TTABlog Test: Do You Recognize Trademark Mutilation When You See It?
It's been a while since we've looked at a trademark mutilation case. Let's roll up our sleeves and see what we've got here. The Board refused to register the mark shown on the right, for "Pharmaceutical products and preparations for the treatment of dermatological diseases" and for "Retail services through direct solicitation by distributors directed to end users featuring pharmaceuticals," on the ground that the drawing of the mark was not a "substantially exact representation of the mark as used on the specimens [as shown immediately below]." What do you think? Mutilation vel non? In re Verrica Pharmaceuticals Inc., Serial No. 90755123 (April 23, 2025) [not precedential] (Opinion by Judge Lawrence T. Stanley, Jr.).
The “drawing depicts the mark sought to be registered.” Trademark Rule 2.52, 37 C.F.R. § 2.52. "The drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods and/or services." Trademark Rule 2.51(b), 37 C.F.R. § 2.51(b).
[W]hen a proposed mark, as represented in the drawing, does not constitute the complete mark, it is sometimes referred to as a “mutilation” of the mark. This term indicates that essential and integral subject matter is missing from the drawing. See TMEP § 807.12(d).
An applicant may apply to register any element of a composite mark that creates a separate and distinct commercial impression - i.e., the element performs a trademark function in and of itself. See, e.g., In re Univ. of Miami, Ser. No. 86616382, 2017 TTAB LEXIS 171, at *10-11 (TTAB 2017)
Applicant maintained that "[t]he stylized V clearly stands out from the remainder of the ‘VERRICA’ name based on at least the different fonts, the different colors, the different shading in the V and the three circles having the same different color shading." Examining Attorney Ronald L. Fairbanks maintained that "the drawing shows only a nonseparable part of the mark appearing on the specimen" and "the stylized letter V is not separable from the remainder of the singular term VERRICA."
The Board agreed with the examining attorney: "[T]he proposed mark is depicted in the specimens as part of a unitary word and cannot be regarded as a separable element creating a separate and distinct commercial impression."
While we acknowledge that the V appears in a slightly larger font and is highly stylized as compared to the remaining letters “ERRICA” in the word “VERRICA,” there is not sufficient space between the letter “V” and the remaining lettering such that consumers would perceive the V and Design as a separate and distinct mark. Rather, consumers will immediately understand the word to be “VERRICA” with a stylized V as the first letter. Only looking at the element in the word VERRICA would require that we cast a blind eye on the remainder of the word. The letters “ERRICA” are there and we cannot pretend that they are not.
Applicant’s use of a purple and blue color scheme for the V and Design element on its specimens of use was irrelevant, since color was not claimed as part of Applicant’s mark - which therefore could be displayed in any color or combination of colors.
And so, the Board affirmed the refusal to register.
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TTABlogger comment: I dissent.
Text Copyright John L. Welch 2025.