Monday, August 13, 2012

Precedential No. 27: Adding a Question Mark to GOT STRAPS Materially Alters the Mark, Says TTAB

The Board affirmed two refusals to register the mark GOT STRAPS for "bumper stickers" and "online retail store services featuring straps for musical instruments and accessories for musical instruments," agreeing with Examining Attorney Simon Teng that Applicant’s proposed amendment of the mark to add a question mark constitutes a material alteration of the original mark under Trademark Rule 2.72(b)(2), and that the application drawing is not a substantially exact representation of the mark GOT STRAPS? as used on the specimens, under Trademark Rule 2.51(b). In re Guitar Straps Online, LLC, 103 U.S.P.Q.2d 1745 (TTAB 2012) [precedential].

Proposed amendment: The Board noted that if the proposed amendment adding a question mark were permitted, the amended drawing would comport with the specimens of use, and the second refusal would be moot. The key issue under Rule 2.72(b)(2) was whether the proposed amendment would materially alter the mark.

The 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 general test of whether an alteration is material is whether the mark would have to be republished after the alteration in order to fairly present the mark for purposes of opposition. If one mark is sufficiently different from another mark as to require republication, it would be tantamount to a new mark appropriate for a new application.

The Board stressed that the "primary question is whether the proposed amendment contains 'the essence of the original mark' and whether it creates 'the impression of being essentially the same mark.'" It pointed to TMEP Section 807.14(c) (8th ed. Oct. 2011), which lists instances in which addition or deletion of punctuation would change the commercial impression of a mark and would constitute a material alteration. [But no specific examples - ed.]. The list includes "the addition or deletion of a question mark" as one instance.

The Board found that addition of a question mark to GOT STRAPS constitutes a material alteration "because it changes the commercial impression of the original mark from a declaratory statement to an interrogative phrase." The Board agreed with the Examining Attorney that GOT STRAPS? versus GOT STRAPS is equivalent to "do you have guitar straps" versus "I have guitar straps."

The placement of a question mark at the end of the phrase GOT STRAPS transforms not only the appearance and meaning of applicant’s original mark but also the pronunciation. In other words, applicant’s proposed amendment alters "the essence of the original mark."

Applicant pointed out that the USPTO does not provide a design code for the question mark for purposes of searching the USPTO database, arguing that the PTO thus "does not believe that the question mark is a significant feature of the mark, and that it is not necessary to include the question mark in a search for the mark." Therefore, Applicant reasoned, addition of a question mark to GOT STRAPS would not require republication of the mark or a new search.

The Board observed, however, that the PTO treats a question mark as a standard character, and a standard character mark is not treated as a design mark or given a design code. In any case the assignment of a design code is a purely administrative practice that has no bearing on the issue at hand.

Although the Board agreed with Applicant that a new search would not be required if the mark were amended, it concluded that republication would be necessary "given the change in the commercial impression of the mark, ... in order to give interested third parties adequate notice."

And so the Board affirmed the refusal on the ground that the proposed amendment would materially alter the mark, in violation of Trademark Rule 2.72.

Drawing and specimens: Trademark Rule 2.52 provides that the “drawing depicts the mark sought to be registered.” The drawing of the mark must be a "substantially exact representation" of the mark as used. Trademark Rule 2.51(b). Although an applicant may seek to register any portion of a composite mark that presents a separate and distinct commercial impression, the mark as used "must not be so entwined (physically or conceptually) with other material that it is not separable from it in the mind of the consumer."

Applicant contended that the words GOT STRAPS in the specimens of use create a separate and distinct commercial impression from the question mark.

The Board again turned to the TMEP, and particularly Section 807.12(a)(i), entitled "Role of Punctuation in Determining Whether Mark on Drawing Agrees with Mark on Specimen." It found the following hypothetical to be persuasive:

For example, if the mark on the specimen is PREGNANT?, and the mark on the drawing is PREGNANT, the mark on the drawing is not a substantially exact representation of the mark as actually used. The question mark on the specimen transforms the word PREGNANT from a mere statement to a question, and, therefore, changes the commercial impression of the mark. Moreover, the drawing cannot be amended to add the punctuation because it would result in a material alteration. Therefore, the applicant must submit a new specimen showing the mark without the punctuation.

The Board also found persuasive its decision in In re Yale Sportswear Corp., 88 USPQ2d 1121 (TTAB 2008) [TTABlogged here], in which it affirmed a refusal to register the mark UPPER 90 on the ground that the drawing was not a substantially exact representation of the mark as used because the mark appeared on the specimens as UPPER 90° [with the addition of a degree symbol].

The Board concluded that the literal element GOT STRAPS cannot be severed from the question mark without altering the commercial impression or meaning of the mark. In other words, the literal portion and the question mark are entwined, and therefore Applicant's drawing depicting GOT STRAPS is not a substantially exact representation of the mark as usedin commerce.

TTABlog comment: I still disagree with the UPPER 90 decision.

Text Copyright John L. Welch 2012.


At 2:20 PM, Anonymous Anonymous said...

wyha? Precedent directly on point and nearly identical example used in TMEP. No-win.

At 2:46 PM, Anonymous Anonymous said...

Commas and spaces appear to be allowed, but not anything else?

At 9:59 AM, Anonymous Orrin A. Falby said...

Commas and spaces do not materially alter the mark. A question mark "changes" the mark from a declrative statement to an interrogative one.

At 10:05 AM, Blogger John L. Welch said...

What about this change: "GOT, STRAPS"

That alters the meaning from "I have straps" to "I am an idiot."

At 3:02 PM, Anonymous Orrin A. Falby said...

I should have said "commas and spaces generall do not materially alter . . . " Good one.


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