TTAB - Trademark Trial and Appeal Board - *1 IN RE DIAMOND HILL FARMS Serial No. 74/248,825 July 12, 1994

Trademark Trial and Appeal Board

Patent and Trademark Office (P.T.O.)



Serial No. 74/248,825

July 12, 1994


Avalyn J. Pitts



Trademark Examining Attorney



Law Office 13



(Craig Morris, Managing Attorney)



Before Rice, Seeherman and Hairston



Administrative Trademark Judges



Opinion by Seeherman



Administrative Trademark Judge



 Diamond Hill Farms has appealed the refusal of the Trademark Examining Attorney to register DIAMOND HILL FARMS, with the word "Farms" disclaimed, for raw potatoes. [FN1] Registration has been refused pursuant to Section 45 of the Trademark Act, 15 U.S.C. § 1127, on the ground that applicant uses the applied-for term as a trade name, rather than as a trademark.



 A designation used merely as a trade name cannot be registered under the provisions of the Lanham Trademark Act. GAF Corporation v. The Tappan Company, 197 USPQ 696 (TTAB1977). Applicant concedes that DIAMOND HILL FARMS is its trade name, and that one of the functions of this phrase, as it is used on its specimens, is as a trade name. However, applicant points out that a term may function as both a trade name and a trademark, In re Walker Process Equipment Inc., 233 F.2d 329, 110 USPQ 41 (CCPA1956), and asserts that as applicant uses the term, DIAMOND HILL FARMS functions as both.



 The question of whether a name used as a trade name also functions as a trademark is one of fact, and is determined from the manner in which the name is used and the probable impact on purchasers and prospective purchasers. In re Univar Corp., 20 USPQ2d 1865 (TTAB1991). In this case, the only evidence we have are the specimens, applicant not having submitted any declarations or other material which would indicate the commercial impression of the words.



 The specimens of record are photographs of bags in which the potatoes are sold. [FN2] Filling what appears to be the top half or top two thirds of the bag are the words NEBRASKA CERTIFIED SEED POTATOES, in large letters, with the word CERTIFIED superimposed on what appears to be a representation of the state of Nebraska. Below this, all in one (smaller) size and type style, is the following information:







100 LBS. NET WT. 45.36 KILOS NET WT.




 Applicant argues that, as shown in the specimens, DIAMOND HILL FARMS functions as a trademark because this phrase is uniquely different from the other generally geographical or product information on the bag, and of all the matter appearing on the bag, DIAMOND HILL FARMS is the most distinctive and source identifying.



 We are not persuaded by this argument that applicant's specimens exhibit trademark use. Even if we assume that DIAMOND HILL FARMS is the only evidence of origin on applicant's potato sacks, this does not necessarily mean that it functions as a trademark for the goods. See In re Unclaimed Salvage & Freight Company, Inc., 192 USPQ 165 (TTAB1976).



  *2 Because of the way DIAMOND HILL FARMS is depicted on the specimen sacks, the commercial impression is that it is informational, i.e., the name of the producer of the goods, and is part of the other informational material, such as applicant's location and the weight of the potatoes, which applicant has provided on the bottom of the bag. Moreover, DIAMOND HILL FARMS and the address are both shown in blue letters, while the wording above and below these lines is in red. As a result, these two lines form a visual unit which reinforces the impression that DIAMOND HILL FARMS is a trade name. We recognize that the fact that a phrase may appear with an address does not automatically mean that it will be perceived as a trade name and not as a trademark. However, in those cases in which trademark usage was found, the address has appeared in a smaller print or different display from the trademark. See In re Brand Advertising, Inc., 175 USPQ 720 (TTAB1972) ("Brand Advertising" depicted above and in much larger letters than "inc" and "ROCKEFELLER BLDG./CLEVELAND, OHIO 44113/(216) 696-4550); see also Book Craft, Inc. v. BookCrafters USA, Inc., 222 USPQ 724 (TTAB1984). In the present case, the address appears in the exact type style, size and color as the address.



 Accordingly, we find that as used by applicant on its specimens, DIAMOND HILL FARMS would be perceived by purchasers and prospective purchasers as a trade name serving to identify applicant as a business entity rather than as a mark which identifies and distinguishes applicant's goods from those of others.



 Decision: The refusal of registration is affirmed.



J.E. Rice



E.J. Seeherman



P.T. Hairston



Administrative Trademark Judges, Trademark Trial and Appeal Board



FN1. Application Serial No. 74/248,825, filed February 24, 1992, and asserting first use and first use in commerce on October 17, 1980.



FN2. These photographs will not reproduce clearly enough to be included in this opinion.


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