Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE HECHINGER INVESTMENT COMPANY OF DELAWARE, INC.
Serial No. 73/822,385
August 22, 1991
Aaron B. Retzer of Epstein, Edell & Retzer for applicant
Trademark Senior Attorney
Law Office 5
(Mary I. Sparrow, Managing Attorney)
Before Sams, Rooney and Hohein
Opinion by Hohein
An application has been filed by Hechinger Investment Company of Delaware, Inc. to register the dog design shown below as a service mark for "retail hardware, housewares, lumber and millwork store services". [FN1]
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
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 dog design 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 four 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 dog design, used as a drawing of a fanciful dog character, appears immediately above the character name "Twobafor" and 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 dog design. It does not appear in any other context nor is it used in connection with the promotional advertising copy. Moreover, the name of the dog, "Twobafor," 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 several similar advertising supplements. The advertisements, however, likewise show use of the dog design in the same manner as the original specimens, that is, as a fanciful dog character with the character name "Twobafor" appearing in close proximity thereto and in lettering as small as and indistinguishable from any used in the advertising copy describing the goods being offered for sale. One advertisement depicts a dog character in a different pose as part of an illustration in which only its grinning head pokes above a pile of leaves next to two trash cans. In a similar vein, another advertisement, captioned "Discover Columbus Day VALUES at HECHINGER," shows a dog character partially hidden in a pile of leaves, with its ears upright and a surprised and fearful expression on its face, being blown along with the leaves by an electric blower held by a second character while a third character spreads fertilizer on a lawn. The latter two characters, referred to as "Harry & Harriet Homeowner," are featured, along with the dog character designated as "Twobafor," immediately above illustrations of and advertising copy for an electric blower and a bag of lawn fertilizer.
*2 Two other advertisements, which ran as newspaper supplements to the Sunday, November 20, 1988 edition of the Washington Post and the Sunday, November 27, 1988 edition of the Columbus Dispatch, respectively feature a smiling dog character asleep in a recliner next to a burning log in a fireplace and a happy dog character, dressed in a blue sweater, standing amidst a group of Christmas trees. In both advertisements, the fireplace logs and Christmas trees, which are the goods respectively depicted in the illustrations involving the fanciful dog character named "Twobafor," are described in advertising copy appearing immediately below the illustrations.
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 'dog design' associate the mark with the availability of the applicant's services; therefore, the 'dog design' properly functions as a service mark." In this regard, applicant asserts that it is the owner of the character names "HARRY HOMEOWNER," Registration No. 787,947, and "HARRIET HOMEOWNER," Registration No. 1,043,141, which are registered on the Principal Register for the same services and that the figures or representations of such characters are utilized on advertising materials in the same manner as the dog design designated by the term "TWOBAFOR". Therefore, applicant maintains, the dog design 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 character 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 dog design, which appears only in connection with the name "Twobafor," is used solely as a fanciful or fictitious dog character which is featured, in a variety of different poses, as an element of illustrations appearing in advertisements. While applicant contends that other names, such as "HARRY HOMEOWNER" and "HARRIET HOMEOWNER," and the characters designated thereby, have been used in a similar manner in its advertisements and that the names, although not the representations of the characters themselves, 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, which presumably show use of such character names and their associated depictions 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 design sought to be registered is used and the commercial impact created thereby in order to determine what function the design performs in the particular circumstances shown.
*3 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 dog design does not identify a process, [FN4] applicant insists that by displaying the dog design next to the name "TWOBAFOR" 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 dog design and its services. Applicant maintains that consumers are easily able to identify applicant as the source of its services through its use of the dog design.
As the Examining Attorney has noted, fictitious or fanciful characters may function to identify and distinguish the source of goods or services. See, e.g., In re DC Comics, Inc., 689 F.2d 1042, 215 USPQ 394 (CCPA 1982) and In re Red Robin Enterprises, Inc., 222 USPQ 911 (TTAB 1984). Nevertheless, in order to be registrable, the use of such a character, however arbitrary it may be in its conception, must be perceived by the purchasing public not just as a character but also as a mark which identifies and distinguishes the source of the goods or services. Where the usage of a character in the specimens of record fails to impart any commercial impression as a trademark or service mark, it is not registrable as such. See In re Burger King Corp., 183 USPQ 698, 700 (TTAB 1974).
In the present case, the commercial impression created by applicant's use of a dog design in different poses and contexts is clearly and simply that of a fanciful dog character named "Twobafor" 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 various dog designs in applicant's advertisements would invariably view them solely as a representation of an amicable and playful dog, since such is the only manner in which the designs are being used, and thus would not regard the different dog designs as identifying and distinguishing retail hardware, housewares, lumber and millwork store services. In particular, the specific dog design sought to be registered--that of a fanciful hound leaning on its front paws with its tail in the air--exclusively appears in the specimens originally submitted and not in any other advertisements. Consequently, none of the specimens demonstrate that the dog design applicant seeks to register functions as a service mark for applicant's services.
*4 Finally, applicant argues that where a stationary and unchanging mark is used as a designation of source, it properly functions as a service mark. Thus, unlike the situation in either In re Burger King Corp., supra, in which a fanciful king character eating hamburgers in an animated television commercial was held not to be registrable as a service mark for restaurant and carry-out food services, or the circumstance in KGB, Inc. v. Giannoulas, 211 USPQ 285, 291 (Cal.Ct.App.1980), in which it was held that a person appearing in a chicken costume cannot be a service mark, applicant maintains that its dog design, which appears in print advertising and hence lacks movement, is registrable since it designates applicant as the source of the services it renders to the public.
We concur, however, with the Examining Attorney that the fact that applicant's dog design is, in a sense, immutable and does not perform or move as either a live or animated character would customarily do, is of no moment. While the dog character is plainly not the service itself, and the Examining Attorney does not contend otherwise, we share the observation, with respect to the illustrations in applicant's advertising which feature a dog character, that:
Each illustration shows a different portrayal of the dog character, based on the context of the illustrations in the advertisements; it is presumed that this portrayal will constantly change, based on the context of the illustration. In short, the dog character is used as an element in illustrations to "tell a story", similar to the appearance of a recognized cartoon character who, depicted in different poses and attitudes in different panels of a comic strip or comic book, "tells a story". The page entitled ["EXHIBIT A " referencing the] "dog design" included in the licensing agreement made of record in the applicant's response of November 27, 1990, clearly shows the use of the dog design as a story character, portrayed in different whimsical positions depending on the context of the illustrations in which it appears.
[Applicant's dog character] ... does not appear in advertising copy for any products; it does not promote items as special bargains; it does not identify store locations or hours of operation; it is not used in proximity to the mark HECHINGER. The character itself is used in a manner analogous to the character in In re Burger King Corp., supra, which was depicted in a variety of poses and scenes, along with other characters, in a television advertisement for the applicant's restaurant services. The Board held that such usage in the advertisement did not impart any commercial impression to viewers as a mark for restaurant services, despite [the] appearance of the character of a king in association with the primary service mark, also featured in the ad, BURGER KING. Here, association of the fanciful dog character is less likely to create an association with the applicant's retail service, rendered under the primary mark HECHINGER, no verbal or visual connotation or physical connection, existing between the surname and the fanciful dog character.
*5 Accordingly, the fact that applicant's dog character is not animated does not lessen or otherwise alter the fact that, as used on the specimens, the dog design fails to identify and distinguish applicant's retail hardware, housewares, lumber and millwork store services from those of others. The dog design applicant seeks to register does not function as a service mark but, rather, is merely one representation (which apparently was used only one time) of a fanciful character that changes to conform to the situation depicted in a particular illustration.
Decision: The refusal to register is affirmed.
Members, Trademark Trial and Appeal Board
FN1. Ser. No. 73/822,385, filed on August 29, 1989, which alleges dates of first use of August 3, 1988. The drawing, reproduced above, is lined for the colors "brown" and "red".
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.