Royal BodyCare, Inc.

Trademark Trial and Appeal Board

Feb 22, 2007

No. 78976265 (T.T.A.B. Feb. 22, 2007)

Mailed:
22 February 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Royal BodyCare, Inc.
________

Serial No. 78976265
_______

Mark D. Perdue of Storm, LLP for Royal BodyCare, Inc.

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

Before Hohein, Bucher, and Drost, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On May 31, 2002, Royal BodyCare, Inc. (applicant)
applied to register the mark NANOCEUTICAL, in standard
character form, on the Principal Register for goods
ultimately identified as “dietary and nutritional
supplements” in Class 5. The application (Serial No.
78976265) is a divisional application of the original
application (Serial No. 78132525). Applicant has filed a
THIS OPINION IS A
PRECEDENT OF THE
TTAB
Ser. No. 78976265
2
statement of use that alleged dates of use anywhere and in
interstate commerce of August 31, 2004.1
The examining attorney has refused registration on the
ground that “applicant has not submitted an acceptable
specimen of use.” Brief at 3. More specifically, the
examining attorney maintains that: “In the only specimen
submitted by applicant, the proposed mark, NANOCEUTICAL, is
embedded in the phrase RBC’s NANOCEUTICAL. NANOCEUTICAL is
an incomplete mark because it is missing essential and
integral matter that appears in the mark on the specimen.”
Brief at 4.
Applicant “submits that Nanoceutical, as a coined
term, stands apart from the house mark RBC notwithstanding
their proximity on the specimen.” Brief at 5. Applicant
further argues (Reply Brief at 2) that:
Prior cases recognize that use of an applied–for
trademark in connection with a “house” mark (or
tradename, or corporate initials) does not create an
integrated mark. RBC is nothing more than an adjunct
modifier that further informs consumers of the source
of the goods, but it is not inseparable from the
applied-for mark. Removal of this abbreviation from
the mark does not change, detract from, or contribute
to the distinctive character of Nanoceutical.

1 On July 6, 2005, the original application was divided and the
goods in Class 3, non-medicated skin care preparation, remain in
the original application (Serial No. 78132525).
Ser. No. 78976265
3
Applicant argues that RBC is a house mark and claims
ownership of Registration No. 1,965,116 for the following
mark for goods in Classes 3, 5, and 32.2

Applicant also submitted evidence that shows that it uses
RBC, with and without the crown design. Applicant’s
declarant, Trevor Scofield, maintains that “[d]ue to the
widespread use of the RBC house mark by RoyalBodycare, Inc.
[sic] and the fact that it is fairly obviously the initials
of the company, combined with many conversations with
distributors and end-user customers who refer to Royal
BodyCare as ‘RBC,’ I believe that consumers of our products
see it as a ‘house mark.’” Declaration at 2-3.
The specimen submitted by
applicant shows the mark applied to
the goods, where RBC’S NANOCEUTICAL is
displayed directly above
applicant’s product mark, SILVER 22.

2 We note that USPTO records indicate that this registration was
cancelled on January 6, 2007.
Ser. No. 78976265
4
An enlarged, reverse image enhancement of this portion
of the specimen of record is set out below.

Attached to the declarations were examples of how
applicant uses the term RBC. Some of these examples
follow:

USPTO rules (37 CFR § 2.51(b)) require:
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 drawing of the mark must be
Ser. No. 78976265
5
a substantially exact representation of the mark as
used on or in connection with the goods and/or
services.

TMEP § 807.12(d) (4th ed. April 2005) summarizes the
requirements for the mark in the drawing as compared to the
mark in the specimen.
In an application under §1 of the Trademark Act, the
mark on the drawing must be a complete mark, as
evidenced by the specimen. When the representation on
a drawing does not constitute a complete mark, it is
sometimes referred to as "mutilation." This term
indicates that essential and integral subject matter is
missing from the drawing. An incomplete mark may not
be registered.

“‘Mutilation’ is a concept long recognized as a part
of trademark registration case law.” Institut National des
Appellations D’Origine v. Vintners International Co., 958
F.2d 1574, 22 USPQ2d 1190, 1197 (Fed. Cir. 1992). The
question of whether a mark is a mutilation “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." Id. See also In re 1175856
Ontario Ltd., 81 USPQ2d 1446, 1448 (TTAB 2006).
TMEP § 807.14(b) informs examining attorneys that:
[I]n an application under § 1 of the Trademark Act,
the applicant has some latitude in selecting the mark
it wants to register. The mere fact that two or more
elements form a composite mark does not necessarily
mean that those elements are inseparable for
registration purposes. An applicant may apply to
register any element of a composite mark used or
intended to be used if that element presents, or will
Ser. No. 78976265
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present, a separate and distinct commercial impression
apart from any other matter with which the mark is or
will be used on the specimen.

“The courts in a proper case may recognize the right
to registration of one part of an owner’s mark consisting
of two parts.” In re Servel, Inc., 181 F.2d 192, 85 USPQ
257, 260 (CCPA 1950)(SERVEL functions as a mark apart from
the term INKLINGS). Cases have frequently held that an
applicant’s use of its corporate name or house mark along
with another trademark or trade name does not create a
unitary mark. Textron Inc. v. Cardinal Engineering Corp.,
164 USPQ 397, 399 (TTAB 1969) (“While the record does show
that Textron’s principal or house mark ‘HOMELITE’ appears
on its chain saws as well as in all of its advertising
literature, there is no statutory limitation on the number
of trademarks that one may use on or in connection with a
particular product to indicate origin”); In re Emco, Inc.,
158 USPQ 622, 623 (TTAB 1968) (“It is concluded that the
law and the record support applicant’s position that
‘RESPONSER’ is registrable without addition of the surname
‘MEYER’”); and In re Barry Wright Corp., 155 USPQ 671, 672
(TTAB 1967) (“[I]t is clear that the notation ‘8-48’ stands
out as a distinguishable element separate and apart from
the statement ‘ANOTHER 8-48 FROM MATHATRONICS’”).
Ser. No. 78976265
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Indeed, in a recent case the board held that the term
PSYCHO in the mark shown below created a separate and
distinct commercial impression from the words BUBBALOU’S
BODACIOUS BAR-B-Q and design even though the word
overlapped the design. In re Big Pig, Inc., 81 USPQ2d
1436, 1440 (TTAB 2006):

We note that the marks in the present case are not
joined in any physical way although the specimen does show
that they are relatively close to each other. Even terms
that are connected may still create separate commercial
impressions. In re Raychem Corp., 12 USPQ2d 1399, 1400
(TTAB 1989) (Board held that the “fact that hyphens connect
both the part number and 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”); In re Berg
Electronics, Inc., 163 USPQ 487 (TTAB 1969) (GRIPLET
Ser. No. 78976265
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creates a separate commercial impression despite
overlapping with house mark BERG); In re Dempster Brothers,
Inc., 132 USPQ 300 (TTAB 1961) (Despite specimens showing
the terms DEMPSTER DUMPMASTER sharing the same first and
last letters, DUMPMASTER separately registrable).
“While proximity is a consideration, it is the overall
commercial impression of the mark that is controlling.”
1175856 Ontario, 81 USPQ2d at 1448. In this case, the
terms RBC’s and NANCOEUTICAL are separate, not connected.
They do create two separate impressions much as the marks
in the cases noted above (Textron, Emco, and Big Pig).
Furthermore, we do not find the fact that the term,
RBC’s, is in the possessive form results in a conclusion
that the marks are unitary. For example, the term “From
Mathatronics” did not result in a mutilation when applicant
sought to register “8-48” apart from the additional
language. Barry Wright, 155 USPQ at 672. Here, the house
mark or trade name “RBC’s” performs its function of
identifying a line of products from applicant much as the
surname Meyer identified a product sold under the trademark
RESPONSER rather than a product identified by the unitary
mark MEYER RESPONSER. Emco, 158 USPQ at 623.
The last point we address is the examining attorney's
dispute with applicant’s contention that the mark RBC is a
Ser. No. 78976265
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house mark. According to the examining attorney, brief at
6:
[T]he registration referenced by the applicant … is
not a house mark, but rather a trademark comprised of
the wording RBC embedded in a design of a crown and
listing specific goods in Classes 3, 5, and 32. See
TMEP Section 1402.03(b) regarding house marks. The
mark as depicted in the prior registration is not
displayed on the specimen submitted in this case, but
rather only the word portion of the mark. It is
simply not enough to conclude that the letters RBC
comprise a house mark from the fact that the letters
“RBC obviously are the initials or an abbreviation of
the corporate name of the applicant” and that
consumers would view them as such… With respect to
the Scofield Declaration and attachments filed on
December 12, 2005, the evidence is insufficient to
establish use of the letters RBC as a house mark. A
majority of the evidence submitted by the applicant
depicts the letters RBC as a trade name and does not
show use of the letters RBC as a trademark.
Furthermore, several of the attachments show use of
the registered mark comprised of a design of crown
with the letters RBC enclosed within the design. As
noted above, U.S. Registration No. 1965116 is
registered as a trademark not a house mark and the
attachments submitted with the Scofield Declaration do
not provide evidence otherwise.

Initially, we must disagree with the examining
attorney’s implication that a mark must be registered in
the USPTO as a “house mark” before it can be considered as
a house mark for purposes of determining whether the mark
on the specimen is a mutilation of the mark in the drawing.
As explained by Professor McCarthy, “under the rule of the
Servel case, a house mark is registrable apart from the
various product marks used on a label. Under the same
Ser. No. 78976265
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general principle, a product mark used in conjunction with
a house mark is separately registrable if the product mark
creates a separate commercial impression.” 3 McCarthy on
Trademarks and Unfair Competition § 19:59 (4th ed. 2006)
The USPTO does permit the use of the term “house mark” in
identifications of goods under certain circumstances.
TMEP § 1402.03(b) (4th ed. April 2005):
In an application to register a mark as a house mark
based on use in commerce, the applicant must
demonstrate that the mark is, in fact, used as a house
mark. The examining attorney should require that the
applicant provide catalogues showing broad use of the
mark or similar evidence to substantiate this claim… If
the applicant cannot do so, the applicant will be
required to amend the identification of goods to
conform to the usual standards for specificity.

However, the examining attorney has not pointed to any
case, and we are unaware of any case, that required the
house mark to be registered as a house mark in the USPTO in
order to avoid a determination that the mark was a
mutilation. The case law simply describes the mark as a
house mark without indicating that it is registered as a
house mark. See, e.g., In re Hacot-Colombier, 105 F.3d
616, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997) (“Hacot-
Colombier's proposed addition of its house mark remains a
material alteration for two reasons”); and Textron, 164
USPQ at 399 (“[I]t is a common practice for manufacturers
to apply both a house mark and a product mark to their
Ser. No. 78976265
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various merchandise”). See also Berg Electronics, 163 USPQ
488 (The “designation ‘GRIPLET’ as used on the label
specimens creates a separate and distinct commercial
impression apart from the house mark ‘BERG’”).
The board has explained what a house mark is as
follows:
It is well established that a product can bear more
than one trademark, that each trademark may perform a
different function for consumers and recipients of the
product, and that each can be registered providing the
mark as used, creates a separate and distinct
impression in and of itself and serves to identify and
distinguish the product as it is encountered by
consumers in the normal marketing milieu for such
goods… The usual situation in which this principle
has normally been applied… involves a house mark which
normally serves to identify the source of the product,
per se, and a product mark which serves to identify a
particular product within a line of merchandise
normally associated with and distinguished by the
house mark. That is, a house mark serves as an
umbrella for all of the product marks and merchandise
emanating from a single source.

Amica Mutual Insurance Company v. R. H. Cosmetics Corp.,
204 USPQ 155, 161 (TTAB 1979). Thus, a mark could be
considered a house mark if the evidence shows that it
serves as a mark for a number of an entity’s products even
if the diversity of products would not be so great that the
company would be able to use the term “house mark” in its
identification of goods. See, e.g., In re Andes Candies
Inc., 478 F.2d 1264, 178 USPQ 156, 156 (CCPA 1973)
(“Appellant's mark [CRÈME DE MENTHE] is shown in large,
Ser. No. 78976265
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distinct type in a separate line on the boxes in which its
laminated chocolate mint candies are packaged. Its trade
name or house mark, ANDES, also appears prominently on its
boxes”).
Therefore, we conclude that the evidence shows that
the term RBC is used as a house mark. We also find that,
even if it were not, it is used in a way that is similar to
the surname in the Emco case. Finally, the term
NANOCEUTCIAL is used on the specimen in a manner that
creates a commercial impression separate and apart from the
house mark or trade name RBC’s.
Decision: The refusal to register is reversed.