San Diego Regional Economic Development Corporation

Trademark Trial and Appeal Board

Aug 21, 2008

No. 78678729 (T.T.A.B. Aug. 21, 2008)

Mailed:
August 21, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re San Diego Regional Economic Development Corporation
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Serial No. 778678729
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Kathleen A. Pasulka of Procopio Cory Hargreaves & Savitch
for San Diego Regional Economic Development Corporation.

Jay K. Flowers, Trademark Examining Attorney, Law Office
112 (Angela B. Wilson, Managing Attorney).
_______

Before Seeherman, Drost and Ritchie de Larena,
Administrative Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

San Diego Regional Economic Development Corporation
has appealed from the final refusal of the Trademark
Examining Attorney to register “AT C-LEVEL” as a trademark
for “magazines featuring economic information specific to
municipalities.1 Registration has been refused because the

1 Application Serial No. 78678729, filed July 26, 2005, based on
Section 1(a) of the Trademark Act (use in commerce), and
asserting first use and first use in commerce as of June 13,
2005.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78678729
2
specimens applicant has submitted do not show use of the
mark depicted in the drawing. Specifically, the Examining
Attorney contends that both the original and substitute
specimens submitted by applicant show the mark,
respectively, as “C-LEVEL” and “SAN DIEGO AT C-LEVEL,” and
therefore the mark shown in the drawing, “AT C-LEVEL,” is
not a substantially exact representation of the mark as
used.2
Applicant and the Examining Attorney filed appeal
briefs. No reply brief was filed.
Trademark Rule 2.41(a) provides that, in an
application based on Section 1(a) of the Trademark Act, as
the present application is, the drawing of the mark must be
a substantially exact representation of the mark as used on
or in connection with the goods/or services. In order to
determine this, we must examine the specimens, which we set
forth below:

2 In his brief the Examining Attorney has made statements that
are applicable to a refusal to accept an amendment of a drawing,
e.g., “applicant is attempting to amend a portion of the mark”
(p. 4) and “the substitute specimen materially alters the mark on
the drawing page” and “the addition of any element that would
require a further search will constitute a material alteration”
(p. 6). However, applicant has not attempted to amend its mark
so that the mark shown in the drawing would conform more closely
to the specimens, and therefore the issue of whether an amendment
to the drawing would be acceptable is not before us.
Ser No. 78678729
3

The original specimen (above) shows C ♦ LEVEL in large
type, with the phrase “San Diego at” in much smaller type
size, and in a different type font, above it.

Ser No. 78678729
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The substitute specimen is the Table of Contents page. At
the very bottom of the page appears the line:
San Diego at C▪LEVEL • San Diego’s Premier CEO Publication
The Examining Attorney contends that the original
specimen submitted by applicant shows the mark as
“C-LEVEL,” while the substitute specimen shows the mark as
“SAN DIEGO AT C-LEVEL.” According to the Examining
Attorney, neither specimen shows use of the mark depicted
in the drawing, “AT C-LEVEL.”
The entirety of applicant’s reasons as to why its
specimen is acceptable is set forth in the following
paragraph of its brief:
Applicant submits that its mark “AT C-
LEVEL” is shown in the specimen the
Applicant submitted in response to the
Office Action. The specimen shows the
words “at C-LEVEL” at the bottom of the
magazine Table of Contents page.

Thus, applicant apparently has conceded that the
original specimen does not show use of the mark depicted in
the drawing. Accordingly, we need not engage in an
extended discussion of the acceptability of the original
specimen, but will say only that we agree with the
Examining Attorney that the mark shown in the drawing is
not a substantially exact representation of the mark shown
in that specimen.
Ser No. 78678729
6
As for the acceptability of the substitute specimen,
“[i]t 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.” In re
Yale Sportswear Corporation, __USPQ2d__, Serial No.
78653373 (TTAB July 3, 2008), quoting Institut des
Appellations d’Origine v. Vintner’s Int’l Co., Inc., 958
F.2d 1574, 22 USPQ2d 1190, 1197 (Fed. Cir. 1992). In the
present case, the question is whether “AT C-LEVEL” makes a
separate and distinct commercial impression when used in
the phrase “San Diego at C▪LEVEL” on the bottom of the
Table of Contents page.
We find that it does not. Consumers will either view
the entire phrase, “San Diego at C▪LEVEL,” as a mark, or
perhaps, because it is depicted in all capital letters,
they will view “C▪LEVEL” as making a separate commercial
impression. However, the word “at,” which is depicted in
lower case, will be seen as part of the “San Diego” portion
of the phrase because “San Diego” also contains lower case
letters, rather than as part of the all upper case
“C▪LEVEL” portion. Further, the inclusion of “at” in
applicant’s drawing results in a mark, “AT C-LEVEL,” which
is different in connotation from either “C▪LEVEL” or “San
Diego at C▪LEVEL.” Accordingly, the mark “AT C-LEVEL”
Ser No. 78678729
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depicted in applicant’s drawing is not a substantially
exact representation of the mark shown in either the
original or the substitute specimen.
Decision: The refusal of registration is affirmed.