183 F.3d 1361 (Fed. Cir. 1999), 74/532528, In re In Re International Flavors& Fragrances

Docket Nº:74/532528
Citation:183 F.3d 1361
Party Name:In re In Re International Flavors& Fragrances
Case Date:July 20, 1999
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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183 F.3d 1361 (Fed. Cir. 1999)

IN RE INTERNATIONAL FLAVORS & FRAGRANCES INC.

98-1517

(Serial Nos. 74/532,528, 74/532,529, 74/591,331)

United States Court of Appeals, Federal Circuit

July 20, 1999

Appealed from: U.S. Patent and Trademark Office Trademark Trial and Appeal Board

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[Copyrighted Material Omitted]

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Arthur L. Liberman, Patent and Trademark Counsel and Assistant Secretary, International Flavors & Fragrances Inc., of New York, New York, argued for the appellant. With him on the brief were Robert G. Weilacher and Helen Hill Minsker, Beveridge, DeGrandi, Weilacher & Young, LLP, of Washington, DC.

Albin F Drost, Acting Solicitor, U.S. Patent and Trademark Office, of Arlington, Virginia, argued for the appellee. With him on the biref were Michael J. Donnelly and Nancy C. Slutter, Associate Solicitors.

Before CLEVENGER, BRYSON, and GAJARSA, Circuit Judges.

GAJARSA, Circuit Judge.

International Flavors & Fragrances Inc. ("IFF") appeals from a decision of the U.S. Patent and Trademark Office Trademark Trial and Appeal Board ("the Board") affirming the final rejections of three trademark applications, Application Serial Nos. 74/532,528, 74/532,529, and 74/591,331, each seeking to register a "phantom" trademark.1 See In re International Flavors & Fragrances Inc., 47 USPQ2d 1314 (TTAB May 19, 1998). Because we find that the Board did not err in refusing to register the marks described in IFF's applications, we affirm.

BACKGROUND

Appellant IFF is a New York corporation engaged in the business of producing and marketing flavor and fragrance essences. In 1994, IFF sought to register with the U.S. Patent and Trademark Office ("the PTO") "LIVING XXXX FLAVORS" and "LIVING XXXX FLAVOR"2 as trademarks for the following goods:

essential oils for use in the manufacture of flavored foodstuffs, smoking tobacco compositions,

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smoking tobacco articles, chewing tobacco compositions, chewing gums, oral care products and beverages in International Class 3; and non-synthetic and synthetic flavor substances for use in the manufacture of flavored foodstuffs, smoking tobacco compositions, chewing tobacco compositions, smoking tobacco articles, chewing gums, oral care products and beverages in International Class 30.

In both applications, the "XXXX" served to denote "a specific herb, fruit, plant or vegetable." The '528 application included a specimen showing the use of the mark "LIVING GREEN BELL PEPPER FLAVORS" and the '529 application included two specimens showing the use of the marks "LIVING STRAWBERRY FLAVOR" and "LIVING CILANTRO FLAVOR."

Later in 1994, IFF filed Application Serial No. 74/591,331 ("the '331 application") seeking to register "LIVING XXXX" for use in connection with

non-synthetic and synthetic flavor substances for use in the manufacture of colognes, cosmetics, hair preparations, toiletries, detergents, fabric softeners, odorants, deodorants, bleaches, brighteners and air fresheners, in Class 1; and essential oils for use in the manufacture of colognes, cosmetics, toiletries, hair preparations, detergents, fabric softeners, odorants, deodorants, bleaches, brighteners and air fresheners in Class 3.

The "XXXX" placeholder indicated "a botanical or extract thereof, to wit: 'flower', 'fruit', 'yellow sunset orchid', 'osmanthus', 'fragrance', 'raspberry' and the like." The application included the following specimens: "LIVING FLOWERS," "LIVING MINT," "LIVING FRAGRANCE," "LIVING FRUIT," "LIVING OSMANTHUS," and "LIVING RASPBERRY."

The trademark examining attorney rejected registration of the marks because the specimens did not match the marks depicted in the specimens, i.e., the specimens did not have an "XXXX" element. IFF then entered disclaimers for the terms "FLAVOR" and "FLAVORS"3 and amended the applications to add that "the 'XXXX' designations are themselves not part of the mark." IFF offered to replace the "XXXX" designation with broken lines, the PTO's preferred method for indicating a missing element in a trademark registration under 37 C.F.R. § 2.51(d) (1998). The examining attorney issued a final rejection denying the registration and IFF appealed to the Board.

In its opinion, the Board stated that under In re ECCS, Inc., 94 F.3d 1578, 39 USPQ2d 2001 (Fed. Cir. 1996), IFF would be able to amend the submitted drawings to conform with the specimens. The Board noted, however, that amendment of the drawings was not the real issue in the rejection; the crux of the matter was that the "applicant wishes to protect, in three registrations . . . an unknown number of marks." In re International Flavors & Fragrances, 47 USPQ2d at 1317. The Board recognized that trademark examining attorneys had taken contrary positions as to the registerability of marks which contain "phantom" elements and that there was no formal PTO policy concerning the registerability of "phantom" marks. See id. However, the Board stressed the importance of "applicants to place all on notice of the precise mark(s) being sought to be registered" and that:

to the extent...

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