TTABlog Test: Do You Recognize Trademark Mutilation When You See It?

The USPTO refused to register the mark shown below left, for baby- and child-related products (such as cribs, basinettes, etc.) in eight classes, finding that the mark in the application drawing is not a "substantially exact representation of the mark as used on or in connection with the goods," as required by Trademark Rule 2.51(a). On the right is a depiction of the proposed mark as it appears on applicant's specimens of use. How do you think this appeal came out? In re Thorley Industries, LLC, Serial No. 90703606 (December 20, 2023) [not precedential] (Opinion by Judge Thomas W. Wellington).

The word "substantially" in Rule 2.51(a) allows for "some inconsequential variation from the 'exact representation' standard.'" The sole issue here was whether "the mark as it appears in the drawing in the application is a substantially exact representation of the mark on the specimen or if it is a 'mutilation' thereof." The term "mutiliation" means that "essential and integral subject matter is missing from the drawing." In applicant's specimens of use, the proposed mark is always followed immediately by the term "moms" (in all lower-case, stylized lettering).

Examining Attorney Brian Pino argued that because the proposed mark is immediately followed by the word “moms,” it is “physically joined,” as well as being “conceptually connected." According to the Examining Attorney, "the 4 in the proposed mark functions as the word 'for' on the specimens" thus creating a single suggestive message that Applicant's goods are 'for moms.' As illustrated in the specimen materials, Applicant’s goods are intended to 'make parents' lives easier' and provide 'parents the option to customize their 4moms product experience.'"

The Board noted that it must determine whether the proposed mark comprises "a separate and distinct 'trademark' in and of itself." It found guidance in two prior Board decisions. In one, the proposed mark KRAZY for food seasoning was refused registration because it appeared on the specimen of use directly followed by the wording MIXED-UP, all on the same line and in the same script. In the other, the Board affirmed a refusal of the proposed mark UPPER 90 as not being substantially exact to the designation depicted in the specimens where a degree symbol immediately followed the proposed mark. The Board found the current case to be very similar.

That is, the proposed mark is depicted in the specimens as part of a unitary phrase and cannot be regarded as a separable element creating a separate and distinct commercial impression. Consumers will not view the proposed mark , by itself, as a separable mark. We agree with the Examining Attorney that because is immediately followed by the word “moms,” consumers will immediately understand the combination as one suggestive expression, i.e., “for moms.” This is especially so given the context – the goods are directed to parents of children and the term 4MOMS, without design or stylization, frequently appears throughout Applicant’s specimen materials. Consumers of Applicant’s goods are thus conditioned to encounter the proposed mark immediately followed by “moms” and that is used in combination with “moms” to convey the suggestive expression “for moms.”

And so, the Board deemed the specimens of use unacceptable "because Applicant’s drawing of the mark is not a substantially exact representation of the mark as used in commerce," and it affirmed the refusal to register. 

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Text Copyright John L. Welch 2023.