Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE HECHINGER INVESTMENT COMPANY OF DELAWARE, INC.
Serial No. 73/822,386
August 22, 1991
Aaron B. Retzer of Epstein, Edell & Retzer for applicant
Henry Zak
Trademark Senior Attorney
Law Office 5
(Mary I. Sparrow, Managing Attorney)
Before Sams, Rooney and Hohein
Members
Opinion by Hohein
An application has been filed by Hechinger Investment Company of Delaware, Inc. to register the designation "TWOBAFOR" as a service mark for "retail hardware, housewares, lumber and millwork store services". [FN1]
Registration has been refused under Sections 1, 2, 3 and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1052, 1053 and 1127, on the basis that the designation "TWOBAFOR" does not function as a service mark to identify the services stated in the application.
When the refusal was maintained but not made final, applicant filed this appeal. [FN2] Briefs have been filed [FN3] but an oral hearing was not requested. We affirm.
The specimens submitted with the application as filed consist of two pages from an advertising supplement by applicant's licensee, Hechinger Company, to the Sunday, February 19, 1989 edition of the Washington Post newspaper. The top portion of the advertisement states: "Balance the budget on President's Day at ... HECHINGER". The designation "TWOBAFOR," used as the character name "Twobafor," appears immediately below a drawing of a fanciful dog character, which is an element of an illustration appearing on the right hand side of the first page of the advertisement. The dog stands atop a partially unrolled roll of wallpaper while another character, identified as "Harriet Homeowner," stands on a crate in the process of hanging a sheet of wallpaper. Such is the only use of the term "TWOBAFOR". It does not appear in any other context nor is it used in connection with the promotional advertising copy. Moreover, the term appears in the same size of lettering and in the same style of type as the descriptions of the products provided in the advertising copy. In particular, the advertising copy appearing immediately below the illustration relates to savings on wallpaper and storage crates. Other hardware and houseware items advertised on the first page are insulation, light bulbs, chairs and lawn care products.
In an effort to overcome the refusal, applicant subsequently submitted pages from two similar advertising supplements. The advertisements, however, likewise show use of the term "TWOBAFOR" in the same manner as the original specimens, that is, as a character name placed in close proximity to a fanciful dog character and in lettering as small as and indistinguishable from any used in the advertising copy describing the goods being offered for sale. While one advertisement depicts a dog character in a different pose as part of an illustration in which its grinning head pokes above a pile of leaves next to two trash cans and the other advertisement features an illustration in which a smiling dog character, wearing a Santa Claus hat, stands behind a doll house and next to an artificial Christmas tree, in both advertisements the goods depicted in the illustrations involving the fanciful character named "Twobafor" are described in advertising copy appearing immediately below the illustrations.
*2 Applicant argues that it uses the dog character and its identification as "TWOBAFOR" in the advertising of its services to distinguish such services from those of others. "All who see applicant's mark, 'TWOBAFOR', and dog design associate the mark with the availability of the applicant's services; therefore, the mark 'TWOBAFOR', properly functions as a service mark." In this regard, applicant asserts that the character names "HARRY HOMEOWNER," Registration No. 787,947, and "HARRIET HOMEOWNER," Registration No. 1,043,141, are registered on the Principal Register for the same services and are utilized on advertising materials in the same manner as the term "TWOBAFOR". Therefore, applicant maintains, the designation "TWOBAFOR" also functions to identify applicant's retail services inasmuch as it is presented to the public in a variety of different forms through applicant's use of the designation in advertising its services and in a manner clearly intended to project to potential purchasers an indication of the source or origin of the services offered by applicant.
We agree, however, with the Examining Attorney that, on this record, the designation "TWOBAFOR" is used only in association with, and as the name of, a fanciful dog character which is featured as an element of illustrations appearing in advertisements. While applicant contends that other names, such as "HARRY HOMEOWNER" and "HARRIET HOMEOWNER," have been adopted to identify characters appearing in its advertisements, have been used in a similar manner and have been registered as service marks for the same services, the Examining Attorney correctly points out that copies of the specimens of record from the files for Registration Nos. 787,947 and 1,043,141, presumably showing use of such character names as service marks, have not been made of record by applicant. In any event, each case must be decided on its own merits based on the evidence of record. We obviously are not privy to the records involved in the registered marks and, irrespective thereof, the allowance of registration by the Trademark Examining Operation cannot control the result in another case involving a different mark, especially where, as here, it is necessary to look to the specimens of record in order to ascertain the manner in which the term sought to be registered is used and the commercial impact created thereby in order to determine what function the term performs in the particular circumstances shown.
Applicant, citing In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456 (CCPA 1973), further contends that a mark which satisfies the minimum requirement of some direct association between the offer of services and the mark sought to be registered and which does not identify a process is registrable as a service mark. Noting that the term "TWOBAFOR" does not identify a process, [FN4] applicant insists that by displaying the term next to its dog design in applicant's advertising circulars which are distributed in newspapers and are available on site where its services are rendered, it has satisfied the minimum requirement of a direct association between the term and its services. Applicant maintains that consumers are easily able to identify applicant as the source of its services through its use of the designation "TWOBAFOR".
*3 As the Examining Attorney has ably pointed out, the names of living persons or fictitious persons may be registrable as service marks if such terms are used in the sale or advertising of services to identify the services of one person and distinguish them from those of others. Numerous cases have held, however, that the appearance of a personal or fictitious name in advertisements or promotional materials for particular services does not necessarily create a direct association between the name and the services offered. See, e.g., In re McDonald's Corp., 229 USPQ 555, 556 (TTAB 1985); In re Mancino, 219 USPQ 1047, 1048 (TTAB 1983); In re Whataburger Systems, Inc., 209 USPQ 429, 430 (TTAB 1980); In re Burger King Corp., 183 USPQ 698, 700 (TTAB 1974); In re Generation Gap Products, Inc., 170 USPQ 423, 423-24 (TTAB 1971); and In re Ekco Products Co., 139 USPQ 138, 139 (TTAB 1963). For a name to be registrable as a trademark or service mark, the specimens of use filed with the application must demonstrate such use. See, e.g., In re Chicago Reader Inc., 12 USPQ2d 1079, 1080 (TTAB 1989); In re McDonald's Corp., supra; and In re Mancino, supra.
In the present case, the commercial impression created by applicant's use of the term "TWOBAFOR" is clearly and simply that of the name of a fanciful dog character which appears in certain illustrations in applicant's advertisements. Such use, in and of itself, is not sufficient to create a direct association among purchasers and prospective customers with applicant's retail hardware, housewares, lumber and millwork store services. Stated otherwise, we believe that anyone seeing the designation "TWOBAFOR" in applicant's advertisements would invariably view that term solely as a sobriquet for an amicable and playful dog character, since such is the only manner in which the term is being used, and thus would not regard the designation as identifying and distinguishing retail hardware, housewares, lumber and millwork store services. In short, the specimens fail to demonstrate that the designation "TWOBAFOR" functions as a service mark for applicant's services.
Decision: The refusal to register is affirmed.
J.D. Sams
L.E. Rooney
G.D. Hohein
Members, Trademark Trial and Appeal Board
FN1. Ser. No. 73/822,386, filed on August 29, 1989, which alleges dates of first use of October 7, 1988.
FN2. Trademark Rule 2.141 provides in relevant part that: "A second refusal on the same grounds may be considered as final by the applicant for purpose of appeal".
FN3. The Examining Attorney indicates in his appeal brief that no other issues remain in dispute.
FN4. We note that the Examining Attorney has never contended otherwise.