In Re: Light , 662 F. App'x 929 ( 2016 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: PREMA JYOTHI LIGHT,
Appellant
______________________
2014-1597
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in No.
76/293,326.
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IN RE: PREMA JYOTHI LIGHT,
Appellant
______________________
2014-1598
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in No.
76/293,327.
______________________
Decided: October 7, 2016
______________________
PREMA JYOTHI LIGHT, Aurora, CO, pro se.
2 IN RE: LIGHT
THOMAS W. KRAUSE, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
appellee Michelle K. Lee. Also represented by CHRISTINA
HIEBER, THOMAS L. CASAGRANDE, MARY BETH WALKER.
______________________
Before LOURIE, DYK, and O’MALLEY, Circuit Judges.
LOURIE, Circuit Judge.
Prema Jyothi Light (“Light”) appeals from two related
U.S. Patent and Trademark Office (“USPTO”) Trademark
Trial and Appeal Board (“Board”) decisions. In the first,
Light appeals from the Board’s rejection of her application
to register the matter shown below as a trademark. In re
Light, No. 76293326, 2013 WL 6858009, at *6–8 (T.T.A.B.
Dec. 13, 2013) (“Decision I”).
In the second, Light appeals from the Board’s rejection of
her application to register the matter shown below as a
trademark. In re Light, No. 76293327, 2013 WL 6858010,
at *5–7 (T.T.A.B. Dec. 13, 2012) (“Decision II”).
IN RE: LIGHT 3
For the reasons that follow, we affirm both decisions.
BACKGROUND
On July 9, 2001, Light filed two applications to regis-
ter the above-pictured matter as trademarks for use on,
inter alia, cartoon prints, paper dolls, and coloring books.
Decision I at *2; Decision II at *1. The first proposed
mark contains stylized wording in the top left-hand
corner, “SHIMMERING BALLERINAS & DANCERS
CHARACTER COLLECTION,” surrounded by three
columns of terms “that appear to identify names of a
variety of characters.” Decision I at *1. Examples of the
character names include: “SHIMMERING WIND-HARP
BUTTERFLIES JALINDA, JALISA, JAHA, JAJA,
JELANI, & JUM” and “THE AIRY BALLERINA &
DANCER CLARISSA.” Id. The entire proposed mark has
approximately 660 words and identifies more than ninety
character names. See id.
The second proposed mark similarly contains stylized
wording in the top left-hand corner, “SHIMMERING
RAINFOREST CHARACTER COLLECTION,” surround-
ed by columns of “an extremely long list of terms (in
4 IN RE: LIGHT
smaller font) identifying names of fictional characters.”
Decision II at *1. The character list includes: “JALINDA
THE WIND HARP BUTTERFLY” and “HARRY &
HARRIETA, THE HAIRY RAINFOREST SUSPENDER
SPIDERS.” Id. The entire proposed mark has approxi-
mately 570 words and identifies more than 125 character
names. See id.
The examining attorney rejected Light’s applications,
reasoning that each sought to register multiple marks. In
response, Light filed proposed amendments to her marks.
The examining attorney rejected the amendments, how-
ever, finding that the proposed changes effected material
alterations of the subject matter. Light appealed to the
Board, but because the appeals were not timely filed, the
applications were abandoned.
Light later successfully petitioned to revive her appli-
cations, and the Board reinstituted the original appeals.
In 2008, the Board remanded the applications to the
examining attorney to consider whether the proposed
marks constituted registrable subject matter, a different
potential basis for rejection. The examining attorney
issued Office Actions refusing to register the proposed
marks because they “fail to function” as trademarks, and
are thus not registrable subject matter. In the Office
Actions, however, the examining attorney noted that
Light could overcome the failure-to-function rejections by
amending the proposed marks to only seek registration of
the stylized wording in the top left-hand corners: either
the “SHIMMERING BALLERINAS & DANCERS” or the
“SHIMMERING RAINFOREST.” Decision I at *1; Deci-
sion II at *1.
Light failed to timely respond to those Office Actions,
however, and her applications were yet again abandoned.
Light again successfully petitioned to revive her applica-
tions, and the examining attorney considered Light’s
responses to the Office Actions. Because Light still
IN RE: LIGHT 5
sought registration of the entire proposed marks, howev-
er, including the columns of text, the examining attorney
maintained the original failure-to-function refusals. Light
then resumed her appeals at the Board.
Over the next two years, Light requested several ex-
tensions of time and remands to the examining attorney,
all of which the Board granted. In June 2011, Light filed
a request for reconsideration by the Board. Her request
included additional specimens showing alleged trademark
use, as well as a new claim that the proposed marks had
acquired distinctiveness in accordance with Section 2(f) of
the Lanham Act. The Board remanded to the examining
attorney to fully consider the request for reconsideration.
Further prosecution of the marks continued in May of
2012 with a different examining attorney. The examining
attorney again rejected the proposed marks for failing to
function as trademarks. She further clarified that rejec-
tion based on the additional specimens, explained why the
claims of acquired distinctiveness failed, and rejected the
proposed amendments. Light filed responses to the Office
Actions, but because her responses were not timely filed,
the applications were yet again abandoned.
In January 2013, Light submitted a single petition to
revive both abandoned applications, but only paid the fee
owed to revive one application, $100. The USPTO accord-
ingly issued a Notice of Deficiency asking for additional
payment, another $100, to revive the second application.
Light paid that fee, and both applications were revived.
Light included with her petition additional specimens
to support new requested amendments to show the sub-
ject matter in color. The examining attorney still refused
to register the proposed marks because they fail to func-
tion as marks under the Lanham Act, they had not been
shown to be a source indicator or to have acquired distinc-
tiveness under Section 2(f), and the requested amend-
6 IN RE: LIGHT
ments effect impermissible material alterations of the
subject matter.
Light resumed her appeal at the Board, and both par-
ties filed new appeal briefs. See Decision I at *2; Decision
II at *2. The Board issued its now-challenged decisions,
affirming the examining attorney’s refusal to register the
proposed marks. The Board first addressed the failure-to-
function rejection and concluded that (1) the number of
words is simply “too great to be a useful means for con-
sumers to differentiate one source from another”; (2) the
additional specimens do not present the subject matter
such that they will be “perceived as trademark[s] or as
indicating the source of the applicant’s identified goods,”
but rather the specimens reveal that the matters “merely
identif[y] what appears to be a title (of a story, e.g.) and a
list of fanciful, fictional names”; and (3) the amendments
do not help the subject matter to function as trademarks.
Decision I at *3–6; Decision II at *2–5.
The Board next rejected Light’s acquired distinctive-
ness claim because it “appears to rest essentially on her
alleged years of use of the applied-for mark in the manner
shown in the previously-discussed specimens,” yet “th[ose]
specimens do not demonstrate trademark use.” Decision I
at *6; Decision II at *5. Last, the Board rejected Light’s
proposed amendments, concluding that they would effect
material alterations of the original subject matter. In
particular, the Board found that (1) removing the columns
and displaying the character names instead in a radial or
“starburst” manner “creates a new commercial impression
that would necessarily involve a new search by the exam-
ining attorney”; (2) converting the proposed stylized mark
to a “single standard character mark” would likewise
result in a mark “with a very different appearance and
commercial impression”; and (3) adding a “colorful back-
ground, stars, and rays of light emanating from the top”
would “require an additional conflicting mark search.”
Decision I at *7–8; Decision II at *6–7.
IN RE: LIGHT 7
Light timely appealed from the Board’s decisions. We
have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(B).
DISCUSSION
We review the Board’s legal conclusions de novo, In re
Int’l Flavors & Fragrances Inc., 183 F.3d 1361, 1365 (Fed.
Cir. 1999), and the Board’s factual findings for substantial
evidence, On-Line Careline, Inc. v. Am. Online, Inc., 229
F.3d 1080, 1085 (Fed. Cir. 2000). Whether a mark func-
tions as a trademark to identify the source of an entity’s
goods, see In re Bush Bros. & Co., 884 F.2d 569, 571 (Fed.
Cir. 1989), whether a mark has acquired distinctiveness,
see Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d
1356, 1379 (Fed. Cir. 2012), and last, whether a proposed
amendment represents a material alteration of a mark, In
re Thrifty, Inc., 274 F.3d 1349, 1352 (Fed. Cir. 2001), are
all fact questions that we review for substantial evidence.
Light raises several challenges on appeal. First, Light
argues that her proposed marks function as trademarks,
and have acquired distinctiveness based on decades of use
as such. In particular, Light contends that the proposed
marks are “easily recognizable” and have been “placed on
the back cover of leaflets or publications, where Trade-
marks are customarily found.” E.g., Appellant’s Br. 21
(No. 2014-1598). Second, Light argues that her proposed
amendments adding color features to the proposed marks
do not effect material alterations, referring to Trademark
Manual of Examining Procedure § 807.14(e)(ii) in support.
Third, Light contends that she was “hit” with a “doubled
Petition Fee,” and only owes $100 for the single petition to
revive filed in January 2013. Last, Light raises a series of
administrative challenges to the USPTO’s handling of her
applications, including, among the alleged “102 Incidents
of Document Mishandling,” mislabeling documents and
uploading “skewed” versions of her proposed marks. See,
e.g., id. at 5–14. We address and ultimately reject each of
Light’s challenges in turn.
8 IN RE: LIGHT
Substantial evidence supports the Board’s determina-
tion that the proposed marks merely convey information
and do not function as trademarks. The mere fact that a
party intends a proposed mark to function as a trademark
is insufficient. Roux Labs., Inc. v. Clairol, Inc., 427 F.2d
823, 828–29 (C.C.P.A. 1970) (“The mere fact that a combi-
nation of words or a slogan is adopted and used by a
manufacturer with the intent [that it function as a
trademark] does not necessarily mean that the slogan
accomplishes that purpose in reality.”). Rather, the
proposed mark must be perceived by the relevant public
as conveying the commercial impression of a trademark.
That is, the mark must identify the source of goods. In re
Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1123
(Fed. Cir. 1985) (‘Trademarks, indeed, are the essence of
competition, because they make possible a choice between
competing articles by enabling the buyer to distinguish
one from the other.” (citation omitted)); see also J. Thomas
McCarthy, 1 McCarthy on Trademarks and Unfair Com-
petition § 3:3 (4th ed. 2014) (“The prime question is
whether the designation in question, as actually used, will
be recognized in and of itself as an indication of origin for
this particular product or service.”) (footnote omitted).
The Board made several factual findings in support of
its conclusion that the relevant public would not perceive
Light’s proposed marks as identifying the source of goods.
The Board first found that the “sheer number and visual
display of the words in the applied-for matter” make it
“significantly more difficult” for the public to “perceive[
the proposed mark] as a unitary trademark.” Decision I
at *4; Decision II at *3. Each proposed mark contains
over 570 words, arranged in column format, and, at core,
“identifies what appears to be a title (of a story, e.g.) and a
list of fanciful, fictional names for characters.” Decision I
at *4; Decision II at *4. Although there is no limit on the
number of words that can make up a trademark, the
Board correctly found here that the exhaustive list of
IN RE: LIGHT 9
characters, recited in columnar format, weighs in favor of
finding no registrable trademark. See, e.g., Smith v. M &
B Sales & Mfg., 13 U.S.P.Q.2d (BNA) 2002 (N.D. Cal.
1990).
The submitted specimens do not suggest otherwise.
The cover of the submitted playbook bears the title: “The
Triple-Shimmering Shimmering Rainforest, Shimmering
Ballerinas & Dancers And Shimmering Breezes Storybook
Have Fun Playbook & Storybook For Children.” See Joint
App. 254 (No. 2014-1597). It displays the proposed mark
to the right of the Introduction, which similarly contains a
list of character names. Id. at 257. As the Board found,
at best, “readers and users of [the playbook] will under-
stand the applied-for matter as simply identifying a title
or theme for the playbook, [and] a corresponding list of
character names in the playbook.” Decision I at *5; Deci-
sion II at *4. Nothing about the use of the proposed
marks in the playbook supports Light’s argument that the
proposed marks operate to identify the source of goods.
10 IN RE: LIGHT
Likewise, the submitted leaflets do not indicate a use
of the proposed marks as trademarks. As shown below,
the leaflet states: “Be sure to look for this unique Shim-
mering Ballerinas & Dancers Trademark, above, to as-
sure you that you have” the right products, “rather than
knock-offs or plagiarized versions.” See Appellee’s Br. 13
(No. 2014-1597); Decision I at *5.
IN RE: LIGHT 11
Light contends that any reader of the leaflet would neces-
sarily view the proposed mark at the top of the leaflet as
the referred-to trademark. We disagree. As the Board
instead found, “consumers that read this statement are
likely to perceive applicant’s reference to the ‘Trademark’
as referring to the actual ‘SHIMMERING BALLERINAS
& DANCERS” wording that is referenced in the statement
and shown in the ‘mark’ in a larger, stylized font next to
the ‘TM’ symbol.” Decision I at *5; accord Decision II at
*4 (same for the second proposed mark). “At best, con-
sumers would perceive SHIMMERING BALLERINAS &
DANCERS as being the intended trademark while the
CHARACTER COLLECTION (followed by a long list of
character names) portion will merely be perceived as
informational.” Decision I at *5; accord Decision II at *4
(same for the second proposed mark). As with the play-
book, nothing about the use of the proposed marks in the
leaflet supports Light’s argument that the marks operate
to identify the source of goods.
Light argues that, notwithstanding the above findings
by the Board, her proposed marks have acquired distinc-
tiveness and are thus registrable. We disagree. As the
Board found, absent “evidence that the matter has been
promoted as a trademark,” evidence noticeably absent in
this case, “we cannot find that the applied-for mark has
acquired distinctiveness regardless of the time the ap-
plied-for mark has been used in this manner.” See Deci-
sion I at *6; Decision II at *5; see also Trademark Manual
of Examining Procedure § 1202.04 (“The applicant cannot
overcome a refusal of trademark registration [for failure
to function as a trademark] on the ground that the matter
is merely informational by attempting to amend the
application to seek registration [under] § 2(f) [(acquired
distinctiveness)].”). In sum, no evidence supports Light’s
contention that her proposed marks constitute registrable
trademarks. We accordingly affirm the Board’s decisions,
12 IN RE: LIGHT
which affirmed the examining attorney’s failure-to-
function rejections of Light’s proposed marks.
Turning to Light’s second challenge, we likewise find
that substantial evidence supports the Board’s rejection of
Light’s proposed amendments for materially altering the
original subject matter. An applicant for trademark must
submit a drawing of the mark with the application. See
37 C.F.R. § 2.52. The applicant may later submit an
amendment to that drawing, however, provided “the
proposed amendment does not materially alter the mark.”
Id. § 2.72(a)(2). “The general test of whether an altera-
tion is material is whether the mark would have to be
republished after the alteration in order to fairly present
the mark for purposes of opposition.” In re Hacot-
Colombier, 105 F.3d 616, 620 (Fed. Cir. 1997) (citation
omitted); accord id. (“The modified mark must contain
what is the essence of the original mark, and the new
form must create the impression of being essentially the
same mark.” (citation omitted)). In addition, the Board
regularly invokes Trademark Manual of Examining
Procedure § 807.14 for the proposition that “the addition
of any element that would require a further search will
[also] constitute a material alteration.” See, e.g., In re
Pierce Foods Corp., 230 U.S.P.Q. (BNA) 307 (T.T.A.B.
1986).
In this case, the Board analyzed Light’s three pro-
posed amendments and found that each constituted a
material alteration of the subject matter because it would
require an additional search by the examining attorney or
republication to alert the public for purposes of opposi-
tion. Decision I at *7–8; Decision II at *6–7. Light only
appears to challenge one such finding on appeal, namely,
the Board’s finding that “a colorful background, stars, and
rays of light emanating from the top left corner,” and
removing a not insignificant number of character names
under the guise of correcting “typographical errors,”
amounted to a material alteration of the proposed marks
IN RE: LIGHT 13
because “they would clearly require an additional conflict-
ing mark search by the examining attorney.” See Decision
I at *8; Decision II at *7. Despite raising such a chal-
lenge, however, Light fails to direct us to any record
evidence to support her contention. Instead, substantial
evidence supports the Board’s finding that the aforemen-
tioned changes are material alterations. In light of our
standard of review, and Light’s failure to proffer eviden-
tiary support, we must affirm the Board’s rejection of
Light’s proposed amendments.
Although prosecution of Light’s proposed marks has
lasted over twelve years, involving numerous issues, the
Board expressly acknowledged that it was only address-
ing two issues in its decision. See Decision I at *3; Deci-
sion II at *2. Specifically, (1) whether the failure-to-
function refusal was correct, and the acquired distinctive-
ness claim insufficient, and (2) whether the examining
attorney correctly rejected the proposed amendments for
materially altering the proposed marks. Decision I at *3;
Decision II at *2. The Board did not address any other
issues, such as Light’s alleged administrative impropriety
during the course of prosecution, or Light’s contention
that she overpaid for her revival petition in January 2013.
The Board did not address those issues on the grounds
that they were not relevant to the appealed action or were
untimely. See Decision I at *2; Decision II at *2. We see
no error in the Board’s refusal to consider those other
issues.
CONCLUSION
We have considered Light’s remaining arguments, but
conclude that they are without merit. For the foregoing
reasons, we affirm the Board’s decisions.
AFFIRMED