This Opinion is not a
`Precedent of the TTAB
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`Mailed: February 26, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`Trademark Trial and Appeal Board
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`In re CB Specialists, Inc.
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`Serial No. 87689179
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`Zachary D. Messa of Johnson, Pope, Bokor, Ruppel & Burns, LLP
`for CB Specialists, Inc.
`Anthony Rinker, Trademark Examining Attorney, Law Office 102,
`Mitchell Front, Managing Attorney.
`_____
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`Before Taylor, Ritchie, and Heasley,
`Administrative Trademark Judges.
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`Opinion by Heasley, Administrative Trademark Judge:
` CB Specialists, Inc. (“Applicant”) seeks registration on the Principal Register of
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`the composite mark
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`for “restaurant services,
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`including sit-down services of food and take-out restaurant service” in International
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`Serial No. 87689179
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`Class 43.1
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`The Trademark Examining Attorney has refused registration of Applicant’s mark
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`on the ground that the mark shown in the drawing is not a substantially exact
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`representation of the mark shown in the specimens of use. 15 U.S.C. §§ 1051(a), 1053,
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`1127; Trademark Rules 2.34(a)(1)(iv), 2.51(a), (b)(2), 37 C.F.R. §§ 2.34(a)(1)(iv),
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`2.51(a), (b)(2).2
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`When the Examining Attorney made the refusal final, Applicant appealed and
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`requested reconsideration. The Examining Attorney denied the request for
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`reconsideration and the appeal resumed. We reverse the refusal to register.
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`I. Discussion
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` An applicant who files a use-based application must file a drawing of the mark
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`and a specimen showing its use in commerce. 15 U.S.C. §§ 1051(a), 1053, 1127; 37
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`C.F.R. §§ 2.34(a)(1)(iv), 2.51(a), cited in In re Univ. of Miami, 123 USPQ2d 1075, 1077
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`1 Application Serial No. 87689179 was filed on November 17, 2017, under Section 1(a) of the
`Trademark Act, 15 U.S.C. § 1051(a), based on Applicant’s claim of first use of the mark
`anywhere and in commerce since at least as early as January 26, 2010. Applicant’s
`description of the mark states that “the mark consists of the term ‘Home of’ appearing above
`the term ‘The sandwich that’ which appears above the term ‘Ate Brooklyn’ in stylized format
`with a sandwich appearing in the background.” Color is not claimed as a feature of the mark.
`The application disclaims the exclusive right to use the design of a sandwich apart from the
`mark as shown.
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`Page references to the application record are to the downloadable .pdf version of the USPTO’s
`Trademark Status & Document Retrieval (TSDR) system. References to the briefs, motions
`and orders on appeal are to the Board’s TTABVUE docket system.
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` In this case, the Examining Attorney found that Applicant’s original specimen, submitted
`with its application, did not agree with its applied-for mark as shown in the drawing, and so
`the Examining Attorney required Applicant to submit substitute specimens. March 8, 2018
`Office Action at TSDR 2. Applicant complied. We therefore focus our analysis on the
`substitute specimens.
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`Serial No. 87689179
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`(TTAB 2017). The drawing of the mark “must be a substantially exact representation
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`of the mark as used on or in connection with the goods and/or services,” as shown by
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`the specimen. 37 C.F.R. § 2.51(a); TRADEMARK MANUAL OF EXAMINING PROCEDURE
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`(TMEP) §§ 807.12(a), 1301.04(f)(i) (Oct. 2018). If the drawing and specimen of use do
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`not match sufficiently under this standard, the applicant has failed to prove use of
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`the mark in commerce, and its application may be refused registration. See In re WAY
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`Media, Inc., 118 USPQ2d 1697, 1698 (TTAB 2016); 3 MCCARTHY ON TRADEMARKS AND
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`UNFAIR COMPETITION § 19:61.50 (5th ed. Nov. 2019 update) (“It is fundamental to
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`United States trademark registration practice that use must precede registration.
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`Without use, there is no ‘trademark’ to be recorded on the federal register of marks.
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`The filing of a specimen with the Patent and Trademark Office (USPTO) is the way
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`the applicant proves this use.”).
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` The drawing of Applicant’s applied-for mark is shown below on the left, and one
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`of its substitute specimens is shown on the right:
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`3
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`3 Sept. 10, 2018 Response to Office Action at 2.
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`Serial No. 87689179
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`The substitute specimen shows the applied-for mark superimposed on another
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`registered mark owned by Applicant,
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`, for the same services:
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`“restaurant services, including sit-down services of food and take-out restaurant
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`service” in International Class 43. Applicant calls the “THE LUCKY DILL” mark its
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`“House Mark.”4
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`A. Arguments of Applicant and the Examining Attorney
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` Applicant contends that the drawing of its applied-for “HOME OF THE
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`SANDWICH THAT ATE BROOKLYN” and design mark “is incorporated in its
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`entirety into the Specimen, and the inclusion of the House Mark behind Applicant’s
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`Mark depicted in the Specimen does not destroy this exact representation.”5 See In re
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`Tekelec-Airtronic, 188 USPQ 694 (TTAB 1975).6
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` The Examining Attorney counters that “The applied-for mark does not present a
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`separate and distinct commercial impression apart from ‘THE LUCKY DILL’ and
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`4 Reg. No. 5502514, registered on June 26, 2018. The “House Mark” consists of “THE”
`appearing vertically adjacent to “LUCKY” and the “I” in “DILL represented by a pickle. Color
`is not claimed as a feature of the mark. See Applicant’s brief, 7 TTABVUE 11; Applicant’s
`April 3, 2019 Request for Reconsideration at 3. The prior registration was not properly made
`of record during examination, but the Examining Attorney did not object to its submission
`with Applicant’s brief. Indeed, the Examining Attorney discussed Applicant’s “House Mark,”
`the subject of the registration, in his brief, so it may be considered. TRADEMARK TRIAL AND
`APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 1203.02(e) (2019).
`5 Applicant’s brief, 7 TTABVUE 5.
`6 Applicant also relies on In re ITT Indus, Inc., 2006 WL 2558019 (TTAB 2006), a
`nonprecedential decision in which the Board reversed a refusal based on mutilation,
`permitting the applicant to register the mark in its drawing.
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`Serial No. 87689179
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`pickle design as used on the substitute specimen of use because the combination of
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`words and overlapping designs that form a composite whole (1) are physically joined
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`and (2) forms a unique message to consumers as to the particular source of the
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`restaurant services i.e., ‘THE LUCKY DILL’ is the ‘HOME OF THE SANDWICH
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`THAT ATE BROOKLYN’ and sandwich design.”7 In support of this position, the
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`Examining Attorney cites seven Board decisions, each finding that an element of a
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`composite mark did not present a separate and distinct commercial impression apart
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`from the mark as a whole, as shown on the specimen.8 For example, in In re Library
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`Restaurant, Inc., 194 USPQ 446 (TTAB 1977) the applicant applied to register
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`, which was part of the mark depicted in the specimen:
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`.
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`services.” Id. at 448-49.
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` Similarly, in In re Miller Sports, 51 USPQ2d 1059 (TTAB 1999) the applicant
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`applied to register
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` even though the specimens showed that composite
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`7 Examining Attorney’s brief, 9 TTABVUE 4.
`8 Examining Attorney’s brief, 9 TTABVUE 5-6.
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`Serial No. 87689179
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`mark as a whole was
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`. The Board found that “In this case, it is our
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`view that the elements asserted by the Examining Attorney to be the mark, the word
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`‘Miller’ with the design of a skater as the initial stroke in the letter ‘M’, are so merged
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`together in presentation that the M and skater design cannot be regarded as a
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`separable element creating a separate and distinct commercial impression.” Id. at
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`1061. Accordingly, in this case, the Examining Attorney maintains that Applicant’s
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`applied-for mark is inseparable from the “THE LUCKY DILL” and design mark
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`shown in its substitute specimens.9
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`B. Analysis
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` We must decide: “What exactly is the ‘trademark,’ and does the designation for
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`which registration is sought comprise a separate and distinct ‘trademark’ in and of
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`itself?” Institut National des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d
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`1574, 22 USPQ2d 1190, 1197 (Fed. Cir. 1992) quoted in In re Univ. of Miami, 123
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`USPQ2d at 1078. There is no dispute that “THE LUCKY DILL” and design, standing
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`alone, is a registered trademark owned by Applicant. The key is whether the applied-
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`for mark presents a separate and distinct commercial impression that indicates the
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`source of Applicant’s services and distinguishes them from those of others. In re
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`Servel, Inc., 181 F.2d 192, 85 USPQ 257, 260 (CCPA 1950); In re Miller Sports, 51
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`USPQ2d at 1060-61.
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`9 Examining Attorney’s brief, 9 TTABVUE 7.
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`Serial No. 87689179
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` Even though the applied-for mark slightly overlaps the registered “THE LUCKY
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`DILL” and design mark, terms that are connected may still create separate
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`commercial impressions. The use of a house or primary mark does not preclude an
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`applicant from using and registering other marks in connection therewith. For
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`example, in In re Dempster Bros., Inc., 132 USPQ 300 (TTAB 1961), the applicant
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`applied
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`to register DUMPMASTER even
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`though
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`its specimen showed:
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`. The Board nonetheless found that “There can be no
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`question but that the composite shown above constitutes two distinct terms, each of
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`which is capable of distinguishing applicant’s goods from like goods, if they were to
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`be used separably as trademarks.” Id. at 300; accord In re wTe Corp., 87 USPQ2d
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`1536, 1539 (TTAB 2008) (“even when the specimens showed two words sharing
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`overlapping letters, the board permitted the registration of the term DUMPMASTER
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`separately.”).
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`In a similar case, In re Berg Electronics, Inc., 163 USPQ 487 (TTAB 1969), the
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`applicant applied to register
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`on the strength of its specimen:
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`.
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`Serial No. 87689179
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` The examining attorney in that case took the position that the specimen showed
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`the terms “BERG” and “GRIPLET” combined and interconnected as a unitary mark,
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`and not as two separate individual marks. Id. at 487. But the Board agreed with the
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`applicant that the designation “GRIPLET” as used on the label specimens created a
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`separate and distinct impression apart from the house mark “BERG” with which it
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`appeared. Id. at 488. “GRIPLET” served, in and of itself, to identify and distinguish
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`the applicant’s goods in trade. Id.
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`We believe that the present case is more like the Dempster Dumpmaster and Berg
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`Electronics cases than the decisions on which the Examining Attorney relies.
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`Although the applied-for mark physically overlaps the registered “THE LUCKY
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`DILL” and design mark, it is not merged with it, as in the Miller Sports logo. The
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`applied-for mark’s placement over the “THE LUCKY DILL” mark is incidental; it is
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`separable, and it may be placed independently or with other wording promoting
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`Applicant’s restaurant services. Applicant might “desire to use Applicant’s Mark
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`across a wide variety of advertisements. Such advertisements may differ in content
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`and display, but Applicant’s Mark would remain constant throughout, as depicted in
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`the Specimen.”10 Moreover, the applied-for mark’s slogan, “HOME OF THE
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`SANDWICH THAT ATE BROOKLYN” may refer back to Applicant’s trade name,
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`THE LUCKY DILL, but even without the trade name attached, “There can be no
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`doubt that the [mark] here involved clearly distinguishes [Applicant’s restaurant
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`10 Applicant’s brief, 7 TTABVUE 7.
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`services] from others of the same class; and that no person will be injured or deceived
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`by its registration, so far as the record discloses.” In re Servel, 85 USPQ at 261.
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`II. Conclusion
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` An Applicant has some latitude in selecting the mark it wishes to register. See In
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`re Univ. of Miami, 123 USPQ2d at 1078. In that case, the Board found it appropriate
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`for the applicant to register a version of its design mark that did not include literal
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`elements appearing in the submitted specimen. Similarly, we find here that the mark
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`Applicant seeks to register presents a separate and distinct commercial impression
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`from the house mark appearing on the specimens. Accordingly, we find that the
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`drawing is a substantially exact representation of Applicant’s mark as it is actually
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`used.
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` Decision: The refusal to register Applicant’s mark is reversed.
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