Thursday, December 13, 2007

TTAB Affirms Refusal to Allow Amendment of "SILENT FIREMAN" to "YOUR SILENT FIREMAN"

The Board affirmed the PTO's refusal to register the mark SILENT FIREMAN for flame retardant goods and fire prevention inspection services, because the mark in the drawing (i.e., the word mark SILENT FIREMAN) is not an exact representation of the mark in the specimens of use. Furthermore, an amendment of the drawing to YOUR SILENT FIREMAN (to comport with the specimens) would be impermissible because it would constitute a material alteration of the original mark. In re No-Burn Investments, L.L.C., Serial No. 76629397 (November 30, 2007) [not precedential].

The Board quickly disposed of the first issue: whether the mark that appears on the application drawing (SILENT FIREMAN) is a substantially exact representation of the mark shown in the specimens (Rule 2.51(a)). There was no dispute that all the specimens display the mark as YOUR SILENT FIREMAN (see above).

As to the proposed amendment of the mark from SILENT FIREMAN to YOUR SILENT FIREMAN, "[t]he modified mark must contain what is the essence of the original mark, and the new form must create the impression of being essentially the same mark." The Board found that, by changing from SILENT FIREMAN to YOUR SILENT FIREMAN, "the meaning and commercial impression of the mark is changed."

"Specifically, the addition of the term YOUR injects a possessive component and creates the impression, albeit figuratively, that the purchaser will have his/her own fireman protecting them."

Applicant No-Burn submitted two useless declarations in support of registration: neither person claimed any expertise in trademarks or in the consumer perception of trademarks. Both erroneously referred to the term "your" as being "generic." And Applicant's assertion that addition of the word YOUR would not necessitate a subsequent search was not only rejected by the Board, but the Board found that a new search would indeed be necessary -- a factor further in favor of the PTO's position.

Therefore, the Board ruled that PTO Examining Attorney Odessa Bibbins properly refused registration on the ground that the mark in the drawing did not agree with the mark displayed on the specimens, that the PTO properly refused to accept the proposed amendment to the drawing, and that the PTO properly required Applicant to submit a new specimen that comported with the mark on the drawing.

Text Copyright John L. Welch 2007.


Post a Comment

<< Home