Wednesday, June 02, 2010

Test Your TTAB Judgeability: Do You Know Trademark Mutilation When You See It?

Cutting Edge Beverages, LLC sought to register the mark shown to the right (the universal prohibition symbol) for "soft drinks, namely, carbonated and non-carbonated soft drinks," and it submitted the specimen of use shown below. The Examining Attorney refused registration on the ground that the mark of the drawing is not a "susbstantially exact representation" of the mark as used on the specimen. In other words, the applied-for mark did not create a separate and distinct commercial impression, and therefore was a mutilation of the mark as actually used. How would you rule? In re Cutting Edge Beverages, LLC, Serial No. 77420157 (May 18, 2010) [not precedential].

Examining Attorney Andrew Rhim maintained that the wording is "an integral element of the mark as shown on the specimen," and further that consumers frequently encounter the universal prohibition sign together with words and so would likely view the design and words as integral parts of a unitary mark.

[T]he display of the word CRASH over the diagonal slash of the universal prohibition symbol on the specimen conveys the commercial impression of goods where the consumer does not “crash” or does not get tired or fatigued. This commercial impression is reinforced by use of the word ENERGY on the specimen and the appearance of the additional wording “LONG LASTING” and “EXTENDS ENDURANCE” shown beneath the mark on the specimen. Without this wording, the mark shown on the applicant’s drawing certainly conveys a different commercial impression.

Applicant feebly argued that "energy crash science" is merely the variety designation for the drink and that the universal symbol creates a separate commercial impression. [That argued indeed did crash for lack of energy. ed.

The Board sided with the Examining Attorney: "consumers would perceive the display on the specimen as a unitary message NO CRASH or NO ENERGY CRASH SCIENCE and not merely the design without meaning or meaning only 'NO.'"

The design element here is not simply a background or carrier, but is also an integral part of the message conveyed by the combination of the design and wording. Thus, it is “not a background design in the usual sense.” *** Here, the words are “essential to the commercial impression” of the universal prohibition symbol.

And so the Board found that the mark shown on the drawing is not a substantially exact representation of the mark shown on the specimen, and it affirmed the refusal to register. [In other words, the Board gave Applicant the universal thumbs-down signal.]

TTABlog comment: What do you think the odds were of overturning this refusal on appeal?

Text Copyright John L. Welch 2010.


At 11:40 AM, Anonymous Mark Lebow said...

It's definitely mutilation. This is the potential consequence of getting a phantom mark through prosecution.


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