The Board of Trustees of the University of Alabama and Auburn University

Trademark Trial and Appeal Board

Nov 29, 2004

No. 76143855 (T.T.A.B. Nov. 29, 2004)

Hearing: July 28, 2004 Mailed: November 29, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re The Board of Trustees of The University of Alabama and
Auburn University
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Serial No. 76143855
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William H. Brewster and Christopher J. Kellner of Kilpatrick
Stockton LLP for The Board of Trustees of The University of
Alabama and Auburn University.
Caroline F. Weimer, Trademark Examining Attorney, Law Office 115
(Tomas Vlcek, Managing Attorney).
_______
Before Hanak, Bottorff and Holtzman, Administrative Trademark
Judges.
Opinion by Holtzman, Administrative Trademark Judge:
The Board of Trustees of The University of Alabama and
Auburn University, joint applicants, seek to register the mark
shown below for the following goods (as amended):
Clothing, namely, t-shirts, in Class 25.
Entertainment services, namely arranging and conducting
athletic events, in Class 41.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 76143855
2
The application was filed on October 9, 2000 based on
applicants' assertion of a bona fide intention to use the mark in
commerce. Following publication of the mark for opposition on
August 28, 2001, applicants filed a statement of use together
with the required specimens alleging dates of first use of the
mark and first use in commerce on October 30, 2000. The
examining attorney rejected the statement of use and refused
registration of the mark essentially on the ground that the mark
shown in the drawing did not agree with the use of the mark on
the specimens.1 In view of the differences between the mark
sought to be registered and the mark shown in the specimens, the
examining attorney has required that substitute specimens
properly showing the mark as used be submitted.
When the refusals were made final, applicants appealed.
Briefs have been filed. An oral hearing was held.
1 An additional refusal on the ground that the proposed mark is
ornamental as used on the goods in Class 25 was subsequently withdrawn
by the examining attorney.
Ser No. 76143855
3
To be clear, the issue before us is whether the mark, as it
appears in the drawing in the application, is a substantially
exact representation of the mark as used on the specimens.2 See
Trademark Rule 2.51(a).
The mark as it appears on applicants' specimen for t-shirts
in Class 25 contains several design and word elements that are
not present in the drawing. Those elements consist of an
elephant head design and a tiger eyes design on the upper left
and lower right quadrants of the football, respectively; the
wording "ALABAMA VS AUBURN" within the top portion of the oval
with "VS" in the center of the triangle; and the date "NOVEMBER
18, 2000" following the inner curve of the oval at the bottom of
the football.
Like the mark shown in the specimen for Class 25, the mark
in the Class 41 specimen also includes the elephant head and
tiger eyes designs. However, unlike the Class 25 specimen and
the drawing of the mark, the mark in the Class 41 specimen does
not contain the concentric oval design with the triangle at the
top or the wording "ALABAMA VS AUBURN." In addition, the date
2 As applicants correctly point out in their brief, the examining
attorney improperly characterized the issue in her brief as "whether
the mark as it appears on the specimens constitutes a material
alteration of the mark as shown in the drawing of record." Examining
Attorney's Brief, unnumbered p. 2. However, at least at certain points
in her brief, the examining attorney addressed the appropriate issue of
whether the drawing of the mark is a substantially exact representation
of the mark as used.
Ser No. 76143855
4
"NOVEMBER 18, 2000" floats outside the bottom rim of the
football.
Trademark Rule 2.51(a) provides that once a statement of use
has been filed, the drawing of the trademark must be a
substantially exact representation of the mark as used on or in
connection with the goods and/or services. The case before us
actually presents two separate issues involving the question of
whether the mark in the drawing is a "substantially exact"
representation of the mark as used. One issue concerns the
addition of certain elements to the drawing of the mark that do
not appear in the mark as shown on the specimens for the Class 41
services, i.e., the concentric oval and triangle design.3 The
other issue concerns the deletion of certain elements from the
drawing of the mark that appear in the specimens for both classes
of goods and services, including the elephant head and tiger eyes
designs. The latter issue, as it relates to applicants' attempt
to register a separate part of the composite mark shown on the
specimens, is one of whether the mark sought to be registered is
a "mutilation" or an incomplete representation of the mark that
is actually used. See, e.g., 3 J. Thomas McCarthy, McCarthy on
3 Applicants contend on page 14 of their brief that this issue was not
addressed by the examining attorney until the denial of applicants'
request for reconsideration. We find that the examining attorney
sufficiently raised this issue in both actions that were issued prior
to the denial of the request for reconsideration.
Ser No. 76143855
5
Trademarks & Unfair Competition, §19:59 (4th ed. 2003)
("'Mutilation' refers to a situation where a seller seeks
registration of something less than the totality of his
trademark."). Applicants have indicated that they are
specifically not seeking to amend the drawing to include these
other elements in the drawing of their mark. Thus, contrary to
the examining attorney's contention, there is no issue as to
whether there is a material alteration of the mark.
We turn first to the question of whether the drawing of the
mark is a mutilation of the mark as actually used.
Applicants maintain that the applied-for mark creates a
distinct commercial impression and is therefore registrable. It
is applicants' position that the nature of the "Iron Bowl" game
makes it "highly likely that consumers ... will perceive the Iron
Bowl Design as a mark separate and distinct from the Elephant
Head and Tiger Eyes Designs used in conjunction therewith."4
Brief, p. 11. Specifically, applicants explain, based on
evidence made of record, that the "Iron Bowl" is a widely known,
century-old annual football game between joint applicants the
University of Alabama and Auburn University; that the elephant
head design itself is used by co-applicant, The Board of Trustees
4 Applicants consistently refer to the term "IRON BOWL" as separate
words although that is not necessarily the commercial impression
conveyed by either one of the specimens of record. Nevertheless, for
the sake of consistency, and since it does not affect any aspect of our
Ser No. 76143855
6
of the University of Alabama, and the tiger eyes design is used
and registered by co-applicant Auburn University; that consumers
are aware that the underlying football match is always between
the University of Alabama and Auburn University; and that
therefore consumers will recognize the elephant head and tiger
eyes designs of those participants as marks separate and distinct
from the IRON BOWL and design mark.
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 thereby
performs the trademark function of identifying the source of an
applicant's goods and services and distinguishing those goods and
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 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 the mark as used. 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
determination in this case, we will likewise refer to "IRON BOWL" as
separate words in this decision.
Ser No. 76143855
7
judgment as to whether that designation for which registration is
sought comprises a separate and distinct 'trademark' in and of
itself." The question of whether the designation sought to be
registered creates a separate and distinct commercial impression
must be determined based on the specimens of use.
As shown above, the marks in both specimens contain the
stylized words "IRON BOWL" emblazoned horizontally at a slight
upward tilt across the middle of a composite design. This
composite design serves as a background design for the words
"IRON BOWL" and consists of a football with various design
components including the elephant head and tiger eyes designs.
Applicants are seeking to register only the portion of this
background design consisting of the football and the blackened
areas in the spaces where the two animal head designs once
appeared.
We have no problem finding that the designation can function
as a mark apart from the wording "ALABAMA VS AUBURN" and the date
"NOVEMBER 18, 2000" because the omission of these elements does
not disturb the integrity of any aspect of the overall design.
The date is mere informational matter, the phrase "ALABAMA VS
AUBURN" is not particularly prominent or even visible, and
neither of these elements is physically intertwined with any
other elements of the composite mark.
Ser No. 76143855
8
However, we find that the portion of the background design
that is left after the animal head designs have been extracted
does not create a distinct commercial impression apart from the
deleted elements and does not function without those elements on
its own as a separate mark. All of the background design
elements in the mark combine to form a single, unified commercial
impression. The deleted elements are not only visually
prominent, but they are physically integrated into the football
and contribute to the symmetry and balance of the overall design.
The unitary nature of the overall background design is even more
apparent in the Class 25 specimen where the concentric oval and
triangle design gives the football a rounder, more expansive
appearance thereby more fully integrating the two animal head
designs. Applicants are correct that the mere fact that two or
more elements form a composite mark or are in close proximity
does not necessarily mean that those elements cannot be
registered separately. However, these two design elements are
not only proximate to the other background elements, they are
visually embedded in those elements. In fact, the extraction of
the two animal head designs leaves physical holes in the
football, thereby destroying the visual integrity of the
background design as a composite whole.
Applicants contend that the specimens show that the
designation creates a separate and distinct commercial impression
Ser No. 76143855
9
"not simply in terms of the visual impression" but also "in light
of its likely interpretation and meaning to the relevant
consuming public." Brief, p. 3. Applicants reason that the
"Iron Bowl" is widely known as an annual football game between
the University of Alabama and Auburn University (as shown by the
materials made of record) and that consumers that "are likely to
encounter merchandise bearing Applicants' mark will readily
perceive the Elephant Head Design as an Alabama mark and the
Tiger Eyes as an Auburn mark." Brief, p. 3. Pointing to third-
party registrations for a Budweiser label design and a Coca Cola
bottle design, applicants further argue that their proposed mark
is "at least as distinctive" as those registered designs, noting
that it too has interior space for the placement of additional
marks. Brief, p. 8. Applicants contend that the blank spaces in
the registered design marks, as in applicants' design, "are a
visual cue to the viewer leading him or her to expect that other
marks will appear in that interior space" thereby indicating to
consumers "that the logos are separable from the applied-for
mark" and thereby "reinforcing their commercial impression as
distinct from the Iron Bowl Design." Brief, p. 13.
There are a number of problems with applicants' arguments.
To begin with, there is no support for applicants' contention
that consumers would expect that a word or other design element
would appear in the Budweiser label design or the Coca Cola
Ser No. 76143855
10
bottle design, or in applicants' own mark for that matter.
Moreover, whether consumers would or would not expect other marks
to appear in the spaces of either registrants' or applicants'
mark is beside the point.5 The only relevant point is that the
label and bottle designs, in and of themselves, function as
marks, with or without wording, to identify and distinguish the
source of the registrants' respective products. What applicants
seek to register does not perform this function.
In addition, in deciding whether the mark sought to be
registered creates a separate and distinct commercial impression,
the question is not whether "Iron Bowl" or the animal head
designs are well known marks in and of themselves, or whether
those designations are used separately, or whether they create a
separate commercial impression apart from the rest of the
background design. Applicants are not seeking to register any of
these designations apart from the rest of the mark. The mark for
which registration is sought is not deemed to create a separate
and distinct commercial impression merely because the deleted
elements are separately recognized as marks owned by applicants.
5 In any event, it is more likely that a continued expectation that the
animal head designs would appear in the mark would support a finding
that the designation sought to be registered does not function on its
own, that is, apart from those other designs, as a separate mark.
Ser No. 76143855
11
Further, it is not relevant whether "Iron Bowl" or the
elephant head and tiger eyes design would be recognized by
consumers in any and all possible manners of use or display.
The relevant consideration is whether this particular form of the
mark for which applicants seek registration, as used in the
particular manner displayed on applicants' specimens, would be
perceived as a mark separate and apart from those other
designations. See, e.g., In re Franklin Press, Inc., 199 USPQ
819, 823 (TTAB 1978) ("a salient consideration in determining
registrability is ... whether the mark in question would be
recognizable by the purchasers of the goods or services as the
mark that they have encountered in the marketplace." Emphasis
added.).
In addition to the registrations for the Budweiser label and
Coca Cola bottle design, applicants point to In re Esso Standard
Oil Co., 305 F.2d 495, 134 USPQ 402 (CCPA 1962), In re
Schenectady Varnish Co., Inc., 280 F.2d 495, 126 USPQ 395 (CCPA
1960), In re Swift & Company, 233 F.2d 950, 106 USPQ 286 (CCPA
1955), and numerous other cases in support of their position that
the mark herein is registrable.6 However, the label and bottle
design as well as all of the cases cited by applicants involve
the registration of the entirety of a background design apart
6 Applicant's citations to nonprecedential decisions of the Board have
not been considered.
Ser No. 76143855
12
from a composite word and design mark. Merely because words and
design portions can be registered separately even when used as
parts of a composite mark does not necessarily mean that a
particular portion of a composite design can itself be broken out
and registered separately as applicants are trying to do here.
We find that this case is very similar to In re Chemical
Dynamics, supra. That case involved an application to register
the portion of the background design shown below consisting of
the dropper and droplet design but not the can:7

The Court affirmed the Board's finding that the eye-dropper,
handle of the watering can and water droplet were "interrelated
elements of a single unified design" and consequently that the
dropper/droplet component of the mark did not perform a trademark
function in and of itself, that is, apart from the remaining
background elements.
Similarly, in the present case, the elephant head and tiger
eyes designs are integral elements of a visually unified design.
7 The Court specifically noted that the word portion of the mark had
already been separately registered.
Ser No. 76143855
13
Applicants' deletion of these elements and replacement with two
black geometric shapes destroys the visual impact of the mark as
a whole and the continuity of the overall design.
This case also similar in concept to In re Volante
International Holdings, 196 USPQ 188 (TTAB 1977) wherein the
Board found that the portion of the design applicant was
attempting to register was an "inseparable" part of the remaining
complex and elaborate design features of the mark.
In addition, we note In re Boyd Coffee Co., 25 USPQ2d 2053
(TTAB 1993), where the Board refused to allow registration of
coffee cup and saucer design apart from the accompanying sunburst
design finding that both designs were integral features of a
unitary mark.
Inasmuch as we find that the mark sought to be registered is
a mutilation of the mark as used, the refusal to register on this
basis is affirmed.
We turn then to the question of whether, in view of the
addition of the concentric oval and triangle design to the mark
in the drawing, such mark is a substantially exact representation
of the mark as shown in the specimen for the Class 41 services.
Applicants argue in this regard that these elements "do not
materially alter the design" because "their addition or
subtraction does not change the overall commercial impression" of
the mark. Brief, p. 13.
Ser No. 76143855
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The determination of whether the drawing is a "substantially
exact" representation of the mark is a stricter standard than the
material alteration test, a more flexible standard that is used
to evaluate proposed amendments of the mark. See, e.g., In re
Hacot-Colombier, 105 F.3d 616, 41 USPQ2d 1523 (Fed. Cir. 1997)
and United Rum Merchants Ltd. v. Distillers Corp. (S.A.), 9
USPQ2d 1481 (TTAB 1988). See also In re Larios S.A., 35 USPQ2d
1214 (TTAB 1995). While an applicant may be permitted to amend
the drawing to conform to the mark shown in the specimens on the
basis that the overall commercial impression is the same, the
term "substantially" allows only nonmaterial variations from an
"exact" representation of the mark. See, e.g., In re Hacot-
Colombier, supra.
The mark in the drawing is clearly not an immaterial
variation of the mark as used. The concentric oval and triangle
composite is an entirely new and different design feature that
stands out from the football and the other elements in the mark
and creates an obvious visual disparity between the mark in the
drawing and the mark as shown in the Class 41 specimens.
Even applying the more flexible material alteration test, we
would find that this design element is significant enough to
indeed change the overall commercial impression of the mark,
thereby requiring a further search and republication to afford
fairness to potential opposers.
Ser No. 76143855
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In view of the foregoing, we find that the mark shown in the
drawing is not a substantially exact representation of the mark
shown on the specimen for either the Class 25 goods or the Class
41 services; and further that the examining attorney's
requirement for substitute specimens showing use of the mark
shown in the drawing was proper.
Decision: The refusals to register are affirmed.