Wednesday, March 11, 2009

Finding "ACURA" and "RL" Too Far Apart on Specimens, TTAB Affirms Refusal of "ACURA RL" for Autos

Applicant Honda's specimens of use for the mark ACURA RL for "automobiles and structural parts therefor" were not in accord with PTO requirements because they "left the impression" of two marks rather than one. And so the Board affirmed the PTO's refusal to register in light of Honda's failure to provide an acceptable specimen of use. In re Honda Motor Co., Ltd., Serial No. 77044023 (February 23, 2009) [not precedential].

Original Specimen

The Board began its opinion with a discussion of Honda's attempt to belatedly introduce evidence after it filed its notice of appeal. Strangely, Honda first argued it was "never specifically advised ... that it could submit evidence or argument in an attempt to convince the examining attorney that the requirement itself [for a new specimen] was incorrect." Later it argued that it did not submit evidence during prosecution because "it may have been counter-productive to do so because applicant feared that the examining attorney might be stubborn." The Board was unmoved by these unusual arguments, and it refused to consider the late evidentiary submissions.

As to the specimens of use, Examining Attorney April K. Roach advised Honda that the original specimen [above] was unacceptable because ACURA and RL "appear as separate marks."

Honda submitted a substitute specimen [below], comprising the cover of the owner's manual for an auto. Again the Examining Attorney found the specimen inadequate for the same reason.

Substitute Specimen

The Board observed that under Trademark Rule 2.56 an application must include a specimen of the mark as used, and under Rule 2.51(a) the application must include a drawing of the mark that is a "substantially exact representation of the mark as used on or in connection with the goods ...." In short, the drawing and the specimen have to match.

The Board found this case to be on all four wheels with In re Audi NSU Auto Union AG, 197 USPQ 649 (TTAB 1977), in which the Board refused registration of the logo mark shown here because on the specimen of use the word AUDI appeared over the tail light on one side of the car trunk, while the word FOX and the foxhead design appeared over the other tail light. (see below). Said the Board, "Everything depends on the specimens, which, in this case, show the use of two discrete marks."

Honda feebly argued that, unlike in Audi, its mark is a standard character mark, but the Board shrugged that off: "[r]egardless of the type of drawing in the application, the specimens must indicate use of the applied-for matter as a mark - i.e. as a single mark."

The Board concluded that, as in Audi, "the impression left by the specimens of record is that of two marks, rather than one."

As used on the first specimen – applicant's vehicle – the word ACURA appears on the far left side of the trunk of the car, while the letters "RL" appear on the far right. The two marks are separated by applicant’s corporate "A" logo, the trunk handle, and considerable space. As in Audi, we find that the likely impression here is that ACURA is the trademark for a line (or "make") of cars, while RL is a trademark for a particular "model" of that line.

Honda's second specimen was no better than the first:

The two elements are physically separated by a significant amount of blank space and the numerals "2004." "ACURA" is depicted in black in close proximity to applicant's logo, while the letters RL appear in a different font, different color, and different size. As was the case with the specimen depicting the rear of applicant's vehicle, we do not believe that a relevant consumer viewing applicant’s owner’s manual would understand the terms "ACURA" and "RL" to comprise a single mark, rather than two.

And so the Board ruled that Honda had failed to comply with Rule 2.51, and it affirmed the refusal to register.

TTABlog comment: Is the Board being a bit hypertechnical here? Don't consumers identify this car as an ACURA RL? Aren't consumers accustomed to seeing the make and model of a car displayed across the trunk lid? Doesn't a consumer pretty much automatically associate the two terms together: make and model?

Text Copyright John L. Welch 2009.


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