RCPI Landmark Properties, LLC

Trademark Trial and Appeal Board

Sep 13, 2007

No. 75516355 (T.T.A.B. Sep. 13, 2007)

Mailed: September 13, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re RCPI Landmark Properties, LLC
________

Serial No. 75516355
_______

Kerry D. McIlroy of Milbank, Tweed, Hadley & McCoy LLP for
RCPI Landmark Properties, LLC.

Sharon A. Meier, Trademark Examining Attorney, Law Office
112 (Angela Wilson, Managing Attorney).
_______

Before Drost, Cataldo and Taylor,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

An application was filed by RCPI Landmark Properties,
LLC to register the mark shown below on the Principal
Register for the following goods and services, as amended:
“metal key chains” in International Class 6;

“hand tools, namely, spoons made of precious metal” in
International Class 8;

“decorative magnets” in International Class 9;

“electric night lights” in International Class 11;

“ornamental pins” in International Class 14;
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 75516355
2
“paper goods, namely, calendars, Christmas cards, gift
cards, greeting cards, note cards, picture postcards” in
International Class 16;

“picture frames” in International Class 20;

“house wares and glass, namely, beverage glassware, cups,
coffee cups, mugs, glass mugs” in International Class 21;

“multi-purpose cloth bags” in International Class 22;

“clothing, namely, caps, sweat shirts, polo shirts, golf
shirts, knit shirts, sports shirts, t-shirts, headgear” in
International Class 25;

“Toys and playthings, namely manipulative puzzles, toy
boxes, christmas tree ornaments, christmas tree
decorations” in International Class 28;

“staple foods, namely, cookies” in International Class 30;

and “real estate services, namely leasing of office space;
leasing of real property, leasing of shopping mall space,
rental of office space” in International Class 36.1

The trademark examining attorney initially required
applicant to submit substitute specimens that show use of

1 Application Serial No. 75516355 was filed July 9, 1998, based
on applicant’s assertion of a bona fide intent to use the mark in
commerce. Applicant’s description of the mark presently reads as
follows: The mark consists of the depiction of the mythological
figure Atlas holding an armillary sphere. In its subsequently
filed Statement of Use, applicant asserted November 2003 as a
date of first use of the mark anywhere, and December 2003 as a
date of first use of the mark in commerce in connection with the
goods and services.

Ser No. 75516355
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the mark as it appears in the drawing. When the
requirement was made final, applicant appealed. Applicant
and the examining attorney filed main briefs on the issue
under appeal.
The specimens submitted in connection with the Class
14 goods are reproduced below. These specimens are
essentially identical to the specimens submitted in
connection with the goods in all of the International
Classes recited above:

The specimens submitted in connection with the services
recited in International Class 36 are reproduced below:

Ser No. 75516355
4
Applicant argues that although it previously amended
the description of its mark to a “three-dimensional
depiction of the mythological figure of Atlas holding an
armillary sphere,” it should be allowed to amend the
description of its mark back to a two-dimensional mark as
noted above. Applicant further argues that such an
amendment will not materially alter the character of its
mark, but will result in the specimens agreeing with the
mark as it appears in the drawing. Applicant contends that
the “specimens contain the essence of the original mark and
convey the same commercial impression” (brief, p. 8).
Applicant further contends that the specimens for its goods
are adhesive labels consisting of “a photograph of the
famous three-dimensional ‘Atlas’ sculpture at Rockefeller
Center, New York. The background of the photographic
labels includes the surrounding buildings” (Id). Applicant
contends in addition that the only difference between the
drawing of the mark and the specimens is the presence of
the buildings in the background of the latter, and that
“such minute differences are not sufficient to amount to a
material alteration” (Id). Applicant further asserts that
“[t]he photographic labels do not contain any elements that
distract, add or otherwise alter the central element of the
mark, which is the Atlas statue” (brief, p. 9). As a
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result, applicant asserts, “the specimens are consistent
with the original drawing and description” of the mark
(Id).2
The examining attorney maintains that the mark as
shown in the specimens of record is not a substantially
exact representation of the mark as it appears in the
application drawing page. Specifically, the examining
attorney contends that the specimens of record for the
applied-for goods display the mark with the addition of the
design element of a building. The examining attorney
argues that, as a result, the “presentation of the mark in
the drawing is an unacceptable mutilation of the
applicant’s mark because the applicant seeks registration
of something less than the totality of its trademark as
depicted in the specimens for the goods” (brief, p. 4).
The examining attorney further argues that “[w]ith respect
to the specimens for the services, the mark depicted on the
specimen simply does not match the complete depiction of

2 In addition, applicant states that “the mark has been in
continuous use on goods in the above-referenced classes since
November 2003. Thus, the mark is eligible for registration under
Section 2(f) of the Trademark Act” (brief, p. 1-2). We note,
however, that the issue of acquired distinctiveness of
applicant’s mark is not before us in this proceeding. As a
result, applicant’s statement to that effect will be given no
further consideration.

Ser No. 75516355
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the Atlas figure holding an armillary, it only depicts a
portion of the mark” (Id).
The matter on appeal in this case concerns (1) the
design of a building in the specimens for the goods that is
not present in the drawing of the mark; and (2) the display
in the specimen for the services of only a portion of the
drawing of the mark. The question is whether the mark
sought to be registered is a substantially exact
representation of the mark as it appears on the specimens
of use submitted in connection with the recited goods and
services.
Display of the Mark on the Specimens for the Goods
It is well settled that an applicant may seek to
register any portion of a composite mark if that portion
presents a separate and distinct commercial impression
which indicates the source of applicant’s goods or services
and distinguishes applicant’s goods or services from those
of others. See Institut National des Appellations
D’Origine v. Vintners International Co. Inc. 958 F.2d 1574,
22 USPQ2d 1190, 1197 (Fed. Cir. 1992); and In re Chemical
Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828 (Fed. Cir.
1988). If the portion of the mark sought to be registered
does not create a separate and distinct commercial
impression, the result is an impermissible mutilation of
Ser No. 75516355
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the mark as used. See, e.g. In re Miller Sports Inc., 51
USPQ2d 1059 (TTAB 1999).
As noted by our primary reviewing Court in Chemical
Dynamics, supra at 1829, quoting 1 J. T. McCarthy,
Trademarks and Unfair Competition §19:17 (2d ed. 1984), the
issue of mutilation “all boils down to a judgment as to
whether that designation for which registration is sought
comprises a separate and distinct ‘trademark’ in and of
itself.”
We agree with the examining attorney that the mark as
it appears on the specimens for applicant’s goods consists
of the design of a statue depicting an Atlas figure holding
an armillary sphere in front of a building. We are not
persuaded that the design of Atlas holding a sphere creates
a commercial impression that is separate and distinct from
the building design. Cf. Institut National des
Appellations D’Origine, supra. That is to say, the design
of the figure of Atlas holding a sphere does not comprise a
trademark that is separate from the building design. Nor
are we persuaded that because applicant’s mark depicts the
statue of Atlas in Rockefeller Center, New York,
individuals encountering the specimens for its goods will
recognize that its mark consists only of the Atlas figure
and armillary sphere. On the contrary, individuals viewing
Ser No. 75516355
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the specimens for applicant’s goods will see that the mark
consists of a statue of Atlas holding a sphere in front of
a building. Finally, we are not persuaded by applicant’s
argument that the presence of the building design does not
“distract, add or otherwise alter” the Atlas figure and
sphere. The building design clearly adds an element to
applicant’s mark which alters its overall commercial
impression.
The mark as it is displayed in applicant’s drawing
omits a salient feature of the mark as it is used by
applicant on the specimens for its goods, namely, the
building design. As a result, the drawing of the mark is
an impermissible mutilation of the mark as used on or in
connection with the goods. See In re Miller Sports Inc,
supra.
Display of the Mark on the Specimen for the Services
The drawing of a mark in an application filed under
Section 1(b) of the Trademark Act such as the one under
consideration herein is governed by Trademark Rule 2.51(b),
which provides as follows:
In an application under section 1(b) of the Act,
the drawing of the mark must be a substantially
exact representation of the mark as intended to
be used on or in connection with the goods and/or
services specified in the application, and once
an amendment to allege use under §2.76 or a
statement of use under §2.88 has been filed, the
Ser No. 75516355
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drawing of the mark must be a substantially exact
representation of the mark as used on or in
connection with the goods and/or services.

See Trademark Rule 2.51. See also In re Hacot-Columbier,
105 F.3d 616, 41 USPQ2d 1523, 1525 (Fed. Cir. 1997). In
this case, the specimen filed by applicant with its
statement of use in support of its services displays a
portion of the Atlas figure as well as a portion of the
armillary sphere comprising the mark as depicted in the
drawing above. Specifically, the mark as it appears in the
specimen displays the majority of the armillary sphere, but
only the torso, arms and head of the Atlas figure. This
contrasts sharply with the mark in the drawing which
displays the entire armillary sphere as well as the entire
Atlas figure standing atop a square column. Thus, it is
readily apparent that the mark in applicant’s service mark
specimen displays only a portion of the mark as shown in
the drawing.
We are not persuaded by applicant’s assertion that the
“specimens contain the essence of the original mark”
(brief, p. 8). In this case, the service mark specimen
displayed above contains approximately half of the applied-
for mark. This is not a situation in which there exists
some minor, inconsequential variation between the mark as
it appears on the drawing page and in the service mark
Ser No. 75516355
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specimen. See In re Hacot-Columbier, supra. Rather, the
display of only half of the mark as shown in the drawing on
the service mark specimen is a major, significant
difference. As a result, we agree with the examining
attorney that the mark shown on applicant’s drawing is not
a substantially exact representation of the mark as used on
the service mark specimen.
Finally, we note that applicant requests leave to
amend the description of its mark to indicate that it seeks
registration of a two-dimensional mark. However, such an
amendment will not overcome the differences between the
mark as shown in applicant’s drawing and in its specimens
of use. In short, such an amendment will not resolve the
issue under appeal. Accordingly, applicant’s request to
amend the description of its mark is moot and will be given
no further consideration.
Summary
In view of the foregoing, we find that the mark shown
in the drawing (1) is a mutilation of the mark as shown on
applicant’s specimens for its goods; and (2) is not a
substantially exact representation of the mark shown on the
specimen for its services.
Decision: The refusal to register on the ground that
the mark in applicant’s drawing does not match the mark as
Ser No. 75516355
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displayed on the specimens submitted with applicant’s
statement of use is affirmed.