Offc Action Outgoing

Applicant has appealed the examining attorney’s refusal to accept the specimens submitted with the statement of use. The examining attorney has refused registration pending submission of specimens that match the drawing.

FACTS

The applicant submitted a statement of use in which the specimens did not match the drawing. The drawing showed the mark as URBAN RENEWAL. The specimens showed the mark as URBAN RENEWAL AT HOME. The examining attorney required the applicant to submit substitute specimens. The applicant could not amend the drawing to conform to the display of the mark as it appeared on the specimens, because the character of the mark would be materially altered. The applicant did not submit the specimens and the examining attorney finally refused registration because the applicant did not submit acceptable specimens of use. The issue on appeal is whether the mark sought to be registered is an incomplete presentation of the mark that is actually used and the requirement for new specimens was correct.

ARGUMENT

SUBSTITUTE SPECIMENS ARE REQUIRED AS THE SPECIMEN SUBMITTED SHOWS AN INCOMPLETE REPRESENTATION OF THE APPLICANT’S MARK.

The examining attorney required the applicant to submit new specimens as the drawing displayed the mark as URBAN RENEWAL, and the specimen showed the mark as URBAN RENEWAL AT HOME. The drawing could not be amended to add the wording “AT HOME” as it would be a material alteration. The mark shown on the drawing must be a substantially exact representation of the mark as used on or in connection with the goods, as shown by the specimen. 37 C.F.R. §2.51(b); see C.F.R. §2.72(a)(1).

The applicant did not provide new specimens. Instead, the applicant stated “Applicant may apply to register any element of a composite mark if that element presents . . . a separate and distinct commercial impression apart from any other matter … on the specimen.” TMEP § 807.12(d) and that URBAN RENEWAL presents a separate and distinct commercial impression as a mark. The specimens would be acceptable if the applicant’s mark were URBAN RENEWAL AT HOME. However, the specimen is not acceptable for the applicant’s mark URBAN RENEWAL as the specimen shows a mutilation of the mark rather than a substantially exact representation of the mark as used on or in connection with the goods.

The URBAN RENEWAL portion does not create a separate and distinct commercial impression from the wording AT HOME. Firstly, the AT HOME has the same type font and color as the URBAN RENWAL portion, and the wording is in close proximity to each other. Secondly, the font size for URBAN RENEWAL and HOME is the same which creates a visual unitary phrase rather than two separate and distinct elements. Thirdly, the phrase flows together, suggesting that urban renewal starts at home by purchasing the applicant’s goods, used furniture which is emphasized by the other wording on the specimen “This item was previously owned”. Based on the above, the applicant’s specimen is not acceptable as it does not show a substantially exact representation of the mark as used on or in connection with the goods.

The applicant cited three cases which involved a mutilation of the mark as used on the specimens; In re Servel Inc., 85 USPQ 257 (C.C.P.A. 1950); In re Big Pig Inc., 81 USPQ2d 1436 (TTAB 2006) and In re 1175856 Ontario Ltd., 81 USPQ2d 1446 (TTAB 2006). In all three cases the Board or the Court found the drawing to be a substantially exact representation of the mark shown on the specimens. The Board in 1175856 Ontario states, “As noted by our primary reviewing Court in Chemical Dynamics, supra, 5 USPQ2d at 1829, quoting 1 J.T. McCarthy, Trademarks and Unfair Competition §19:17 (2d ed. 1984), the issue of mutilation “all boils down to a judgment as to whether that designation for which registration is sought comprises a separate and distinct ‘trademark’ in and of itself.” In making these determinations, we are mindful of the fact that in an application under Section 1 of the Trademark Act, the applicant has some latitude in selecting the mark it wants to register. TMEP §807.12(d) (4th ed. April 2005).” 81 USPQ2d at 1448.

In In re 1175856 Ontario, the drawing did not include a curved line that was featured in the specimen. The Board found the lettering and globe design shown in the drawing created a separate commercial impression apart from the curve design. The case is distinguishable from applicant’s case in that it involved a missing design feature and not a unitary slogan. In re Big Pig Inc., the mark was the word Psycho and the specimen showed the mark superimposed upon a design featuring a pig and fire with words “Bubbalou's Bodacious Bar-B-Que”. The Board found the mark, the word PSYCHO, displayed in a different color, type style, and size from the remaining words and design element that it stood out. The case is distinguishable from applicant’s case in that applicant’s mark, URBAN RENEWAL, is displayed in the same color, the same font and the same size as the wording AT HOME. Thus, the AT HOME portion appears to be part of a unitary slogan with URBAN RENEWEL. In re Servel Inc., the Court held the mark SERVEL not to be a mutilation as it appeared on the specimens as SERVEL INKLINGS. The specimens showed the word SERVEL printed in block letters, and to the right, the word INKLINGS printed in a large and different kind of type. The case is distinguishable from applicant’s case as the print size and the font were both different whereas the print size and the font are the same for the applicant’s mark.

The applicant provided copies of prior registrations owned by the applicant and submitted as Appendix C, with the brief. The examining attorney objects to their consideration as they are untimely under Trademark Rule 2.142(d) and will not consider them.

CONCLUSION

For the above reasons, that because the mark sought to be registered is an incomplete presentation of the mark that is actually used; the requirement for new specimens was correct and should be affirmed.

Respectfully submitted,

/Angela Micheli/

Trademark Examining Attorney, Law Office 101

(571) 272-9196

(571) 273-9196 (fax)

angela.micheli@uspto.gov

Ronald R. Sussman

Managing Attorney

Law Office 101