Wednesday, March 07, 2007

Precedential No. 17: TTAB Reverses Another Mutilation Refusal

The TTABlog noted (here) in November that the TTAB was not thrilled with the PTO's overzealous approach to mutilation refusals. Here's another precedential decision overturning such a refusal. In re Royal BodyCare, Inc., 83 USPQ2d 1564 (TTAB 2007) [precedential].

Applicant Royal BodyCare sought to register the mark NANOCEUTICAL for "dietary and nutritional supplements." The Examining Attorney, however, maintained that the specimen of use showed the word NANOCEUTICAL as part of the phrase RBC's NANOCEUTICAL, and that NANOCEUTICAL is an "incomplete mark," i.e., a "mutilation." See TMEP Section 807.12(d).

Applicant argued that the coined term NANOCEUTICAL stands out from its house mark RBC. It claimed ownership of a registration for RBC in the design form shown here:

The Board noted that "the marks in the present case are not joined in any physical way" and they create two separate impressions. Moreover, the fact that the term RBC's is in the possessive form does not require a finding that the marks are unitary.

The Examining Attorney pointed out that the letters RBC by themselves were not registered as a house mark, but the Board shrugged that off: the law does not require "the house mark to be registered as a house mark in the USPTO in order to avoid a determination that the mark was a mutilation." [sic].

The Board therefore concluded that RBC is used as a house mark, and "even if it were not, it is used in a way that is similar to the surname in the Emco case." [In Emco the word RESPONSER was registrable by itself although used with the surname MEYER in the form MEYER RESPONSER]. "Finally, the term NANOCEUTICAL is used on the specimen in a manner that creates a commercial impression separate and apart from the house mark or trade name RBC's."

Text Copyright John L. Welch 2007.


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