The Board observed that an applicant “has some latitude in selecting the mark it wants to register,” and “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.”
The Board sided with applicant: “while the specimens do not depict HICCUP alone, the terms with which the mark is used serve to highlight that the source-identifier in the specimens is the term HICCUP alone, notwithstanding that HICCUP appears with other terms.”
We find that consumers encountering HICCUP as it is used in the specimens would view HICCUP as presenting a “separate and distinct commercial impression which indicates the source of” Applicant’s services. In each instance, the specimens reveal that Applicant’s services are provided by the HICCUP family/clan or its members, whether the services are provided in the HICCUP HANGOUT or elsewhere, and whether the services are provided by Rhubarb, Sylvestor, Razberry and Boyzenberry HICCUP all together, individually, or in some other combination.
The Board deemed its decision here to be consistent with “a number of analogous cases” where, for example, it found that CHABLIS WITH A TWIST was not a mutilation of the mark that was actually used, CALIFORNIA CHABLIS WITH A TWIST; NANOCEUTICAL was supported by a specimen that displayed the term “embedded in the phrase RBC’S NANOCEUTICAL”; TINEL-LOCK was acceptable when the mark on the specimens was TRO6AI-TINEL-LOCK-RING; GRIPLET was supported by a specimen displaying BERG GRIPLET; RESPONSER was okay where the specimen depicted use of MEYER RESPONSER (“Meyer” was the name of the applicant’s president and inventor of the devices for which the mark was used); and DUMPMASTER was registrable based on a specimen depicting mark as DEMPSTER DUMPMASTER in stylized form.
And so the Board reversed the refusal.
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TTABlog comment: I don’t like these non-mutilation decisions.
Text Copyright John L. Welch 2019.