TMEP 807.12(d): Mutilation or Incomplete Representation of Mark
October 2017 Edition of the TMEP
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807.12(d) Mutilation or Incomplete Representation of Mark
In an application under §1 of the Trademark Act, the mark on the drawing must be a complete mark, as evidenced by the specimen. When the representation on a drawing does not constitute a 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. An incomplete mark may not be registered. See In re Chem. Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828 (Fed. Cir. 1988); In re Miller Sports Inc., 51 USPQ2d 1059 (TTAB 1999); In re Boyd Coffee Co., 25 USPQ2d 2052 (TTAB 1993); In re Semans, 193 USPQ 727 (TTAB 1976).
However, in a §1 application, an applicant has some latitude in selecting the mark it wants to register. The mere fact that two or more elements form a composite mark does not necessarily mean that those elements are inseparable for registration purposes. An applicant may apply to register any element of a composite mark 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, i.e., the element performs a trademark function in and of itself. See, e.g., In re Univ. of Miami, 123 USPQ2d 1075, 1079 (TTAB 2017) (finding that the depiction of the mark in the drawing as a personified ibis wearing a hat and sweater created a separate and distinct commercial impression from literal elements that appeared on the hat and sweater in the specimens of use and thus the mark drawing was a substantially exact representation of the mark as used).
In a §44 application, the standard is stricter. TMEP §1011.01. The drawing in the United States application must display the entire mark as registered in the country of origin. The applicant may not register part of the mark in the foreign registration, even if it creates a distinct commercial impression.
In any application, if registration is refused on the ground that the mark on the drawing does not agree with the mark as shown on the specimen or foreign registration, the applicant may not amend the drawing if the amendment would materially alter the mark on the original drawing. 37 C.F.R. §2.72; TMEP §§807.14–807.14(f), 1011.01.
This issue will not arise in a §66(a) application, because the IB includes a reproduction that is identical to the reproduction in the international registration when it forwards the request for extension of protection of the international registration to the United States. The mark in a §66(a) application cannot be amended. TMEP §807.13(b).
In the following cases, an element of a composite mark was found not to present a separate and distinct commercial impression apart from any other matter with which the mark was or would be used on the specimen: Chem. Dynamics, 839 F.2d at 1569, 5 USPQ2d at 1828 (registration of design of medicine dropper and droplet properly refused, where the proposed mark is actually used as an integral part of a unified mark that includes a design of a watering can, and does not create a separate commercial impression); In re Lorillard Licensing Co., 99 USPQ2d 1312 (TTAB 2011) (finding that the drawing was not a substantially exact representation of the proposed mark, an orange-and-green color combination for the packaging of cigarettes, as appearing on the specimen); In re Pharmavite LLC, 91 USPQ2d 1778 (TTAB 2009) (mark comprised of the design of two bottles properly refused, finding that it does not create a separate and distinct commercial impression apart from the mark shown on the specimen and further that it is not a substantially exact representation of the mark shown on the specimen); In re Yale Sportswear Corp., 88 USPQ2d 1121 (TTAB 2008) (refusing registration of the mark UPPER 90, finding that it does not form a separate and distinct commercial impression apart from the degree symbol that appears on the specimen); Miller Sports, 51 USPQ2d at 1059 (mark comprising the letter "M" and skater design properly refused, where the "M" portion of applicant’s "Miller" logo is so merged in presentation with remainder of logo that it does not create a separate commercial impression); Boyd Coffee, 25 USPQ2d at 2052 (mark comprising cup and saucer design properly refused as mutilation of mark actually used, which includes the cup and saucer design as well as a sunburst design, since the cup and saucer design does not create a separate and distinct commercial impression apart from the sunburst design); In re Sperouleas, 227 USPQ 166 (TTAB 1985) (torch design unregistrable apart from wording SOCRATES DELIGHT that appears on specimen, where the words are not only prominent but are also physically merged with the design, such that the design does not make a separate commercial impression); In re Volante Int’l Holdings,196 USPQ 188 (TTAB 1977) (mark consisting of a design of a double-headed girl, a dragon, and a tree is not a substantially exact representation of the mark actually used, which incorporates the visually inseparable and intertwined term "VIRGIN"); In re Library Rest., Inc., 194 USPQ 446 (TTAB 1977) (the words "THE LIBRARY" are so intimately related in appearance to other elements of the mark actually used that it is not possible to conclude that the pictorial features by themselves create a separate commercial impression); Semans, 193 USPQ at 727 (the mark KRAZY, displayed on the specimen on the same line and in the same script as the expression "MIXED-UP," does not in itself function as a registrable trademark apart from the unitary phrase "KRAZY MIXED-UP"); In re Mango Records, 189 USPQ 126 (TTAB 1975) (the typed mark MANGO is so uniquely juxtaposed with the pictorial elements of the composite that it is not a substantially exact representation of the mark as used on the specimen and does not show the mark in the unique manner used thereon).
An element of a proposed mark was found to create a separate commercial impression in the following cases: In re Servel, Inc., 181 F.2d 192, 85 USPQ 257 (C.C.P.A. 1950) (refusal to register the mark SERVEL as a mutilation of "SERVEL INKLINGS" reversed, where the specimen displays an insignia between the words "SERVEL" and "INKLINGS," and "INKLINGS" is printed in a large and different kind of type); In re Frankish Enters. Ltd., 113 USPQ2d 1964, 1974 (TTAB 2015) (finding three-dimensional design of monster truck body creates a commercial impression as an indication of origin separate and apart from wording and additional markings displayed on truck body as part of the specimen); In re Royal BodyCare Inc., 83 USPQ2d 1564 (TTAB 2007) (reversing refusal to register NANOCEUTICAL, finding that the term is actually used in a manner that creates a commercial impression separate and apart from the house mark or trade name "RBC’s"); In re Big Pig, Inc.,81 USPQ2d 1436 (TTAB 2006) (PSYCHO creates a separate commercial impression apart from additional wording and background design that appears on the specimen, where the word "PSYCHO" is displayed in a different color, type style and size, such that it stands out); In re 1175856 Ontario Ltd., 81 USPQ2d 1446 (TTAB 2006) (refusal to register WSI and globe design reversed, since the letters "WSI" and globe design create a separate commercial impression apart from a curved design element that appears on the specimen); In re Raychem Corp., 12 USPQ2d 1399, 1400 (TTAB 1989) (reversing the refusal to register TINEL-LOCK as mutilation of mark "TRO6AI-TINEL-LOCK-RING," noting that part or stock number does not usually function as a source identifier, and the "fact that hyphens connect both the part number and the generic term to the mark does not, under the circumstances presented in this case, create a unitary expression such that ‘TINEL-LOCK’ has no significance by itself as a trademark."); In re Nat'l Inst. for Auto. Serv. Excellence,218 USPQ 744, 745 (TTAB 1983) (design of meshed gears "is distinctive in nature" and "creates a commercial impression separate and apart from the words superimposed thereon"); In re Schecter Bros. Modular Corp.,182 USPQ 694 (TTAB 1974) (where specimens show mark consisting in part of "RAINAIRE" together with its shadow image, it is not a mutilation of mark to delete shadow image from drawing since "RAINAIRE" creates the essential impression); In re Emco, Inc., 158 USPQ 622 (TTAB 1968) (reversing the refusal and concluding that the law and the record supported applicant’s position that RESPONSER is registrable without addition of the surname "MEYER").
See TMEP §807.14(c) regarding the effect of the addition or deletion of punctuation on the commercial impression of the mark.