Monday, October 03, 2005

TTAB Blocks NBA Star Chris Webber's Shot at Registration of "CWEBB"

Philadelphia 76er star Mayce Edward Christopher Webber (a/k/a Chris Webber) failed to penetrate the TTAB defensive scheme with his attempt to register the standard character mark CWEBB for various clothing items. Examining Attorney Linda E. Blohm delivered a Wilsonburger to the big guy, and the Board affirmed her refusal to register on the ground that the mark depicted in Applicant's specimen of use (shown below) is not a substantially exact representation of the mark as shown on the drawing. In re Webber, Serial No. 78126211 (September 13, 2005) [not citable].

Specimen of use

The Examining Attorney contended that, although the letters "WEBB" are clearly presented on the specimen, the letter "C" is not immediately or easily recognizable, and thus the specimen did not match the mark on the drawing. Applicant asserted that a "C" is formed by the design above, below, and to the left of the "W." (see enlarged view below).

The Board saw the issue as this: whether a standard character drawing is acceptable because (Applicant argued) the "mark contains only letters. The letters are listed in the Standard Characters Set provided by the USPTO. The mark does not contain a design element."

The Board, however, noted that Applicant overlooked the requirement that the mark in the drawing "must be a substantially exact representation of the mark" on the specimen.

"The specimen clearly shows the letters WEBB in the same size and font. The letter 'C' may be suggested by the design around the letters WEBB but to many, if not most, purchasers it would not. When it is not even clear if the mark is for four or five letters or whether the mark includes a design or another letter, a standard character drawing is not appropriate. 37 CFR Sec. 2.52(a)(2), Trademark Rule 2.52(a)(2) (Standard character drawing appropriate if the 'mark does not include a design element.')"

Applicant Webber established that he is known as CWEBB, and he asserted that consumers of his products will recognize the mark CWEBB on his shoes, even when the C is highly stylized. The Board was not buying that one:

"... even if we accept that applicant's nickname is CWebb, we cannot conclude that prospective purchasers would recognize the letters WEBB with a highly stylized design as CWebb. To take a more extreme example, the shirt in the specimen appears to be a basketball jersey with the name WEBBER on the back. While fans of basketball may view the term 'Webber' as referring to Chris Webber, the specimen would not support an application to register the mark CHRIS WEBBER."

Moreover, the Board noted, Applicant's identification of goods is not limited to any specific purchasers. Ordinary purchasers would not be able to guess that the mark includes the letter "C."

The Examining Attorney also maintained that Webber could not file a substitute drawing showing the mark in stylized form. The Board agreed. Rule 2.72(b) allows an amendment that does not materially alter the mark. Here, however, the mark shown in the specimen "is materially different from the mark in the drawing" and does not convey the same "overall commercial impression."

Therefore, the Board affirmed the refusal to register.

TTABlog comment: Aren't the refusal to register and the refusal to accept a new drawing two sides of the same coin? If the mark applied-for (i.e., the mark shown on the drawing) is not a substantially exact reproduction of the mark in the specimen, then isn't it necessarily true that a new drawing showing the latter mark will constitute a material alteration of the former?

Maybe not. I was just told of a pending application for a word mark, in which the specimen shows use of the word mark with an apostrophe. The Examining Attorney refuses to accept the specimen, but is willing to allow amendment of the mark to add an apostrophe! Perhaps "substantially exact reproduction" is a higher standard than "material alteration?"

Text Copyright John L. Welch 2005.


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