Wednesday, June 04, 2008

Precedential No. 28: TTAB Finds Drawings OK, But Packing Label Specimen Fails to Show Service Mark Use

Pondering the propriety of Applicant wTe Corporation's drawings and specimens, the Board rendered a split decision in In re wTe Corp., 87 USPQ2d 1536 (TTAB 2008) [precedential]. It found the drawings for the mark SPECTRAMET to be a substantially exact reproductions of the mark as used on the specimens, but it agreed with the PTO that Applicant's service mark specimen did not show use of the mark for the recited services.

Applicant's trademark specimen

The Examining Attorney rather feebly argued in both applications that "the specimen does not match the drawing of the mark" because the drawing shows a typed mark but the "c" has been replaced by an arrow design in the specimens of use. According to the Examining Attorney, the arrow design could be perceived as an "o." Applicant argued that the arrow design "is a subtle modification of the chosen font style."

The Board noted that the determination of whether a drawing is a substantially exact representation of the mark on the specimen is a "assuredly a subjective one." The Board concluded that "most would view the mark as applicant indicates, SPECTRAMET.

"Not only is 'Spectr-' a more common beginning for a word in English ... but also the fourth letter looks more similar to a 'C' than an 'O.'" [TTABlog comment: I think it looks more like a "C" in the specimen above, but more like an "O" in the specimen below.]

Recognizing that the PTO "encourages applicants to submit drawings that depict their marks in standard character form," the Board reversed this refusal to register.

The Board then turned to the issue of whether Applicant's specimen shows actual use of the mark for the recited services, namely, contract processing of metals. The Board noted Applicant's admission that it uses the mark as part of a return address on a "packaging label that is affixed to boxes being mailed to customers."

Applicant's service mark specimen

The law requires that there be "some direct association between the offer of services and the mark sought to be registered." Here the return address on products that Applicant "already made and sold to the customer does not show a connection between the offer of contract processing of metal services and the mark." Therefore, the Board sustained this second refusal.

Text Copyright John L. Welch 2008.


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