Friday, October 07, 2011

Test Your TTAB Judge-Ability: Is This a Case of Trademark Mutilation?

Under Rule 2.51(b), the mark shown on the application drawing must be a "substantially exact representation of the mark as used on or in connection with the goods and/or services." Here, Applicant Mastronardi sought to register the mark MEDLEY on the Supplemental Register, for tomatoes and vegetables, but Examining Attorney Shaila E. Settles refused registration on the ground that "the mark as it appears in the drawing is not a substantially exact representation of the mark as it appears on the specimen submitted with the allegation of use." In short, the mark depicted on the drawing is a mutilation. How would you rule? In re Mastronardi Produce, Ltd., Serial No. 77322943 (September 21, 2011) [not precedential].

The Board noted that an applicant may seek to register "any portion of a composite mark if that portion presents a separate and distinct commercial impression" that serves as a source indicator. As Professor McCarthy has observed, the issue of mutilation "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."

Applicant contended that "the word GOURMET is obviously devoid of any source-indicating significance and would require a disclaimer if it were to be included," and so individuals encountering the specimen would recognize that the mark consists only of MEDLEY.

The Board agreed with the Examining Attorney. It was not persuaded that MEDLEY in Applicant's specimen "creates a commercial impression and thus a trademark that is separate and distinct from the term GOURMET."

[T]he terms GOURMET and MEDLEY appear next to one another approximately the same size in highly similar font in such a manner as to create the impression of the single mark GOURMET MEDLEY.

The Board noted that Applicant's arguments regarding the "source-indicating ability" of GOURMET are not supported by evidence. In any case, the disclaimer of a word does not remove the word from the mark; the consumer will still view the mark on the specimen as the unitary phrase GOURMET MEDLEY.

In short, the drawing of the mark is an impermissible mutilation of the mark as used on the goods. And so the Board affirmed the refusal.

TTABlog comment: Compare this decision with that of a different Board panel in the CONTINUUM case, TTABlogged here. Clearly the conclusion as to whether mutilation has occurred is a subjective one. Maybe for the sake of (possible) consistency, the same panel should review all mutilation cases?

Text Copyright John L. Welch 2011.


At 10:01 AM, Anonymous Orrin A. Falby said...

I agree with the Board's decision in this case. The words GOURMET and MELEDY are used together obviously to create a specific commercial impression. The only way to convince the Board otherwise is to present evidence in the form of solicited or unsolicited advertisements that show the applicant and or third-partes use MELEDY per se to refer to the goods.

At 11:35 AM, Anonymous Anonymous said...

So if I have a specimen that says PEPSI Cola, I cannot register PEPSI?

This one seems much more likely to be "separated" than the mark "Continuum" in the India Continuum Fund.


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