TTAB Determines Specimens and Drawing Page “Match”
In a recent non-citable decision from the TTAB, the Board found that Applicant’s specimen for URBAN RENEWAL did in fact match the drawing page in its application, notwithstanding the mark’s use of URBAN RENEWAL in conjunction with the terms “at home.”
While making clear that each case involving specimens and drawing pages is highly individualized, the Board did provide some clues to how it navigates this area of the law. The Board first noted that a proper initial test involves looking at whether the mark as used on the specimen created a separate impression from the remaining terms featured. In this case, the Board found that even though the terms were contiguous in size and typeface, the existence of the term “at” created a sufficient division to create a distinct commercial impression. Moreover, although the Board did not expressly so state, it suggested that the generic nature of the second portion of the mark makes it less likely to be viewed as functioning as part of the trademark; rather consumers will see the “at home” component of the mark as a suggestion of where Applicant’s goods can be used. The Board also seemed to suggest that other terms might be substituted in place of the “at home” words, without changing the meaning of the mark as applied for, all of which favor Applicant’s registration of the mark. For instance, the words “at home” could be replaced with “at play,” without changing the mark’s meaning.
Practice Note: This firm notes wildly different applications of Trademark Rule 2.51 by different examining attorneys. That said, clients can increase their chances of registration by differentiating the mark component by using distinct and more prominent fonts for the mark components, and adding a TM just after the mark component to distinguish it from the common and usual noun that follows.