TMEP 1202.16(c)(iv): Drawing and Specimen Agreement Issues in §1(a) Applications

October 2017 Edition of the TMEP

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1202.16(c)(iv)    Drawing and Specimen Agreement Issues in §1(a) Applications

Occasionally, the specimen will show a possible model or grade designation that is not included on the drawing and thus, the mark on the drawing and specimen will appear to disagree. See TMEP §807.12(d). When it is unclear whether the additional matter is a model or grade designation, the examining attorney must refuse registration under §§1 and 45 on the ground that the specimen does not show the applied-for mark in use in commerce. 15 U.S.C. §§1051, 1127; 37 C.F.R §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i). If the matter is not part of the mark and is merely used as a model or grade designation, the applicant may respond to the refusal by submitting the following: (1) a statement that the matter is merely a model or grade designation and (2) evidence showing use of the proposed mark with other similar notations or evidence clearly showing that the matter is merely a model or grade designation. See 37 C.F.R. §2.61(b); In re Raychem Corp., 12 USPQ2d 1399, 1400 (TTAB 1989) (holding the mark TINEL-LOCK on the drawing to agree with the wording TR06AI-TINEL-LOCK-RING appearing on the specimen where the notation TR06AI was merely a part or stock number, as supported by a submitted brochure that explained that each letter and number in the notation represented a specific type, size, and feature of the part, and the term RING was generic for the goods); In re Sansui Elec. Co., 194 USPQ 202, 203 (TTAB 1977) (holding the marks "QSE" and "QSD" on the drawing to agree with the wording "QSE-4" and "QSD-4" appearing on the specimens, where the notation "4" was merely a model number and the additional specimens showed use of the mark with various changing model numbers used to designate successive generations of equipment). In the alternative, the applicant may provide a substitute specimen showing the proposed mark depicted on the drawing. See 37 C.F.R. §2.59(a); TMEP §904.05. In cases where the record clearly indicates that the notation on the specimen is a model or grade designation, no specimen refusal should issue. See In re Raychem Corp., 12 USPQ2d at 1400.