TMEP 1202.19(a)(iii): Mark Used in Various Ways or on Various Items ─ Swatch-Type Drawings

October 2017 Edition of the TMEP

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1202.19(a)(iii)    Mark Used in Various Ways or on Various Items ─ Swatch-Type Drawings

Sometimes an applicant uses, or intends to use, a repeating-pattern mark in various ways on the same or similar items, or in similar or different ways on a variety of items. In those circumstances, a drawing depicting the mark appearing on a particular item will not accurately depict the mark and the nature of its use.

Previously, to address this issue, applicants have submitted swatch-type drawings, which do not show a particular placement of the mark, but instead consist of a sample of the repeating pattern within a square, rectangle, or other geometric shape. These swatch-type drawings usually will not adequately depict the nature of the mark for which registration is sought, because the impression created by a repeating pattern may change depending on the nature of the pattern, the type of item on which the pattern appears, the particular placement of the pattern on that item, and the size and scale of the elements in the pattern as applied. Accordingly, these swatch-type drawings could encompass multiple versions of the mark, each of which may convey a different commercial impression. Therefore, such swatch-type drawings are usually not appropriate for repeating-pattern marks, and examining attorneys generally should not accept them.

However, a swatch-type drawing is acceptable if the applicant shows with sufficient evidence that (1) the applied-for mark is actually used, or will be used, in various ways or on a variety of different items, but (2) it will nonetheless be perceived as a source indicator and create the same commercial impression across all uses.

The evidence of variable use need not show every use of the repeated pattern on the relevant items, but it should provide a reasonable basis for concluding that the use of the mark in connection with the identified goods or services is so varied that a single depiction of the mark on a particular item would not accurately reflect the nature of the mark. For applications not based on use in commerce, the evidence should indicate the applicant’s intention to use the mark in various ways or on a variety of different items. This may include declarations, marketing materials, and other similar matter.

The evidence as to the commercial impression must be substantial and must establish that the pattern will be perceived as a source indicator and create the same commercial impression in the minds of consumers. Relevant evidence may include consumer declarations; advertisements or other materials showing various instances of the pattern being used together in one place (e.g., a single advertisement that shows the pattern being used in various ways on various goods, but nonetheless projecting the same commercial impression); sales figures relevant to the various items featuring the pattern; and any other evidence of the applicant’s efforts to promote the various uses of the repeating pattern as a single source indicator for the relevant goods or services, including "look-for"-type evidence. Although the evidence listed above is similar to evidence that would be submitted in support of an acquired-distinctiveness claim, here the examining attorney’s determination is focused not on whether the mark has acquired distinctiveness but on whether the use or intended use of the mark, and the likely consumer perception of it, satisfy the specified conditions for acceptance of a swatch-type drawing.

Even if these conditions are satisfied, an examining attorney must also consider the applied-for mark’s distinctiveness. For example, to support a swatch-type drawing for such varied goods as "business card cases; coin purses; cosmetic cases sold empty; dog collars; cog leashes; handbags; luggage tags; overnight bags; pet clothing; umbrellas; wallets; and wristlet bags" the applicant might submit some or all the following: a statement that the mark had been used for more than 10 years on hangtags, packaging, promotional materials, and across various product categories; evidence showing that it is a common practice in the industry for fashion brands to develop signature patterns; examples of pattern designs in the industry that have become well-recognized as source indicators; news articles and website excerpts touting the mark in connection with the applicant; examples of the mark in use on packaging, shopping bags, hangtags, and promotional materials; examples of various products featuring the mark; a declaration indicating substantial sales of products, packaging, or hangtags featuring the mark, as well as significant marketing expenditures relating to promotion of products featuring the repeating pattern. While this kind of evidence might be submitted to support a claim of acquired distinctiveness, it is also the kind of evidence that may support the submission of a swatch-type drawing, because it shows that the repeating-pattern mark is used in various ways on a variety of items and that the repeating pattern would be perceived as a source indicator and create in the minds of consumers the same commercial impression across that pattern’s various uses.

If the applicant has submitted a swatch-type drawing but the evidence of record does not establish that a swatch-type drawing is appropriate, the examining attorney must refuse registration on the ground that the application seeks registration of more than one mark. See TMEP §§1202.19(g)–(g)(ii).