T.M.E.P. § 807.12
Mark on Drawing Must Agree with Mark on Specimen or Foreign Registration

Executive summary:

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807.12 Mark on Drawing Must Agree with Mark on Specimen or Foreign Registration

37 C.F.R. 2.51 Drawing required.

(a) In an application under section 1(a) of the Act, the drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods and/or services.

(b) In an application under section 1(b) of the Act, the drawing of the mark must be a substantially exact representation of the mark as intended to be used on or in connection with the goods and/or services specified in the application, and once an amendment to allege use under §2.76 or a statement of use under §2.88 has been filed, the drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods and/or services.

(c) In an application under section 44 of the Act, the drawing of the mark must be a substantially exact representation of the mark as it appears in the drawing in the registration certificate of a mark duly registered in the applicant's country of origin.

(d) In an application under section 66(a) of the Act, the drawing of the mark must be a substantially exact representation of the mark as it appears in the international registration.

807.12(a) Applications Under §1 of the Trademark Act

In an application filed under §1(a) of the Trademark Act, the drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods or services, as shown by the specimen. 37 C.F.R. §§2.51(a) and 2.72(a)(1).

In an application filed under §1(b) of the Act, the drawing of the mark must be a substantially exact representation of the mark as intended to be used on or in connection with the goods or services, and as actually used as shown by the specimen filed with the amendment to allege use or statement of use. 37 C.F.R. §§2.51(b) and 2.72(b)(1).

Extraneous matter shown on the specimen that is not part of the mark (e.g., the symbols "TM" or "SM," the registration notice (r), the top level domain indicator ".com," or informational matter such as net weight or contents) need not be shown on the drawing. See TMEP §807.14(a) regarding deletion of non-distinctive matter.

When the mark on the drawing does not agree with the mark on the specimen, the applicant cannot amend the drawing if the amendment would materially alter the mark on the original drawing. 37 C.F.R. §§2.72(a) and (b); TMEP §§807.14 et seq.

See TMEP §1214.02 regarding the agreement of the mark on the drawing with the mark on the specimen in an application that seeks registration of a mark with a "phantom" or changeable element.

807.12(b) Applications Under §44 of the Trademark Act

In a §44 application, the drawing of the mark must be "a substantially exact representation of the mark as it appears in the drawing in the registration certificate of the mark registered in the applicant's country of origin." 37 C.F.R. §§2.51(c) and 2.72(c)(1). The standard for determining whether the mark in the drawing agrees with the mark in the foreign registration is stricter than the standard used to determine whether a specimen supports use of a mark in an application under §1 of the Trademark Act. See TMEP §1011.01. The drawing in the United States application must display the entire mark as registered in the foreign country. The applicant may not limit the mark to part of the mark shown in the foreign registration, even if it creates a separate and distinct commercial impression.

Exception: Non-material informational matter that appears on the foreign registration, such as net weight or contents, or the federal registration notice, may be omitted or deleted from the drawing.

When the mark on the drawing does not agree with the mark on the foreign registration, the applicant cannot amend the drawing of the mark if the amendment would materially alter the mark on the original drawing. 37 C.F.R. 2.72(c); TMEP §§807.14 et seq. and 1011.01.

See TMEP §1214.02 regarding the agreement of the mark on the drawing with the mark on the foreign registration in an application that seeks registration of a mark with a "phantom" or changeable element.

807.12(c) Applications Under §66(a) of the Trademark Act

In an application under §66(a) of the Trademark Act, the drawing of the mark must be a substantially exact representation of the mark as it appears in the international registration. 37 C.F.R. 2.51(d). The IB will include 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. It is therefore unnecessary for the examining attorney to compare the drawing in the §66(a) application with the reproduction in the international registration. See TMEP §§1904 et seq. for further information about §66(a) applications. The mark in a §66(a) application cannot be amended. TMEP §807.13(b).

Exception: Non-material informational matter that appears on the international registration, such as net weight or contents, or the federal registration notice, may be omitted or deleted from the drawing.

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 "mutilation." This term indicates that essential and integral subject matter is missing from the drawing. An incomplete mark may not be registered.

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.

The determinative factor is whether or not the subject matter in question makes a separate and distinct commercial impression apart from the other element(s). See In re Chemical Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828 (Fed. Cir. 1988); In re Servel, Inc., 181 F.2d 192, 85 USPQ 257 (C.C.P.A. 1950); In re Miller Sports Inc., 51 USPQ2d 1059 (TTAB 1999); In re Boyd Coffee Co., 25 USPQ2d 2052 (TTAB 1993); In re Raychem Corp., 12 USPQ2d 1399 (TTAB 1989); In re Sperouleas, 227 USPQ 166 (TTAB 1985); In re Volante International Holdings, 196 USPQ 188 (TTAB 1977); In re Library Restaurant, Inc., 194 USPQ 446 (TTAB 1977); In re Semans, 193 USPQ 727 (TTAB 1976); In re Mango Records, 189 USPQ 126 (TTAB 1975).

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 the mark is refused registration 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 and 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).

807.12(e) Compound Word Marks and Telescoped Marks

Like any other drawing, a drawing of a compound word mark or telescoped mark must be a substantially exact representation of the mark as it appears on the specimen in a §1 application or on the foreign registration certificate in a §44 application.

A compound word mark is comprised of two or more distinct words, or words and syllables, that are represented as one word (e.g., BOOKCHOICE, PROSHOT, MAXIMACHINE, PULSAIR). Often, each word or syllable in a compound word mark is displayed or highlighted by (1) capitalizing the first letter of each word or syllable (e.g., TimeMaster), or (2) presenting the words or syllables in a different color, script or size (e.g., RIBtype).

A compound word mark may be presented as one unitary term (e.g., BOOKCHOICE) or as two words (e.g., BOOK CHOICE) on the drawing. The examining attorney should determine whether the mark may be presented as separate words based on its commercial impression, taking into account any specimen(s) of record.

A telescoped mark is comprised of two or more words that share letters (e.g., SUPERINSE). A telescoped word must be presented as a unitary term with the letters shared. The telescoped element may not be represented as two words, because the shared letter is an aspect of the commercial impression, (for example, SUPERINSE, not SUPE RINSE or SUPER RINSE).

See TMEP §§1213.05(a) et seq. regarding disclaimers in these types of marks.