Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE C. R. ANTHONY COMPANY
Serial No. 570,395
March 13, 1987
Laney, Dougherty, Hessin & Beavers for applicant
Trademark Examining Attorney
Law Office 4
(Thomas Lamone, Managing Attorney)
Before Sams, Allen and Simms
Opinion by Sams
C. R. Anthony Company has appealed from the Trademark Examining Attorney's final refusal to register the mark 'PART OF THE BARGAIN' for 'retail department store services.' [FN1] Citing sections 2, 3 and 45 of the Trademark Act, the Examining Attorney refused registration on the ground that the designation sought to be registered would not be perceived as a service mark that identifies and distinguishes the source of applicant's retail store services.
The record in this case shows that applicant uses the phrase 'PART OF THE BARGAIN' in a number of ways in conjunction with advertising its retail department store services. The specimens of use submitted with the application were advertising circulars for applicant's department stores. On the back page of the circular appears the following statement: 'Anthony's NEW Credit Card is Now part of the bargain." When the Examining Attorney held that the words 'PART OF THE BARGAIN', as shown in the specimens submitted with the application, served only as four words forming part of a sentence in applicant's advertising text and, as such, did not function, in and of themselves, as a service mark for applicant's services, applicant submitted examples of other uses it had made of the phrase 'PART OF THE BARGAIN.'
Among the several exhibits offered by applicant were the following: (1) an advertising circular showing graphic reproductions of three nationally distributed credit cards, followed by the wording 'Are Part of the Bargain for Convenient Shopping.", (2) an advertising circular on the cover of which are the words 'ANTHONYS Where 24 Convenient Locations are Part of the Bargain.", (3) an advertising circular showing the statement 'Spring fashion savings are part of the bargain'.', (4) a printer's copy of an advertisement showing the statement 'Name Brands are part of the bargain'.', (5) several 'television air copy lead sheets,' which show that, in television advertising for applicant's services, applicant has included statements such as '25% off and more.' Spring savings that are part of the Bargain at Anthony's,' 'A Spring-time part of the bargain at Anthony's,' 'A good lookin' part of the bargain at Anthony's,' 'it's part of the bargain at Anthony's,' 'Haggar savings are part of the bargain,' and 'Anthony's where Donnkenny co-ordinates are a great part of the bargain', (6) an 'air copy' of a radio advertisement for applicant's services, which copy includes the statements 'Wrangler Boot Cut jeans, always part of the bargain at Anthony's' and 'it's part of the bargain at Anthony's', and (7) a point-of-purchase cardboard display card including the language 'The Anthony's Allegiance Club is part of the bargain.' Applicant argues that 'PART OF THE BARGAIN' is used as a 'slogan-type mark' which makes an impression as a service mark because of 'its repetition and accentuation' (applicant's appeal brief, 3- 4) in applicant's advertising, as illustrated by the above-described (and other) exhibits made of record by applicant.
*2 Not every word or combination of words used in the advertising of services is registrable as a service mark. Only those words which are used as and function as service marks are registrable as such. Whether the words sought to be registered as a service mark function as such must be determined by reference to the specimens of use and other examples of use made of record by applicant. See In re Wakefern Food Corp., 222 USPQ 76, 77 (TTAB 1984) [and cases cited there]. We draw several conclusions from the evidence submitted by applicant to show its use of the phrase 'PART OF THE BARGAIN.' First, while the phrase 'PART OF THE BARGAIN' is sometimes buried in small print in text contained in advertising circulars and the like (for example, as shown in the specimens originally submitted with the application), other exhibits of record show a prominent use (in terms of size of lettering) of 'PART OF THE BARGAIN' (for example, the point-of-purchase cardboard display made of record by applicant). Nonetheless, in every exhibit submitted by applicant to illustrate use of 'PART OF THE BARGAIN', that four-word phrase, whether written small or large, forms part of a longer sentence of phrase. Stating the point differently, applicant has offered no evidence that 'PART OF THE BARGAIN' is used, alone, as a slogan in the advertisement of applicant's retail department store services. We conclude, on this record, that applicant has often used the phrase 'PART OF THE BARGAIN' in advertising its services; that use in applicant's advertising is insufficient, however, to illustrate that 'PART OF THE BARGAIN' would, in and of itself, be perceived as a service mark to identify applicant's department store services and distinguish them from the like services of others. Instead, we believe purchasers would view the words 'PART OF THE BARGAIN', in all the uses illustrated in the record, as no more than words used to compose phrases and sentences that form part of the advertising copy of advertisements with diverse messages. See In re Royal Viking Line A/S, 216 USPQ 795 (TTAB 1982) ['WORLD CLASS' held not to function as a service mark, where those words were used repeatedly, with other words in advertising copy, to refer to a range of services offered by an applicant in conjunction with its cruise ship services].
Decision: The refusal to register is affirmed.
J. D. Sams
D. B. Allen
R. L. Simms
Members, Trademark Trial and Appeal Board
FN1. Serial No. 570,395, filed November 25, 1985. Applicant disclaimed the word 'BARGAIN' apart from the mark as a whole. Section 6 of the Trademark Act.