Upper Deck Co.

2/14/01 THIS DISPOSITION

IS CITABLE AS PRECEDENT

OF THE T.T.A.B. Paper No. 16

HWR

UNITED STATES PATENT AND TRADEMARK OFFICE

________

Trademark Trial and Appeal Board

________

In re The Upper Deck Company

________

Serial No. 75/064,130

_______

Paul F. Kilmer and Stephen J. Jeffries of Gadsby & Hannah

LLP for The Upper Deck Company.

Meryl L. Hershkowitz, Managing Attorney, Law Office 113.

_______

Before Simms, Seeherman and Wendel, Administrative

Trademark Judges.

Opinion by Wendel, Administrative Trademark Judge:

The Upper Deck Company has filed an application to

register the mark depicted below for “trading cards.”1

1

Serial No. 75/064,130, filed February 21, 1996, claiming a date

of first use and first use in commerce of May 30, 1988.

Ser No. 75/064,130

The mark is described as follows:

The mark consists of a hologram device which is

applied to the goods, trading cards. The mark is

discrete from and does not constitute a part of the

subject matter of the trading card. Neither the size

nor the shape of the hologram device, nor any content

which may be represented within the hologram device,

nor the positioning of the hologram device on the

trading card are claimed as features of the mark.

The drawing is lined for the color silver, but color is

also not claimed as a feature of the mark.

Registration has been finally refused under Section 1,

15 U.S.C. § 1051, of the Trademark Act on the ground that

applicant is seeking to register more than one mark.

Registration has also been finally refused under Sections

1, 2, and 45, 15 U.S.C. §§ 1051, 1052, and 1127, of the

Trademark Act on the ground that the proposed mark does not

function as a trademark.

The refusals have been appealed and both applicant and

the Examining Attorney have filed briefs.2 No oral hearing

was requested.

Seeking to Register More Than One Mark

The Examining Attorney bases this refusal on the

recent holding of our principal reviewing court in In re

International Flavors & Fragrances Inc., 183 F.3d 1361, 51

2

The application was reassigned to the Managing Attorney for

preparation of the Examining Attorney’s brief. For purposes of

this opinion, we have used the term Examining Attorney to refer

to both the prior Examining Attorney and the Managing Attorney.

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Ser No. 75/064,130

USPQ2d 1513 (Fed. Cir. 1999) that, under Section 1 of the

Trademark Act and the rules promulgated thereunder, a

trademark application may only seek to register a single

mark. Here, as she points out, the description of the mark

identifies the mark as a hologram device, in any size,

shape, content or position on the trading card. The mark

as shown on the specimens of record covers a variety of

shapes, such as a baseball field, a racing flag, a star, a

diamond and others, in various sizes and positions on the

cards, most of which appear to have the words UPPER DECK

embedded in the hologram. Thus, the Examining Attorney

argues, applicant is seeking to register an unknown number

of marks in this one application.

The Examining Attorney likens the present situation to

that in In re International Flavors, supra, in which the

Court found applications seeking to register LIVING XXXX

FLAVORS and LIVING XXXX FLAVOR (with the XXXX intended to

represent a specific herb, fruit, plant or vegetable),

along with LIVING XXXX (with the XXXX intended to represent

a botanical or extract thereof), to be in violation of the

one mark per application requirement of the Lanham Act.

She argues that similar to the “phantom marks” in that case

and to the multiple likenesses or images of Elvis Presley

involved in In re Elvis Presley Enterprises, Inc., 50

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Ser No. 75/064,130

USPQ2d 1632 (TTAB 1999), the hologram designs which

applicant is seeking to register constitute more than one

mark. The Examining Attorney contends the present

application is even more “problematic” than the other cases

in that:

Here, not just a few words may be changed in

any particular mark, and not just one individual

in different poses is displayed, but other

significant elements such as size, shape, content

and position are variable. ... By disregarding

the shape, size, positioning and content of the

hologram, applicant is in effect claiming any

hologram on a trading card as its mark, making it

impossible for the public or the examining

attorney to know what elements make up

applicant’s mark. Moreover, allowance of such a

mark would effectively grant applicant a monopoly to

bar any one else from using a hologram as a mark on a

trading card. (Brief, p. 7).

The Examining Attorney also points to the problem of

notice to the public or to the Examining Attorney as to the

elements which actually comprise the mark or the commercial

impression created thereby. She notes the difficulty of

the Examining Attorney in performing an adequate search of

the mark without any indication of the particular design of

the hologram.

Applicant insists, on the other hand, that the matter

it describes as its mark falls squarely within the

definition in Section 45 of the Trademark Act of a

“trademark” as “any... device... used by a person... to

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Ser No. 75/064,130

identify and distinguish his or her goods... from those

manufactured or sold by others and to indicate the source

of the goods... .” Applicant contends that its mark is a

single “device,” namely a hologram, and that “[p]erception

of the recognizable physical and visual properties of a

hologram is not dependent upon the size or shape of the

hologram, or by the particular place where the hologram is

affixed to the goods.” (Brief, p. 4).

Applicant relies upon the Supreme Court’s observation

in Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S.

159, 34 USPQ2d 1161 (1995) that “[s]ince human beings might

use as a “symbol” or “device” almost anything at all that

is capable of carrying meaning, this language [Section 45],

read literally, is not restrictive.” It is because of

this, applicant argues, that a color, a scent, and a sound

have qualified as “trademarks,” and it is because of this

that applicant’s single device of a hologram appearing on

the face of a trading card qualifies as a “trademark.”

Applicant argues that, unlike the phantom marks

involved in In re International Flavors, there is no

missing element in its mark. The carved-out elements, such

as size or shape, according to applicant, are not

changeable features or even part of its mark; the only

device for which registration is sought is the presence of

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Ser No. 75/064,130

a hologram. Applicant argues that the Elvis Presley case

is similarly distinguishable, in that there the unspecified

and variable images of Elvis were part of the mark, whereas

here the variable elements are not part of the mark sought

to be registered.

Insofar as notice is concerned, applicant argues that

the nature of its mark is clearly set forth in the

description of the mark and the public would understand

what a hologram is. Applicant insists that since the

Examining Attorney included the statement in her first

action that no similar marks had been found, a search for

conflicting marks was in fact possible.

We find the Court’s holdings in In re International

Flavors fully applicable here. The Court succinctly stated

that an application must be limited to one mark. The Court

went on to note the function of registration as

constructive notice to the public of a registrant’s

ownership of a mark and that

[i]n order to make this constructive notice

meaningful, the mark, as registered, must

accurately reflect the way it is used in commerce

so that someone who searches the registry for

the mark, or a similar mark, will locate the

registered mark.

6

Ser No. 75/064,130

51 USPQ2d at 1517. Thus, the Court found that “phantom”

marks with missing elements cover too many combinations and

permutations to allow an effective search of the register.

We find applicant’s present attempt to register a

hologram which may have a myriad of shapes, sizes, contents

and the like to encompass an even larger number of

combinations than the XXXX-containing word marks in In re

Interational Flavors. The specimens themselves show the

varying commercial impressions created by the holograms as

used on the trading cards. The design may be a baseball

field, a racing flag, or whatever applicant adopts for that

particular card. The constructive notice which the Court

found fundamental to federal registration would be

virtually non-existent were applicant permitted to register

“a hologram” as applied to trading cards.3 While applicant

may argue that there are no missing or changeable elements

in its mark as described, there are clearly missing or

changeable elements insofar as the images presented to the

public are concerned.

We find strong similarities here to In re Elvis

Presley, supra, wherein the applicant sought to register

3

In response to applicant’s argument that a search was made by

the Examining Attorney, we simply note that the Examining

Attorney was concurrently requiring the limitation of the

description of the mark to the baseball field design shown on the

drawing and obviously searched this design only.

7

Ser No. 75/064,130

for use on fabric “the likeliness and image of Elvis

Presley” in all possible permutations, without limitation

as to age, pose, or the like. Here as in Presley,

applicant is attempting to register an idea or concept,

rather than a single mark. In the Presley case the

applicant wished to register all likenesses of a particular

person, regardless of the appearance of that person or the

specific pose, so long as it was that particular person.

Here applicant wishes to register the presence of a

hologram on a trading card, regardless of the physical

attributes such as shape or position of the hologram, other

than being a hologram.

In the Presley case we rejected the attempt to claim

the likeness of Elvis Presley in general as a single mark.

Here we reject the attempt by applicant to register the

presence of a hologram in general as a single mark. We do

not accept applicant’s argument that “a hologram” is a

single “device” under Section 45 of the Trademark Act. “A

hologram” is not the same as “a color”, or “a sound,” or “a

scent”. Each of the latter, as registered, is further

defined, e.g., a particular color or hue (a green-gold

color in the Qualitex case); a particular sound (the sound

made by a Ship’s Bell Clock in In re General Electric

Broadcasting Co. Inc., 199 USPQ 560 (TTAB 1978); a

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Ser No. 75/064,130

particular scent (a floral fragrance reminiscent of

Plumeria blossoms in In re Clarke, 17 USPQ2d 1238 (TTAB

1990).

We find that applicant’s “hologram,” without further

definition, constitutes more than one “device” as

contemplated by Section 45. Accordingly, we affirm the

refusal to register on the ground that applicant is seeking

to register more than one mark, which is prohibited under

Section 1 of the Trademark Act.

Proposed Mark Does Not Function as a Mark

While our affirmance of the preceding refusal is

sufficient to bar registration, in the interests of

completeness, we consider the refusal based on the ground

that the matter sought to be registered does not in fact

function as a mark. In doing so, we note that there were

many irregularities during the examination process with

respect to this ground. The original Examining Attorney

confusingly intertwined the terms “does not function as a

mark” and “functionality” throughout her arguments and

incorrectly refused to give any consideration whatsoever to

the Section 2(f) evidence which applicant submitted in

connection with this refusal. On review of the entire

record, however, we believe that applicant was on notice as

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Ser No. 75/064,130

to the true nature of the refusal4 and was aware that de

jure functionality was not an issue. Moreover, applicant

argued the significance of its Section 2(f) evidence in its

brief, the present Examining Attorney took the evidence

under consideration in her brief, and applicant had an

opportunity to respond thereto in its reply brief.

Accordingly, we consider the issue fully briefed and ready

for decision.

The Examining Attorney maintains that the hologram

device that applicant seeks to register fails to function

as a trademark, in that it neither identifies nor

distinguishes the goods of applicant from those of others

nor serves to indicate the source thereof. Sections 1, 2,

and 45 of the Trademark Act. She argues that there is no

evidence of record which shows that the public would

perceive any hologram, regardless of content or design,

used on a trading card as an indication that applicant is

the source thereof. She relies upon NEXIS evidence made of

record during examination showing that other companies use

hologram devices on trading cards, as well as on other

products such as credit cards, CDs, apparel, and various

4

In applicant’s response of December 3, 1998, applicant

separately argued the “Refusal on Grounds that the Mark is not a

Mark,” as well as the “Functionality” issue.

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Ser No. 75/064,130

types of tickets. She cites the most frequent reason for

the use of holograms, namely, as anti-counterfeiting

devices, and notes the NEXIS evidence made of record to

demonstrate use for this purpose. As further evidence of

this type of use of a hologram, she points to the

declaration of Martin Welling, which has been submitted by

applicant. Mr. Welling acknowledges that applicant’s

“trademark hologram, in addition to functioning as a source

indicator of applicant’s goods, also serves to inhibit the

production of counterfeit goods...,” although he goes on to

enumerate other anti-counterfeiting techniques that are

available to applicant’s competitors in the trading card

field.

Applicant asserts that the evidence which it submitted

in support of its claim of distinctiveness clearly shows

that applicant’s hologram functions as, and has come to be

perceived in the relevant marketplace as, applicant’s

source indicator. (Response of Dec. 3., 1998) (Brief, p. 6)

(Reply brief, p. 5-7). In particular, applicant points to

advertising copy referring to its “trademark hologram”; to

four letters from consumers, which applicant characterizes

as “unsolicited customer testimonials”; to its high sales

and advertising figures; and to the statement made by

Martin Welling in his declaration that although other

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Ser No. 75/064,130

manufacturers of trading cards use holograms in the

“representation of the graphic content of their trading

cards,” he was “unaware of any other maker of trading cards

that uses a hologram as its trademark.” (Declaration,

par.4).

In response to the Examining Attorney’s argument that

the hologram functions as an anti-counterfeiting device,

applicant contends that this function does not “undermine”

the concurrent functioning of its hologram as a trademark.

Applicant goes so far as to contend that “every trademark

is an anti-counterfeiting device, designed to assure the

purchaser that the goods come from the desired source.”

(Response of Dec. 3, 1998, p. 6).

As previously noted, the evidence submitted by

applicant under a claim of acquired distinctiveness is

relevant to the refusal of the failure of applicant’s

unspecified “hologram device” to function as a mark and

thus has been considered. Upon consideration, however, we

find the evidence insufficient to establish that consumers

would perceive the mere presence of a hologram on a trading

card, and not in connection with the design, location,

content or other characteristics of any particular

hologram, as a trademark. Although applicant has submitted

a large amount of advertising copy in which the presence of

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Ser No. 75/064,130

a hologram on the cards is touted, this promotion is

directed for the most part to the presence of a hologram as

a desirable feature of the cards, not as a trademark.

While applicant frequently refers in its advertising to the

fact that its cards are “holograpically enhanced,” this

promotion is simply as one more feature of its cards, along

with items such as “tamper resistant foil packaging” and

“in-your-face photography.” Even in those instances in

which reference is made to the “trademark hologram,” such

as “the Upper Deck trademark hologram means it’s the real

thing,” the inference is that the presence of a hologram

per se insures a genuine (non-counterfeit) product, not

that it serves as a source indicator for the cards.

The four unsolicited letters from customers only

reinforce our opinion that there is no recognition of the

mere presence of holograms on the cards as a trademark,

rather than as a feature of the cards. The suggestions in

these letters for new hologram designs or new series in

which a hologram is present constitute evidence of no more

than the fact that consumers are aware that applicant’s

trading cards include, as an element thereof, a hologram.

We agree with the Examining Attorney that these suggestions

for new hologram designs “cannot be interpreted as meaning

that these consumers recognize that any hologram device ...

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Ser No. 75/064,130

would be a source indicator simply because they recognize

that applicant applies holograms to trading cards.”

(Brief, p. 15).

The sales and advertising figures for applicant’s

trading cards per se are equally unconvincing. While sales

figures may be indicative of the commercial success of

applicant’s products, they do not demonstrate that the

holograms used thereon have acquired distinctiveness as an

indication of the source of the cards. See In Pingel

Enterprise Inc., 46 USPQ2d 1811 (TTAB 1998). Promotional

and advertising expenditures for the cards per se are

similarly unconvincing without concurrent evidence of

promotion of the hologram device as a trademark.

We find the circumstances here similar to prior cases

which have found an absence of evidence of the promotion

and consequent recognition by the public of the designation

sought to be registered as a trademark. See In re Edward

Ski Products, Inc., 49 USPQ2d 2001 (TTAB 1999)(no evidence

that configuration of ski mask either promoted or

recognized by purchasers as an indication of origin); In re

Bennetton Group S.p.A., 48 USPQ2d 1214 (TTAB 1998)(evidence

insufficient to show that green rectangle background design

promoted in and of itself or recognized by purchasers as

trademark for clothing items to which it is applied); In re

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Ser No. 75/064,130

Pingel Enterprise Inc., supra, (absence of advertising or

promotion of trademark significance of product

configuration makes consumer recognition as trademark

unlikely). Here, not only is there minimal evidence that

applicant has promoted the presence of a hologram per se on

its trading cards, regardless of design or content, as an

indication of origin, but, even more significantly, there

is no competent evidence of consumer recognition of the

hologram as a trademark.

Moreover, we have the counterbalancing effect of the

similar use of holograms by competitors in the field. As

pointed out earlier, evidence has been made of record

showing the use by others of comparable hologram devices on

trading cards. While applicant may argue that these are

not trademark uses, the common use of holograms for non-

trademark purposes means that consumers would be less

likely to perceive applicant’s uses of holograms as

trademarks. Holograms in general have an anti-

counterfeiting function; applicant has admitted that even

its hologram serves this purpose. Furthermore, while

applicant may argue that every trademark has an anti-

counterfeiting function, the opposite is not true. Not

every anti-counterfeiting device functions as a trademark.

This is blatantly obvious from the evidence of record

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Ser No. 75/064,130

showing common use of holograms on a variety of items for

anti-counterfeiting and verification purposes, but not

source identification.

Accordingly, we find that applicant has failed to

establish that the mere presence of its hologram device,

and not in connection with the design, location, content or

other characteristics of any particular hologram, functions

as a trademark for trading cards.

Decision: The refusals to register under Section 1 on

the ground that applicant is seeking to register more than

one mark and under Sections 1, 2, and 45 on the ground that

the hologram device of applicant fails to function as a

trademark are affirmed.

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