Pocono Foods, Inc.

Trademark Trial and Appeal Board

Jul 19, 2000

No. 74412534 (T.T.A.B. Jul. 19, 2000)

Paper No.
46
GHD/gdh
7/19/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Pocono Foods, Inc.
________
Serial No. 74/412,534
_______
Charles N. Quinn of Dann Dorfman Herrell and Skillman for
Pocono Foods, Inc.
Geoffrey A. Fosdick, Trademark Examining Attorney, Law Office
111
(Craig D. Taylor, Managing Attorney).
_______
Before Hohein, Wendel and Holtzman, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Pocono Foods, Inc. has filed an application to
register the mark "SPORTS" for "processed poultry".1

1 Ser. No. 74/412,534, filed on July 15, 1993, based upon an
allegation of a bona fide intention to use the mark in commerce.
Following publication of the mark and issuance of a notice of
allowance, applicant submitted a statement of use on November 7, 1996
which alleges dates of first use of August 1993.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 74/412,534
2
Registration has been finally refused on the ground
that, inasmuch as the specimens of use submitted by applicant
show use of the mark "CHIC-N-SPORTS-CN" instead of the mark
"SPORTS" which appears on the drawing, applicant must submit
properly verified substitute specimens showing use of the mark
"SPORTS," as required by Section 1(a)(1) of the Trademark Act,
15 U.S.C. §1051(a)(1), and Trademark Rule 2.72(a). A
representative specimen, which applicant indicates in the
statement of use constitutes packaging for its goods, is
reproduced in relevant part below:
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested. We affirm the refusal to
register.
Ser. No. 74/412,534
3
As a preliminary matter, there would appear to be no
disagreement by either applicant or the Examining Attorney
with the long-standing principle that an applicant may apply
to register any element of a composite mark displayed on the
specimens of use if that element presents a separate and
distinct commercial impression as a mark; that is, the element
in and of itself functions as a mark since, as shown by the
manner of its use on the specimens, it creates a separate
impression which is indicative of the source of the
applicant's goods or services and distinguishes such from
those of others. See, e.g., Institut National des
Appellations D'Origine v. Vintners International Co. Inc., 958
F.2d 1574, 22 USPQ2d 1190, 1197 (Fed. Cir. 1992), citing In re
Servel, Inc., 181 F.2d 192, 85 USPQ 257, 259-60 (CCPA 1950);
In re Raychem Corp., 12 USPQ2d 1399, 1400 (TTAB 1989);
Tekelec-Airtronic, 188 USPQ 694, 695 (TTAB 1975); and In re
Berg Electronics, Inc., 163 USPQ 487, 487-88 (TTAB 1969).
Turning, therefore, to the merits of this appeal,
applicant argues that the facts herein "are highly analogous"
to those in In re Raychem Corp, supra, in which the Board held
that the manner of use shown in the specimen label illustrated
below
Ser. No. 74/412,534
4
was acceptable to permit registration of the mark "TINEL-LOCK"
for "metal rings for attaching a cable shield to an adapter."
The Board, in so holding, noted that the Examining Attorney
therein had conceded that the designation "TRO6AI" shown on
the specimen label was a part number and that the generic term
for the goods involved was "RING". The Board, in light
thereof, reasoned that:
A part or stock number does not
usually function as a source identifier.
Even when a part number is joined by a
hyphen to other matter which does serve a
trademark function, the trademark is
registrable without showing the part number
as well in the drawing. ....
In the case at hand the alpha-numeric
designation appearing on the specimen in
front of "TINEL-LOCK" is not essential to
the commercial impression of "TINEL-LOCK"
as a trademark for applicant's metal rings.
In a similar sense, the generic term
"RING," although connected to the model
number and source-identifying term, "TINEL-
LOCK," by a hyphen, nonetheless plays no
integral role in forming the portion of
applicant's mark which distinguishes
applicant's goods from those of others.
Applicant therefore need not include either
the part number or the generic term in the
drawing, because neither is essential to
the commercial impression created by the
mark as shown in the specimens.
Prospective purchasers of these highly
technical goods would readily recognize
both the part number and the name of the
goods as such, and would therefore look
only to the trademark "TINEL-LOCK" for
source identification. The fact that
hyphens connect both the part number and
Ser. No. 74/412,534
5
the generic term to the mark does not,
under the circumstances presented by this
case, create a unitary expression such that
"TINEL-LOCK" has no significance by itself
as a trademark. 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. ....
In re Raychem Corp, supra.
Applicant, notably without any evidentiary support,
asserts that the term "CN" in the designation "CHIC-N-SPORTS-
CN" is a "grade designation" and that, as in Raychem, such
term "in hyphenated conjunction with the mark for which
registration is sought is not essential to the commercial
impression of applicant's mark 'Sports' as [a] trademark for
applicant's breaded chicken pattie products." The claimed
grade designation, applicant contends, "plays no integral part
in forming the portion of applicant's mark which distinguishes
applicant's goods from those of others." Similarly, applicant
maintains that, with respect to the term "CHIC-N," it "has
used a generic term for applicant's product as the precedent
portion of applicant's mark and has coupled that term to
applicant's mark with a hyphen, in the same manner as was done
in Raychem," and that consequently such term "need not be
included as part of the words [sic] applicant seeks to
register unless it forms a part of a unitary mark." Here,
applicant insists that, as in Raychem, the hyphen connecting
Ser. No. 74/412,534
6
the generic term "CHIC-N" to the word "SPORTS" is sufficient
"to separate the generic term from the mark for which
registration is sought. Accordingly, applicant ... submits
that Raychem is controlling precedent and that applicant's
specimens adequately show the mark for which registration is
sought as displayed on the drawing accompanying the
application."
We concur with the Examining Attorney, however, that
this case is distinguishable from Raychem. As the Examining
Attorney correctly observes, "[t]here is no evidence of record
which explains the significance of 'CN,' nor has the applicant
submitted evidence showing use of the mark with other similar
notations" so as to validate its assertion that the term "CN"
is a grade designation devoid of source significance.
Moreover, although we disagree with the Examining Attorney's
contention that "[t]he generic term for the applicant's
product is 'CHICKEN,' not 'CHIC-N,'" inasmuch as the latter is
clearly the phonetic equivalent of the former, we nevertheless
find that the misspelling of the word "CHICKEN" is integral to
the overall commercial impression engendered by the
designation "CHIC-N-SPORTS-CN." Prospective customers for
applicant's processed poultry, including its chicken patties,
would undoubtedly regard the misspelled term "CHIC-N" as
forming part of the unitary phrase "CHIC-N-SPORTS-CN,"
Ser. No. 74/412,534
7
notwithstanding the separation of such term from the word
"SPORTS" by a hyphen, since the additional hyphen in the term
"CHIC-N" serves to impart trademark significance to the
designation "CHIC-N-SPORTS-CN" as a whole. Stated otherwise,
even if it is assumed, arguendo, that the suffix "-CN" would
be viewed or understood as a grade designation for applicant's
goods, the purchasing public is so accustomed to misspellings
of generic and/or descriptive terms in trademarks that, when
confronted with a designation such as "CHIC-N-SPORTS-CN," it
would regard the entirety of the phrase "CHIC-N-SPORTS"--and
not the word "SPORTS" separately--as indicative of the source
of applicant's processed poultry. In consequence thereof,
properly verified substitute specimens, in which the word
"SPORTS" projects a separate and distinctive commercial
impression, are necessary in order for applicant to register
such term alone as a mark for its goods.
Decision: The refusal to register is affirmed.
G. D. Hohein
H. R. Wendel
T. E. Holtzman
Administrative Trademark
Judges,
Ser. No. 74/412,534
8
Trademark Trial and Appeal
Board