In Re Thrifty Inc
| Decision Date | 13 December 2001 |
| Docket Number | No. 01-1111,01-1111 |
| Citation | 274 F.3d 1349 |
| Parties | (Fed. Cir. 2001) IN RE THRIFTY, INC |
| Court | U.S. Court of Appeals — Federal Circuit |
Samuel D. Littlepage, Dickinson Wright, PLLC, of Washington, DC, argued for appellant. With him on the brief was Marc A. Bergsman.
Linda Moncys Isacson, Associate Solicitor, Office of the Solicitor, of Arlington, Virginia, argued for appellee. With her on the brief were John M. Whealan, Solicitor; and Raymond T. Chen, Associate Solicitor. Of counsel was Nancy C. Slutter, Acting Deputy Solicitor.
Before MICHEL, RADER, and LINN, Circuit Judges.
Thrifty appeals the decision of the Trademark Trial and Appeal Board ("TTAB") sustaining the Examining Attorney's refusal to register the mark proposed in its service mark application. See In re Thrifty, Inc., Ser. No. 75/193,074, 2000 TTAB LEXIS 604 (Aug. 30, 2000). Because substantial evidence supports the TTAB's finding that Thrifty failed to provide an acceptable description of the mark in its application, we affirm.
Thrifty filed an application for service mark on October 31, 1996. The application initially describes the mark as "the color Blue," used in connection with a list of services:
AUTOMOBILE, TRUCK AND RECREATIONAL VEHICLE RENTING AND LEASING; PARKING PLACE SERVICES; AND TRANSPORTATION SERVICES BY LIMOUSINE OR BUS in Int. Cl. 39
The application states that the mark was first used by applicant in connection with the services "at least as early as May 8, 1986," and is used as a service mark "by depicting it in promotional literature and advertisements, as well as on signage, canopy facia, vehicles, and displays closely associated with the services" ("the 'method of use' clause"). The application also includes a drawing and a specimen. The drawing shows a building, most likely depicting a Thrifty 'vehicle rental center,' in dotted lines having an upper wall that is lined for color. The specimen appears to be a Thrifty advertisement featuring several color photos including one showing a Thrifty vehicle rental center with a Thrifty vehicle parked alongside, and other photos showing Thrifty signs, rental cars, and a driver wearing a blue Thrifty uniform.
In a first Office Action, the Examining Attorney refused to register the proposed mark and further required that Thrifty submit a concise description of the mark pursuant to 37 C.F.R. 2.35. Thrifty responded by submitting an amendment dated November 19, 1997 including a "Description of the mark" as follows:
The mark consists of the color blue used in connection with the services set forth in the application. The color blue is used on vehicle rental centers, signs, vehicles, uniforms, and in other advertising and promotional materials to show that the color blue identifies and distinguishes applicant's services.
Thrifty's Nov. 19 response also included argument further describing its proposed mark:
Applicant's mark comprises the color blue as it is used by applicant in connection with the services identified in the application. Applicant's mark is not limited to the color blue as used on its vehicle rental centers. The building is a "carrier" of the mark, as are Applicant's blue shuttle buses, blue uniforms, blue signs, and other advertising and promotional materials featuring the color blue.
In a second Office Action, the PTO refused to accept Thrifty's "Description of the mark" because the description did not agree with the mark shown in the drawing and because it described more than one mark. Thrifty filed an amendment modifying its description to recite "the solid color blue (Pantone Matching System 300)," but the Examining Attorney refused registration in a final Office Action, on the basis that Thrifty had failed to provide an acceptable description of the mark.
The TTAB affirmed the Examining Attorney's refusal to register. Thrifty, 2000 TTAB LEXIS 604, at *15-16. In support of its decision, the TTAB stated "there is no question that the mark for which application was made is the mark shown in the drawing--the color blue placed on the wall of a building--and not the color blue in general." Id. at *8. Having found that the applied-for mark was the mark shown in the drawing, the TTAB found that Thrifty's Nov. 19 amendment was an impermissible material alteration of the mark and affirmed the Examining Attorney's refusal to register. Id. at *15-16.
This appeal followed. We have jurisdiction over Thrifty's appeal pursuant to 28 U.S.C. 1295(a)(4)(B) (1994).
We review the TTAB's conclusions of law de novo and affirm its findings of fact if they are supported by substantial evidence. On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000). A review for substantial evidence "involves examination of the record as a whole, taking into account evidence that both justifies and detracts from an agency's decision." In re Gartside, 203 F.3d 1305, 1312, 53 USPQ2d 1769, 1773 (Fed. Cir. 2000) (citing Universal Camera Corp. v. NLRB, 340 U.S. 474, 487-88 (1951)). Moreover, "the possibility of drawing two inconsistent conclusions from the evidence does not prevent an administrative agency's finding from being supported by substantial evidence." Id. (quoting Consolo v. Fed. Mar. Comm'n, 383 U.S. 607, 620 (1966)).
B. Analysis
Thrifty contends on appeal that its original application was directed to the color blue in general, not limited to placement on a building, and that its Nov. 19 amendment did not constitute an impermissible material alteration of the mark. Thrifty claims that the drawing submitted with the original application shows the building in dotted lines, demonstrating that the building was not claimed as part of the mark. Thrifty argues that the specimens submitted show the mark used in connection with "carriers" other than a building, including shuttle buses, uniforms, and cars. Thrifty argues that the 'method of use' clause in its original application identifies the mark as the color blue used in a variety of physical formats.
The TTAB opinion notes that Thrifty previously applied to register the color blue, without submission of a drawing. Thrifty, 2000 TTAB LEXIS 604, at *9. The PTO refused to accord a filing date to that previous application because no drawing was included. Id. The TTAB correctly notes that if Thrifty wished to contest the drawing requirement, it could have petitioned the Commissioner, but instead chose to file the present application including a drawing of a building. Id.
The TTAB relies on Trademark Rule 2.52(a) to support its finding that the original application was directed to the color blue placed on the wall of a building. Id. at *8. Trademark Rule 2.52(a) states, "[a] drawing depicts the mark sought to be registered." 37 C.F.R. 2.52(a) (2001). The TTAB found no inconsistency in Thrifty's application that would suggest application of In re ECCS, Inc., 94 F.3d 1578, 39 USPQ2d 2001 (Fed. Cir. 1996). In that case, this court held that where the specimen displays one mark, and the drawing shows a different mark, the specimen should be examined to determine what an applicant wishes to register. Id. at 1581, 39 USPQ2d at 2004. In so holding, the opinion in ECCS expressly distinguished the case where there is no inconsistency between the specimens and drawing as originally filed. Id. at 1582, 39 USPQ2d at 2005.
This case does not involve an inconsistency between the drawing and the specimens submitted with the original application, and thus the holding of ECCS is inapplicable. In light of section 2.52(a), the TTAB correctly considered the content of the drawing submitted with the original application, which shows a building. Thus, substantial evidence appears in the...
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