TMEP 807.12(a)(iii): Punctuation on the Specimen but Not on the Drawing

This is the October 2015 Edition of the TMEP

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807.12(a)(iii)    Punctuation on the Specimen but Not on the Drawing

Generally, extraneous, non-distinctive punctuation marks that appear on the specimen may be omitted from the drawing, if the matter on the drawing makes an impression separate and apart from the punctuation marks that appear on the specimen. See TMEP §807.12(d). For example, if the mark on the drawing is HOME RUN, and the mark on the specimen is “HOME RUN,” the drawing is considered a substantially exact representation of the mark as used on the specimen. The quotation marks on the specimen are nondistinctive and do not change the commercial impression of the mark, so it is unnecessary to amend the drawing or require a substitute specimen.

However, in rare instances, the punctuation marks on the specimen result in a mark with a different commercial impression than the mark shown on the drawing. For example, if the mark on the specimen is PREGNANT?, and the mark on the drawing is PREGNANT, the mark on the drawing is not a substantially exact representation of the mark as actually used. The question mark on the specimen transforms the word PREGNANT from a mere statement to a question, and, therefore, changes the commercial impression of the mark. Moreover, the drawing cannot be amended to add the punctuation because it would result in a material alteration. Therefore, the applicant must submit a new specimen showing the mark without the punctuation. In re Guitar Straps Online LLC, 103 USPQ2d 1745, 1751-52 (TTAB 2012) (finding the mark GOT STRAPS on the drawing not a substantially exact representation of the mark GOT STRAPS? on the specimen). See TMEP §§807.14–807.14(f).