Monday, March 28, 2022

TTABlog Test: Is this MUTILATION? USPTO Says "THE VILLE" Specimen of Use Did not Match the Application Drawing

The USPTO refused to register THE VILLE (in standard character form) for educational and entertainment services provided by the University of Louisville, on the ground that the drawing of the mark was not a substantially exact representation of the mark as used in commerce. In other words, mutilation! Do you agree? In re University of Louisville, Serial No. 90182509 (March 24, 2022) [not precedential] (Opinion by Judge Martha B. Allard).

Section 1(a)(1) of the Lanham Act requires that a trademark applicant submit a specimen depicting its mark as used. Under Rule 2.51(a), the drawing must be "a substantially exact representation of the mark as used." The Board noted that "the term 'substantially' permits some 'nonconsequential variation' from the 'exact representation' standard."

The term "mutilation" is sometimes used when the drawing "does not constitute the complete mark," and the term indicates that "essential and integral subject matter is missing from the drawing." See TMEP Section 807.12(d). It "'all boils down to a judgment as to whether the designation for which registration is sought comprises a separate and distinct 'trademark' in and of itself.'"

Examining Attorney Inga Irvin found that the mark on the application drawing (i.e, THE VILLE) was not a substantially exact representation of the mark as used on the specimen of use (pertinent portion shown above). She suggested that the University submit a substitute specimen of use, but the University refused to do so.

Louisville contended that the commercial impression created by the specimen is "THE VILLE," the University's nickname, while the nondistinctive word "visit" does nothing to change that impression. The Examining Attorney maintained that the mark shown on the specimen is VISIT THE 'VILLE, and she argued that the invitation or command "visit the ville" creates a different commercial impression than simply naming the place to be visited. She also noted that VISIT was not part of the mark as filed, and consequently this added term was not searched for possible likelihood of confusion with other registered marks.

The Board found that the mark shown on the specimen is VISIT THE 'VILLE: "those words are so merged together that the term THE VILLE cannot be regarded as a separable element creating a separate and distinct commercial impression."

Using Applicant's preferred focus on the red field in the specimen, the words VISIT THE 'VILLE! appear together. The words VISIT THE appear on the same line and in the same style and relatively smaller size font. The word 'VILLE! appears in a larger font below and slightly to the right, but in close proximity to the terms VISIT THE and, more importantly, completes the sentence started by VISIT THE. The use of the exclamation point reinforces the notion that the terms VISIT THE 'VILLE! should be read together to form an exhortation .

"Consequently, the drawing, which contains only the term THE VILLE, constitutes a mutilation of the mark as depicted in the specimen."

An applicant may seek to register any portion of a mark, if that portion presents a separate and distinct commercial impression. In re 1175854 Ontario Ltd., 81 USPQ2d 1446, 1448 (TTAB 2006). Applicant has, in effect, applied to register only part of the mark shown in the specimen, but that portion, THE VILLE, does not create a separate commercial impression for the reasons discussed above.

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Perhaps the University should have either filed a substitute specimen or amended the application to intent-to-use? What do you think?

Text Copyright John L. Welch 2022.


At 9:16 AM, Anonymous Anonymous said...

I would think that if "THE VILLE" really is used by the university as a nickname in its marketing materials, it could have easily submitted a different specimen to overcome the refusal. Consider this one a "WWAT": "What Was Applicant Thinking?"

At 10:40 AM, Anonymous Alex said...

Or why couldn’t they just amend the drawing to VILLE!, unless they already applied for that mark?

At 12:07 PM, Blogger Unknown said...

What if the specimen was for the term "Visit your McDonalds" or "Contact Amazon" or "Buy a Ford" for the corresponding services offered under the famous name? No merger of words in my opinion. Perhaps the more important the issue is 'fame" and that must be considered before merger.

At 12:19 PM, Blogger Allison R said...

I am always grateful when people take these appeals on prosecution issues. They are helpful and instructive for counseling purposes.

At 12:36 PM, Blogger Bert krages said...

I agree that the the University (i.e., the 'Ville) should have done something different. Unlike the TTAB, the inference I drew from the specimen was that the mark was "VILLE.

The Louisville women's basketball team plays tonight. Hopefully an NCAA victory will alleviate the pain of a TTAB loss.

At 2:37 PM, Anonymous Anonymous said...

Maybe the university should consider getting a new trademark attorney?

At 9:34 AM, Anonymous Anonymous said...

Maybe the university's primary use of the mark was more so with its athletic teams and not much for the educational endeavors of the university as a whole. Sometimes you just don't have the perfect specimen. I see the university has various other registrations of VILLE for goods and services in other categories.

The University's counsel knows his stuff.

At 2:46 PM, Anonymous Anonymous said...

I would file a new specimen for just THE VILLE and try to convince the university to file an additional mark for VISIT THE VILLE! I warn my clients that the mark must be used EXACTLY as it appears in the application. That means no exclamation points too (had a case rejected because of an additional exclamation point). The attorney should have requested a different specimen and told them that the mark must match exactly the one in the application.


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