Tuesday, October 12, 2010

Test Your TTAB Judge-Ability on this Trademark Mutilation Case

Do you know trademark mutilation when you see it? Applicant AHL, Inc. applied to register the mark HOME STATE for firearms; its specimen of use showing the mark as applied to the goods appears immediately below. The question is this: under Rule 2.51(b), is the mark of the drawing, (i.e. the words HOME STATE) a substantially exact representation of the mark as used on or in connection with the goods? What say you? In re AHL, Inc., Serial No. 77741878 (September 30, 2010) [not precedential].

Of course an Applicant may seek to register any portion of a composite mark, provided the particular portion creates a separate and distinct commercial impression. But if it does not, "the result is an impermissible mutilation of the mark as used."

The Board agreed with Examining Attorney Christopher L. Buongiorno that the term HOME STATE does not create a separate and distinct commercial impression.

Visually, all of the words are displayed on the same line and in the same font style, with the first letter in each word presented in upper case letters and the remaining letters of each word in smaller upper case letters. In addition, the only physical separation between the words HOME STATE and the word TRIBUTE is the [erroneous - ed.] placement of the registration symbol after the word STATE. Given its much smaller-sized lettering, it is unlikely to be noticed and, even if it is, it fails to conceptually separate the wording.

The Board did not believe that consumers will perceive the words HOME STATE and the word TRIBUTE as conceptually distinct.

Given the syntax and structure of the phrase HOME STATE TRIBUTE,it is clear that the word “TRIBUTE” is modified by the words HOME STATE and that the commercial impression rendered by the wording HOME STATE TRIBUTE is not severable. This perception is bolstered by the specimen, wherein the additional text on the specimen states: "Presenting ... Your HOME STATE TRIBUTE .45," "The American Historical Foundation’s First Colt® .45 in Honor of Your Home State!" (emphasis supplied)

And so the Board affirmed the refusal to register.

TTABlog comment: That wasn't so hard was it? Compare this case with the CYCLOSSORB decision (TTABlogged here). If the specimen here had said "HOME STATE .45," would HOME STATE be deemed to create a separate and distinct impression?

Text Copyright John L. Welch 2010.


At 1:17 PM, Blogger Pamela Chestek said...

Seriously, no descriptiveness refusal? And a quote from an office action: "Applicant relies on the improper use of a registration symbol in arguing that the commercial impression is restricted to the words HOME STATE. This argument is amusing because applicant may not use the federal registration symbol until its mark is registered in the USPTO. Applicant claims it has a right to use the symbol in light of a prior registration. This assertion is invalid and legally flawed. The examining attorney would like provide a reminder of the canon set forth in 37 C.F.R. §10.85(a)(2)." Ouch. And wonder how many words the Examining Attorney considered before deciding on "amusing."


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