The Gray Foxes

Trademark Trial and Appeal Board

Sep 30, 2005

No. 76544022 (T.T.A.B. Sep. 30, 2005)

Hearing: August 16, 2005 Mailed: September 30, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re The Gray Foxes
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Serial No. 76544022
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Vincent L. Ramik of Diller, Ramik & Wight for The Gray Foxes.

Odessa Bibbins, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney).
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Before Seeherman, Walters and Holtzman, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Applicant, The Gray Foxes, seeks to register the mark shown
below for "golf towels" in International Class 25 and "clothing,
namely hats and shirts" in International Class 25.1

1 Serial No. 76544022 filed September 11, 2003, based on an allegation
of first use and first use in commerce in both classes on July 10,
1988. Applicant states that the lining and stippling are for shading
purposes only.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 76544022
2

The trademark examining attorney has refused registration of
the mark on the ground that the mark shown in the drawing does
not agree with the use of the mark on the specimens.2 In view of
the differences between the mark sought to be registered and the
mark shown in the specimens, the examining attorney required that
applicant submit substitute specimens properly showing the mark
as used.3 In addition, the examining attorney stated that
applicant may not submit an amended drawing to conform to the
display of the mark on the specimens because the character of the
mark would be materially altered.
When the refusal was made final, applicant appealed. Briefs
have been filed, and an oral hearing was held.

2 In the initial Office action the examining attorney required only
that applicant clarify the lining and stippling in the mark.
Registration was refused in the second action upon the examining
attorney's further consideration of the application.

3 The examining attorney states in her brief that applicant was also
offered the option of amending the filing basis of the application to
Section 1(b). However, we do not see where this option appears in any
Office action nor has applicant sought to make such an amendment.

Ser No. 76544022
3
The issue before us, as the examining attorney acknowledges
in her brief, 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. See
Trademark Rule 2.51(a).4
The mark as it appears on applicant's specimens for Class 25
is reproduced below. The mark is used in the same manner on the
specimens for Class 18.5 As described by applicant, the mark on
the specimens consists of "a fanciful fox standing upon a 'golf
green' from which rises a golf 'flag stick' carrying a flag
bearing thereon '19.'" Also appearing on the specimens is the
stylized wording "LAKE MONTICELLO" which is curved along the
lower edge of the "golf green." Applicant is seeking to register
the entirety of the composite except for the wording "LAKE
MONTICELLO."

4 Applicant specifically states that it is not seeking to amend the
mark to include this other element in the drawing. Thus, there is no
issue as to whether there is a material alteration of the mark, and the
examining attorney's arguments in this regard have not been considered.

5 In her final action, the examining attorney also based the refusal on
the omission from the drawing of the name "Lou Monte" which, along with
"Lake Monticello," appears in the mark on the specimen for Class 18.
The examining attorney withdrew this basis for the refusal in her
brief. Thus, we do not consider "Lou Monte" as forming part of the
composite mark as it appears on the specimens for Class 18.
Ser No. 76544022
4

The examining attorney contends that the wording "LAKE
MONTICELLO" along with the wording and design shown on the
specimens form a composite word and design mark, all of which,
according to the examining attorney, contribute to a unified
commercial impression "that is distinctly different than the mark
on the drawing." As the basis for this contention, the examining
attorney argues that the wording appears "in extremely close
proximity beneath [the design]" and concludes that the "spatial
proximity in this case is very significant in the commercial
connotation of the mark."
It is applicant's contention that the mark as shown on the
drawing creates a separate and distinct commercial impression
apart from the wording "LAKE MONTICELLO," "irrespective of
'proximity.'" Applicant argues that the deletion of this element
is not a mutilation because, according to applicant, that term is
neither an integral nor essential part of the mark. In
particular, applicant argues that "LAKE MONTICELLO" is "totally
Ser No. 76544022
5
separate from, spaced above [sic]" the other elements in the mark
and moreover is informational and therefore not essential to the
commercial impression of the mark. In this regard, applicant
states that Lake Monticello is a city, a community and an
association in Charlottesville, Virginia, and that its golf
association is part of the Lake Monticello community.
Applicant has submitted pages from the website of the Lake
Monticello Owners' Association which describe the Lake Monticello
organization and applicant's golf association.
Trademark Rule 2.51(a) provides that "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." The
issue in this case concerns the deletion of an element, the
stylized wording "LAKE MONTICELLO," that appears in the
specimens. The question is whether the mark sought to be
registered is a "mutilation" or an incomplete representation of
the mark that is actually used. See, e.g., In re Miller Sports
Inc., 51 USPQ2d 1059 (TTAB 1999).
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.
Ser No. 76544022
6
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 judgment as to whether that designation for
which registration is sought comprises a separate and distinct
'trademark' in and of itself."
We agree with applicant that THE GRAY FOXES and design
composite shown in the drawing creates a separate commercial
impression apart from the wording "LAKE MONTICELLO." Contrary to
the examining attorney's apparent contention, the mere fact that
two or more elements of a composite mark are in close proximity
to each other does not necessarily mean that those elements
cannot be registered separately. Proximity is a consideration
but it is not the only consideration. It is the overall
commercial impression of the mark that is controlling. Here, the
term "LAKE MONTICELLO" is proximate to the remaining portion of
the composite, but it is nonetheless physically separated from
the design. In addition to its physical separation, the term
appears in smaller size and slightly different stylization than
Ser No. 76544022
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the other wording in the mark, "THE GRAY FOXES," and it is also
less prominent than that wording. We view "LAKE MONTICELLO" as a
visually insignificant part of the composite mark such that its
removal does not disturb any aspect of the mark's visual
continuity.
We also view "LAKE MONTICELLO" as a conceptually
insignificant part of the mark. It is a nondistinctive
geographic term with no inherent trademark significance. See,
for example, The Institut National des Appellations D'Origine,
supra at 1197 (holding that CHABLIS WITH A TWIST is not a
mutilation of CALIFORNIA CHABLIS WITH A TWIST in part because of
the geographic significance of "California."). Moreover, this
geographic term is not connected in meaning to any other portion
of the composite mark. Instead, it performs a purely
informational function and contributes nothing of significance to
the overall commercial impression of the mark.
Accordingly, we find that THE GRAY FOXES and design
composite creates a separate and distinct commercial impression
apart from "LAKE MONTICELLO," and that it therefore may be
registered as a mark.
In view of the foregoing, we find that the mark shown in the
drawing is a substantially exact representation of the mark
shown on the specimens.
Ser No. 76544022
8
Decision: The refusal to register and the requirement for
substitute specimens are reversed.