TTABlog Test: Does This Specimen of Use Support Registration of BOWL & STIX?
The USPTO refused to register the mark BOWL & STIX (in standard character form) for "Oriental and Pacific rim cuisine prepared foods . . .," under Trademark Act Sections 1 and 45 on the ground that the specimen of use (below) does not show the mark depicted in the drawing, i.e., the drawing is not a substantially exact representation of the mark as shown on the specimen. Applicant argued that a normal reading of the mark is BOWL & STIX, and the consumer would ignore the crossed-out word ROLL. How do you think this came out? In re Kahiki Foods, Inc., Serial No. 87648828 (October 31, 2019) [not precedential] (Opinion by Judge Jonathan Hudis).
The drawing in an application shows the mark sought to be registered. Trademark Rule 2.52. "[T]he mark must be a substantially exact representation of the mark as used on or in connection with the goods." Trademark Rule 2.51(a).
Examining Attorney Corinne Kleinman maintained that the marks in the drawing and specimen are not the same because "the mark on the specimen includes stylization and/or a design element (the crossed out wording 'ROLL' and substitute term 'STIX') that creates an uncommon or 'special' commercial impression."
In support of the Office’s position, the Examining Attorney cites to articles . . . reporting that crossed-out words accompanied by replacement wording can demonstrate: textual irony, the history of document changes, the deliberate change of thought, a way of saying something without really saying it, ironic commentary, rebranding by the change of commercial impression, an eye-catching form of advertising, a dual meaning, and an indication of differences or the value of a new offer from a prior one. We find that none of these vehicles of intended meaning can be conveyed by a standard character (typed) drawing.
In fact, applicant conceded that the crossed out word "Roll" is intended to show that BOWL & STIX is a follow-on product to its prior product, BOWL & ROLL. This intended commercial impression cannot be captured by the standard character drawing of BOWL & STIX.
Applicant pointed to several third-party registrations for marks in which a word was crossed out, but the Board once again noted that it is not bound by actions of examining attorneys in registering prior marks. [What's the relevance anyway, since applicant is not seeking to register a mark with a crossed out word? -
ed.].
The Board therefore affirmed the refusal to register.
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TTABlog comment: How did you do? I would refer to this product as "BOWL & STIX," not "BOWL & CROSSED-OUT ROLL STIX."
Text Copyright John L. Welch 2019.
posted by John L. Welch @ 11/06/2019
5 comments
5 Comments:
I got this one right. I would refer to this product as Bowl & Stix as well - but for registration purposes, I would have applied for BOWL & ROLL STIX as both a word and design mark to cover all the bases. ROLL is a key part of the branding. I wonder if they have a TV or radio commercial that would support BOWL & STIX since you would not read the "roll" aspect.
This should be precedential. Has the Board previously announced limitations on standard character marks?
The USPTO is not concerned with the common-sense perception of an actual human being. There are technical rules to be followed like gospel. In other words, this was an easy decision to predict.
This is a good decision. Applicant chose to keep and strike out ROLL on the package for a reason, to enforce the old brand and distinguish it from the new. That's what is conveyed and that's exactly what is missing in the applied-for mark. They are different, plain and simple. And, side note, speaking from personal experience here, the Examiner's inclusion of evidence about the significance of crossed-out words was a brilliant and fortuitous move. Few people find such joy in the nuances of language than Judge Hudis.
This one seems pretty obvious to me: If the mark BOWL & STIX appeared on that package without the crossed-out word "ROLL", it would create a completely different commercial impression than what is actually shown on that package. The commercial impression created by the actual use of the mark conveys to consumers "This isn't BOWL & ROLL, it's BOWL & STIX", which is not the impression created by BOWL & STIX alone. Since the test is whether the mark on the specimen creates the same commercial impression as the mark in the drawing, the applicant clearly failed that test in this case.
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