Trim-A-Lawn Corp.

Trademark Trial and Appeal Board

Dec 16, 1998

No. 75101885 (T.T.A.B. Dec. 16, 1998)

Hearing: Paper No. 14
March 31, 1998 SIMMS/md
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB DEC. 16, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Trim-A-Lawn Corporation
________
Serial No. 75/101,885
_______
Glen L. Gross of Shlesinger, Arkwright & Garvey for Trim-A-
Lawn Corporation.
Richard A. Straser, Trademark Examining Attorney, Law
Office 104 (Sidney Moskowitz, Managing Attorney)
_______
Before Simms, Hanak and Wendel, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Trim-A-Lawn Corporation has appealed from the final
refusal of the Trademark Examining Attorney to register the
mark shown below (in reduced form)
Ser No. 75/101,885
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for power lawn trimmers.1
The Examining Attorney has refused registration of the
mark under Sections 1, 2 and 45 of the Trademark Act, 15
USC §§1051, 1052 and 1127, on the ground that applicant’s
asserted mark does not function as a trademark for its
goods. The Examining Attorney has also made final
requirements for disclaimers of the design of the hand-
carried lawn trimmer and the international prohibition
symbol (the circle and slash mark). Applicant has
appealed, and applicant’s attorney and the Examining
Attorney have submitted briefs. No oral hearing was
requested.
With respect to the refusal that applicant’s mark does
not function as a mark, it is the Examining Attorney’s
position that the asserted mark, displayed by means of a
hang tag on applicant’s wheeled powered trimmers (shown
below), is merely informational and devoid of any origin-
indicating significance.

1 Application Serial No. 75/101,885, filed May 9, 1996, based
upon use in commerce since on or before March 28, 1996. In the
Ser No. 75/101,885
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In this regard, the Examining Attorney initially contended
that the asserted mark will be seen by potential purchasers
as a warning that they should not carry a lawn trimmer,
ostensibly because it may cause back problems. The
Examining Attorney later suggests that the asserted mark
may be seen as a warning that carrying a power trimmer may
be dangerous.
In support of his refusal and the requirement for
disclaimers, the Examining Attorney has made of record an
undated copy of a portion of what appears to be an
examination guideline which, among other things, discusses

amended application, it is indicated that the mark is lined for
the color red but that no claim is made to color.
Ser No. 75/101,885
4
the registrability of marks containing the so-called
international prohibition symbol.2 That guideline provides
in part:
The International Prohibition Symbol…
often presents a desriptiveness issue,
whether it be 2(e)(1) or simply a
disclaimer requirement. The
problematic areas here are determining
whether the use is literal
(descriptive) or cute or facetious
(non-descriptive) and the degree to
which the universal prohibition symbol
is incorporated into the rest of the
mark…
A. EXAMINER’S REVIEW OF THE
PROHIBITION SYMBOL
1. Does the symbol clearly act as
the design equivalent of the
commands “NO!” or “NONE!” or
“DO NOT!”? Or, is the use
facetious?
2. Is the design such an integral
part of the mark that it
should be considered unitary?
B. ACTION TO BE TAKEN
1. If the symbol clearly
indicates “NO!” or “NONE!” or
“DO NOT!” and the symbol is
not an integral part of the
mark disclaim the symbol or
refuse under section 2(e)(1)

2 The Examining Attorney has not cited, nor could we find,
similar material in the Trademark Manual of Examining Procedure.
We do not know if this guideline still governs examination
practice nor whether it has been superceded by the TMEP. Suffice
it to say that we have considered this material as outlining
Office policy and practice for Examining Attorneys at some
undetermined point of time. It is not binding on the Board.
Ser No. 75/101,885
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if the whole mark is
descriptive
2. If the symbol is an integral
part of a mark which is
distinctive overall, no
refusal and no disclaimer –
even if the symbol indicates
“NO!” or “NONE!” or “DO NOT!”
With respect to the refusal that the asserted mark
does not function as a mark, it is applicant’s position
that, when the asserted mark is displayed on a walk-behind
lawn trimmer, the mark would suggest to purchasers that
applicant’s product is a substitute for the hand-carried
lawn trimmer shown in the mark. Applicant’s attorney
maintains that the asserted mark is not conveying
information about back problems.
Concerning the refusal that the asserted mark does not
function as a mark to identify and distinguish applicant’s
goods, it is clear to us that if the asserted mark were the
image of, say, an international prohibition symbol over a
lighted cigarette, the asserted mark would only inform
potential purchasers or operators that smoking was not
permitted around the machine. Such use of the symbol
would, of course, not function as a mark. However, we
agree with applicant that its use of the international
prohibition symbol is not of this nature. Rather, as used
in connection with applicant’s walk-behind trimmers, it
Ser No. 75/101,885
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expresses the point of view that one should not purchase or
use a hand-carried lawn trimmer but rather should purchase
and use applicant’s wheeled lawn trimmer. Such use is not
cautionary or one of a warning. Rather, it is a somewhat
fanciful or humorous way of informing purchasers that they
should not purchase a hand-carried lawn trimmer. An
analogous use might be that of a manufacturer of casual
slacks using the prohibition symbol over the image of a man
wearing shorts as an indication that the potential
purchaser should purchase the slacks rather than a pair of
shorts. Or, more germane to this case, a manufacturer of
wheeled luggage might use the prohibition symbol over the
image of a person carrying a piece of luggage, suggesting
that one should buy the wheeled version over the hand-
carried alternative. Suffice it to say that we believe
that applicant’s asserted mark does indeed function as a
mark to identify and distinguish its goods from those of
others.
In this regard, we note the published third-party mark
depicted below, one of several that applicant has made of
record. In our view, and although not determinative of the
outcome here, we believe that the present applicant is
using the prohibition symbol in a manner similar to that
previously allowed by this Office.
Ser No. 75/101,885
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With respect to the disclaimer issues, the Examining
Attorney argues that the international prohibition symbol
is an unregistrable component of the mark and informs
consumers not to handle goods in a certain way. Applicant,
on the other hand, argues that the symbol is so merged with
other elements of the mark that it is an integral feature
thereof. Applicant argues that Office policy requires a
disclaimer only if the symbol is used in such a manner that
it is not an integral part of the mark.
Because we believe that applicant’s use of this symbol
is not in the nature of a warning symbol advising people to
avoid certain behavior but is rather telling purchasers, in
a somewhat novel way, that applicant’s products are
preferable to those depicted in the mark, we do not believe
Ser No. 75/101,885
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that the prohibition symbol is being used in the nature of
an advisory or warning that may warrant a disclaimer.
Accordingly, we believe that, as used by applicant, the use
of the prohibition symbol is only “suggestive” and need not
be disclaimed. (We also note that the third-party mark
depicted above contains no disclaimer of the prohibition
symbol.)
Finally, concerning the required disclaimer of the
hand-carried lawn trimmer, the Examining Attorney argues
that it is deceptively misdescriptive of applicant’s
wheeled trimmers. Applicant, on the other hand, argues
that when consumers see the asserted mark with respect to
applicant’s walk-behind trimmers, it becomes readily
apparent that applicant’s goods are not hand-carried
trimmers and that the image of the hand-carried trimmer is
not deceptively misdescriptive of applicant’s goods.
We agree. First, as used on applicant’s goods, we do
not believe that the image of a man carrying a power
trimmer misdescribes applicant’s walk-behind trimmers. One
seeing the prohibition symbol superimposed over this image
is not likely to believe any misrepresentation allegedly
conveyed by the mark. That is to say, as used on
applicant’s goods, no one is likely to believe that
applicant’s goods are hand-carried trimmers. See, for
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example, In re Automatic Radio Mfg. Co., Inc., 160 USPQ 233
(CCPA 1969)(AUTOMATIC RADIO not deceptively misdescriptive
when used on air conditioners an ignition system or an
antenna); Bass Buster, Inc. v. Gapen Manufacturing Co.,
Inc., 191 USPQ 315 (W.D. Mo. 1976)(BEETLE for fishing lures
which are clearly visible to purchasers is not deceptive);
In re Perfect Fit Industries, Inc., 223 USPQ 92, 93 (TTAB
1984)(COTTAGE CRAFTS not deceptively misdescriptive of
bedspreads, quilts and similar products); and In re
Econoheat, 218 USPQ 381 (TTAB 1983)(SOLAR QUARTZ not
deceptively misdescriptive of electrically, not solar,
operated space heaters). Moreover, we believe that the
lawn trimmer, carried by a man shown in silhouette, is
unitary because it is so merged with that figure that it
cannot be separated therefrom. See TMEP § 1213.06. See
also In re Texsun Tire and Battery Stores, Inc., 229 USPQ
227 (TTAB 1986)(design of the outline of the state of Texas
surrounded by a tire is not primarily geographically
descriptive but is rather a unitary composite mark). Here,
it is clear that applicant is making no misrepresentation
concerning its goods. Therefore, even if it were a
separable element in the mark, we do not believe that a
disclaimer is in order.
Ser No. 75/101,885
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Decision: The refusal to register and the
requirements for disclaimers are reversed.
R. L. Simms
E. W. Hanak
H. R. Wendel
Administrative Trademark
Judges, Trademark Trial and
Appeal Board
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