Thursday, April 24, 2014

Test Your TTAB Judge-Ability On These Two Mutilation Cases

Two days ago, the Board decided two cases involving refusals based on the Examining Attorney's conclusion that the mark as depicted in the application drawing was not, as required by Rule 2.51(b), a "substantially exact representation of the mark as used on the specimen." Let's see how you do with this recurring issue.

In re Louisiana Medical Mutual Insurance Company, Serial No. 85204125 (April 22, 2014) [not precedential], involved an application to register the mark shown above, consisting of the letters MI with a flourish above the letter I, for "educational services, namely, conducting online seminars in the field of insurance risk management." On the specimen of use, shown below, the mark included the word COMMUNITY within the letter "I":

In re Scheucher, Karl F., Serial No. 85529532 (April 22, 2014) [not precedential], concerned an application to register the mark SIPS in standard character form, for various goods in class 9. The specimen of use depicted the mark as follows, with the letters S-I-P-S serving as the first letters of the words "Scalable Intelligent Power Supply."

The question in each case was whether the applied-for mark (i.e., the mark shown in the drawing) created a separate and distinct commercial impression. If the applied-for mark is part of a single, unified design, then the removal of the portion is an impermissible mutilation of the mark as used.

Judge Anthony R. Masiello authored both opinions. In the first case, after reviewing several prior TTAB rulings on the mutilation issue, the Board found it significant that both MI and COMMUNITY are literal elements - i.e., they consist of letters or words. "When customers see letters and words in close proximity to each other, they will be inclined to try to make sense of them all together." MI COMMUNITY could, for example, be seen as suggesting the community of customers that applicant serves. Where there are such readily apparent meanings, consumers are likely to perceive the combination as a unitary mark.

Applicant argued that the Board should resolve any doubt in its favor, but cited no binding precedent for that principle. In any event, the Board did not consider this case to be a close one.

In the second case, the Board again noted that an applicant may apply to register any element of a composite mark that creates a separate and distinct commercial impression. But again the Board found that the applied-for mark is not a substantially exact representation of the mark as actually used.

If we consider only the large, boldfaced lettering on the specimen, we will, of course, see the letters SIPS. But that would require that we cast a blind – or at least myopic – eye on the remainder of the mark. The words “Scalable Intelligent Power Supply” are there and we cannot pretend that they are not. If we try to separate the bold-faced letters from the other lettering, we will have, on the one hand, SIPS, but on the other hand the unknown designations “calable,” “ntelligent,” “ower” and “upply.” No reasonable customer will perceive the mark on the specimen in this way ....

The Board concluded that the applied-for mark is a mutilation of the mark as actually used, and it therefore affirmed the refusal to register.

Read comments and post your comment here.

TTABlog note:  So how did you do? I think I would have reversed the second refusal.

Text Copyright John L. Welch 2014.


At 9:27 AM, Anonymous Gene Bolmarcich, Esq. said...

I would have reversed the first only, and I have respect for the expertise of both of us, John :) Haven't read either one yet. I'm sure I'm wrong. This is a metaphysical exercise.

At 11:51 AM, Anonymous Carole Barrett said...

I think the Board got it right!

At 1:35 PM, Anonymous Anonymous said...

I would have reversed the first only. The wording is not readable from a distance and the design clearly stands out as a mark.

This happens quite often when the marketing and graphic art people provide you with a design and later make significant changes, so it is no longer the same mark. I always point out that could be a problem.

If the mark is important, then it would seem to me to be cheaper and easier to make sure the specimen will not be an issue before it is filed.


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