Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE FINLAY FINE JEWELRY CORPORATION
Serial No. 74/517,872
September 30, 1996
Carol L. B. Matthews of Gadsby & Hannah, attorney for applicant.
Raul Cordova
Trademark Examining Attorney
Law Office 108
(David Shallant, Managing Attorney)
Before Rice, Seeherman and Walters
Administrative Trademark Judges
Opinion by Walters
Administrative Trademark Judge
Finlay Fine Jewelry Corporation seeks registration on the Supplemental Register of the mark NY JEWELRY OUTLET for "retail jewelry store services." [FN1]
The Examining Attorney has finally refused registration, pursuant to Trademark Rules 2.51 and 2.72(a), 37 CFR §§ 2.51 and 2.72(a), on the ground that the specimens do not show use of the mark as it appears in the drawing. [FN2] In this regard, the Examining Attorney has refused to accept applicant's request that it be allowed to amend its drawing to NEW YORK JEWELRY OUTLET, to conform the drawing to the specimens of record, on the ground that such an amendment would constitute a material alteration of the mark.
Applicant has appealed. Both applicant and the Examining Attorney have filed briefs, but an oral hearing was not requested. We reverse the refusal to register.
In defining the issue before us, we must consider the recent decision of our reviewing principal court in In re Eccs, Inc., No. 95-1400, ___ USPQ2d ___ (Fed. Cir. September 6, 1996). In that case, applicant filed, pursuant to Section 1(a) of the Trademark Act, based upon use of the mark in commerce, an application that was internally inconsistent, as the mark in the drawing differed from the mark as it appeared on the specimens. The Board affirmed the Examining Attorney's refusal to accept an amendment to the drawing to conform the drawing to the specimens on the ground that such an amendment would constitute a material alteration of the mark. In reversing the Board's decision and remanding the case with instructions to accept the proffered amendment to the drawing, the court identified two distinct categories of amendments to drawings in trademark applications. The first category, exemplified by the case therein, is that in which "an initial application contains specimens showing the actual use of a mark in commerce, thus giving rise to ownership, and a drawing which does not correspond to the mark which the applicant owns" (emphasis original) (supra). The court concluded that the mark sought to be registered is the mark that applicant is actually using, as evidenced by the specimens. Thus, in seeking to amend its drawing to conform to the specimens, the court concluded that applicant is "merely seek[ing] to remove the ambiguity in the application as initially filed by correcting the drawing." (emphasis original) (supra.) The court found such action authorized pursuant to Trademark Rules 2.51(a)(1) and 2.72(b). The second category of amendments to drawings, as identified by the court, involves "attempts to amend marks after unambiguous applications to register have been filed." (emphasis original) (supra.) The court concluded that, in such cases, the appropriate inquiry, pursuant to Trademark Rules 2.51(a)(1) and 2.72(a), is whether the marks have been changed materially.
*2 The facts in the case before us differ from those in the Eccs case, supra, in that the application herein was filed initially on the Principal Register based upon a bona fide intention to use the mark in commerce, pursuant to Section 1(b) of the Trademark Act. [FN3] Section 1(b) provides, inter alia, "[a] person who has a bona fide intention ... to use a trademark in commerce may apply to register the trademark under this Act on the principal register ... (1) by filing in the Patent and Trademark Office - (A) a written application ...; and (B) a drawing of the mark." Because an application filed under Section 1(b) of the Act is based upon a bona fide intention to use a mark in commerce, rather than upon use in commerce, it is filed without any specimens of use. The mark sought to be registered in a Section 1(b) application is the mark depicted in the drawing, as averred in the application. Thus, in such an application, an amendment to the drawing subsequent to the filing date, albeit to reflect a mark later used by applicant, must fall into the second category of amendments to drawings described in Eccs, supra, wherein applicant is seeking to amend the mark after an unambiguous application has been filed.
The application herein includes a drawing of the mark, NY JEWELRY OUTLET, and applicant avers in the application that it seeks registration of NY JEWELRY OUTLET; thus, there is no ambiguity regarding the mark sought to be registered in the application. Therefore, the sole issue before us is whether NEW YORK JEWLERY OUTLET, applicant's mark as it appears in the specimens submitted with the amendment to allege use, is a materially different mark from NY JEWELRY OUTLET, applicant's mark as it appears in the drawing originally filed in the application. Trademark Rule 2.51(b)(2) provides, in part, "once an amendment to allege use ... has been filed, the drawing of the service mark shall be a substantially exact representation of the mark as used in the sale or advertising of the services[.]" Trademark Rule 2.72(a) provides, in part, "[a]mendments may not be made to the description or drawing of the mark if, the character of the mark is materially altered."
The Board has previously articulated a test for determining whether a change in a mark is material:
[T]he old and new forms of the mark must create the same general commercial impression or create the impression of being essentially the same mark.
In re Vienna Sausage Manufacturing Co., 16 USPQ2d 2044, 2046 (TTAB 1990). See also, Visa International Service Assn. v. Life-Code Systems, 220 USPQ 740, 743-744 (TTAB 1983).
Applicant argues that, since "NY" is an abbreviation for "New York," amending the mark to substitute NEW YORK for NY retains the same commercial impression created by the original mark.
The Examining Attorney argues that the proposed amendment of NY to NEW YORK in the mark "constitutes addition of new matter to the original filed drawing and therefore constitutes a material alteration." (Examining Attorney's brief, p. 2.) He notes that the Office takes a "rigid approach" to determining whether an amendment to a mark materially alters the commercial impression engendered by the mark. In this regard, the Examining Attorney concludes, as a general principle, that new wording or non-generic matter cannot be added to a mark without such change constituting a material alteration of the mark.
*3 There appears to be no basis in law or practice for the Examining Attorney's "rigid approach" argument. Section 807.14(a) of the Trademark Manual of Examining Procedure (TMEP) directs Examining Attorneys to apply the test for material alteration enunciated in the applicable cases, which test is stated above. This TMEP section was rewritten in the second edition (May 1993) to correct any impression that the earlier version of the section, in encouraging a flexible approach to the Examining Attorney's analysis, was setting a standard at odds with the decisional law. See, In re Vienna Sausage Manufacturing Co., 16 USPQ2d 2044 (TTAB 1990); and In re Wine Society of America Inc., 12 USPQ2d 1139 (TTAB 1989). However, a "rigid approach" is likewise at odds with the decisional law and is not the standard set forth in the TMEP. The TMEP specifically directs that "[e]ach case should be considered in light of the specific circumstances," which is consistent with the relevant decisional law. (§ 807.14(a), supra.) See also, In re Larios S.A., 35 USPQ 1214 (TTAB 1995).
Applying the test enunciated above, we find that the proposed amendment to the drawing is not a material alteration of the mark. We agree with the applicant that "NY" is clearly an abbreviation for "New York" and, thus, while visually different, "NY" and "New York" are interchangeable as the two terms have the identical meaning or connotation. The Examining Attorney previously made of record an except from The American Heritage Dictionary (2d ed.), abbreviations section, indicating that "NY" and "N.Y." are abbreviations of "New York." We are unpersuaded by the Examining Attorney's unsupported hypothesis that only consumers on the east coast of the United States are likely to recognize NY as an abbreviation for New York. Additionally, the Examining Attorney concludes that NY and NEW YORK are visually and phonetically different. While this is literally true, it does not account for the fact that NY is an abbreviation of NEW YORK, i.e., it is a recognized shortened form of the same term.
We conclude that the commercial impression of the original mark, NY JEWELRY OUTLET, is not changed by the amendment of the mark to NEW YORK JEWELRY OUTLET and, thus, the amended mark is not a material alteration of the original mark.
Decision: The refusal to register on the ground that the specimens do not evidence use of the mark in the application is reversed. Applicant is allowed until thirty days from the date of this decision to submit an amended drawing of the mark as NEW YORK JEWELRY OUTLET, in conformance with the applicable rules for drawings, following which the application shall be forwarded for issuance of the registration on the Supplemental Register.
J. E. Rice
E. J. Seeherman
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board
FN1. Serial No. 74/517, 872, in International Class 42, filed April 28, 1994, based on a bona fide intention to use the mark in commerce. Initially, the Examining Attorney refused registration on the Principal Register pursuant to Section 2(e)(2) of the Trademark Act, 15 U.S.C. 1052(e)(2) on the ground that NY is primarily geographically descriptive in connection with the identified services and required a disclaimer of JEWELRY OUTLET. In response thereto, on December 30, 1994, applicant filed its amendment to allege use of the mark in commerce, alleging first use on November 25, 1994, and first use in commerce on December 10, 1994. At the same time, applicant amended the application to the Supplemental Register and entered a disclaimer of JEWELRY OUTLET apart from the mark as a whole. The Examining Attorney, after several Office Actions, accepted the amendment to allege use and the amendment of the application to the Supplemental Register.
FN2. The specimens consist of two photographs, one showing a printed sign or billboard-like advertisement with the mark NEW YORK JEWELRY OUTLET, and the other showing a storefront with a sign reading NEW YORK JEWELRY above the store entrance and a partially obscured sign or advertisement in the store window with the words JEWELRY OUTLET visible in the photograph.
FN3. As previously stated, applicant herein, along with its amendment to allege use, amended its application to the Supplemental Register. This fact is not relevant to our consideration of whether the application contained any ambiguity at the time of filing with regard to what is the mark sought to be registered.