Tuesday, December 12, 2017

TTAB Affirms Refusal of OLANA for Jewelry and Clothing: Drawing Doesn't Match Specimen

The Board affirmed a refusal to register the mark OLANA for jewelry and various clothing items on the ground that the drawing is not a "substantially exact representation of the mark" as it appears on the specimens of use. The word OLANA does not appear by itself on the specimens, but rather is preceded by HALAU HULA or HULA. In re Ai, Serial No. 86842205 (December 7, 2017) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Trademark Rule 2.51(a) requires that the drawing of the mark be a "substantially exact representation" of the mark as used on or with the goods. The word "substantially" means that only inconsequential variations are permitted in the mark as it appears on the drawing. However, the Board observed, an applicant may seek to register an element of a composite mark if that element presents a separate and distinct commercial impression.

Among the circumstance in which a portion of a composite mark was found to be egistrable are:

(1) The two components include a corporate name or house mark along with another trademark or a descriptive term. [SERVEL INKLINGS]
(2) The other component is a surname. [RESPONSER MEYER]
(3) The component is a non-descriptive element that is part of a phrase. [ANOTHER 8-48 FROM MATHATRONICS]
(4) The other component is a part number. [TRO6AI-TINEL-LOCK-RING]

Here the question was whether OLANA is a separate and distinct mark in itself. "In other words, are 'HALAU' and 'HULA' essential and integral subject matter missing from the drawing?"

Applicant argues that separation of the words on the clothing, and the capitalization of the letter “O” in OLANA on the jewelry provides OLANA with a distinct commercial impression. However, on the jewelry, the letter “H” in the words HALAU and HULA are also capitalized such that the terms are equally emphasized, and although the words on the clothing are not physically connected, they are displayed as a single phrase in similar size and font.

The Board noted that HALAU and HULA are not suggestive or descriptive of applicant's goods. HALAU HULA is a Hawaiian term for "Hula School." Consumers would view the terms here as a reference to a particular school, rather than separating OLANA from the other words. There was nothing in the record to suggest that customers would divide the phrase into component parts and use OLANA alone to call for or refer to the goods.

And so the Board affirmed the refusal under Sections 1 and 45 of the Trademark Act.

Read comments and post your comment here.

TTABlog comment: Would you have appealed?

Text Copyright John L. Welch 2017.


At 8:58 AM, Anonymous Anonymous said...

Sometimes you can't help but wonder what circumstances sent the application to appeal. Why wouldn't the applicant file a new application that covers the mark as displayed on the goods?

At 4:12 PM, Anonymous Anonymous said...

The cost of refiling is so low in comparison to an appeal, you would have to be crazy not to refile to prevent another party from getting ahead of you, and forcing you to file an expensive opposition if that happened.

Even better idea - they should have converted to 1(b) and submitted better specimens later?


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