Leonard P. Gietz, M. D.

Trademark Trial and Appeal Board

May 14, 2002

No. 75858278re (T.T.A.B. May. 14, 2002)

5/14/02

Mailed: May 13, 2002
Paper No. 13
RLS/csl

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
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In re Leonard P. Gietz, M.D.
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Serial No. 75/858,278
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Request for Reconsideration

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L. Kyle Ferguson of Novakov Davis & Munck, P.C. for Leonard
P. Gietz, M.D.

Khanh Le, Trademark Examining Attorney,
Law Office 104 (Sidney I. Moskowitz, Managing Attorney).
_______

Before Simms, Seeherman and Walters, Administrative
Trademark Judges.

Opinion by Simms, Administrative Trademark Judge:

Applicant has requested reconsideration of the Board’s
decision issued February 26, 2002, affirming the refusal of
the Trademark Examining Attorney to register on the
Principal Register the mark shown below

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
2

for the rental of wireless telephones. The Board found
that applicant’s mark was not inherently distinctive and
was, therefore, unregistrable without a showing of acquired
distinctiveness. The Board stated that applicant’s mark
consisted of the descriptive and disclaimed words “Rent-a-
Phone” in relatively non-distinct green lettering within a
green elliptical border on a white background. The Board
further stated that the oval design was a relatively common
background design which fails to indicate origin in the
absence of sufficient exposure to and recognition by the
relevant public. The Board concluded that applicant’s
mark, as a whole, was not inherently distinctive.
In requesting reconsideration, applicant argues that
the Board did not consider applicant’s mark as a whole but
merely considered the individual elements of his mark.
Among other things, applicant contends that the admittedly
descriptive words were not considered “for any contribution
to distinctiveness of the mark as a whole” (p. 2), that the
stylization of these words was not explicitly considered,
3
and that elements of a mark which may not be inherently
distinctive when taken alone may, when combined, form a
mark which is inherently distinctive. Applicant contends
that the stylization of the words, the background and the
color combination (green and white) form an inherently
distinctive mark.
Applicant’s request for reconsideration contains re-
argument of contentions previously made and addressed by
the Board.
As the Board has noted, it is possible to register a
composite word and design mark even if the literal portion
consists of a descriptive or generic name, if the wording
is displayed in very distinctive lettering or is
accompanied by a distinctive design. J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition §12:40
(Fourth Edition Dec. 2001 Release). In other words, a
display of descriptive, generic or otherwise unregistrable
matter is registrable on the Principal Register only if the
stylization of the words or the accompanying design
features of the asserted mark create an impression on
purchasers separate and apart from the impression made by
the words themselves. However, ordinary geometric shapes
such as circles, ovals, squares, stars, etc., are generally
regarded as nondistinctive and protectable only upon proof
4
of acquired distinctiveness. In re Anton/Bauer Inc., 7
USPQ2d 1380, 1381 (TTAB 1988).
Contrary to applicant’s assertions, it is not
improper, when considering a mark as a whole, to initially
consider the individual elements that comprise a mark and
to discuss those elements, provided the ultimate
determination is made on the basis of the mark in its
entirety. See, for example, In re Hester Industries, Inc.,
230 USPQ 797, 798 n.5 (TTAB 1986). Compare, in the context
of configuration marks, In re R. M. Smith, Inc., 734 F.2d
1482, 222 USPQ 1, 2 (Fed. Cir. 1984). After considering
the separate components of applicant’s mark--the admittedly
descriptive and disclaimed words “Rent-a-Phone” in plain
green lettering, and the green oval on a white background—-
the Board correctly concluded that applicant’s mark as a
whole was not inherently distinctive. We reiterate that we
considered the slight stylization of the words, including
the hyphenation, as well as the other elements applicant
has pointed to, but did not find the mark as a whole to be
distinctive.
The cases applicant cited in his brief are not
persuasive. They involve either the display of descriptive
words in an inherently distinctive stylization (In re K-T
Zoe Furniture, Inc., 16 F.3d 390, 29 USPQ2d 1787 (Fed. Cir.
5
1994)), or the display of a generic word in a manner that
had come to function as a mark (In re Miller Brewing Co.,
226 USPQ 666 (TTAB 1985)), or the cases are otherwise
distinguishable. Also, contrary to applicant’s contention,
the Court’s comments in Dena Corp. v. Belvedere
International, Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed.
Cir. 1991), noted by the Board, were made in the context of
descriptive wording (“EUROPEAN FORMULA”). Suffice it to
say that applicant’s mark, considered in its entirety, is
not inherently distinctive. No error being seen in the
Board’s decision, applicant’s request for reconsideration
is denied.