1202.19(d) Specimens for Repeating-Pattern Marks
As with other types of marks, the specimen of use for a repeating-pattern mark must show use of the mark as depicted in the drawing and described in the mark description. See TMEP §§ 9.4, 904.07(a), 1301.04(g)(i).
When a repeating pattern is applied to a single item, and the drawing thus depicts the repeating pattern on that item (see TMEP §1202.19(a)(i)), the specimen should show the pattern displayed on the same item or a substantially similar item. In addition, the placement of the pattern on the object in the specimen should be consistent with the placement as depicted in the drawing and specified in the description.
When a repeating pattern is applied in the same manner to similar items and thus a drawing depicting one of the items is appropriate (see TMEP §1202.19(a)(ii)), the specimen of use need not show the item depicted in the drawing, assuming the shape of the item in the drawing is not claimed as a feature of the mark. However, the object shown in the specimen must be sufficiently similar to the item in the drawing, such that the drawing is a substantially exact representation of the mark as actually used. See TMEP §1202.19(a)(ii). In addition, if the mark is applied to goods, the good shown in the specimen must be encompassed by the identification of goods. Thus, if the identified goods are spoons, forks, and knives, and the drawing shows the repeating pattern appearing on the handle of a spoon shown in broken lines, a specimen showing the same pattern in the same manner on the handle of a fork would be acceptable. See TMEP §§1202.19(f)–(f)(ii) for a discussion of the relevant examination procedures when the identified goods or services are inconsistent with the drawing.
When the drawing is a swatch-type drawing, and the examining attorney has determined that the drawing is appropriate (see TMEP §1202.19(a)(iii)), a specimen showing the pattern appearing on a particular object should be considered to match the drawing if the overall commercial impression created by the pattern is the same.
The fact that the specimen shows the mark depicted in the drawing being used in a repetitive fashion on the relevant items is not, by itself, a sufficient basis for treating the applied-for mark as a repeating-pattern mark. There must be some indication in the mark description or drawing to indicate that the mark consists of a repeating pattern.
If necessary, examining attorneys may require additional specimens to determine whether the applied-for mark functions as a trademark or service mark for all of the identified goods or services. See 37 C.F.R. §2.61(b); TMEP §904.01(a). For example, additional specimens may be necessary when the identified goods include items that are significantly different from the goods shown in the originally submitted specimen, such that it is not clear how the mark is used on all of the goods.