Test Your TTAB Judge-Ability on this Trademark Specimen of Use
Manchester Cigarette applied to register the mark MANCHESTER SUUM CUIQUE PLACET, in standard character form, for cigarettes and related goods. Its specimen of use is pictured below. Examining Attorney Khanh M. Lee refused registration on the ground that the mark is not a substantially exact representation of the mark as used on the goods, as required by Rule 2.51(b). What say you? In re Manchester Cigarette Tobacco Limited, Serial No. 85260060 (May 3, 2013) [not precedential].
The Examining Attorney maintained that the word MANCHESTER and the phrase SUUM CUIQUE PLACET create two separate commercial impressions rather than a unitary commercial impression. Applicant argued that MANCHESTER and SUUM CUIQUE PLACET form a unitary commercial impression because "they are typed words appearing on a uniform red background thereby tying the words together."
The Board agreed with the Examining Attorney: "The separate and distinct manner of presentation of these elements creates separate commercial impressions for MANCHESTER and SUUM CUIQUE PLACET in contrast to the unitary phrase applicant seeks to register in unitary form."
And so the Board affirmed the refusal.
TTABlog comment: WYHA?
Text Copyright John L. Welch 2013.
posted by John L. Welch @ 5/15/2013
2 comments
2 Comments:
I tend to agree with the examiner. Put it this way -- would you have advised your client to seek this word mark based on the specimen? I recognize, of course, that attorneys often file word mark applications based on client requests, and then the marketing folks actually use the mark in a materially different way. Ooops! A good practice point, demonstrating the importance of communications between outside counsel, inside counsel, and marketing/merchandising.
Did the applicant try registering the logo (top + bottom) or the two segments separately? Probably should have if it didn't. (I didn't check, busy grading.)
It might also have tried registering MANCHESTER, though I wonder about a 2(e)(2) rejection.
The Latin slogan seems to mean something like "as each pleases for themselves." (Based on my complete non-knowledge of Latin and a quick look at some online tools.)
I would at least have filed it as SUUM CUIQUE PLACET MANCHESTER. At least then you'd have the right word order.
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