Thrifty, Inc.

Trademark Trial and Appeal Board

Aug 30, 2000

No. 75193074 (T.T.A.B. Aug. 30, 2000)

Hearing: Paper No. 23
March 8, 2000 ejs
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 8/30/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Thrifty, Inc.
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Serial No. 75/193,074
_______
Samuel D. Littlepage and Marc A. Bergsman of Dickinson
Wright PLLC for Thrifty, Inc.
Teresa Rupp, Senior Trademark Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).
_______
Before Seeherman, Hohein and Holtzman, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Thrifty, Inc., assignee of Thrifty Rent-A-Car System,
Inc., has appealed from the final refusal of the Senior
Trademark Attorney to register, pursuant to Section 2(f) of
the Trademark Act, what it refers to as “the color blue” as
Ser. No. 75/193,074
2
a service mark for automobile, truck and recreational
vehicle renting and leasing.1
In order to understand the refusals, information about
the prosecution of the application is necessary.
Applicant’s initial application papers depicted the mark on
the drawing page as a building. A copy of that mark is
shown below. It should be noted that most of the
structural features are shown in broken lines, and the
upper wall is lined for the color blue.
In the first Office action the Senior Trademark
Attorney, inter alia, required that applicant provide a
description of the mark, and suggested the following: “The
mark consists of the color blue used on buildings. The
matter shown in the drawing in broken lines serves only to
show positioning of the mark and no claim is made to it.”
The Trademark Attorney’s Office action made it clear that
her understanding of applicant’s mark was that it was the
color blue applied to a specific portion of a building.

1 Application Serial No. 75/193,074, filed October 31, 1996, and
asserting first use and first use in commerce as of May 8, 1986.
Ser. No. 75/193,074
3
In response to the first Office action, applicant
first contacted the Senior Trademark Attorney by telephone
and then submitted an amendment in which applicant
explained that it was seeking registration for
…the color blue as it is used by
applicant in connection with the
services identified in the application.
Applicant’s mark is not limited to the
color blue as used on its vehicle
rental centers. The building is a
“carrier” of the mark, as are
Applicant’s blue shuttle buses, blue
uniforms, blue signs, and other
advertising and promotional materials
featuring the color blue.
Applicant offered the following description of its mark:
The mark consists of the color blue
used in connection with the services
set forth in the application. The
color blue is used on vehicle rental
centers, signs, vehicles, uniforms, and
in other advertising and promotional
materials to show that the color blue
identifies and distinguishes
applicant’s services.
In the second Office action, mailed March 9, 1998, the
Senior Trademark Attorney, inter alia, refused to accept
the amended description of the mark because it did not
agree with the mark as shown on the drawing and because it
described more than one mark. The Trademark Attorney
specifically stated that the amendment would expand the
mark for which application had been made, and that such an
amendment would materially alter the mark as shown in the
Ser. No. 75/193,074
4
drawing. She also said that the application of the color
blue in the various ways indicated by applicant resulted in
multiple marks because the commercial impression of the
mark changes with each application.
Applicant thereupon, on August 26, 1998, filed a new
proposed description of the mark:
The mark consists of the solid color
blue (Pantone Matching System 300) used
in connection with the services set
forth in the application. The solid
color blue is used on vehicle rental
centers, signs, vehicles, uniforms, and
in other advertising and promotional
materials to show that the solid blue
identifies and distinguishes
applicant’s services.
On January 19, 1999 the Senior Trademark Attorney
issued a final Office action, refusing registration
pursuant to Sections 1, 2 and 45 because the color blue
does not function as a mark for the identified services,
and the evidence of acquired distinctiveness submitted by
applicant is insufficient to support registration under
Section 2(f);2 and requiring an acceptable description of
the mark, stating that applicant’s proposed description of
its mark is unacceptable because it is so broad that it

2 This ground of refusal was raised in the two earlier Office
actions as well.
Ser. No. 75/193,074
5
includes more than one mark, and that it does not agree
with the mark as it appears on the drawing.
The appeal has been fully briefed, and applicant and
the Senior Trademark Attorney appeared at an oral hearing
before the Board.
We turn first to a consideration of what is the mark
that applicant is seeking to register. As noted above, the
mark shown in the drawing is that of a building depicted in
broken lines, indicating that no claim is being made to the
specific shape of the building, but with the upper wall of
the building lined for the color blue. This is the usual
method to indicate that the claimed mark is the color blue
located on a particular place on a structure. Applicant
asserts that the mark it applied for, in its original
application papers, was not the color blue used on a
building, but the color blue in general. It bases its
position on the reference to “Mark: The Color Blue” at the
top of the first page of its application; the language in
its application that “The above-identified applicant has
adopted and is using the color Blue for its service mark…”;
the claim of ownership of four registrations for word marks
lined for the color blue or having a blue background; and
the further statements that:
Ser. No. 75/193,074
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Applicant seeks registration under 15
U.S.C. § 1052(f) on the basis that the
color Blue has become distinctive of
the services, as evidenced by
Applicant’s substantially exclusive and
continuous use of that color as a mark
in connection with such services.
The mark is used as a service mark by
depicting it in promotional literature
and advertisements, as well as on
signage, canopy facia, vehicles, and
displays closely associated with the
services, and three (3) specimens
showing use of the mark as actually
used are presented herewith.
In point of fact, the application states that “The
above-identified applicant has adopted and is using the
color Blue for its service mark, as shown in the
accompanying drawing…” (emphasis added). And, as noted
above, the drawing referenced by the application shows the
mark as the color blue placed on the top portion of a
vehicle service center, with the building itself depicted
in broken lines. Further, the specimens submitted with the
application show a vehicle service center with the color
blue used in the same manner as that on the drawing, i.e.,
on the upper part of the building.
Although applicant asserts that the mark for which
registration is sought ‘has always been the solid color
blue,” reply brief, p. 9, it also acknowledges that there
is an ambiguity in its application. Reply brief, p. 11,
Ser. No. 75/193,074
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12. However, applicant relies on In re Eccs, Inc., 94 F.3d
1578, 39 USPQ2d 2001 (Fed. Cir. 1996), to support its
position that the ambiguity should be resolved by allowing
applicant to amend the description of its mark. The Eccs
decision essentially held that when an original application
is internally inconsistent as to what the mark is, one
should look to the specimens to determine what an applicant
wishes to register, not to “a clearly inconsistent and
erroneous drawing made by its attorney.” Id. at 39 USPQ2d
2004. We do not believe that there is an internal
inconsistency in the present application: A reasonable
reading of the original application, including a review of
the drawing and the specimens, is that the mark for which
registration is sought is the color blue placed in a
particular part of a building.
However, our decision as to what applicant’s mark is
does not turn on whether or not the application has an
internal inconsistency. As applicant has noted in its
reply brief, subsequent to the Eccs decision the Patent and
Trademark Office issued a notice of final rulemaking by
which certain of the rules applicable to drawings were
amended. The stated purpose for such amendments was “to
prohibit amendments that materially alter the mark on the
original drawing.” 64 Fed. Reg. 48900, 48902 (Sept. 8,
Ser. No. 75/193,074
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1999). In particular, Trademark Rule 2.52(a) was amended
to add the language “A drawing depicts the mark sought to
be registered.” These amendments to the Trademark Rules
became effective on October 30, 1999, and the Notice of
Final Rulemaking expressly states that “these rule changes
… shall apply to any application for registration pending
on, or filed on or after, October 30, 1999.” Because
applicant’s application was indeed pending on that date,
the amended rules apply to applicant’s application and
govern this proceeding. See In re Who? Vision Systems,
Inc., __USPQ2d__, Serial No. 75/399,617 (TTAB Aug. 15,
2000), for an extensive discussion of the amendments to the
rules, and their retroactive effect.
In view of the amendments to the Trademark Rules,
there is no question that the mark for which application
was made is the mark shown in the drawing--the color blue
placed on the wall of a building--and not the color blue in
general.
Before discussing whether the description of the mark
applicant seeks to enter would be a material alteration of
the original mark, we must address a complaint by
applicant. Applicant had previously filed an application
in which it identified its mark as “the color blue” in the
application, and indicated “No Drawing” on the drawing
Ser. No. 75/193,074
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page. This application was not given a filing date because
“no trademark appears on the drawing,” and the application
was returned to applicant as an incomplete application.
Applicant tried to remedy the previous failure to provide a
drawing by submitting the present application. Applicant
asserts that the Office has placed it in a “Catch-22”
situation: file an application for the solid color blue
without a drawing and be denied a filing date or,
alternatively, file an application with a drawing and not
be permitted to accurately identify the mark.
We disagree with applicant’s assertions. To the
extent that applicant has been placed in a “Catch-22”
situation, it has placed itself there. If applicant
believed that the Office erred in refusing to accord its
first application a filing date, its proper remedy was to
petition the Commissioner, rather than file a second
application which did not properly show the mark for which
it actually sought registration.3
This brings us to the question of whether applicant’s
proposed description of its mark, as set forth below, would
be a material alteration of the mark shown in the drawing.4

3 It should be noted that the previous application and the
subject application were not filed by applicant’s present
counsel.
4 Trademark Rule 2.72(a) provides that “amendments may not be
made to the description or drawing of the mark if the character
Ser. No. 75/193,074
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The mark consists of the solid color
blue (Pantone Matching System 300) used
in connection with the services set
forth in the application. The solid
color blue is used on vehicle rental
centers, signs, vehicles, uniforms, and
in other advertising and promotional
materials to show that the solid blue
identifies and distinguishes
applicant’s services
Applicant argues that the mark shown in the drawing is
not materially altered by the proposed description because
the essential nature of the mark is not changed, i.e., it
remains the solid color blue. However, the mark shown in
the drawing is not just the color blue, it is the color
blue applied to a specific part of a building. It is the
placement of the color, and not the color alone, which is
shown in the drawing. Because the proposed description
describes the mark as the color blue applied to a variety
of venues, and not limited to a particular placement on a
building, the mark described in this description would be a
material alteration of the mark shown in the drawing.

of the mark is materially altered. The determination of whether
a proposed amendment materially alters the character of the mark
will be made by comparing the proposed amendment with the
description or drawing of the mark as originally filed.” We
should point out that applicant’s original application did not
include a description of the mark, as that term is used in the
Trademark Rules. See Rule 2.37. Accordingly, as noted above,
the mark in the application is the mark in the drawing, and the
question before us is whether applicant’s proposed description
would materially alter the character of that mark.
Ser. No. 75/193,074
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Much of applicant’s and the Senior Trademark
Attorney’s briefs were devoted to argument about whether
applicant’s asserted color blue trademark should be
considered a single mark, amenable to protection through a
single application for registration, as applicant contends,
or whether it would convey different commercial impressions
depending on the format or venue in which it is used, as
the Senior Trademark Attorney claims. In fact, the real
issue in this case, as far as applicant and the Trademark
Attorney are concerned, is whether applicant may obtain a
registration for the color blue per se, not limited to any
particular physical format or venue. Therefore, we think
it appropriate to address these arguments.
Applicant likens its asserted solid color blue
trademark to a word mark, which retains its essential
character no matter whether it is used on stationery,
brochures, signage, a courtesy bus, etc. However, there
are inherent differences between a word mark and a color
mark, not the least of which is the fact that a word mark
may be inherently distinctive and registrable without a
showing of acquired distinctiveness, while a mark
consisting of a single color, such as applicant’s Pantone
No. 300 blue, can only be registered with such a showing.
See Qualitex Co. v. Jacobson Products Co., 514 US 159, 131
Ser. No. 75/193,074
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L.Ed2d 248, 115 S.Ct. 1300, 34 USPQ2d 1161 (1995); Wal-Mart
Stores v. Samara Bros., No. 99-150, 146 L.Ed.2d 182, 120
S.Ct. 1339, 54 USPQ2d 1065 (2000). Although a word mark
retains its same appearance and commercial impression
whether it is used on signage, stationery, etc., the
commercial impression of a color changes depending on the
object on which it is applied because the color is
inextricably bound to the object. Thus, the commercial
impression of a solid blue necktie is different from that
of a blue envelope, or a blue deck of cards, or a blue
building. Moreover, applicant’s proposed mark would not
even be limited as to the shape of the surface on which it
is used, but could conceivably appear as a thin horizontal
blue line, or a thick vertical blue stripe.
A trademark application may only seek to register a
single mark. In re International Flavors & Fragrances
Inc., 183 F.3d 1361, 51 USPQ2d 1513 (Fed. Cir. 1999). In
International Flavors, the Court of Appeals for the Federal
Circuit found that an application for a mark containing a
“phantom” element (e.g., LIVING xxx FLAVOR) would violate
this one mark per registration requirement. In addition to
noting that one mark per application is a requirement of
the rules, the Court discussed the policy reasons why this
should be the case. Providing notice to potential users of
Ser. No. 75/193,074
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the same or a confusingly similar mark is one of the
reasons for encouraging registration of trademarks.
However, the Court stated that phantom marks with missing
elements, “encompass too many combinations and permutations
to make a thorough and effective search possible. The
registration of such marks does not provide proper notice
to other trademark users, thus failing to help bring order
to the marketplace and defeating one of the vital purposes
of federal trademark registration.” Id. at 51 USPQ2d 1517-
18.
Although applicant does not seek to register a so-
called phantom mark, its desire to register the color blue
per se, not limited to any specific physical form, creates
the same problems noted by the Federal Circuit in
connection with phantom marks. That is, the virtually
unlimited number of uses of the color blue--from uniforms
to key chains to cars to pens to decks of cards--would make
a thorough and effective search difficult, if not
impossible.
Moreover, unlike the International Flavors, case, the
mark applicant wants to register is the color blue. As
noted above, color marks differ from word marks in that a
mark consisting of the color of an item can never be
inherently distinctive. However, a determination of
Ser. No. 75/193,074
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whether acquired distinctiveness has been demonstrated
must, in the case of service mark use, depend on the item
on which the color is used. Evidence which may be
sufficient to show that the color blue placed on a portion
of a vehicle service center is recognized by consumers as a
mark for car rental services may not be sufficient to prove
that the same color blue, used on rental cars, functions as
a mark for car rental services, particularly given the
number of blue cars that are sold and rented by various
entities. However, according to applicant’s reasoning,
i.e., that it is entitled to register the color blue, used
in all manners, in connection with vehicle rental services,
we would have to accept a Section 2(f) showing as to
certain uses as supporting a registration which would
encompass the use of blue on cars. Of course, the opposite
result could occur as well, namely, that if applicant could
not prove acquired distinctiveness of the color blue for
rental cars, its claim of acquired distinctiveness would
fail for the color blue in general.
Having found that applicant’s mark is the mark shown
on the drawing, and that applicant’s proposed description
of its mark would be a material alteration of the mark for
which registration was sought, we affirm the refusal based
on the requirement for an acceptable description. As for
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the remaining ground for refusal, it is clear from the
Senior Trademark Attorney’s final Office action, as well as
her brief, that the refusal under Sections 1, 2 and 45,
referred to the color blue per se failing to function as a
mark, and not to the color blue as used on the side of a
building, which is the use shown in the drawing. In fact,
in the January 19, 1999 Office action the Senior Trademark
Attorney specifically states that “The examining attorney
agrees that the evidence shows that the mark which appears
on the drawing, i.e. the color blue on the building, had
acquired distinctiveness.” Accordingly, we deem this
refusal, as it applies to the applied-for mark (the mark
shown in the drawing) to have been withdrawn.
Although the requirement for an acceptable description
of the mark is the only requirement/refusal which we
affirm, we note that applicant is not in fact hurt by what
is seemingly a technical requirement. As shown by the
submission with its request for reconsideration, applicant
already has an application for the same mark shown in the
drawing of the subject application, and it includes the
same services identified in the present application. That
application was published for opposition on April 13, 1999.
Decision: The refusal based on the requirement for an
acceptable description of the mark is affirmed.
Ser. No. 75/193,074
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E. J. Seeherman
G. D. Hohein
T. E. Holtzman
Administrative Trademark Judges
Trademark Trial and Appeal Board