Peter S. Herrick, P.A.

Trademark Trial and Appeal Board

Jun 10, 2009

No. 76653159 (T.T.A.B. Jun. 10, 2009)

Mailed:
June 10, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Peter S. Herrick, P.A.
________

Serial No. 76653159
_______

Peter S. Herrick, Esq. for Peter S. Herrick, P.A.

Ty Murray, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney).
_______

Before Quinn, Bergsman and Wellington, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Peter S. Herrick, P.A. (“applicant”) seeks to register
the mark U.S. CUSTOMS SERVICE and design, shown below in
black and white, for “attorney services,” in Class 42.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 76653159
2
During the prosecution of its application, applicant
claimed the colors blue, yellow and white as features of
its mark and it disclaimed the exclusive right to use “U.S.
Customs Service 1789.”1
The Trademark Examining Attorney refused registration
under Section 2(a) of the Trademark Act of 1946, 15 U.S.C.
§1052(a), on the ground that the mark falsely suggests a
connection with United States Customs and Border
Protection, formerly known as the United States Customs
Service, an agency of the United States government. The
Examining Attorney also refused registration under Section
2(b) of the Trademark Act of 1946, 15 U.S.C. §1052(b), on
the ground that applicant’s mark consists of or comprises a
simulation of an insignia of the United States (i.e., the
governmental insignia of the United States Customs Service
and/or the United States Treasury). Finally, the Examining
Attorney has refused registration because applicant has

1 Where, as here, registration is barred under Sections 2(a) and
2(b) of the Trademark Act, a disclaimer of an unregistrable
component will not render the mark registrable. See, e.g.,
American Speech-Language-Hearing Association v. National Hearing
Aid Society, 224 USPQ 798, 808 (TTAB 1984) (“While the disclaimer
is appropriate to indicate that respondent claims no proprietary
right in the disclaimed words, the disclaimer does not affect the
question of whether the disclaimed matter deceives the public,
since one cannot avoid the Section 2(a) deceptiveness prohibition
by disclaiming deceptive matter apart from the mark as a whole”).
Serial No. 76653159
3
failed to provide a drawing conforming to the requirements
of Trademark Rules 2.52-2.54, 37 CFR§§2.52-2.54.
A. Whether applicant’s mark falsely suggests a connection
with United States Customs and Border Protection?

Section 2(a) of the Trademark Act of 1946, 15 U.S.C.
§1052(a), provides, in relevant part, that “[n]o trademark
by which the goods of the applicant may be distinguished
from the goods of others shall be refused registration on
the principal register on account of its nature unless it –
(a) consists of or comprises . . . matter which may . . .
falsely suggest a connection with persons living or dead.”
As a preliminary matter, we note that Section 2(a) of
the Trademark Act refers to a false suggestion of a
connection with a person or institution. Institutions, as
used in Section 2(a), include government agencies. Section
45 of the Trademark Act, 15 U.S.C. §1127, defines a
“person” as including “the United States, any agency or
instrumentality thereof.” See In re National Intelligence
Academy, 190 USPQ 570 (TTAB 1976) (NATIONAL INTELLIGENCE
ACADEMY for educational services in the field of
intelligence gathering for law enforcement officers falsely
suggests a connection with the United States government).
See also NASA v. Record Chemical Co. Inc., 185 USPQ 563,
566-567 (TTAB 1975) (NASA is a juristic person and has
Serial No. 76653159
4
standing to oppose the registration of marks which may
damage the agency); Federal Bureau of Investigation v. M.
Bril & Co., 172 USPQ 310, 313 (TTAB 1971) (the F.B.I. is a
juristic person and it has the capacity to oppose the
registration of a mark pursuant to Sections 2(a) and 2(d)
as appropriate).
Following our principal reviewing court’s decision in
University of Notre Dame du Lac v. J.C. Gourmet Food
Imports Co., Inc., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983), aff’g 213 USPQ 594 (TTAB 1982), the Board utilizes
the following four-part test to determine whether a false
suggestion of a connection has been established:
1. The mark is the same as, or a close approximation
of, the name of or identity previously used by another
person;
2. The mark would be recognized as such because it
points uniquely and unmistakably to that person;
3. The person named by the mark is not connected
with the activities performed by the applicant under the
mark; and,
4. The prior user’s name or identity is of
sufficient fame or reputation that a connection with such
person would be presumed when applicant’s mark is used on
applicant’s goods.
Serial No. 76653159
5
In re MC MC S.r.l., 88 USPQ2d 1378, 1379 (TTAB 2008); In re
White, 80 USPQ2d 1654, 1658 (TTAB 2006); In re Wielinski,
49 USPQ2d 1754, 1757 (TTAB 1998); In re Sloppy Joe’s Int’l
Inc., 43 USPQ2d 1350, 1353 (TTAB 1997).
1. Whether applicant’s mark is a close approximation
of the name or identity of United States Customs
and Border Protection?

As indicated above, applicant is seeking to register
the mark U.S. CUSTOMS SERVICE and design, but the Examining
Attorney asserts that the mark at issue is a close
approximation of the identity of the United States Customs
and Border Protection, formerly known as the United States
Customs Service. Applicant argues that the mark sought to
be registered does not falsely suggest a connection with
the U.S. Customs Service because the U.S. Customs Service
is no longer in existence.
Effective March 1, 2003, the United States Customs
Service was merged into the Department of Homeland Security
and began operation as United States Customs and Border
Protection.2 Nevertheless, United States Customs and Border

2 U.S. Customs and Border Protection website (cbp.gov) attached
to the August 2, 2006 and March 27, 2007 Office Actions; an
article entitled “Customs Service, United States” in the United
States Customs forum (www.espionageinfo.com) attached to the
March 19, 2008 Office Action.
Serial No. 76653159
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Protection still refers to itself as the U.S. Customs
Service3 as do members of the public.4
Prior to becoming United States Customs and Border
Protection, the United States Customs Service used a seal
that is virtually identical to applicant’s mark.
United States Customs Applicant’s Mark
Service Seal

With the exception of applicant’s color claim, the only
difference between applicant’s mark and the seal is that
applicant uses “U.S. Customs Service” and the seal uses
“United States Customs Service.” The fact that applicant’s
mark includes design elements does not avoid the commercial
impression that the mark is the same or a close

3 Id. The title of the “History” webpage is “U.S. Customs
Service – Over 200 Years of History.” In addition, the webpage
includes the following use of U.S. Customs Service: “Did you
know the U.S. Customs Service was the parent or forerunner of
many other agencies?” and “The United States Customs Services
ensures that all imports and exports comply with U.S. laws and
regulations.”
4 In the March 19, 2008 Office Action, the Examining Attorney
submitted excerpts from news articles published after March 2003
referring to United States Customs and Border Protection as U.S.
Customs Service.
Serial No. 76653159
7
approximation to the former name and/or current identity of
the United States Customs and Border Protection. “One
cannot overcome a refusal based on a false suggestion of a
connection merely by adding a design element to an entity
or institution’s identity.” In re North American Free
Trade Association, 43 USPQ2d 1282, 1285 (TTAB 1997).
Moreover, applicant’s use of a seal that is nearly
identical to the former seal of the United States Customs
Service reinforces that its mark will be identified with
the government agency.
In view of the foregoing, we find that applicant’s
mark is a close approximation of the former name and/or
current identity of the United States Customs and Border
Protection.
2. Whether applicant’s mark points uniquely and
unmistakably to United States Customs and Border
Protection?

As to whether the U.S. CUSTOMS SERVICE and design mark
points uniquely and unmistakably to the U.S. Customs and
Border Protection, applicant contends that since the U.S.
Customs Service is no longer in existence, applicant’ mark
does not point uniquely and unmistakably to a non-existent
agency. On the other hand, applicant’s website features
references to “Customs issued memorandum,” shown below, and
Serial No. 76653159
8
applicant “concentrates its legal practice in U.S. Customs
law.”5

In addition, as referenced above, the Examining Attorney
has submitted evidence showing that some of the public
still use the term U.S. Customs Service to refer to United
States Customs and Border Protection. Applicant’s use of
the former U.S. Customs Service seal in connection with its
offer of legal services “concentrating” on U.S. customs law
is strong evidence that applicant is attempting to draw a
connection between its services and the agency that
oversees customs issues, especially because a segment of
the public still uses U.S. Customs Service to refer to
United States Customs and Border Protection. Finally, the
name “U.S. Customs Service” has meaning only as a
governmental agency. The only entity the name “U.S.
Customs Service” could possibly identify is the government
agency and, therefore, it is associated only with United

5 Applicant’s February 2, 2007 Response.
Serial No. 76653159
9
States Customs and Border Protection. Accordingly, we find
that applicant’s mark points uniquely unmistakably to
United States Customs and Border Protection.
3. Whether United States Customs and Border
Protection is connected with applicant’s legal
services?

United States Customs and Border Protection has no
connection with applicant’s business and applicant does not
claim that it is part of the agency.6
4. Whether United States Customs Service’s name or
reputation is sufficiently famous that a
connection with United States Customs and Border
Protection would be presumed when applicant’s
mark is used in connection with applicant’s
services?

Applicant’s services are “attorney services,” and that
identification of services is broad enough to encompass
customs work. As indicated above, applicant’s practice
offers legal services “concentrating its legal practice in
U.S. Customs law.” Applicant’s legal services are closely
related to the activities performed by the U. S. Customs
and Border Protection including, inter alia:
…[E]nsuring that all imports and
exports comply with U.S. laws and
regulations; collecting and protecting
revenue; and guarding against
smuggling. Its specific duties include
assessing and collecting duties, excise
taxes, and penalties on imported goods;
interdicting and seizing illegal items;

6 Applicant’s February 2, 2007 Response.
Serial No. 76653159
10
processing persons, baggage, cargo, and
mail; administering certain navigation
laws; detecting and apprehending
persons engaged in activities designed
to circumvent Customs regulations;
protecting American industry, as well
as intellectual property rights by
enforcing laws to prevent illegal trade
practices; enforcing import and export
restrictions on dangerous items; and
collection of import and export data
for the compilation of international
trade statistics. In addition to
enforcing its own laws, Customs
enforces some 400 other laws on behalf
of more than 40 government agencies.7

Given the ubiquitous presence of United States Customs
and Border Protection to people involved in international
commerce and travel, as well as the closely related
services rendered by applicant and the duties performed by
United States Customs and Border Protection, we find that a
connection between applicant’s services and the activities
of the government agency would be presumed when applicant
uses the mark U.S. Customs Service and design in connection
with its legal services.
Moreover, based on applicant’s use of a virtually
identical seal of the former United States Customs Service
in connection with applicant’s legal services
“concentrating its legal practice in U.S. Customs

7 An article entitled “Customs Service, United States” in the
United States Customs forum (www.espionageinfo.com) attached to
the March 19, 2008 Office Action.
Serial No. 76653159
11
law,” we may draw an inference that applicant intends to
create a connection with United States Customs and Border
Protection. In re North American Free Trade Association,
43 USPQ2d at 1287, quoting The University of Notre Dame v.
J.C. Food Imports, 703 F.2d 1372, 217 USPQ 505,509 (Fed.
Cir. 1983) (“Evidence of such intent [applicant intended to
create a false suggestion of a connection] would be highly
persuasive that the public will make the intended false
connection”). Cf. L.C. Licensing, Inc. v. Berman, 86
USPQ2d 1883, 1890-1891 (TTAB 2008) (applicant adopted its
mark with the intent to trade off opposer’s mark and such
bad faith is evidence that confusion is likely because an
inference is drawn from applicant’s expectation of
confusion).
In view of the facts that applicant’s mark is a close
approximation of the name of the former United States
Custom Service and of the agency’s current identity, that
applicant’s mark points uniquely and unmistakably to United
States Customs and Border Protection, that applicant’s law
practice has no connection with the agency, and that a
connection with the agency would be presumed if applicant’s
mark were used in connection with legal services, we find
that applicant’s mark falsely suggests a connection with
Serial No. 76653159
12
United States Customs and Border Protection thereby
precluding registration under Section 2(a).
B. Whether applicant’s mark consists of or comprises an
insignia of the United Sates or a simulation thereof?

Section 2(b) of the Trademark Act of 1946, 15 U.S.C.
§1052(b), provides, in relevant part, that “[n]o trademark
by which the goods of the applicant may be distinguished
from the goods of others shall be refused registration on
the principal register on account of its nature unless it –
(b) Consists of or comprises the flag of coat of arms or
other insignia of the United States . . . or any simulation
thereof.”
[T]he wording “or other insignia of the
United States” must be restricted in
its application to insignia of the same
general class as “the flag or coats of
arms” of the United States. Since both
the flag and coat of arms are emblems
of national authority it seems evident
that other insignia of national
authority such as the Great Seal of the
United States, the Presidential Seal,
and seals of government departments
would be equally prohibited
registration under Section 2(b). On
the other hand, it appears equally
evident that department insignia which
are merely used to identify a service
or facility of the Government are not
insignia of national authority and that
they do not fall within the general
prohibitions of this section of the
Statute.

Serial No. 76653159
13
In re U.S. Department of the Interior, 142 USPQ 506, 507
(TTAB 1964). See also Heroes Inc. v. Boomer Esiason Hero’s
Foundation, 43 USPQ2d 1193, 1198 (TTAB 1997). In other
words, the issue is whether the symbol at issue “identify
people and things associated with a particular agency
within a department of the executive branch of the
government, rather than function as an insignia of national
significance representing the authority of the government
or nation as a whole.” U.S Navy v. U.S. Manufacturing Co.,
2 USPQ 1254, 1256 (TTAB 1987).
The Examining Attorney refused to register applicant’s
mark under Section 2(b) of the Trademark Act of 1946 on the
ground that applicant’s mark is a simulation of the
Department of the Treasury seal.
Department of the Applicant’s Mark
Treasury8

The word “simulation” in the context of Section 2(b)
is used in its usual and generally understood meaning,
namely, “an assumption or imitation of a particular

8 Excerpt from the website of the Department of Treasury
(treasury.gov) attached to the August 2, 2008 Office Action.
Serial No. 76653159
14
appearance or form.” The Random House Dictionary of the
English Language (Unabridged) p. 1783 (2nd ed. 1987). See
In re Advance Industrial Security, Inc., 194 USPQ 344, 346
(TTAB 1977) (a simulation for purposes of Section 2(b)
refers “to something that that gives the appearance or
effect or has the characteristics of the original item”).
The determination of whether applicant’s mark is a
simulation of an insignia of the United States is made
“without a careful analysis and side-by-side comparison”
with the government insignia because “purchasers normally
retain but a general or overall rather than a specific
recollection of the various elements or characteristics of
design marks.” Id.
Because the government insignia at issue is the seal
of the Department of the Treasury thereby representing the
authority of the government (i.e., an emblem of
governmental authority), registration of a mark that
constitutes a simulation of that seal is prohibited under
Section 2(b). In re U.S. Department of the Interior, 142
USPQ at 507. On the other hand, with respect to the seal
of the United States Customs Service, because the United
States Customs Service was formerly a division of the
Department of Treasury, and not a government department
itself, and the seal was used to identify a service or
Serial No. 76653159
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facility of the Department of the Treasury, the seal of the
former agency is not prohibited under Section 2(b). In re
U.S. Department of the Interior, 142 USPQ at 507.
When applicant’s mark is compared to the government
seal at issue, we find that with the exception of the words
(The Department of the Treasury vs. U.S. Customs Service),
they are virtually identical, and that the average person
upon seeing applicant’s mark would associate it with
Department of Treasury seal. In other words, applicant’s
mark is not readily distinguishable from the Department of
the Treasury seal. Therefore, applicant’s mark consists of
or comprises a simulation of an insignia of the United
States thereby prohibiting registration.
C. Whether applicant’s mark complies with the
requirements of Trademark Rules 2.52-2.55?

Applicant ignored the requirement for a new drawing,
and therefore the application should have been deemed
abandoned. Trademark Rule 2.65(a) reads as follows, so far
as pertinent:
If an applicant fails to respond, or to
respond completely, within six months
after the date an action is issued, the
application shall be deemed abandoned.

Originally, applicant submitted a black and white
drawing of the mark sought to be registered. In the first
Office Action, the Examining Attorney correctly noted that
Serial No. 76653159
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the drawing was unacceptable “because the depiction of the
mark is unclear; the drawing is a photocopy of the mark
with a smudged white line appearing across the top of the
image, which will not reproduce satisfactorily.”9 Also, the
Examining Attorney noted that while the drawing was black
and white, the specimen of use displayed the mark in color.
Accordingly, the Examining Attorney inquired whether
applicant was claiming color as a feature of the mark.
In response to the first Office Action, applicant
claimed the colors blue, yellow and white as features of
the mark, but refused to file a new drawing explaining that
“the current drawing should be acceptable for it is the
same mark that appears on the substitute specimen.”10
In the March 27, 2007 Office Action, the Examining
Attorney repeated and made “final” the requirement for a
substitute drawing. In its August 1, 2007 Response,
applicant did not respond to the requirement for a new
drawing. The Examining Attorney continued the final
refusals, including the requirement for a new drawing, in
her August 23, 2007 Office Action.

9 August 2, 2006 Office Action.
10 An excerpt from the substitute specimen is shown in the
discussion in Section A(2) above.
Serial No. 76653159
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The Trademark Office assigned the prosecution of this
application to new Examining Attorney who requested that
the application be remanded. The new Examining Attorney
withdrew the refusal that the mark sought to be registered
was deceptive, issued a new refusal that the mark sought to
be registered creates a false suggestion of a connection
with United States Customs and Border Protection under
Section 2(a), and maintained the refusal under Section
2(b).11 The new Examining Attorney did not reference the
final requirement for a new drawing.
In the November 5, 2008 Office Action, the Examining
Attorney finally refused registration under Sections 2(a)
and (b) of the Trademark Act. In addition, the Examining
Attorney reasserted the final requirement for a substitute
drawing. While applicant did not reference the drawing
requirement in its appeal brief, the Examining Attorney
did. Applicant did not file a reply brief.
Because the applicant did not respond to the
requirement for a new drawing after its response to the
first Office Action, the application should have been
deemed abandoned. Trademark Rule 2.65(a). However, for
purposes of completeness and because the Examining Attorney

11 March 19, 2008 Office Action.
Serial No. 76653159
18
treated the application as if applicant had challenged the
requirement for a new drawing, we will review the drawing
requirement.
Trademark Rule 2.54 reads as follow, so far as
pertinent:
(d) Depict the mark in black ink, or
in color if color is claimed as a
feature of the mark.

(e) Drawings must be typed or made
with a pen or by a process that will
provide high definition when copied …
All lines must be clean, sharp and
solid, and must not be fine or crowded.

See also Trademark Rule 2.53(c). Accordingly, applicant’s
drawing is unacceptable because, as the Examining Attorney
correctly noted, “the depiction of the mark is unclear; the
drawing is a photocopy of the mark with a smudged white
line appearing across the top of the image, which will not
reproduce satisfactorily.”
We also note that while applicant claimed the colors
blue, yellow and white as features of the mark, it filed a
black and white drawing. Trademark Rule 2.52(b)(1)
provides that “[i]f the mark includes color, the drawing
must show the mark in color.” See also Trademark Rule
2.54(d). Because applicant claimed color as a feature of
the mark but did not provide a color drawing, the black and
white drawing filed by applicant is unacceptable.
Serial No. 76653159
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In view of the foregoing, the refusal to register
because applicant failed to file a drawing of the mark
conforming with Trademark Rules 2.52-2.55 is affirmed.
Decision: The refusal to register is affirmed on all
grounds.