January, 18th, 2019 at 10:21 am
By Wesley W. Whitmyer, Jr. Read Part 1 I have been asked this question hundreds of times. You can probably guess that the person doing the asking has just been accused of patent infringement. [Read More…]
October, 13th, 2017
A specimen showing a photographic depiction of a design mark satisfied use requirements for an applied-for line drawing despite apparent visual differences because the differences were inconsequential and did not change the essence or overall impression of the mark.
Specimen of Use
The Applicant filed an intent-to-use application to register the line drawing of a boot inside a tire. After a notice of allowance, the Applicant filed a statement of use with an accompanying specimen showing a photographic representation of a boot inside a tire. The Examining Attorney refused registration on grounds that the mark shown on the specimen was not a substantially exact representation of the mark depicted in the drawing and the applied-for mark was an incomplete representation of the actual trademark. Specifically, the Examining Attorney argued that the marks are substantially and materially different based on the following variations: (1) stylization; (2) differences in the visual appearance of the design elements and elements comprising the design; and (3) the inclusion of additional wording on the specimen of use that is not included in the drawing.
An Applicant is required to submit a specimen of the mark as used on or in connection with the goods. The Applicant is also required to submit a drawing, which must be a substantially exact representation of the mark as used on or in connection with the goods. The Board recognizes that this determination is subjective. A drawing displaying only a minor alteration that does not create a new and different mark creating a different commercial impression from the matter shown in the specimen is acceptable. In addition, the drawing must be a complete mark, as evidenced by the specimen.
The Board held that the mark sought to be registered was validly displayed on the specimen of use and that the variations in the tire and the boot elements shown in the drawings, as compared to the mark shown in the specimen of use, were not critical and did not alter the overall commercial impression of the applied-for mark. The Board noted that the fact that the mark displayed in the drawing is a line drawing of a boot within a tire, while the mark shown on the specimen of use is a photographic representation of a boot inside a tire, did not alter the overall essence or commercial impression of the mark. It further noted that it was unaware of any case law or rule which prohibits an Applicant from providing a simplified drawing of its applied-for mark when the specimen of use displays a photographic or three-dimensional representation of the mark. The Board further found that the presence of the additional elements incorporated in the mark shown in the specimen of use, i.e., the terms TIMBERLAND, CROSS BYRADAR, M+5, 24, as well as the tree logo design, did not detract from the acceptable display of the applied-for mark nor do they change the distinct commercial impression of Applicant’s applied-for mark, i.e., a boot inside a tire.
 In re TBL Licensing LLC, Serial No. 86684964, at 11 (TTAB September 25, 2017) (Not Precedential)
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