Applicant, E.A. Sween Company, sought registration of the mark “DELI EXPRESS SAN LUIS” (shown below) for burritos; snack cakes; and snack rolls, namely sweet rolls.
In the United States, trademark applications based upon use of a mark in commerce require the filing of a specimen of use (i.e., packaging for goods or advertising materials for services depicting the applied-for mark). The applied-for mark and mark appearing on the specimen of use must be substantially exact. Meaning consumers must perceive the applied-for mark as used on the specimen as having the same overall commercial impression.
The examining attorney handling the application argued that the applied-for mark as shown on the packaging depicts two separate trademarks; thus two different commercial impressions. Accordingly, the examining attorney refused registration of the mark. Applicant appealed that decision.
The question on appeal was whether consumers would perceive the applied-for mark as a unitary whole or as two separate marks. In support of its case on appeal, Applicant noted that it is the owner of two registrations, one for the mark DELI EXPRESS and one for SAN LUIS. Applicant then argued that its applied-for mark is a composite of its registered marks and that, pursuant to trademark rules and regulations, it is “free to choose the elements of its composite mark that it wants to register.”
In evaluating the use of the mark on the specimen, the Board noted that a portion of the applied-for mark consisting of DELI EXPRESS appears in the top left corner of the package in a red and yellow border. The Board further noted that a portion of the applied-for mark consisting of SAN LUIS appears to the right with a green background following a stylized yellow triangle.
The Board concluded that consumers would perceive the applied-for mark as two separate marks. The Board rendered its decision based upon the following factors:
1. The term DELI EXPRESS is not only in a different font but is contained within a yellow background, and then a larger red background, separated from the remainder of the packaging design by a black bar outlining the top left corner of the package.
2. The term SAN LUIS is outside of the DELI EXPRESS border and is further separated by a fanciful triangle and placed upon a green background.
Do you perceive the mark on the packaging as a single mark? I surely don’t. In my opinion, this appeal was DOA. Given the facts of this case, wouldn’t it have been a wiser decision to simply re-file the application with an acceptable specimen then take the savings and enjoy a relaxing vacation in San Luis?