Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.

gov
ESTTA Tracking number: ESTTA587728
Filing date: 02/18/2014
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 85675437
Applicant Enterprise Holdings, Inc.
Applied for Mark ENTERPRISE
Correspondence
Address
THOMAS A POLCYN
THOMPSON COBURN LLP
505 N 7TH ST , SUITE 3500
SAINT LOUIS, MO 63101-1693
UNITED STATES
ipdocket@thompsoncoburn.com, hal-shathir@thompsoncoburn.com
Submission Appeal Brief
Attachments Appeal Brief.pdf(772014 bytes )
Filer's Name Thomas A. Polcyn
Filer's e-mail tpolcyn@thompsoncoburn.com, hal-shathir@thompsoncoburn.com,
ipdocket@thompsoncoburn.com, mnoelke@thompsoncoburn.com
Signature /s/ Thomas A. Polcyn
Date 02/18/2014
5895472
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
In re application of: :
Enterprise Holdings, Inc. :
:
Serial No.: 85/675,437 : Examining Attorney: Brian J. Pino
:
Filed: July 12, 2012 : Law Office: 114
:
Mark: ENTERPRISE & Shield Design :
APPLICANTS APPEAL BRIEF
Applicant Enterprise Holdings, Inc. (EHI) has applied to register a single mark, shown
below, and the mark as shown below is consistent with and creates the same commercial
impression as the mark shown in the specimens of use.
Accordingly, EHI respectfully requests reversal of the Trademark Offices refusal to register the
mark on grounds that the application seeks registration of more than one mark, and that the
specimens of use disagree with the mark on the drawing.
I. Facts
On July 12, 2012, EHI filed a Section 1(a) application to register the above-shown
ENTERPRISE & Shield Design mark. The mark is described as follows:
The mark consists of a green square to the left of a black rectangle. The letter "e" is white
and positioned within the green square. The letters "nterprise" are white and positioned
within the black rectangle. The foregoing elements are positioned over a barrel-shaped
shield design that is white outlined in black.
5895472
2
The mark is specifically defined, and the description does not include any changeable or
phantom wording.
The services covered by the application are: (1) vehicle dealership services, namely,
dealerships in the field of automobiles, trucks, cars and other land vehicles; vehicle fleet
management services, namely, tracking and monitoring vehicles for commercial purposes, and
business consultation services relating to the management of a fleet of vehicles for commercial
purposes in International Class 035; (2) vehicle fleet management services, namely, facilitating
and arranging for financing, and insurance agency services in the fields of liability, collision,
and comprehensive insurance, of vehicles for others in International Class 036; and (3) vehicle
rental and leasing services, and reservation services for the rental and leasing of vehicles in
International Class 039. The specimens of use are as follows:
Class 35
5895472
3
Class 36
5895472
4
Class 39
5895472
5
On November 13, 2012, the Trademark Office refused registration of the mark on
grounds that EHI is seeking to register more than one mark in violation of Sections 1 and 45 of
the Lanham Act, 15 U.S.C. 1051, 1127, because the specimens show varying wording below
the ENTERPRISE element. The Trademark Office also refused registration on grounds that the
mark on the drawing is a mutilation of the mark as shown on the specimens. EHI responded to
the refusal by pointing out that it is only seeking registration of a single, clearly-defined mark, as
evidenced by the description of the mark, and that the mark creates a separate and distinct
commercial impression apart from the generic or descriptive wording CAR SALES,
COMMERCIAL TRUCKS and FLEET MANAGEMENT. The Trademark Office issued a final
refusal on June 3, 2013, and this appeal followed.
II. Argument
EHI seeks to register a single, clearly-defined mark, and the applied-for mark creates a
separate and distinct commercial impression apart from the generic or descriptive wording CAR
SALES, COMMERCIAL TRUCKS and FLEET MANAGEMENT.
A. EHI Has Applied To Register A Single Mark.
EHIs description of the mark is as follows:
The mark consists of a green square to the left of a black rectangle. The letter "e" is white
and positioned within the green square. The letters "nterprise" are white and positioned
within the black rectangle. The foregoing elements are positioned over a barrel-shaped
shield design that is white outlined in black.
The mark is clearly defined, with specific parameters, and the description does not
contain phantom or changeable wording. EHI is simply seeking to register an element that
creates a separate and distinct commercial impression apart from the additional descriptive or
generic wording shown on the specimens, as allowed by relevant law.
5895472
6
The applied-for mark is distinguishable from previous marks that have been found to
contain a phantom element by the Federal Circuit and the TTAB.
In In re Intl Flavors & Fragrances Inc., 51 USPQ2d 1513 (Fed. Cir. 1999), the applicant
applied to register LIVING XXXX FLAVORS, LIVING XXXX FLAVOR and LIVING
XXXX for various goods. Id. at 1514. In the first two applications, the XXXX was meant to
denote a specific herb, fruit, plant or vegetable. Id. In the third application, the XXXX
indicated a botanical or extract thereof . . . . Id. The TTAB held, and the Federal Circuit
affirmed, that the application sought to register more than one mark because applicants
description of the mark included any herb, fruit, plant, vegetable, botanical or extract thereof. Id.
at 1515, 1516. The mark, therefore, was not clearly defined and did not have limiting
parameters.
In Cineplex Odeon Corp. v. Fred Wehrenberg Circuit of Theatres, Inc., 56 USPQ2d 1538
(TTAB 2000), the petitioner sought cancellation of the registered mark - - - - SHOW, which
included the following description of the mark:
The mark consists of three broken lines followed by a hyphen and then followed by the
word Show. The broken lines indicate a telephone prefix that will vary. The Applicant
claims no right to the telephone prefixes represented by the broken lines.
Id.
The TTAB held that the registration included more than one mark and was thus invalid,
because the broken lines represented place holders for telephone prefixes that varied, as
confirmed by the description of the mark. Id. at 1541.
In In re Upper Deck Co., 59 USPQ2d 1688 (TTAB 2001), the applicant applied to
register the mark shown below for trading cards:
5895472
7
Id. at 1689.
The mark was described as follows:
The mark consists of a hologram device applied to the goods, trading cards. The mark is
discrete from and does not constitute a part of subject matter of the trading card. Neither
the size nor the shape of the hologram device, nor any content which may be represented
within the hologram device, nor the positioning of the hologram device on the trading
card are claimed as features of the mark.
Id.
The TTAB held that the application included more than one mark because the hologram,
without further definition, could include a myriad of shapes, sizes and contents. Id. at 1690-91.
In In re Primo Water Corp., 87 USPQ2d 1376 (TTAB 2008), the applicant applied to
register the mark shown below for bottled drinking water:
5895472
8
Id. at 1377. The application contained the following mark description:
The mark consists of the placement and orientation of identical spaced indicia on a water
bottle having a handle, namely the placement of indicia on one side of the handle and the
placement of identical indicia on the other side of the handle in inverted orientation. The
indicia can be text, graphics or a combination of both. The dotted outline of the bottle and
the indicia is not a part of the mark but is merely intended to show the placement of the
mark. The dotted outline of Applicant's logo does not constitute a portion of the
trademark of this application but instead merely illustrates indicia.
Id. The TTAB held that the applicant sought to register more than one mark because the
description of the markidentical, spaced indicia which can be text, graphics or a combination
of bothcovered any and all graphical and textual indicia. Id. at 1378-80.
Unlike these cases, EHIs description of the mark does not include a changeable
element in the mark. The boundaries of the mark are clearly defined, and nothing in the mark
varies. EHI simply seeks to register a design mark containing a stylized ENTERPRISE element
inside of a distinctive shield design. This clearly-defined mark creates a separate and distinct
commercial impression apart from the other wording shown on the specimens, and it is therefore
registrable.
The Federal Circuits primary concern in finding that marks containing phantom
elements are not registrable is that registration of such marks would not provide proper notice to
trademark users to allow for a thorough and effective search. See In re Intl Flavors &
Fragrances Inc., 51 USPQ2d at 1517. No such concern is present here, as the mark is clearly
defined, unlike the marks in previous cases that have been found to include phantom elements.
Moreover, the dominant and distinctive element in the mark, the ENTERPRISE element, is
already in use and federally registered. See e.g., U.S. Registration No. 3490649 (the ownership
of which has been claimed in the subject application). The practical reality, therefore, is that no
responsible trademark user would adopt a similar mark for similar services upon performance of
5895472
9
a trademark search. Lastly, affirmance of the refusal would preclude EHI from registration of a
separate and distinct source-identifying element, which would be contrary to relevant precedent.
Accordingly, for these reasons, the Trademark Offices refusal to register on grounds that
the application includes more than one mark should be reversed.
B. The Mark On The Drawing Creates A Separate And Distinct Commercial
Impression And Thus Is Not A Mutilation Of The Mark.
The ENTERPRISE and Shield Design mark creates a separate and distinct commercial
impression apart from the wording CAR SALES, COMMERCIAL TRUCKS and FLEET
MANAGEMENT. The wording is generic or descriptive, thus causing consumers to focus on
the distinctive ENTERPRISE and shield design elements. Moreover, the generic or descriptive
wording appears in small, plain font below the dominant and stylized ENTERPRISE element,
which further contributes to the creation of a separate and distinct commercial impression.
It is well established that an applicant may apply to register any element of a composite
mark displayed on the specimen of use, so long as that element creates a separate and distinct
commercial impression. See, e.g., In re 1175856 Ontario Ltd., 81 USPQ2d 1446 (TTAB 2006);
In re Big Pig, Inc., 81 USPQ2d 1436 (TTAB 2006). In fact, the TTAB has recognized that an
applicant has some latitude in selecting the mark it wants to register. In re 1175856 Ontario
Ltd., 81 USPQ2d at 1448. As stated in TMEP 807.12(d):
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.
5895472
10
This case is similar to In re Burrell Mining Products, Inc., 1999 WL 238986 (TTAB April 8,
1999), a copy of which is attached hereto. In Burrell Mining Products, the applicant applied to
register the following mark:
Id. at *1. The applicant filed the below shown specimen:
Id. The Trademark Office refused registration on grounds that the specimen did not show use of
the mark shown in the drawing because of the other wording and numbers on the specimen. Id.
The TTAB reversed, finding that the applied-for mark was registrable despite the fact
that, as actually used, the mark also contained additional word and numerical elements. Id. at *2.
In reaching this decision, the court reasoned that the commercial impression of the applied-for
mark was separable from the additional wording that appeared on the specimen of record. Id.
5895472
11
Like the mark in In re Burrell Mining Products, Inc., EHIs ENTERPRISE & Shield
Design mark contains a distinctive literal element (the stylized ENTERPRISE element),
combined with a distinctive design element (the Shield Design element). The applied-for mark
creates a distinct commercial impression apart the descriptive or generic wording CAR SALES,
COMMERCIAL TRUCKS and FLEET MANAGEMENT.
This case is also similar to In re Big Pig Inc., 81 USPQ2d 1436 (TTAB 2006), wherein
the Board held that the word PSYCHO created a separate and distinct commercial impression
apart from the remaining word and design elements shown on the below specimen. Id. at 1440.
In so holding, the TTAB held that the word PSYCHO was displayed in a different color, type
style and size such that it stood out from the remaining word and design elements. Id.
Moreover, this case is similar to In re Raychem Corp., 12 USPQ2d 1399 (TTAB 1989).
In that case, the applicant sought registration of TINEL-LOCK for metal rings, and the
5895472
12
Examining Attorney refused registration on grounds that the mark did not agree with the mark
TRO6AI-TINEL-LOCK-RING. Id. at 1399. In reversing the Examining Attorney, the Board
found that TRO6AI was merely a stock number, and that RING was the generic name of the
product. Id. at 1400. Consumers would recognize the stock number and generic term as such,
and instead look to the TINEL-LOCK element for source-identification. Id.
Similar to In re Big Pig, the wording CAR SALES, COMMERCIAL TRUCKS and
FLEET MANAGEMENT appears in small, plain font below the large and stylized
ENTERPRISE element, thus causing that element, along with the shield design, to stand out.
And like In re Raychem Corp, the wording CAR SALES, COMMERCIAL TRUCKS and
FLEET MANAGEMENT is generic or descriptive, thus causing consumers to focus on the
distinctive ENTERPRISE element and distinctive shield design for source-identification.
EHIs mark creates a distinct commercial impression apart from the remaining
descriptive or generic wording shown in the specimens. Consumers viewing EHIs signage and
advertising will focus on the distinctive ENTERPRISE element and the distinctive shield design,
and not on the descriptive or generic wording. Accordingly, EHI respectfully submits that the
specimens of record are acceptable, and respectfully requests withdrawal of the mutilation
refusal.
III. Conclusion
For the above reasons, EHI respectfully requests reversal of the Trademark Offices
refusal to register the ENTERPRISE & Shield Design mark.
5895472
13
IV. No Oral Hearing Is Requested.
Applicant does not request an oral hearing.
Respectfully submitted,
/s/ Thomas A. Polcyn
Thomas A. Polcyn
THOMPSON COBURN LLP
One US Bank Plaza
St. Louis, Missouri 63101
(314) 552-6331
tpolcyn@thompsoncoburn.com
hal-shathir@thompsoncoburn.com
ipdocket@thompsoncoburn.com
5895472
14
INDEX OF CITED AUTHORITIES
Cases
In re 1175856 Ontario Ltd., 81 USPQ2d 1446 (TTAB 2006)
In re Big Pig, Inc., 81 USPQ2d 1436 (TTAB 2006)
In re Burrell Mining Products, Inc., 1999 WL 238986 (TTAB April 8, 1999)
Cineplex Odeon Corp. v. Fred Wehrenberg Circuit of Theatres, Inc., 56 USPQ2d 1538 (TTAB
2000)
In re Intl Flavors & Fragrances Inc., 51 USPQ2d 1513 (Fed. Cir. 1999)
In re Primo Water Corp., 87 USPQ2d 1376 (TTAB 2008)
In re Raychem Corp., 12 USPQ2d 1399 (TTAB 1989)
In re Upper Deck Co., 59 USPQ2d 1688 (TTAB 2001)
Manuals
Trademark Manual of Examining Procedure (October 2013 edition)
Page 1
2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
1999 WL 238986 (Trademark Tr. & App. Bd.)
THIS DISPOSITION IS NOT CITABLE AS PRECEDENT OF THE T.T.A.B.
Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
IN RE BURRELL MINING PRODUCTS, INC.
Serial No. 74/693,924
April 8, 1999
Julie K. Morriss of Trask, Britt & Rossa for Burrell Mining Products, Inc.
Albert J. Zervas, Trademark Examining Attorney
Law Office 104
(Sidney Moskowitz, Managing Attorney).
Before Hohein, Walters and Chapman
Administrative Trademark Judges.
Opinion by Chapman
Administrative Trademark Judge:
Burrell Mining Products, Inc. has filed an application to register the mark shown below
Page 2
2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
for non-metal mine roof supports or props, namely posts in International Class 19.
[FN1]
The application is based on
applicant's allegation of a bona fide intention to use the mark in commerce. Applicant filed an amendment to allege use
on December 20, 1995 (via certificate of mailing)
[FN2]
, asserting dates of first use and first use in commerce of August
3, 1995. The specimen submitted by applicant is reproduced below.
Registration has been finally refused pursuant to Trademark Rule 2.51(a)(2) on the ground that applicant has not
submitted proper specimens showing use of the mark shown in the drawing.
[FN3]
Applicant has appealed. Both applicant and the Examining Attorney have filed briefs, but an oral hearing was not
requested. We reverse.
The Examining Attorney has required that applicant submit specimens showing the mark without the words BUR-
RELL MINING PRODUCTS INC., and an affidavit or declaration that the substitute specimens were in use as of a
date prior to the expiration of the time allowed for applicant to file a statement of use. The Examining Attorney
contends that applicant's corporate name, BURRELL MINING PRODUCTS, INC., is an integral part or inseparable
element of the mark shown on the specimen, but the corporate name does not appear in the drawing of the applied-for
Page 3
2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
mark; and that, therefore, applicant has not provided a specimen which is a substantially exact representation of the
mark shown in the drawing as required by Trademark Rule 2.51(a)(2). (Alternatively stated, the mark shown on the
drawing page is an incomplete representation of the mark shown in the specimen and the applicant has mutilated the
mark as actually used.(Examining Attorney's brief, p. 2.)
[FN4]
Applicant contends that the appearance of its corporate name on the specimens is merely extraneous and informa-
tional, as is applicant's address, telephone number, and patent information; and that the applied-for mark creates a
separate commercial impression without applicant's corporate name, or any of the other informational material shown
on the specimen.
[FN5]
As explained in 3 J. McCarthy, McCarthy on Trademarks and Unfair Competition, 19:59 (4th ed. 1998):
Mutilation refers to a situation where a seller seeks registration of something less than the totality of his
trademark. That is, the seller mutilates his trademark, severs a part of it, and seeks registration only of that part.
The Patent and Trademark Office may then reject registration, saying that the applicant is trying to register
something less than his full trademark, thereby attempting to obtain protection for an element that is only his in
combination with other words or symbols. (footnote and citations omitted).
*2 The whole problemis one of definition: what exactly is the trademark? Once defined, the designation sought
for registration is compared to that trademark. If less than the total trademark, then what is sought is a reg-
istration of a mutilated version of the mark. In defining the scope of the trademark the applicant will argue
that the designation he applies for does, in fact, function in and of itself as a trademark. That is, there may be a lot
of printed matter on a label, but he has culled out exactly that element which serves to distinguish his product from
others.
The specimens submitted by applicant unquestionably show the applied-for mark, but they also include numerous
words and numbers (applicant's corporate name and address, applicant's telephone number, as well as patent infor-
mation). The Examining Attorney does not assert that any of the other material on the specimen, other than applicant's
corporate name, is involved in his requirement for substitute specimens. Rather, the Examining Attorney simply does
not accept that the applied-for mark creates a separate commercial impression without applicant's corporate name as it
appears on the specimens.
[FN6]
We agree with applicant that its applied-for mark is registrable without its corporate name. In fact, as argued by ap-
plicant, if such matter had been included on the drawing, the Examining Attorney may have required removal or
disclaimer of such material. See TMEP 807.13(a). That is, applicant's drawing presents a substantially exact repre-
sentation of the mark as actually used in commerce, and applicant need not submit new specimens showing the mark
without the corporate name.
We acknowledge that this decision is subjective, but we cannot agree with the Examining Attorney's assessment of
applicant's drawing vis-a-vis the mark shown on the specimens. Rather, the commercial impression of the applied-for
mark is separable from applicant's corporate name as it appears on the specimens of record.
Decision: The requirement for different specimens is reversed.
Page 4
2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
G. D. Hohein
C. E. Walters
B. A. Chapman
Administrative Trademark Judges, Trademark Trial and Appeal Board
FN1. Application Serial No. 74/693,924, filed June 26, 1995. The application includes statements that the lining and
the stippling are for shading purposes only and do not indicate color.
FN2. This paper was not immediately associated with the application file, however, and the application was published
for opposition on April 16, 1996, and a notice of allowance issued on July 9, 1996. The amendment to allege use was
treated by the Office as a statement of use.
FN3. The Examining Attorney made clear that under Trademark Rule 2.72(a), applicant cannot amend the drawing to
conform to the display on the specimens because the character of the mark would be materially altered.(Office action
dated December 16, 1996.) The applicant did not attempt to change the mark, and therefore, the possible issue of a
material alteration of the mark is not before us.
FN4. The Examining Attorney expresses the issue before the Board as whether the specimen depicts a substantially
exact representation of the mark shown in the drawing.(Brief, p. 2)
FN5. Applicant expresses the issue before the Board as whether the applied-for mark creates a separate commercial
impression apart from applicant's corporate name (Appeal brief, p. 3); and in the reply brief, applicant challenges the
Examining Attorney's statement of the issue because it presumes what the mark is, when the issue before the Board
involves a determination of what the mark is. (Reply brief, p. 2).
FN6. The case cited by the Examining Attorney, In re Chemical Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828 (Fed.
Cir. 1988), is inapposite here. The Chemical Dynamics case involved a background design (a picture of a watering can
with a medicine dropper and droplet) with a word mark (7 DROPS), and there the applicant sought to register only a
part of the background design, namely the medicine dropper and droplet. The case now before the Board does not
involve the applicant attempting to register an incomplete and inseparable portion of a background design. To the
contrary, applicant seeks to register the entire background design, plus the sitting miner and the words THE CAN.
1999 WL 238986 (Trademark Tr. & App. Bd.)
END OF DOCUMENT