Citable No. 46: TTAB Reverses Mutilation Refusal (Again)

In its 46th citable decision of 2006, the TTAB may be sending a message to the PTO: ease off on the mutilation refusals! The Board reversed a refusal to register the mark WSI in the design form shown immediately below, finding that the mark on the application drawing was not a mutilation of the mark as depicted on the specimen of use (shown further below). In re 1175856 Ontario Ltd., 81 USPQ2d 1446 (TTAB 2006).

(mark shown on drawing)
The sole issue before the Board was this: whether the mark, as it appears in the application drawing is a substantially exact reproduction of the mark as used on the specimens. See Trademark Rule 2.51(a), 37 C.F.R. Section 2.51(a). Of course, the focus of the case was on the omission of the curved design element that appears in the specimen.

(mark on specimen of use)
The Board observed that "an applicant may seek to register any portion of a composite mark if that portion creates a separate and distinct commercial impression." If the portion chosen does not create a separate and distinct commercial impression, "the result is an impermissible mutilation of the mark as used."

"the issue of mutilation 'all boils down to a judgment as to whether that designation for which registration is sought comprises a separate and distinct "trademark" in and of itself.' In making these determinations, we are mindful of the fact that in an application under Section 1 of the Trademark Act, the applicant has some latitude in selecting the mark it wants to register. TMEP Section 807.12(d)(4th ed. April 2005)."

The Board agreed with Applicant that "the lettering and globe design shown in the drawing create a separate commercial impression apart from the curve design."

"Here, the lettering WSI and the globe design, serving as part of the letter I, join to convey to the consumer the brand name of applicant's services and act together as an indication of source separate from the curve design."

The Board therefore reversed the refusal to register.

TTABlog comment: We just saw two mutilation refusals reversed in August (TTABlogged here), but those two decisions were not citable. The Board turned up the heat on the PTO just a bit by making this one citable.

Text Copyright John L. Welch 2006.