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  • An applicant may apply to register any element of a composite mark if that element, as shown in the record, 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.
    • In re Royal BodyCare, Inc., Serial No. 78976265, (TTAB 2007).
      • TMEP § 807.14(b) informs examining attorneys that: "[I]n an application under § 1 of the Trademark Act, the applicant has some latitude in selecting the mark it wants to register. The mere fact that two or more elements form a composite mark does not necessarily mean that those elements are inseparable for registration purposes. An applicant may apply to register any element of a composite mark used or intended to be used if that element presents, or will present, a separate and distinct commercial impression apart from any other matter with which the mark is or will be used on the specimen."
    • In re 1175856 Ontario Ltd., Serial No. 78442207, (TTAB 2006).
      • 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. Inc., 958 F.2d 1574, 22 USPQ2d 1190, 1197 (Fed. Cir. 1992); and Chemical Dynamics Inc., 939 F.2d 1569, 5 USPQ2d 1828 (Fed. Cir. 1988).
    • In re Miller Sports, Inc., Serial No. 75/143,020, (TTAB 1999).
      • It is well settled that an applicant may apply to register any element of a composite mark if that element, as shown in the record, 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, e.g., In re Chemical Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828 (Fed. Cir. 1988); and Institut National des Appellations D'Origine v. Vintners Int'l Co., Inc., supra at 1197 (Fed. Cir. 1992), citing In re Servel, Inc., 181 F.2d 192, 85 USPQ 257 (CCPA 1950); In re Berg Electronics, Inc., 163 USPQ 487 (TTAB 1969); In re Tekelec-Airtronic, 188 USPQ 694 (TTAB 1975); In re Lear Siegler, Inc., 190 USPQ 317 (TTAB 1976); and In re San Diego National League Baseball Club, Inc., 224 USPQ 1067 (TTAB 1983). See also, Trademark Manual of Examining Procedure, sections 807.14(a) and 807.14(b) and cases cited therein.
  • The courts in a proper case may recognize the right to registration of one part of an owner's mark consisting of two parts.
    • In re Royal BodyCare, Inc., Serial No. 78976265, (TTAB 2007).
      • "The courts in a proper case may recognize the right to registration of one part of an owner's mark consisting of two parts." In re Servel, Inc., 181 F.2d 192, 85 USPQ 257, 260 (CCPA 1950)(SERVEL functions as a mark apart from the term INKLINGS).
  • Even terms that are connected may still create separate commercial impressions.
    • In re Royal BodyCare, Inc., Serial No. 78976265, (TTAB 2007).
      • We note that the marks in the present case are not joined in any physical way although the specimen does show that they are relatively close to each other. Even terms that are connected may still create separate commercial impressions. In re Raychem Corp., 12 USPQ2d 1399, 1400 (TTAB 1989) (Board held that the "fact that hyphens connect both the part number and the generic term to the mark does not, under the circumstances presented by this case, create a unitary expression such that ‘TINEL-LOCK' has no significance by itself as a trademark"); In re Berg Electronics, Inc., 163 USPQ 487 (TTAB 1969) (GRIPLET creates a separate commercial impression despite overlapping with house mark BERG); In re Dempster Brothers, Inc., 132 USPQ 300 (TTAB 1961) (Despite specimens showing the terms DEMPSTER DUMPMASTER sharing the same first and last letters, DUMPMASTER separately registrable).
  • While proximity is a consideration, it is the overall commercial impression of the mark that is controlling.
    • In re Royal BodyCare, Inc., Serial No. 78976265, (TTAB 2007).
      • "While proximity is a consideration, it is the overall commercial impression of the mark that is controlling." 1175856 Ontario, 81 USPQ2d at 1448.
  • A composite word and design mark, even if it contains a generic name, is registerable if the wording is in very distinctive lettering or accompanied by a distinctive design.
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • Finally, we turn to the question of whether applicant is entitled to registration because its asserted mark is a distinctive display of unregistrable and disclaimed matter. In this regard, it is possible to register a composite word and design mark even if the literal portion consists of a generic name, if the wording is displayed in very distinctive lettering or is accompanied by a distinctive design. J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §12:40 (Fourth Edition Dec. 2001 Release).
  • Case Finding: A word and design mark may create a separate and distinct commercial impression even though the two overlap.
    • In re Royal BodyCare, Inc., Serial No. 78976265, (TTAB 2007).
      • Indeed, in a recent case the board held that the term PSYCHO in the mark shown below created a separate and distinct commercial impression from the words BUBBALOU'S BODACIOUS BAR-B-Q and design even though the word overlapped the design. In re Big Pig, Inc., 81 USPQ2d 1436, 1440 (TTAB 2006).
  • Case Finding: The design and the word are merged such that specimens containing both indicate a mutilation of the applied for mark (just the design).
    • In re Miller Sports, Inc., Serial No. 75/143,020, (TTAB 1999).
      • In this case, it is our view that the elements asserted by the Examining Attorney to be the mark, the word "Miller" with the design of a skater as the initial stroke in the letter "M", are so merged together in presentation that the M and skater design cannot be regarded as a separable element creating a separate and distinct commercial impression. The word "Miller" flows from the initial M and skater design, and the M and skater design is an integral part of the word "Miller." We find that the applied-for mark, M and skater design, does not form a commercial impression separate and distinct from the entire word "Miller". Therefore, the applied-for mark, M and skater design, as used on the specimens, does not function as a mark for the identified goods in and of itself. As such, it is a mutilation of the mark as depicted on the specimens.
  • Case Finding: Various case findings concerning composite marks.
    • In re 1175856 Ontario Ltd., Serial No. 78442207, (TTAB 2006).
      • While these cases are helpful to understand the general concepts, each case presents its own unique circumstances and requires a judgment as to that particular designation. For example, while In re Schecter Brothers Modular Corp., 182 USPQ 694 (TTAB 1974) (drawing of RAINAIRE and design substantially exact to RAINAIRE PRODUCTS and design with additional shadowing design) does provide a similar circumstance in that the specimen included an additional design element, In re Berg Electronics, Inc., 163 USPQ 487 (TTAB 1969) (drawing GRIPLET in stylized form is substantially exact to GRIPLET BERG in stylized form) is different inasmuch as that case involved the appearance of a house mark on the specimen.3 In this case, we agree with applicant that the lettering and globe design shown in the drawing create a separate commercial impression apart from the curve design. The fact that the curve design is in close proximity to the globe design and lettering does not dictate that the globe and lettering cannot be registered as a separate mark. While proximity is a consideration, it is the overall commercial impression of the mark that is controlling. Here, the lettering WSI and the globe design, serving as part of the letter I, join to convey to the consumer the brand name of applicant's services and act together as an indication of source separate from the curve design.
    • In re 1175856 Ontario Ltd., Serial No. 78442207, (TTAB 2006).
      • Accordingly, we find that the applied-for mark creates a separate and distinct commercial impression apart from the curve design, and that it therefore may be registered as a mark.
In re Royal BodyCare, Inc., Serial No. 78976265, (TTAB 2007) In re 1175856 Ontario Ltd., Serial No. 78442207, (TTAB 2006) In re Miller Sports, Inc., Serial No. 75/143,020, (TTAB 1999) Grand Total
In re Big Pig Inc., 81 USPQ2d 1436 (TTAB 2006) 1
Institut National Des Appellations D'Origine v. Vintners Int'l Co., 958 F.2d 1574, 22 USPQ2d 1190 (Fed. Cir. 1992) 1 2
In re Raychem Corp., 12 USPQ2d 1399 (TTAB 1989) 1
In re Chemical Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828 (Fed. Cir. 1988) 1 2
In re San Diego National League Baseball Club Inc., 224 USPQ 1067 (TTAB 1983) 1
In re Lear Siegler Inc., 190 USPQ 317 (TTAB 1976) 1
In re Tekelec-Airtronic, 188 USPQ 694 (TTAB 1975) 1
In re Schecter Brothers Modular Corp., 182 USPQ 694 (TTAB 1974) 1
In re Berg Electronics Inc., 163 USPQ 487 (TTAB 1969) 1 2
In re Dempster Brothers Inc., 132 USPQ 300 (TTAB 1961) 1
In re Servel Inc., 181 F.2d 192, 85 USPQ 257 (CCPA 1950) 2
Grand Total 4 4 7 15
No Statutes Listed.