Prema Jyothi Light

Trademark Trial and Appeal Board

Dec 13, 2013

No. 76293327 (T.T.A.B. Dec. 13, 2013)

Mailed: December 13, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Prema Jyothi Light
________

Serial No. 76293327
_______

Prema Jyothi Light, pro se.

Linda Lavache, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
_______

Before Seeherman, Wellington and Lykos, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Over 12 years ago, on July 9, 2001, Prema Jyothi
Light, an individual (and hereinafter referred to as
“applicant”), filed an application1 to register the
following matter on the Principal Register:

1 Application Serial No. 76293327, filed on July 31, 2001, is
based on an allegation of first use on May 31, 1991, and first
used in commerce on August 31, 2000.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 76293327
2

Serial No. 76293327
3
Because the reproduction quality of the drawing page
in the USPTO office database may be insufficient for
readers, we point out that the mark contains the larger,
stylized wording SHIMMERING RAINFOREST CHARACTER COLLECTION
on the top left, surrounded by three columns of an
extremely long list of terms (in a smaller font)
identifying names of fictional characters, e.g., JALINDA
THE WIND-HARP BUTTERFLY; JALISA THE WIND-HARP BUTTERFLY;
HARRY & HARRIETTA, THE HAIRY RAINFOREST SUSPENDER SPIDERS,
etc. In all, the proposed mark comprises approximately 575
terms.
Applicant seeks to register the proposed mark for the
following goods:
Cartoon prints, cartoon strips, cartoons to be
submitted for publication by publishers and
periodicals, and illustrations, which may include text
with visual art, or just the visual art; leaflets and
series of booklets of printed text materials,
specifically, stories and poems; leaflets, series of
booklets, storybooks, and playbooks for children,
which contain any or all of these-- paper dolls,
coloring book pages, stories, poems, illustrations,
games, connect-the-dots pictures, snowflake cutting
patterns, suggestions for children's activities, and
patterns for toys, pillows, and decals for T-shirts,
pajamas, and mugs.

Applicant has disclaimed the wording RAINFOREST
CHARACTER COLLECTION and amended the application to include
Serial No. 76293327
4
a claim that the proposed mark has acquired distinctiveness
under Section 2(f) of the Act.2
The examining attorney has refused registration on the
ground that the applied-for matter fails to function as a
mark under Sections 1, 2 and 45 of the Trademark Act, 15
U.S.C. §§ 1051, 1052 and 1127. The examining attorney has
also refused to accept applicant’s proposed amendments to
the drawing because each one constitutes a material
alteration of the proposed mark shown in the original
drawing.
Appeal briefs have been filed.3

2 An initial disclaimer of the single term RAINFOREST was
submitted by applicant on March 6, 2003. The disclaimer of
RAINFOREST CHARACTER COLLECTION is reflected in an amendment to
the application dated March 30, 2012. Applicant’s Section 2(f)
acquired distinctiveness claim was made in her “request for
reconsideration,” filed on December 15, 2009.
3 There had been earlier briefing of the appeal. However,
because of the subsequent developments, including a remand by the
Board for the examining attorney to consider whether an
additional ground for refusal should be raised, the Board
determined that it would be more helpful for applicant and the
examining attorney to file new, as opposed to supplemental
briefs. As a result, the Board, on April 5, 2013, advised that
the earlier filed briefs would be given no consideration, and
applicant and the examining attorney were given time to file new
briefs. Our references to briefs therefore are to these latter-
filed briefs, including applicant’s reply brief, and we have not
considered the earlier briefs in reaching our decision in this
appeal.
The examining attorney's objection to materials attached to
applicant's appeal brief on the basis that they were not made of
record during prosecution of the involved application is
sustained. See Trademark Rule 2.142(d). See also In re Volvo
Cars of North America, Inc., 46 USPQ2d 1455, 1456 n.2 (TTAB
1998); In re Jump Designs LLC, 80 USPQ2d 1370, 1372 (TTAB 2006);

Serial No. 76293327
5
Issues on Appeal
The application was filed in 2001 and the prosecution
history comprises many Office actions, responses and other
filings by applicant. Applicant’s appeal was instituted in
2005 and, since then, the Board TTABVUE database reflects
there have been over 100 entries. We make no attempt
herein to recount all events and filings leading up to the
appeal but note only those that are relevant to our
decision.
In spite of any confusion created by the extensive
amount of time the prosecution of this application and the
subsequent appeal have taken, and notwithstanding the
numerous papers filed, the March 9, 2013 Office action sets
forth, succinctly and accurately, the issues now ready for
decision on appeal. Specifically, as a result of the most
recent remand, and at the behest of the Board, the
examining attorney outlined the following “Summary of
Outstanding Issues” on appeal:
1. Trademark Act Sections 1, 2 and 45 Refusal –
Applied-For Mark Fails to Function as a Trademark
on the Specimens and the Claim of Acquired
Distinctiveness is Insufficient.

and In re District of Columbia, 101 USPQ2d 1588, 1591 (TTAB
2012). Accordingly, these materials have not been considered.

Serial No. 76293327
6
2. Applicant’s Three Separate Requests to Amend the
Drawing are Not Acceptable Because the Proposed
[Amended] Marks Constitute Material Alterations of the
Mark Shown in the Original Drawing (Trademark Rule
2.72(b)(2)).

Based on our review of the prosecution and appeal
history, we agree that these are the appropriate issues on
appeal. We further note that the examining attorney
articulated her reasoning for the refusals in the same
Office action and this was the last Office action issued
prior to applicant’s filing of her appeal brief. Thus, any
argument by applicant that she is unaware of or in
disagreement with the statement of the issues on appeal is
not well taken. Arguments and materials submitted by
applicant that are irrelevant to the issues before us or
are untimely have been disregarded. We now address the
issues on appeal.
Applicant’s Proposed Mark Fails to Function as a Trademark
Sections 1, 2 and 45 of the Trademark Act provide the
statutory basis for refusal to register subject matter on
the Principal Register on the basis the proposed mark fails
to function as a trademark. 15 U.S.C. §§ 1051, 1052 and
1127. Specifically, Sections 1 and 2 provide, inter alia,
for the application and registration on the Principal
Register of trademarks “by which the goods of the applicant
may be distinguished from the goods of others” and Section
Serial No. 76293327
7
45 defines a “trademark,” in pertinent part, as “any word,
name, symbol, or device, or any combination thereof used by
a person ... to identify and distinguish his or her goods
... from those manufactured or sold by others and to
indicate the source of the goods, even if that source is
unknown.” Accordingly, the Office is statutorily
constrained to register matter on the Principal Register
only if it functions as a trademark.
“[N]ot every designation adopted with the intention
that it performs a trademark function and even labeled as a
trademark necessarily accomplishes that purpose….”
American Velcro, Inc. v. Charles Mayer Studios, Inc., 177
USPQ 149, 154 (TTAB 1973).
The critical inquiry in determining whether a
designation functions as a mark is how the designation
would be perceived by the relevant public. To make
this determination we look to the specimens and other
evidence of record showing how the designation is
actually used in the marketplace.

In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010)
(citations omitted).
Thus, the critical question in determining whether
applicant’s proposed mark functions as a trademark is the
commercial impression it makes on the relevant public
(e.g., whether the term sought to be registered would be
perceived as a mark identifying the source of the goods).
Serial No. 76293327
8
In re Aerospace Optico, Inc., 78 USPQ2d 1861, 1862 (TTAB
2006) (“the mark must be used in such a manner that it
would be readily perceived as identifying the specified
goods [or services]. ... The mere fact that a designation
appears on the specimen of record does not make it a
trademark. ... A critical element in determining whether
matter sought to be registered as a trademark is the
impression the matter makes on the relevant public.”
(citations omitted)); In re Volvo Cars of North America
Inc., 46 USPQ2d 1455, 1459 (TTAB 1998); In re Remington
Products Inc., 3 USPQ2d 1714, 1715 (TTAB 1987); In re
Morganroth, 208 USPQ 284, 287 (TTAB 1980).
Based on our review of the specimens of use submitted
by applicant as well as all other evidence of record, we
agree with the examining attorney that applicant’s proposed
mark fails to function as a trademark. We further agree
with the examining attorney’s contention that because of
the sheer number and visual display of the words in the
applied-for matter, it faces a significantly more difficult
task in being perceived as a unitary trademark. We note,
in this regard, the decision in In re McDonald’s
Corporation, 199 USPQ 490 (TTAB 1978), involving an
application to register TWOALLBEEFPATTIESSPECIALSAUCE-
LETTUCECHEESEPICKLESONIONSONASESAMESEEDBUN as a mark for
Serial No. 76293327
9
restaurant services. In that case, the proposed mark
initially was refused for not being used in the nature of a
mark, id. at n.2, and ultimately was refused, despite
applicant’s claim of acquired distinctiveness, as a mere
display of a list of unregistrable terms, specifically, a
list of the ingredients of a special sandwich, where the
display did not create a commercial impression apart from
the terms themselves. Id. at 491. While the applicant in
the McDonald’s case was able to provide evidence sufficient
to overcome the refusal, we do not, in this case, have the
same type of persuasive evidence that would allow us to
reverse the examining attorney’s refusal. We also find
that the much greater number of words in applicant’s
proposed mark, as compared to the list of ingredients in
the McDonald’s case, presents an even higher hurdle for
applicant to overcome when trying to establish that her
proposed mark would be perceived as such. In short, the
quantity of information in the proposed mark is simply too
great to be a useful means for consumers to differentiate
one source from another.
The original specimens submitted with the instant
application depict the applied-for mark on the second page
of a “Shimmering Rainforest Character Collection...
Serial No. 76293327
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Cartoons, Illustrations, Stories & Scripts.”4 Specifically,
the proposed mark appears on a page above a similarly
presented list of names called “Shimmering Ballerinas &
Dancers Character Collection” in such a manner that it will
not be perceived as a trademark or as indicating the source
of applicant’s identified goods. Rather, the proposed mark
merely identifies what appears to be a title (of a story,
e.g.) and a list of fanciful, fictional names for
characters.
Likewise, the substitute specimens fail to show the
proposed mark in a manner such that consumers would
perceive it as an indicator of source for any of the
identified goods. In particular, on February 10, 2004,
applicant submitted specimens showing the proposed mark in
roughly the same manner as the original specimens, i.e.,
above a similar “Shimmering Breezes Character Collection”
list of fictional character names. The preceding page
appears to be the cover page and is captioned “The Triple
Shimmering...Shimmering Rainforest…Shimmering Ballerinas &
Dancers...And Shimmering Breezes...Storybook Stories &

4 The specimens appear in USPTO TSDR database, July 9, 2001,
“specimen” entry (pp. 1-19). For sake of brevity, the specimen
images are not reproduced in this decision.

Serial No. 76293327
11
Poetry Collection by Prema Jyothi Light [applicant].”5 The
proposed mark also appears on a different page alongside an
“introduction” for a “playbook” and describes “Shimmering
Rainforest” as “hav[ing] a save-the-rainforest theme.”
Thus, upon reading this description, and viewing the
proposed mark either alongside it or elsewhere, readers and
users of these speciments will understand the applied-for
matter as simply identifying a title or theme for the
playbook, as well as a corresponding list of character
names in the playbook.
In addition, applicant submitted specimens in support
of her proposed amended renditions of the original applied-
for mark. As discussed later, the proposed amendments to
the mark are unacceptable because each would constitute a
material alteration. Nevertheless, for sake of
completeness, we find that even if any of applicant’s
amendments were accepted, the specimens of use do not show
that the applied-for matter, in any of the proposed forms,
functions as a trademark. For example, the specimens
submitted on March 4, 2013, show the proposed amended mark
in the following manner:

5 The specimens appear in USPTO TSDR database, February 10, 2004,
“specimen” entries. For sake of brevity, the specimen images are
not reproduced in this decision.
Serial No. 76293327
12

Serial No. 76293327
13
This page is described as the “back cover” of a “4-
page leaflet.”6 Although this purported specimen of use
directs the reader to “look for this unique SHIMMERING
RAINFOREST TRADEMARK, ABOVE,” and inserts a “TM” after
“SHIMMERING RAINFOREST,” we do not believe that persons
reading this will then view the entire proposed mark, i.e.,
SHIMMERING RAINFOREST CHARACTER COLLECTION and the entire
list of characters, as a single trademark. Rather, we
agree with the examining attorney that “[c]onsumers that
read this statement are likely to perceive applicant’s
reference to the ‘Trademark’ as referring to the actual
[SHIMMERING RAINFOREST] wording that is referenced in the
statement and shown in the ‘mark’ in a larger, stylized
font directly next to the ‘TM’ symbol.” Brief, p. 13. In
other words, at best consumers would perceive SHIMMERING
RAINFOREST as being the intended trademark while the
CHARACTER COLLECTION (followed by a long list of character
names) portion will merely be perceived as informational.

6 Although not an issue on appeal, we note the examining attorney
also objected to this specimen because it was not verified with
an affidavit or signed declaration in accordance with Trademark
Rule 2.20. The examining attorney also contends that applicant
has admitted this purported specimen is in actuality a “mock-up”
of a leaflet and notes there is a copyright notice date of 2004
in the bottom right corner of the page; thus the examining
attorney concludes that this substitute specimen cannot be
considered an example of use in commerce as of the application’s
filing date.
Serial No. 76293327
14
Applicant's insertion of “TM” in this specimen does not
help because it appears immediately after SHIMMERING
RAINFOREST and would not be understood as intended for the
entire applied-for matter. In any event, use of the “TM”
symbol does not automatically confer trademark rights or
otherwise obviate a failure to function refusal. In re
Aerospace Optics Inc., 78 USPQ2d at 1864; In re Brass-Craft
Mfg. Co., 49 USPQ2d 1849, 1853 (TTAB 1998). Accordingly,
these specimens fail to show that the proposed mark, in its
entirety, is actually functioning as a single trademark.
Upon consideration of the entire record, we agree with
the examining attorney that the applied-for matter as it is
being used is merely informational, and will be perceived
as such. As the examining attorney has pointed out, the
actual layout of the proposed mark, viewed by itself or in
connection with all the specimen pages, creates an
appearance such that viewers, whether they be prospective
consumers or not, would not believe that this matter is a
trademark. Rather, they will understand the matter as
identifying the title and fictional characters of a story
which may form the basis or theme for children’s play
materials.
Finally, we note that applicant has asserted a claim
that the applied-for mark has acquired distinctiveness
Serial No. 76293327
15
pursuant to Trademark Act Section 2(f), 15 U.S.C. §
1052(f). Applicant’s claim of acquired distinctiveness
appears to rest essentially on her alleged years of use of
the applied-for mark in the manner shown in the previously-
discussed specimens. As explained, the specimens do not
demonstrate trademark use and, without more, such as
evidence that the matter has been promoted as a trademark,
see McDonald’s, 199 USPQ at 491, we cannot find that the
applied-for mark has acquired distinctiveness regardless of
the time the applied-for mark has been used in this manner.
See, e.g., In re Ennco Display Systems Inc., 56 USPQ2d
1279, 1286 (TTAB 2000) (applicant's years of use of product
designs insufficient to bestow acquired distinctiveness).
In summary, the evidence of record does not support a
conclusion that the applied-for matter functions as a
trademark or otherwise is distinctive for purposes of
acting as a source identifier for the identified goods.
Material Alterations to Mark
In the initial Office action and prior to the failure
to function refusal being raised, the then-examining
attorney offered applicant the option to submit a new
drawing and to “delete the words ‘character collection’ and
all the words in the columns” because this portion is
Serial No. 76293327
16
“informational and not part of the mark.”7 The examining
attorney went on to state that “[p]eople would not perceive
all the names on the drawing as a single mark for the
goods.” Later during the prosecution and after the failure
to function refusal was raised, the examining attorney
again offered applicant the option to “submit a new drawing
containing only the words SHIMMERING RAINFOREST without any
other elements” and, the examining attorney advised, this
would “overcome the [failure to function] refusal.”8 In
what was apparently in response to, but not in compliance
with, the examining attorney’s suggestions, applicant
submitted several proposed amendments to the drawing. Each
attempt has been refused by the examining attorney because
it materially alters the original applied-for mark.
Trademark Rule 2.72(a)(2), which governs applications
filed pursuant to Section 1(a) (use in commerce), provides
that an applicant may amend the drawing of the mark if
“[t]he proposed amendment does not materially alter the
mark. The Office will determine whether a proposed
amendment materially alters a mark by comparing the
proposed amendment with the description or drawing of the

7 See TSDR database entry dated June 26, 2002 (“priority
action”).
8 See TSDR database entry dated June 14, 2008 (“Office action
outgoing”).
Serial No. 76293327
17
mark filed with the original application.” The test for
determining whether a proposed amendment is a material
alteration has been articulated as follows:
The modified mark must contain what is the essence of
the original mark, and the new form must create the
impression of being essentially the same mark. The
general test of whether an alteration is material is
whether the mark would have to be republished after
the alteration in order to fairly present the mark for
purposes of opposition. If one mark is sufficiently
different from another mark as to require
republication, it would be tantamount to a new mark
appropriate for a new application.

In re Hacot-Colombier, 105 F.3d 616, 620, 41 USPQ2d 1523,
1526 (Fed. Cir. 1997), quoting Visa Int’l Service Ass’n v.
Life-Code Systems, Inc., 220 USPQ 740, 743-44 (TTAB 1983).
Also, as has often been stated, the addition of any element
that would require a further search generally will
constitute a material alteration. In re Pierce Foods
Corp., 230 USPQ 307 (TTAB 1986). The crucial questions are
whether the proposed amendment retains “the essence of the
original mark” and whether it creates “the impression of
being essentially the same mark.” In re Who? Vision
Systems, Inc., 57 USPQ2d 1211, 1218 (TTAB 2000). That is,
“the new and old forms of the mark must create essentially
the same commercial impression.” Id., quoting In re
Nationwide Industries Inc., 6 USPQ2d 1882, 1885 (TTAB
Serial No. 76293327
18
1988). See also, In Re Guitar Straps Online, 103 USPQ2d
1745 (TTAB 2012).
With the above in mind and after careful
consideration, we find that each of the three different
attempts by applicant to amend the proposed mark, as
originally filed, constitutes a material alteration.
First, with respect to applicant’s proposed amended drawing
submitted on March 7, 2003,9 this alters the original
proposed mark by removing the columns of character names
and displaying the character names in a radial or
“starburst” manner (surrounding the stylized literal
portion SHIMMERING RAINFOREST).10 As the examining attorney
correctly notes, the new design incorporating the names of
the characters creates a new commercial impression that
would necessarily involve a new search by the examining
attorney to determine if there is a conflict with any
registration or prior-filed application with a similar
configuration or display of character names or terms, even
if the names or terms are different.
As to the second proposed amended drawing, filed on
December 16, 2008, applicant specifically states that this

9 The same proposed amended drawing was again filed on February
9, 2004.
10 See TSDR March 7, 2003 entry at p. 2.
Serial No. 76293327
19
new proposed mark is in “standard character format without
any claim to any particular font style, size or color.”11
As the examining attorney argued in her appeal brief,
converting the proposed stylized mark, including the
columns of character names, to a single standard character
mark “would result in [a mark] with a very different
appearance and commercial impression from the [original
proposed mark].” Brief, p. 20. In other words, should the
amendment be allowed, the wording SHIMMERING RAINFOREST
which appears prominently in the original proposed mark
could possibly appear on equal footing, i.e., the same font
style and size, as the remaining literal elements
consisting of character names, and thus lose its status as
an element most likely to garner attention. Likewise, the
column design could be deleted. We agree with the
examining attorney’s determination in this regard and find
this proposed amendment constitutes a material alteration.
See TMEP § 807.03(d) (Changing From Special Form Elements
to Standard Characters).
Finally, applicant’s third attempt to amend the mark
was filed on January 28, 2013, and depicts the same matter

11 See TSDR database entry dated December 16, 2008 (“response to
Office action”) at p. 2 for applicant’s statement and drawing
showing the proposed mark.
Serial No. 76293327
20
shown in the original drawing with the addition of a
colorful background, stars, and rays of light emanating
from the top left corner.12 The additional elements
constitute a material alteration inasmuch as they would
clearly require an additional conflicting mark search by
the examining attorney.
Accordingly, applicant’s attempts to amend the drawing
all would result in material alterations to the proposed
mark, as originally filed, and thus are prohibited under
Trademark Rule 2.72.
Decision: The examining attorney’s refusal under
Sections 1, 2 and 45 to register the proposed mark is
affirmed; and the examining attorney’s refusal to accept
the various proposed amendments to the mark as applied-for
also are affirmed.

12 See TSDR database entry dated January 28, 2013 (“Petition to
Revive Abandoned Application”) at p. 12.