TMEP 807.12(e): Compound Word Marks and Telescoped Marks

This is the October 2015 Edition of the TMEP

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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 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).

If the drawing depicts the mark as a compound word mark, but the specimen shows the mark as two separate words, or vice versa, the examining attorney must determine whether the mark on the drawing is a substantially exact representation of the mark on the specimen and/or whether an amendment of the drawing would be a material alteration of the mark. See In re Innovative Cos.,, 88 USPQ2d 1095 (TTAB 2008) (FREEDOMSTONE not a substantially exact representation of FREEDOM STONE, but amendment of FREEDOMSTONE to FREEDOM STONE not deemed a material alteration). For example, if the drawing depicts the mark as BOOKCHOICE, but the specimen shows it as BOOK CHOICE, the mark on the drawing is not a substantially exact representation of the mark on the specimen. An amendment of the drawing would not be a material alteration. However, depending upon the nature of the goods/services, a disclaimer might be required. Note that a specimen showing the mark as BookChoice would be a substantially exact representation.

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, (e.g., SUPERINSE, not SUPE RINSE or SUPER RINSE).

See TMEP §§1213.05(a)–1213.05(a)(ii) regarding disclaimers in telescoped and compound word marks.