Wednesday, December 03, 2008

TTAB Says "CONTINUUM" Mark is Supported by Specimens Displaying "INDIA CONTINUUM FUND"

In a surprising decision, the Board reversed a refusal to register the mark CONTINUUM for financial investment services, finding that Applicant's drawing (for the word CONTINUUM in standard characters) is a substantially exact representation of the mark as shown on Applicant's specimens of use (depicted below). In re Hudson Fairfax Group LLC, Serial No. 76662560 (November 21, 2008) [not precedential].

Rule 2.51(a) requires that "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." The Examining Attorney understandably contended that "the specimens show the mark as INDIA CONTINUUM FUND," and therefore that CONTINUUM, shown in the drawing, "is a mutilation of that mark."

The Board, however, noted that FUND is a generic term for Applicant's services, and that INDIA is geographically descriptive because it "identifies the geographic region in which applicant invests." Thus neither INDIA nor FUND have source-identifying significance in Applicant's mark. Relying on In re Raychem Corp., 12 USPQ2d 1399 (TTAB 1989) [mark TINEL-LOCK supported by specimen displaying TRO6AI-TINEL-LOCK-RING], the Board sided with Applicant:

"... although the words INDIA and FUND appear in applicant’s specimens in the same size and type style as the word CONTINUUM, because INDIA and FUND do not have trademark significance, the word CONTINUUM for which applicant seeks registration and which appears in the drawing of the application is not a mutilation of applicant’s mark, and applicant’s specimens are acceptable to show use of the applied-for mark."

The Board therefore reversed the refusal to register.

TTABlog comment: What? I'm sorry, but this makes no sense to me. How is CONTINUUM a "substantially exact representation" of INDIA CONTINUUM FUND? Rule 2.51(a) doesn't say that the mark on the drawing must be a substantially exact representation of the dominant portion of the mark shown on the specimens. Nor does it require a substantially exact representation of the source-identifying portion of the mark shown on the specimens.

What about the TINEL-LOCK case? That makes no sense either. Moreover, in Raychem, the "independent significance" of the term "TINEL-LOCK" was "supported by applicant's use of the mark without the part number or generic designation in its advertising material." Here, there was no indication that the word CONTINUUM was used by itself in Applicant's advertising materials. Thus I submit that Raychem is distinguishable on its facts.

Text Copyright John L. Welch 2008.


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