TTABlog Test: Do You Recognize Trademark Mutilation When You See It?
The “drawing depicts the mark sought to be registered.” Trademark Rule 2.52, 37 C.F.R. § 2.52. "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(b), 37 C.F.R. § 2.51(b).
[W]hen a proposed mark, as represented in the drawing, does not constitute the complete mark, it is sometimes referred to as a “mutilation” of the mark. This term indicates that essential and integral subject matter is missing from the drawing. See TMEP § 807.12(d).
An applicant may apply to register any element of a composite mark that creates a separate and distinct commercial impression - i.e., the element performs a trademark function in and of itself. See, e.g., In re Univ. of Miami, Ser. No. 86616382, 2017 TTAB LEXIS 171, at *10-11 (TTAB 2017)
Applicant maintained that "[t]he stylized V clearly stands out from the remainder of the ‘VERRICA’ name based on at least the different fonts, the different colors, the different shading in the V and the three circles having the same different color shading." Examining Attorney Ronald L. Fairbanks maintained that "the drawing shows only a nonseparable part of the mark appearing on the specimen" and "the stylized letter V is not separable from the remainder of the singular term VERRICA."
The Board agreed with the examining attorney: "[T]he proposed mark is depicted in the specimens as part of a unitary word and cannot be regarded as a separable element creating a separate and distinct commercial impression."
While we acknowledge that the V appears in a slightly larger font and is highly stylized as compared to the remaining letters “ERRICA” in the word “VERRICA,” there is not sufficient space between the letter “V” and the remaining lettering such that consumers would perceive the V and Design as a separate and distinct mark. Rather, consumers will immediately understand the word to be “VERRICA” with a stylized V as the first letter. Only looking at the element in the word VERRICA would require that we cast a blind eye on the remainder of the word. The letters “ERRICA” are there and we cannot pretend that they are not.
Applicant’s use of a purple and blue color scheme for the V and Design element on its specimens of use was irrelevant, since color was not claimed as part of Applicant’s mark - which therefore could be displayed in any color or combination of colors.
And so, the Board affirmed the refusal to register.
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TTABlogger comment: I dissent.
Text Copyright John L. Welch 2025.
posted by John L. Welch @ 4/25/2025
12 comments
12 Comments:
I too will dissent
While there was no specimen of use with just stylized V by itself, if you go to their website, the stylized V does appear elsewhere by itself such as a favicon associated with the website. While this would not be considered use as a trademark, could it not still be collateral evidence that consumers have been trained to view the stylized V by itself, and separate it from the word itself?
WRONG. It absolutely makes a separate commercial impression
I join your dissent. Bad Board! Bad Board!
I have overcome that argument from the TE by citing a case that stood for the proposition that the owner decides what his trademark is. For the life of me I can't find the citation right now. I think I originally found it in McCarthy's. Maybe someone else knows.
What do you make of the last sentence on page 13? The sentence reads: "Here, Applicant’s mark is so intricately intertwined in the word 'VERRICA' as to constitute a single composite mark, which differs in commercial impression from Applicant’s standalone stylized V appearing on the drawing." Shouldn't that say "which does *not* differ in commercial impression..."?
I don't know if the favicon would have been considered but why not just add some V's to the website? It looks like some of the specimens were printouts from their website. If looking to register the V by itself (as opposed to the full mark, which looks like they already registered), I probably would have suggested that the client redesign the webpages advertising the relevant goods and services to show both the standalone V and full mark. If there were printouts showing use of the V by itself, it probably never gets rejected. It also would have probably cost less to redesign those couple of webpages than fighting an appeal
I dissent too, but would it have been easier to have the marketing department fix the issue rather than pay the legal fees to fight a battle that was not guaranteed?
I use favicons as specimens all the time
I think you are reading the last sentence on page 13 incorrectly. Admittedly, it could have been better worded, but it means (or is supposed to mean) that the letters V and ERRICA are so intertwined that they constitute one mark.
This. Whether rightly or wrongly decided, Miller Sports exists as a precedent. What is the easier and cheaper option to achieve client goal: Door #1 - spend money trying to convince the TE (and potentially more money trying to convince TTAB) that your V design as the first letter in the word Verrica is distinguishable from the Board's analysis in Miller saying the M design as the first letter in Miller was mutilation. Or Door #2 - advise client to show use of the V design on its own on the website. They could easily design the website so that they sometimes use the V design as the first letter and sometimes use the V design with the full word Verrica under it. Then you have a third mark to register too, "V VERRICA". It's probably still cheaper to refile and take Door #2 than spend money on an appeal.
As context, Pharma labeling and advertising is highly FDA regulated and making a simple change is not an easy ask. Better strategy would have been to design the coverage with the mark as actually used in mind.
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