mark shown by the specimens, and the
addition of the word TROOPER, "for informational purposes,"
does not materially alter the commercial impression created
by the mark in the drawing. Brief, p. 4.
Applicant does not explicitly state, either by
declaration of its counsel or any officer, that the patches
and emblems on the state police uniforms, cruisers, report
covers, etc. sometimes include the word TROOPER, but in
other instances will include other designations of rank,
e.g., CAPTAIN, LIEUTENANT, or the like. In fact, following
3 Applicant further explains, at pp. 8-9 of its brief:
"Typically, Applicant's mark is worn as an embroidered patch on
the clothing of its law enforcement officers. … When Applicant's
mark is utilized on certain of the clothing [items] recited in
the present application, the embroidered patch, with the
informational term 'TROOPER' or some other term, is typically
sewn onto the piece of clothing."
Ser No. 76087228
6
a thorough review of the 28 exhibits submitted to overcome
the ornamentation refusal, we have found only two instances
where some term other than TROOPER appears in applicant's
mark. Specifically, on pages 30 and 31 of exhibit 27,
showing a child's t-shirt and a child's sweatshirt,
respectively, the words JUNIOR TROOPER appear in place of
the word TROOPER. Moreover, there are numerous exhibits
which show officers of applicant, including Commissioner
Paul J. Evanko, Captain Jeffrey R. Davis, Lieutenant
Colonels Thomas K. Coury and Joseph H. Westcott, Sergeant
John F. Ferraro and Corporal James F. Rottmund, wearing a
patch on their uniforms, with each patch including the word
TROOPER rather than the officer's actual rank.4
In addition, there are numerous examples among the
exhibits, where the PENNSYLVANIA STATE POLICE TROOPER patch
or shield design [TROOPER emblem] is used on items other
than on uniforms or on the collateral merchandise items
listed in the identification of the involved application.
For example, exhibits 1-4 are annual reports, each of which
includes a frontispiece displaying the TROOPER emblem and
the Pennsylvania State Police's "Call to Honor"; exhibits
6, 7 and 13-15 are recruitment brochures or posters that
4 Other exhibits show photographs of unidentified individuals
whose uniforms carry insignia of officers, but "trooper" patches.
Ser No. 76087228
7
all display the TROOPER emblem; numerous exhibits show the
TROOPER emblem on state police cruisers, helicopters and
other vehicles; and the TROOPER emblem is on the letterhead
of the Office of Chief Counsel for the Pennsylvania State
Police and on the Pennsylvania State Police web site.
Still other exhibits illustrate uses of the TROOPER emblem
that actually stress the term TROOPER, for example,
helicopters (both real ones and toys) not only bear the
emblem, but also bear the word TROOPERS in large lettering;
the Pennsylvania State Police sell stuffed bears called
TROOPBEARS, which clearly calls to mind and focuses on the
term TROOPER; and a child-sized "Trooper" robot apparently
used in community service activities is named "Trooper B.
Smart."
In short, there is no evidence to support applicant's
inference that TROOPER is replaced on certain patches or
emblems used by the Pennsylvania State Police with other
designations of rank. Moreover, many uses of the TROOPER
emblem reinforce public recognition of the term TROOPER as
an integral term in defining the public image of the
Pennsylvania State Police. Accordingly, we agree with the
examining attorney that TROOPER is a significant element of
the mark shown on the specimens and contributes to the
Ser No. 76087228
8
overall commercial impression created by the PENNSYLVANIA
STATE POLICE TROOPER emblem.
Applicant and the examining attorney have made
reference to certain prior decisions of this Board and of
our principal reviewing court and its predecessor, to
support their respective arguments. We find each of the
cases on which applicant relies to be distinguishable on
its facts.
We consider first two decisions of the Court of
Customs and Patent Appeals, predecessor of the Court of
Appeals for the Federal Circuit. In the pre-Lanham Act
decision of In re Servel, Inc., 181 F.2d 192, 85 USPQ 257
(CCPA 1950), the CCPA reversed a decision by the
Commissioner of Patents refusing applicant's attempt to
register SERVEL alone as a mark for a biweekly periodical
for employees of applicant, because the publication was
published under the title SERVEL INKLINGS. However, the
court specifically noted that SERVEL was the applicant's
primary and technical trademark and, over the course of 25
years, had itself been registered in ten different classes
in the Patent Office for use on a wide variety of articles.
In addition, the applicant had submitted specimens showing
use of SERVEL as the common term in each of various other
marks for publications, specifically, THE SERVEL SALESMAN,
Ser No. 76087228
9
SERVEL NEWS, and SERVEL REFRIGOGRAMS. In the case at hand,
we do not have any evidence that the PENNSYLVANIA STATE
POLICE emblem, sans the word TROOPER, is the primary or
technical mark of applicant and in widespread use; nor is
there evidence supporting applicant's inference that the
emblem is used with other words taking the place of
TROOPER.
In another CCPA case, In re Schenectady Varnish Co.,
Inc., 280 F.2d 169, 126 USPQ 395 (CCPA 1960), the applicant
sought registration of a cloud and lightning flash design
for "synthetic resins," but was found by the Board to have
always used the word SCHENECTADY in large letters overlaid
onto the cloud and lightning flash design, for such goods.
Thus, the Board concluded that the design was mere
background and could not be separately registered. The
CCPA, however, noted that the mark had already been
registered for other goods and there was evidence that the
design had acquired distinctiveness.5 The case at hand is
unlike Schenectady Varnish, in that applicant is not
seeking to register its entire design without the words
overlaid onto it, but is seeking to register its entire
5 The CCPA stated that it did not need to determine whether the
cloud and lightning flash design was inherently distinctive,
because of the evidence of acquired distinctiveness.
Ser No. 76087228
10
design and only some of the words used in conjunction
therewith. Nor is there a question in this case regarding
whether the design element of applicant's composite mark is
distinctive in its own right.
The case of In re Chemical Dynamics Inc., 839 F.2d
1569, 5 USPQ2d 1828 (Fed. Cir. 1988), relied on by the
examining attorney to support the refusal in this case, is
in harmony with the Schenectady Varnish decision. In
Chemical Dynamics, the Federal Circuit affirmed the Board's
refusal to allow applicant to register the portion of its
composite word and design mark that consisted of a medicine
dropper and droplet. In the composite mark, the dropper
and droplet were suspended over a watering can, with the
dropper intersecting the handle of the can. The term 7
DROPS appeared on the side of the can. The Federal Circuit
affirmed the Board's holding that the dropper and droplet
design were not separable from the watering can design and
the composite could not, therefore, provide support for an
application to register the dropper and droplet alone.
Significantly, the decision explains that the applicant had
already obtained separate registrations for the wording 7
DROPS and for the composite design of the watering can,
dropper and droplet.
Ser No. 76087228
11
Considering Schenectady Varnish and Chemical Dynamics
together, we see that in many cases the design component of
a composite word and design mark may be viewed as creating
a separate commercial impression than the words, so that
the words and design portions can be registered separately
even when used as parts of a composite mark. It does not
follow, however, that the various elements comprising the
design can themselves be broken out and registered
separately. See Chemical Dynamics, supra; see also In re
Boyd Coffee Co., 25 USPQ2d 2052 (TTAB 1993) (Board refused
to allow registration of the line drawing of a coffee cup
and saucer in profile when that design was actually used
with a sunburst design emanating from the cup). Likewise,
while an applicant may be able to seek registration of the
words alone that are used in a composite word and design
mark, applicant does not cite to any persuasive precedent
that would allow registration of some, but not all, of the
words in such a composite, when all the words contribute to
a unified commercial impression.
We now turn to consider two cases in which some, but
not all, of the wording on certain labels was held
registrable. In Institut National des Appellations
D'Origine v. Vintners International Co. Inc., 954 F.2d
1574, 22 USPQ2d 1190 (Fed. Cir. 1992), the Federal Circuit
Ser No. 76087228
12
affirmed the Board's decision to dismiss an opposition, one
ground for which had been that the applicant had mutilated
the mark CALIFORNIA CHABLIS WITH A TWIST by seeking to
register only CHABLIS WITH A TWIST. The Federal Circuit
agreed with the Board's holding that CALIFORNIA was not an
integral part of the mark and noted that, as a
geographically descriptive word it was wholly devoid of
trademark significance. In In re Raychem Corp., 12 USPQ2d
1399 (TTAB 1989), the Board allowed an applicant to
register TINEL-LOCK when it appeared on labels within the
designation TRO6AI-TINEL-LOCK-RING. The Board reversed an
examining attorney's refusal of registration for TINEL-LOCK
alone, finding that the designation TRO6AI was a part or
stock number and RING was a generic term for the goods.
We do not find either of the foregoing cases to aid
applicant in this case. In the Vintners case, the Federal
Circuit noted that the term CALIFORNIA was required to be
on the wine label, to comply with BATF regulations, but
that this had nothing to do with the question "what is the
mark." In Raychem, as in the Servel case with which we
began our discussion of relevant case law, there was
evidence of use of the only matter sought to be registered
as a mark, which is not the same as the case at hand.
Moreover, in Raychem, the Board held that the part number
Ser No. 76087228
13
and generic term played no source identifying roles in
distinguishing the applicant's goods from those of others.
In the case at hand, however, we find that TROOPER, while
certainly not an arbitrary term when used in conjunction
with a state police organization, is nonetheless an
integral part of the overall commercial impression formed
by applicant's PENNSYLVANIA STATE POLICE TROOPER and design
emblem.
Decision: The refusal to register on the basis that
none of the specimens show use of the mark in the
application is affirmed.