Robert Fox, Inc.

Trademark Trial and Appeal Board

Aug 31, 2004

No. 76455401 (T.T.A.B. Aug. 31, 2004)

Mailed: 8/31/04
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Robert Fox, Inc.
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Serial No. 76455401
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Myron Amer of Myron Amer, P.C. for Robert Fox, Inc.
Jeffrey S. DeFord, Trademark Examining Attorney, Law Office
115 (Tomas Vlcek, Managing Attorney).
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Before Seeherman, Hanak and Rogers, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Robert Fox, Inc. has appealed from the final refusal
of the Trademark Examining Attorney to register CATCH THE
THRILL OF A GREAT BUY! as a mark for "retail store for
ladies' clothing."1 Registration has been refused on the
1 Application Serial No. 76455401, filed September 30, 2002, and
asserting first use and first use in commerce on January 1, 1998.
The drawing, as originally filed, showed the mark, in typed
format, as CATCH THE THRILL OF A GREAT BUY. With its reply
brief, applicant has submitted an amended drawing which includes
the exclamation point. Normally, a proposed amendment to a
drawing, filed after the appeal, would have to be submitted with
a request for remand. However, in this case, the Examining
Attorney has, throughout examination, stated that the omission of
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76455401
2
basis that the specimen does not show use of the mark as it
appears in the drawing.
The appeal has been fully briefed; applicant did not
request an oral hearing.

Trademark Rule §2.51(a) provides that, "in an
application under section 1(a) of the Act, the 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." It is the Examining Attorney's position that
CATCH THE THRILL OF A GREAT BUY! is a mutilation of the mark
actually shown in the specimen, namely, FALL IN LOVE WITH
SHOPPING AND CATCH THE THRILL OF A GREAT BUY!
It is well settled that an applicant may apply to
register any element of a composite mark if that element, as
shown in the record, presents a separate and distinct
commercial impression which indicates the source of the
applicant's goods or services. See In re Miller Sports
Inc., 51 USPQ2d 1059 (TTAB 1999). See also, TMEP §807.14(b)
(3d ed. rev. May 2003). Therefore, we turn to a
the exclamation point from the drawing was one of the problems
with the drawing. Because applicant seeks to comply with this
particular requirement by the Examining Attorney, and because the
addition of the exclamation point is clearly not a material
alteration of the mark, we see no need to delay the appeal
further by remanding the application to the Examining Attorney.
Accordingly, the amendment to the drawing has been accepted, and
Office records now reflect this amendment.
Ser No. 76455401
3
consideration of the specimen submitted by applicant, and
depicted below, to determine whether CATCH THE THRILL OF A
GREAT BUY! presents a separate and distinct commercial
impression.
As the Examining Attorney has noted, the words CATCH
THE THRILL OF A GREAT BUY! do not appear alone, but are part
of the phrase FALL IN LOVE WITH SHOPPING AND CATCH THE
THRILL OF A GREAT BUY! Further, these words do not even
appear separately on a single line; rather, the line
contains the words AND CATCH THE THRILL OF A GREAT BUY! The
word "AND" is visually part of the phrase, being depicted in
the same size and type font as CATCH THE THRILL OF A GREAT
BUY!
This line, AND CATCH THE THRILL OF A GREAT BUY! is
visually subordinate to the words FALL IN LOVE WITH
SHOPPING. As the Examining Attorney has suggested, FALL IN
Ser No. 76455401
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LOVE WITH SHOPPING may create a separate commercial
impression because it is in larger, bolder type and stands
out from the entire sentence of which it is a part.
However, the subordinate phrase AND CATCH THE THRILL OF A
GREAT BUY! does not stand out in this way. That is,
consumers viewing the specimen advertisement are not likely
to view the latter phrase as a separate trademark. Further,
for those consumers who move beyond the dominant FALL IN
LOVE WITH SHOPPING to read the rest of the sentence, the
phrase beginning with the word "AND" would only be perceived
as part of the whole sentence and not as a separate mark
merely placed below FALL IN LOVE WITH SHOPPING.
Because AND CATCH THE THRILL OF A GREAT BUY! does not
create a separate and distinct impression from the entire
slogan FALL IN LOVE WITH SHOPPING AND CATCH THE THRILL OF A
GREAT BUY!, neither does the portion of that phrase--CATCH
THE THRILL OF A GREAT BUY!--which is an integral part of
AND CATCH THE THRILL OF A GREAT BUY! We wish to make it
clear that our decision herein is based solely on the
commercial impression of CATCH THE THRILL OF A GREAT BUY!
as it appears on applicant's specimen herein. Under other
circumstances, two phrases, even when joined by the word
“and,” might well create the impression of two separate
trademarks, such as, for instance, if the word "and"
Ser No. 76455401
5
appeared on a separate line, and in smaller letters,
between two prominently displayed phrases. Nor has our
decision been based on the question of whether CATCH THE
THRILL OF A GREAT BUY!, as required by Trademark Rule
2.51(a), is a substantially exact representation of AND
CATCH THE THRILL OF A GREAT BUY!, i.e., the question of
whether the AND is a significant element of the proposed
mark. Because, as shown in the specimen, CATCH THE THRILL
OF A GREAT BUY! does not create a separate commercial
impression apart from FALL IN LOVE WITH SHOPPING AND CATCH
THE THRILL OF A GREAT BUY!, the mark shown in the drawing,
CATCH THE THRILL OF A GREAT BUY!, is not a substantially
exact representation of the mark shown in the specimen.
Decision: The refusal of registration is affirmed.