| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 86136524 |
| LAW OFFICE ASSIGNED | LAW OFFICE 104 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/86136524/mark.png |
| LITERAL ELEMENT | BT |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
The Examiner has refused registration because she believes that the specimen does not show the applied-for mark. Specifically the Examiner argues that the specimen shows the mark as “CHARTER BT” or “HOMBRE BT” but the drawing submitted with the application is for the mark “BT”.
In cases where two or more words may comprise a composite mark, the question of whether one element may be separable depends “if that element presents, or will present, a separate and distinct commercial impression apart from any other matter with which the mark is or will be used on the specimen.” TMEP §807.12(d).
Applicant, formerly known as Bitstream Inc., uses BT as an umbrella brand name. “CHARTER,” “HOMBRE” and “AMBIANCE” (also shown in the specimen as filed) are individual font brand names. It is not uncommon for a trademark owner to use two or more trademarks on packaging, presentations, brochures or other uses in commerce that are deemed acceptable specimens of use. An applicant has latitude in selecting the mark it wants to register. TMEP §807.12(d). The mere fact that two or more elements form a mark does not mean the elements are inseparable for purposes of registration. TMEP §807.12(d).
As shown in the submitted specimens, Applicant uses one mark, BT, to distinguish the font foundry and uses other marks (e.g. CHARTER, HOMBRE or AMBIANCE) to distinguish the specific typeface. These two marks are used in conjunction with one another while retaining their separate and distinct commercial impressions. See In re Royal BodyCare Inc., 83 USPQ2d 1564 (TTAB 2007) (Board reversed refusal to register term NANOCEUTICAL finding the term actually used in a manner that creates a commercial impression separate and apart from the house mark or trade name RBC’S); see also In re Raychem Corp., 12 USPQ2d 1299 (1989) (Board reversed refusal for the mark TINEL-LOCK where specimen showed TRO6AI-TINEL-LOCK-RING).
For the foregoing reasons, Applicant respectfully requests that the Examining Attorney accept the specimen previously submitted with this application as evidence of use of the BT mark in commerce. |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /debra serota/ |
| SIGNATORY'S NAME | Debra Serota |
| SIGNATORY'S POSITION | /attorney of record/ |
| DATE SIGNED | 05/08/2014 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu May 08 10:33:54 EDT 2014 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XX-20 140508103354295714-861365 24-500284515803d79524e56b d21476ba47b7e3c756397642f b641aa3ebe27e97eca-N/A-N/ A-20140508102534078953 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
The Examiner has refused registration because she believes that the specimen does not show the applied-for mark. Specifically the Examiner argues that the specimen shows the mark as “CHARTER BT” or “HOMBRE BT” but the drawing submitted with the application is for the mark “BT”.
In cases where two or more words may comprise a composite mark, the question of whether one element may be separable depends “if that element presents, or will present, a separate and distinct commercial impression apart from any other matter with which the mark is or will be used on the specimen.” TMEP §807.12(d).
Applicant, formerly known as Bitstream Inc., uses BT as an umbrella brand name. “CHARTER,” “HOMBRE” and “AMBIANCE” (also shown in the specimen as filed) are individual font brand names. It is not uncommon for a trademark owner to use two or more trademarks on packaging, presentations, brochures or other uses in commerce that are deemed acceptable specimens of use. An applicant has latitude in selecting the mark it wants to register. TMEP §807.12(d). The mere fact that two or more elements form a mark does not mean the elements are inseparable for purposes of registration. TMEP §807.12(d).
As shown in the submitted specimens, Applicant uses one mark, BT, to distinguish the font foundry and uses other marks (e.g. CHARTER, HOMBRE or AMBIANCE) to distinguish the specific typeface. These two marks are used in conjunction with one another while retaining their separate and distinct commercial impressions. See In re Royal BodyCare Inc., 83 USPQ2d 1564 (TTAB 2007) (Board reversed refusal to register term NANOCEUTICAL finding the term actually used in a manner that creates a commercial impression separate and apart from the house mark or trade name RBC’S); see also In re Raychem Corp., 12 USPQ2d 1299 (1989) (Board reversed refusal for the mark TINEL-LOCK where specimen showed TRO6AI-TINEL-LOCK-RING).
For the foregoing reasons, Applicant respectfully requests that the Examining Attorney accept the specimen previously submitted with this application as evidence of use of the BT mark in commerce.