Specimens and the drawing in an application must correspond
In In re R Torre & Company, the US Patent and Trademark Office's (USPTO) Trademark Trial and Appeal Board (TTAB) has affirmed the settled rule that a mark displayed on a specimen must correspond with the mark shown in the drawing in a trademark application.
R Torre & Company applied to register a design shown on the drawing page of the application as concentric red and yellow swirls for "fruit puree base for use in the preparation of fruit drinks, smoothies and the like". The specimens were of a picture of a cup of Torre's fruit puree base on which only one-half of Torre's mark was visible. The other half was obliterated by:
- the word mark FRUSIA;
- the phrase "whole fruit smoothie base strawberry"; and
- a depiction of a strawberry.
Substitute specimens were similar, but the overlaying generic wording and depiction of the fruit varied slightly. The examiner refused registration of the mark on the grounds that half of the design was obliterated by text in the specimens.
The TTAB affirmed. It pointed out that an important function of specimens in a trademark application is to enable the USPTO to verify that the statements made in the application regarding trademark use are accurate. If the mark appearing on the specimens does not correspond to the mark as shown in the drawing, the specimens do not demonstrate "trademark use" of the mark sought to be registered.
Here, the TTAB found it "blatantly clear" that the mark shown in the drawing was not being used in the specimens because only half of the mark displayed on the drawing page appeared on the specimens.
Torre, relying on In re Swift Co (223 F2d 950, 106 USPQ 286 (CCPA 1955)), argued that background design marks will often have overlaying elements when used in commerce. The TTAB disagreed. In Swift, the applicant's mark consisted of two dark horizontal bands between which there was a large void. On the specimens, the word mark SWIFT'S appeared twice in the void space along with other wording, but did not appear in the drawing. In Swift, unlike Torre, all of the mark as shown in the drawing appeared in the specimen; none of the design sought to be registered was obliterated by the wording.
Because only half of Torre's mark was visible on the specimens, the TTAB also found that the design could not make a distinct commercial impression separate from the wording and other designs on Torre's label.
The decision in Torre makes clear the importance of ensuring that the mark appearing on specimens submitted in support of an application conforms to the mark in the drawing. Insignificant discrepancies that do not materially alter the commercial impression that the mark creates can be corrected by amending the mark. Where the discrepancies are more than insignificant, however, an applicant would be wise to extend its time for submitting evidence of use until it has specimens that will support the application as filed.
Susan Progoff, Fish & Neave Intellectual Property Group of Ropes & Gray, New York
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