TTAB Wrestles with Applicant over Specimen Refusal: Guess Who Won?

The Board tossed out this appeal of a refusal to register the mark shown immediately below, for various wrestling-related services, agreeing with Examining Attorney Rebecca Ruiz that the mark is not a "a substantially exact representation" of the mark as used, as required under Trademark Rule 2.51(a). Applicant's argument that the mark in the application drawing need not be an "exact match" with the specimens of use, while true, missed the mark. In re Chris Irvine, Inc., Serial No. 97156945 (November 6, 2024) [not precedential] (Opinion by Judge Catherine Dugan O'Connor).

The proposed mark consists of "a full figure design of a character comprising a fedora, a leather jacket having spikes protruding therefrom, a scarf, and a painted face."

“In an application under section 1(a) of the Act, the drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods and/or services.” Trademark Rule 2.51(a), 37 C.F.R. § 2.51(a). The “drawing depicts the mark sought to be registered.” Trademark Rule 2.52, 37 C.F.R. § 2.52.

Applicant argued that it should receive "the exact same treatment" as several third-party registration that it submitted. The Board was unmoved: "The third party registrations say nothing about whether Applicant’s proposed mark as shown in the drawing is a substantially exact representation of the matter shown in Applicant’s specimens. We are not bound by the decisions to register those marks and must decide the instant Application on its own merits."

Although the law does not require that the drawing “exactly match” the mark as used in the specimens, it must be a “substantially exact representation” of the mark as used; “minor alterations” that do not create a new and different mark with a different commercial impression are acceptable.

In comparing Applicant’s mark drawing and specimens, the Board found more than minor differences between the proposed mark and the specimens of use. Several of the specimens contain only partial images of the character of the proposed mark, shown from the chest up.

Applicant's substitute specimens showed the proposed mark "in use" during live wrestling performances. "Unlike the mark drawing, these images show the individual’s face turned to one side, not looking directly at the camera, again with his teeth bared. The individual is wearing a t-shirt with a design that is not featured in the mark drawing, and the gloved hands are not shown."

[The] differences between the mark drawing and Applicant’s specimens create distinct commercial impressions, such that the mark drawing is not a substantially exact representation of the applied-for mark as used, and Applicant has failed to provide a specimen showing use of that mark in commerce in connection with the identified services.

In sum, "Applicant’s specimens therefore do not show use of the applied-for mark in commerce in connection with the identified services, as required by Sections 1 and 45 of the Trademark Act."

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TTABlogger comment: He's no Gorgeous George! I hesitate to refer to this as a "mutilation" case in light of the context. Is the look of a wrestler protectable as trade dress? Why not? BTW: Is this a WYHA?

Text Copyright John L. Welch 2024.