TRADEMARK.LAW OFFICE 10
`Serial Number:
`76/087223
`Mark:
`PENNSYLVANIA STATE POLICE & DESIEN
`
`If
`
`?$$P1aage Place an Upper Right Cornar**
`**uF Response to Office Action ONLY **
`
`EXPRESS MAIL MAILING LABEL
`Number: EV 256984915 US
`
`Date of Deposit: October 10, 2003
`
`I hereby certify that this paper or Fee is being
`Deposited with the United States Postal Service
`Under 37 C.F.R. § l.]0 on the date indicated above
`And is addressed to: Box TFAB NO FEE,
`Commissioner for Trademarks, 2900 Crystal
`Drive. Arlington, VA 22202-3513
`BUCHANAN INGERSOLL PC
`One Oxford Center, 20th Floor
`Pittsburgh, PA 15222
`
`Arty. Ker. No. 000081
`
`/
`I
`
`fl
`
`"‘——.._‘_\‘_
`
` _ asM”
`
`Buchanan Ingersol
`
`o 2003
`
`7&1.
`7* Tlvroyc,
`
`_
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re Application of:
`
`TRADEMARK APPLICATION
`
`Pennsylvania State Police
`
`PENNSYLVANIA STATE POLICE
`and Design
`
`Serial No: 76/087,228
`
`Examining Attorney: George Lorenzo
`
`Filed: July 12, 2000
`
`Law Office: 110
`
`APPLICANT'S REPLY BRIEF ON APPEAL
`
`Pittsburgh, Pennsylvania
`October 10, 2003
`
`Box TTAB NO FEE
`
`Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, Virginia 22203-3513
`
`Sir:
`
`This Reply Brief is in response to the Examining Attomey's Appeal Brief, filed
`
`September 22, 2003. The Examining Attorney has taken the position that Applicant's mark
`
`"PENNSYLVANLA STATE POLICE and Design" is an unacceptable mutilation of the mark
`
`
`Serial Number:
`76/087223
`Mark:
`PENNSYLVANIA STATE POLICE & DESIEN
`
`If
`
`?$$P1aage Place an Upper Right Cornar**
`**uF Response to Office Action ONLY **
`
`EXPRESS MAIL MAILING LABEL
`Number: EV 256984915 US
`
`Date of Deposit: October 10, 2003
`
`I hereby certify that this paper or Fee is being
`Deposited with the United States Postal Service
`Under 37 C.F.R. § l.]0 on the date indicated above
`And is addressed to: Box TFAB NO FEE,
`Commissioner for Trademarks, 2900 Crystal
`Drive. Arlington, VA 22202-3513
`BUCHANAN INGERSOLL PC
`One Oxford Center, 20th Floor
`Pittsburgh, PA 15222
`
`Arty. Ker. No. 000081
`
`/
`I
`
`fl
`
`"‘——.._‘_\‘_
`
` _ asM”
`
`Buchanan Ingersol
`
`o 2003
`
`7&1.
`7* Tlvroyc,
`
`_
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re Application of:
`
`TRADEMARK APPLICATION
`
`Pennsylvania State Police
`
`PENNSYLVANIA STATE POLICE
`and Design
`
`Serial No: 76/087,228
`
`Examining Attorney: George Lorenzo
`
`Filed: July 12, 2000
`
`Law Office: 110
`
`APPLICANT'S REPLY BRIEF ON APPEAL
`
`Pittsburgh, Pennsylvania
`October 10, 2003
`
`Box TTAB NO FEE
`
`Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, Virginia 22203-3513
`
`Sir:
`
`This Reply Brief is in response to the Examining Attomey's Appeal Brief, filed
`
`September 22, 2003. The Examining Attorney has taken the position that Applicant's mark
`
`"PENNSYLVANLA STATE POLICE and Design" is an unacceptable mutilation of the mark
`
`
`
`
`
`Atty. Ref. No. 000081
`
`appearing on the specimens, which includes the informational word "TROOPER". For at least
`
`the reasons set forth below, Applicant respectfully disagrees.
`
`The determination of whether an applicant has mutilated its mark "boils down to a
`
`judgment as to whether that designation for which registration is sought comprises a separate and
`
`distinct 'trademark' in and of itself." 3 J. McCarthy, Trademarks and Unfair Competition, §
`
`19:59 at page 19-138 (4‘" ed. 2003). Applicant's mark "PENNSYLVANIA STATE POLICE and
`
`Design" clearly satisfies this test. The mere inclusion of the word "TROOPER" as shown in the
`
`specimens does not alter the commercial impression of the mark Applicant is seeking to register.
`
`Applicant's mark "PENNSYLVANIA STATE POLICE and Design" is a distinct trademark in
`
`and of itself, and is thus registrable. See, e.g., In re Tekelec-Airtronic, 188 USPQ 694 (TTAB
`
`1975) (no mutilation by registration of TEKELEC A.lRTRONlC where usage includes "TA“
`
`logo).
`
`I
`
`Assuming, arguendo, that Applicant is attempting to register one part of a two part mark,
`
`courts "recognize the right to registration of one part of an owner's mark consisting of two parts."
`
`
`In re Serve] 3, 85 USPQ 257, 260 (CCPA 1950). Additionally. the Trademark Act of 1905
`
`provides that "[n}o trademark by which the goods of the applicant may be distinguished from the
`
`goods of others shall be refused registration on the principle register .
`
`.
`
`. " 35 U.S.C. § 1052.
`
`"The courts have recognized also that the requirement of the statute, that no mark shall be
`
`refused registration if the good [sic] of the owner of the mark may be distinguished thereby from
`
`goods of the same class, is just as imperative as the prohibitory provisions against registration in
`
`
`those cases enumerated in section [1052] of the Act." In re Serve] Inc., 85 USPQ at 260.
`
`
`
`
`
`
`For example, in In re Servel Inc., the applicant sought to register the mark "SERVEL" for
`
`Atty. Ref. No. 000081
`
`a periodical publication. The specimen submitted by the applicant illustrated that the periodical
`
`was imprinted with the mark "SERVEL INKLINGS". While the Examiner initially refused
`
`registration of "SERVEL" as a mutilation of the total mark "SERVEL INKLINGS", the Court of
`
`Customs and Patent Appeals reversed the Examiner stating that "the word 'SERVEL' here
`
`involved clearly distinguishes appellant's publication from others of the same class; and that no
`
`person will be injured or deceived by its registration". Q at 261.
`
`Additionally, in In re Berg Electronics, Inc., the applicant filed an application for the
`
`single word "GRIPLET". The specimens filed with the application included labels which
`
`showed the mark used as follows:
`
`,
`
`.
`
`7
`
`”“‘Gr:Plet
`
`_5m‘::_f__‘MINAl.
`'
`.
`.1.
`.
`
`
`
`-
`
`.
`run-uuu
`I I
`23
`
`"W C‘-"'.5l_N'.ANG. aeunsrtvmu. mm _
`
`ll r£Fl'0:fir¢g‘:-;g"'i
`
`The Trademark Trial and Appeal Board held that the single word ”GR[PLET" appearing with the
`
`other matter in the label was registrable alone as it created a separate and distinct impression
`
`apart from the house mark "BERG" appearing with it on the label.
`
`In re Berg Electronics, Inc.,
`
`163 USPQ 487, 488 (TTAB 1969).
`
`Further, in In re Schecter Brothers Modular Cogporation, the applicant sought registration
`
`of the mark "RAINAIRE". The specimens submitted by the applicant showed the mark
`
`
`
`
`
`consisting in part of the word "RAINAIRE" together with its shadow image and the word
`
`"PRODUCTS", as shown below:
`
`Atty. Ref. No. 000081
`
`
`
`The Trademark Trial and Appeal Board held that it was not a mutilation to delete the shadow
`
`image and the word "PRODUCTS" from the mark, as such deletion did not create a new and
`
`different mark creating a different commercial impression.
`
`In re Schecter Brothers Modular
`
`Cojgoration, 182 USPQ 694, 695 (TTAB 1974). The Trademark Trial and Appeal Board stated
`
`that "what is sought to be registered and the matter shown in the specimens are basically the
`
`same marks creating the same impressions."
`
`n re Schecter Brothers Modular Corporation, 182
`
`USPQ at 695.
`
`The present application for "PENNSYLVANIA STATE POLICE and Design" is very
`
`similar to the above-identified cases, in that the mark sought to registered by Applicant and the
`
`mark shown in the specimens are basically the same marks creating the same commercial
`
`impressions. Applicant is seeking registration of the mark "PENNSYLVANIA STATE POLICE
`
`and Design". The mark as shown on the specimens includes the word "TROOPER" at the
`
`bottom. However, the drawing of the mark was not extend, enlarged, lengthened, or otherwise
`
`
`
`
`
`Atty. Ref. No. 000081
`
`modified to permit inclusion of the word "TROOPER". The word "TROOPER" is a generic
`
`designation or rank and was inserted in the space below the emblem for informational purposes
`
`only. Its inclusion does not materially alter the character of Applicant's mark as shown in the
`
`drawing, nor does it alter the commercial impression of Applicant's mark. The drawing of the
`
`mark is a substantially exact representation of the mark in actual use as illustrated by the
`
`specimens submitted by Applicant and, accordingly, the Examining attorney's refusal of
`
`registration should be reversed.
`
`The mark sought to be registered by Applicant consists of a unique emblem with the
`
`words "PENNSYLVANIA STATE POLICE" appearing above the emblem. Applicant is not
`
`seeking to register a mere combination of basic figures, but rather a unique design aspect in
`
`combination with the term "PENNSYLVANIA STATE POLICE". The uniqueness of
`
`Applicant's mark is supported by the fact that the Examining Attorney's Search of the Office
`
`records turned up no similar registered or pending mark. Applicant submits that its mark is quite
`
`unique and hence "inherently distinctive" within the meaning of that term.
`
`It is well established
`
`that if a mark is inherently distinctive, no proof of secondary meaning need be introduced. See l_n
`
`re W.B. Roddenbefl Co., Inc., 135 USPQ 215, 216 (TTAB I962).
`
`Applicant's mark "PENNSYLVANIA STATE POLICE and Design", as depicted in both
`
`the drawing of the mark and in the submitted specimens which include the word "TROOPER",
`
`create a single commercial impression. The average consumer of Applicant's products will
`
`regard Applicant's mark "PENNSYLVANIA STATE POLICE and Design" standing alone as an
`
`unmistakable and certain means of identification clearly distinguishing Applicant's goods from
`
`
`
`
`
`Atty. Ref. No. 000081
`
`others of the same class. The mere inclusion of the word "TROOPER" does not alter the
`
`commercial impression of Applicant's mark as depicted in the drawing. Accordingly, the
`
`specimens submitted by Applicant are acceptable, and Applicant's mark should be passed to
`
`registration. See, e.g., In re Schenectady Varnish Company, Inc., 126 USPQ 395 (CCPA 1960).
`
`Applicant's mark appears in unobliterated form in the specimens. The Examining
`
`Attorney has not alleged otherwise. The addition of the informational word "TROOPER" as
`
`shown in the specimens does not affect or alter the commercial impression of Applicant's mark
`
`as shown in the drawing. The fact that the specimens submitted by Applicant do not exactly
`
`match the drawing of the mark should not prohibit registration of Applicant's mark. The
`
`specimens do not have to exactly match the drawing of the mark, but rather, as set forth in [pig
`
`Standard Underground Cable Company, 27 App.D.C. 320 (1906), must simply show that the
`
`. mark Applicant is seeking to register is being used in commerce. The specimens submitted by
`
`Applicant clearly show this.
`
`Applicant's mark "PENNSYLVANIA STATE POLICE and Design" is inherently
`
`distinctive and identifies Applicant's goods and distinguishes them from those of others. No
`
`person will be injured or deceived by its registration. Therefore, Applicant's mark is registrable
`
`and the specimens submitted by Applicant appropriately illustrate the use of Applicant's mark
`
`"PENNSYLVANIA STATE POLICE and Design" in commerce. Accordingly, the Examining
`
`Attorney's objection to the specimens and refusal of registration should be reversed.
`
`
`
`
`
`Atty. Ref. No. 000081
`
`Conclusion
`
`For at least the above—identif1ed reasons, and those set forth in Applicant's Appeal Brief,
`
`Applicant respectfully submits that the specimens submitted with the previously filed Statement
`
`of Use match the drawing of the mark and are therefore acceptable. The specimens submitted
`
`clearly show the mark as it is sought to be registered. Applicant respectfully requests reversal of
`
`the refusal to register and passage of its mark to registration. Early notification to that effect is
`
`respectfully requested.
`
`It is believed that this Reply Brief requires no fee. However, if a fee is required for any
`
`reason, please charge Deposit Account No. 02-4553 the necessary amount.
`
`Applicant does not request oral argument in the present appeal.
`
`Dated: /0 -/O " 3003
`
`Res ectfully sub itted,
`
`
`Re istration No. 40,751
`BUCHANAN INGERSOLL, P.C.
`One Oxford Centre
`
`301 Grant Street, 20th Floor
`
`Pittsburgh, Pennsylvania 15219
`ph: (412) 562-1893
`fx: (412) 562-1041
`E-mail: opalkobh@bipc.com
`Attorneys for Applicant
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