Wednesday, September 13, 2006

TTAB Reverses Two Mutilation Refusals, Finding Marks Match Specimens

The issue of "mutilation" may arise when the mark as depicted in a trademark specimen does not match the mark depicted in the application drawing. The drawing must be a "substantially exact representation" of the mark as used. Rule 2.51(b). When "essential and integral subject matter" is missing from the drawing, the mark may not be registered. TMEP Section 807.12(d). Two applicants recently overcame "mutilation" refusals by convincing the Board that the mark shown on the application drawing made a "separate and distinct commercial impression" apart from the other material appearing on the specimen of use.

In In re Jordan Outdoor Enterprises, Ltd., Serial No. 78298898 (August 9, 2006) [not citable], the Applicant sought to register the phrase REALTREE HARDWOODS GREEN HD for "cotton, wool, or synthetic fabrics having camouflage patterns." The specimen of use (shown above) displayed those terms, along with the terms BILL JORDAN'S and HIGH DEFINITION in a much smaller font.

The Board noted that, as Professor McCarthy put it, the issue "all boils down to a judgment as to whether that designation for which registration is sought comprises a separate and distinct 'trademark' in and of itself." It viewed BILL JORDAN'S and HIGH DEFINITION as "visually insignificant parts of the composite mark such that their removal does not disturb any aspect of the mark's visual continuity."

The Board was not persuaded that the appearance of the wording HD "in a different design carrier" from REALTREE HARDWOODS GREEN destroys the continuity of the mark. The yellow triangle overlaps the black and red oval, and the HD "is on the same plane, and immediately follows, the wording HARDWOODS GREEN. "As such, the two carriers are united so that the mark REALTREE HARDWOODS GREEN HD, appears in the specimen in a manner that agrees with the mark as depicted in the drawing."

In In re ITT Industries, Inc., Serial No. 78456701 (August 17, 2006) [not citable], the Applicant sought to register the logo mark shown immediately below for certain computer software.

The Examining Attorney contended that the mark on the specimen of use (shown immediately below) is "clearly unitary" and "materially differs from the drawing mark." Missing from the drawing are the words ITT Industries, AES Division, SEMI-AUTONOMOUS, and CONTROL SYSTEM that appear in the shaded border that surrounds a "topographical map design."

The Board found the map design to resemble "random lines" that did not create much of a visual impression. The names ITT Industries and AES Division are equivalent to house marks or trade names, the omission of which would not normally result in mutilation of a mark. Moreover, these terms are in smaller type against a less distinctive background, and are visually much less significant. The words SEMI-AUTONOMOUS CONTROL SYSTEM are likewise in much smaller type, are much less visible, and are easily overlooked. Furthermore, they provide information about the nature of the goods.

Distinguishing the cases cited by the PTO, the Board found that there was no interrelationship between the omitted elements and the mark that Applicant sought to register. "The arrow and the term K-PATH are in darker print and more noticeable than the omitted elements and, therefore, they do stand out from the other material on the specimen."

Text Copyright John L. Welch 2006.


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