Suject Matter of Marks - House Mark/Mutilation



As stated in section 807.12(d) Mutilation or Incomplete Representation of Mark of the Trademark Manual of Examination Procedure:

In an application under §1 of the Trademark Act, the mark on the drawing must be a complete mark, as evidenced by the specimen. When the representation on a drawing does not constitute a complete mark, it is sometimes referred to as a "mutilation" of the mark. This term indicates that essential and integral subject matter is missing from the drawing. An incomplete mark may not be registered. See In re Chemical Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828 (Fed. Cir. 1988); In re Miller Sports Inc., 51 USPQ2d 1059 (TTAB 1999); In re Boyd Coffee Co., 25 USPQ2d 2052 (TTAB 1993); In re Semans, 193 USPQ 727 (TTAB 1976).

However, in a §1 application, an applicant has some latitude in selecting the mark it wants to register. The mere fact that two or more elements form a composite mark does not necessarily mean that those elements are inseparable for registration purposes. An applicant may apply to register any element of a composite mark if that element presents, or will present, a separate and distinct commercial impression apart from any other matter with which the mark is or will be used on the specimen.

The determinative factor is whether or not the subject matter in question makes a separate and distinct commercial impression apart from the other element(s). See Chemical Dynamics, supra (registration of design of medicine dropper and droplet properly refused, where the proposed mark is actually used as an integral part of a unified mark that includes a design of a watering can, and does not create a separate commercial impression); In re Servel, Inc., 181 F.2d 192, 85 USPQ 257 (C.C.P.A. 1950) (refusal to register the term "SERVEL" as a mutilation of the mark "SERVEL INKLINGS" reversed, where the specimen displays an insignia between the words "SERVEL" and "INKLINGS," and "INKLINGS" is printed in a large and different kind of type); In re Pharmavite LLC, 91 USPQ2d 1778 (TTAB 2009) (Board affirmed refusal to register a mark comprised of the design of two bottles, finding that it does not create a separate and distinct commercial impression apart from the mark shown on the specimen and further that it is not a substantially exact representation of the mark shown on the specimen); In re Yale Sportswear Corp., 88 USPQ2d 1121 (TTAB 2008) (Board affirmed refusal to register "UPPER 90," finding that it does not form a separate and distinct commercial impression apart from the degree symbol that appears on the specimen); In re Royal BodyCare Inc., 83 USPQ2d 1564 (TTAB 2007) (Board reversed refusal to register the term "NANOCEUTICAL," finding that the term is actually used in a manner that creates a commercial impression separate and apart from the house mark or trade name "RBC's"); In re Big Pig, Inc., 81 USPQ2d 1436 (TTAB 2006) ("PSYCHO" creates a separate commercial impression apart from additional wording and background design that appears on the specimen, where the word "PSYCHO" is displayed in a different color, type style and size, such that it stands out); In re 1175856 Ontario Ltd., 81 USPQ2d 1446 (TTAB 2006) (refusal to register "WSI" and globe design reversed, since the letters "WSI" and globe design create a separate commercial impression apart from a curved design element that appears on the specimen; although proximity is a consideration, it is the overall commercial impression that is controlling on the issue of mutilation); In re Miller Sports Inc., supra (proposed mark comprising the letter "M" and skater design properly refused, where the "M" portion of applicant's "Miller" logo is so merged in presentation with remainder of logo that it does not create a separate commercial impression); In re Boyd Coffee Co., supra (proposed mark comprising cup and saucer design properly refused as mutilation of mark actually used, which includes the cup and saucer design as well as a sunburst design, since the cup and saucer design does not create a separate and distinct commercial impression apart from the sunburst design); In re Raychem Corp., 12 USPQ2d 1399, 1400 (TTAB 1989) (Board reversed refusal to register "TINEL-LOCK" as mutilation of mark "TRO6AI-TINEL-LOCK-RING," noting that part or stock number does not usually function as a source identifier, and that the "fact that hyphens connect both the part number and the generic term to the mark does not, under the circumstances presented in this case, create a unitary expression such that ‘TINEL-LOCK' has no significance by itself as a trademark."); In re Sperouleas, 227 USPQ 166 (TTAB 1985) (design unregistrable apart from wording that appears on specimen, where the words are not only prominent but are also physically merged with the design, such that the design does not make a separate commercial impression); In re Volante Int'l Holdings, 196 USPQ 188 (TTAB 1977) (mark consisting of a design of a double-headed girl, a dragon and a tree is not a substantially exact representation of the mark actually used, which incorporates the visually inseparable and intertwined term "VIRGIN"); In re Library Restaurant, Inc., 194 USPQ 446 (TTAB 1977) (the words "THE LIBRARY" are so intimately related in appearance to other elements of the mark actually used that it is not possible to conclude that the pictorial features by themselves create a separate commercial impression); In re Semans, supra (the term "KRAZY," displayed on the specimen on the same line and in the same script as the expression "MIXED-UP," does not in itself function as a registrable trademark apart from the unitary phrase "KRAZY MIXED-UP"); In re Mango Records, 189 USPQ 126 (TTAB 1975) (the typed mark "MANGO" is so uniquely juxtaposed with the pictorial elements of the composite that it is not a substantially exact representation of the mark as used on the specimen and does not show the mark in the unique manner used thereon); In re National Institute for Automotive Service Excellence, 218 USPQ 745 (TTAB 1983) (design of meshed gears "is distinctive in nature" and "creates a commercial impression separate and apart from the words superimposed thereon"); In re Schecter Bros. Modular Corp., 182 USPQ 694 (TTAB 1974) (where specimens show mark consisting in part of RAINAIRE together with its shadow image, it is not a mutilation of mark to delete shadow image from drawing since RAINAIRE creates the essential impression); In re Emco, Inc., 158 USPQ 622 (TTAB 1968) (Board concluded that the law and the record supported applicant's position that RESPONSER is registrable without addition of the surname MEYER).

In a §44 application, the standard is stricter. TMEP §1011.01. The drawing in the United States application must display the entire mark as registered in the country of origin. The applicant may not register part of the mark in the foreign registration, even if it creates a distinct commercial impression.

In any application, if registration is refused on the ground that the mark on the drawing does not agree with the mark as shown on the specimen or foreign registration, the applicant may not amend the drawing if the amendment would materially alter the mark on the original drawing. 37 C.F.R. §2.72; TMEP §§807.14 et seq. and 1011.01.

This issue will not arise in a §66(a) application, because the IB includes a reproduction that is identical to the reproduction in the international registration when it forwards the request for extension of protection of the international registration to the United States. The mark in a §66(a) application cannot be amended. TMEP §807.13(b).

As stated in section 1402.03(b) House Marks of the Trademark Manual of Examination Procedure:

House marks are marks used by an entity on a wide range of goods. Marks of this type are often used in the chemical, pharmaceutical, and food fields. A house mark is different from a product mark that is used on a specific item or closely related items. A product may bear both a product mark and a house mark.

Under certain limited circumstances, an applicant may apply to register a mark as a house mark. In an application for registration of a house mark, the identification of goods may include wording such as "a house mark for...." As with other applications, these applications must define the type of goods with sufficient particularity to permit proper classification and to enable the USPTO to make necessary determinations under §2(d) of the Trademark Act, 15 U.S.C. §1052(d).

In an application to register a mark as a house mark based on use in commerce, the applicant must demonstrate that the mark is, in fact, used as a house mark. The examining attorney should require that the applicant provide catalogues showing broad use of the mark or similar evidence to substantiate this claim.

An intent-to-use applicant who wishes to register a mark as a house mark must clearly indicate its intention to register the mark as a house mark during initial examination, and the circumstances must establish that the applicant's proposed use of the mark as a house mark is credible. The nature of the mark and the capacity of the applicant to use the mark as asserted should be considered in determining whether the claim that the mark is to be used as a house mark is credible. If the applicant indicates such an intention, the examining attorney should advise the applicant that, upon filing of the allegation of use, the applicant will be required to provide evidence to substantiate use as a house mark. If the applicant cannot do so, the applicant will be required to amend the identification of goods to conform to the usual standards for specificity.

The USPTO will register a mark as a house mark only in the limited circumstances where the mark is actually used as a house mark. Therefore, if an applicant seeks to register a house mark in an application under §44 or §66(a) of the Trademark Act, the examining attorney must require evidence that the mark is in fact used as a house mark. This is not a requirement for specimens, but rather a requirement that applicant provide evidence to substantiate the claim of use as a house mark. 37 C.F.R. §2.61(b). If the applicant cannot do so, the identification of goods must be amended to conform to the usual standards for specificity.

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  • If the portion of the mark sought to be registered does not create a separate and distinct commercial impression, the result is an impermissible mutilation of the mark as used.
    • In re Royal BodyCare, Inc., Serial No. 78976265, (TTAB 2007).
      • "‘Mutilation' is a concept long recognized as a part of trademark registration case law." Institut National des Appellations D'Origine v. Vintners International Co., 958 F.2d 1574, 22 USPQ2d 1190, 1197 (Fed. Cir. 1992). The question of whether a mark is a mutilation "boils down to a judgment as to whether that designation for which registration is sought comprises a separate and distinct 'trademark' in and of itself." Id. See also In re 1175856 Ontario Ltd., 81 USPQ2d 1446, 1448 (TTAB 2006).
    • In re 1175856 Ontario Ltd., Serial No. 78442207, (TTAB 2006).
      • If the portion of the mark sought to be registered does not create a separate and distinct commercial impression, the result is an impermissible mutilation of the mark as used.
    • In re 1175856 Ontario Ltd., Serial No. 78442207, (TTAB 2006).
      • As noted by our primary reviewing Court in Chemical Dynamics, supra, 5 USPQ2d at 1829, quoting 1 J.T. McCarthy, Trademarks and Unfair Competition §19:17 (2d ed. 1984), the issue of mutilation "all boils down to a judgment as to whether that designation for which registration is sought comprises a separate and distinct ‘trademark' in and of itself."
  • In making a mutilation determination, the TTAB is mindful of the fact that in an application under Section 1 of the Trademark Act, the applicant has some latitude in selecting the mark it wants to register.
    • In re 1175856 Ontario Ltd., Serial No. 78442207, (TTAB 2006).
      • In making these determinations, we are mindful of the fact that in an application under Section 1 of the Trademark Act, the applicant has some latitude in selecting the mark it wants to register. TMEP §807.12(d) (4th ed. April 2005).
  • The issue of mutilation boils down to a judgment as to whether that designation for which registration is sought comprises a separate and distinct trademark in and of itself, and in making these determinations, the TTAB is mindful of the fact that in an application under Section 1 of the Trademark Act, the applicant has some latitude in selecting the mark it wishes to register
    • In re Big Pig, Inc., Serial No. 78249582, (TTAB 2006).
      • We find, therefore, that the word PSYCHO, alone functions as a mark for the identified goods. See In re 1175856 Ontario Ltd., ___ USPQ2d ___ (Serial No. 78442207) (TTAB October 26, 2006) [the issue of mutilation boils down to a judgment as to whether that designation for which registration is sought comprises a separate and distinct trademark in and of itself, and in making these determinations, the Board is mindful of the fact that in an application under Section 1 of the Trademark Act, the applicant has some latitude in selecting the mark it wishes to register].
  • Definition: House Mark.
    • In re Royal BodyCare, Inc., Serial No. 78976265, (TTAB 2007).
      • The board has explained what a house mark is as follows:
        "It is well established that a product can bear more than one trademark, that each trademark may perform a different function for consumers and recipients of the product, and that each can be registered providing the mark as used, creates a separate and distinct impression in and of itself and serves to identify and distinguish the product as it is encountered by consumers in the normal marketing milieu for such goods… The usual situation in which this principle has normally been applied… involves a house mark which normally serves to identify the source of the product, per se, and a product mark which serves to identify a particular product within a line of merchandise normally associated with and distinguished by the house mark. That is, a house mark serves as an umbrella for all of the product marks and merchandise emanating from a single source." Amica Mutual Insurance Company v. R. H. Cosmetics Corp., 204 USPQ 155, 161 (TTAB 1979).
  • Requirements for a "house mark."
    • In re Royal BodyCare, Inc., Serial No. 78976265, (TTAB 2007).
      • The USPTO does permit the use of the term "house mark" in identifications of goods under certain circumstances. TMEP § 1402.03(b) (4th ed. April 2005): "In an application to register a mark as a house mark based on use in commerce, the applicant must demonstrate that the mark is, in fact, used as a house mark. The examining attorney should require that the applicant provide catalogues showing broad use of the mark or similar evidence to substantiate this claim… If the applicant cannot do so, the applicant will be required to amend the identification of goods to conform to the usual standards for specificity."
  • Cases have frequently held that an applicant's use of its corporate name or house mark along with another trademark or trade name does not create a unitary mark.
    • In re Royal BodyCare, Inc., Serial No. 78976265, (TTAB 2007).
      • Cases have frequently held that an applicant's use of its corporate name or house mark along with another trademark or trade name does not create a unitary mark. Textron Inc. v. Cardinal Engineering Corp., 164 USPQ 397, 399 (TTAB 1969) ("While the record does show that Textron's principal or house mark ‘HOMELITE' appears on its chain saws as well as in all of its advertising literature, there is no statutory limitation on the number of trademarks that one may use on or in connection with a particular product to indicate origin"); In re Emco, Inc., 158 USPQ 622, 623 (TTAB 1968) ("It is concluded that the law and the record support applicant's position that ‘RESPONSER' is registrable without addition of the surname ‘MEYER'"); and In re Barry Wright Corp., 155 USPQ 671, 672 (TTAB 1967) ("[I]t is clear that the notation ‘8-48' stands out as a distinguishable element separate and apart from the statement ‘ANOTHER 8-48 FROM MATHATRONICS'").
  • The question of whether a mark is a mutilation is a judgment as to whether that designation for which registration is sought comprises a separate and distinct 'trademark' in and of itself.
    • In re Royal BodyCare, Inc., Serial No. 78976265, (TTAB 2007).
      • "‘Mutilation' is a concept long recognized as a part of trademark registration case law." Institut National des Appellations D'Origine v. Vintners International Co., 958 F.2d 1574, 22 USPQ2d 1190, 1197 (Fed. Cir. 1992). The question of whether a mark is a mutilation "boils down to a judgment as to whether that designation for which registration is sought comprises a separate and distinct 'trademark' in and of itself." Id. See also In re 1175856 Ontario Ltd., 81 USPQ2d 1446, 1448 (TTAB 2006).
  • A mark can be considered a "house mark" even though it is not registered with the USPTO for purposes of determining whether the mark on the specimen is a mutilation of the mark in the drawing.
    • In re Royal BodyCare, Inc., Serial No. 78976265, (TTAB 2007).
      • Initially, we must disagree with the examining attorney's implication that a mark must be registered in the USPTO as a "house mark" before it can be considered as a house mark for purposes of determining whether the mark on the specimen is a mutilation of the mark in the drawing. As explained by Professor McCarthy, "under the rule of the Servel case, a house mark is registrable apart from the various product marks used on a label. Under the same general principle, a product mark used in conjunction with a house mark is separately registrable if the product mark creates a separate commercial impression." 3 McCarthy on Trademarks and Unfair Competition § 19:59 (4th ed. 2006).
    • In re Royal BodyCare, Inc., Serial No. 78976265, (TTAB 2007).
      • However, the examining attorney has not pointed to any case, and we are unaware of any case, that required the house mark to be registered as a house mark in the USPTO in order to avoid a determination that the mark was a mutilation. The case law simply describes the mark as a house mark without indicating that it is registered as a house mark. See, e.g., In re Hacot-Colombier, 105 F.3d 616, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997) ("Hacot- Colombier's proposed addition of its house mark remains a material alteration for two reasons"); and Textron, 164 USPQ at 399 ("[I]t is a common practice for manufacturers to apply both a house mark and a product mark to their various merchandise"). See also Berg Electronics, 163 USPQ 488 (The "designation ‘GRIPLET' as used on the label specimens creates a separate and distinct commercial impression apart from the house mark ‘BERG'").
  • A mark could be considered a house mark if the evidence shows that it serves as a mark for a number of an entity's products even if the diversity of products would not be so great that the company would be able to use the term "house mark" in its identification of goods.
    • In re Royal BodyCare, Inc., Serial No. 78976265, (TTAB 2007).
      • Thus, a mark could be considered a house mark if the evidence shows that it serves as a mark for a number of an entity's products even if the diversity of products would not be so great that the company would be able to use the term "house mark" in its identification of goods. See, e.g., In re Andes Candies Inc., 478 F.2d 1264, 178 USPQ 156, 156 (CCPA 1973) ("Appellant's mark [CRÈME DE MENTHE] is shown in large, distinct type in a separate line on the boxes in which its laminated chocolate mint candies are packaged. Its trade name or house mark, ANDES, also appears prominently on its boxes").
  • A house mark or trade name identifying a line of products is not mutilated by the addition of a product mark, each are separable registerable.
    • In re Royal BodyCare, Inc., Serial No. 78976265, (TTAB 2007).
      • Furthermore, we do not find the fact that the term, RBC's, is in the possessive form results in a conclusion that the marks are unitary. For example, the term "From Mathatronics" did not result in a mutilation when applicant sought to register "8-48" apart from the additional language. Barry Wright, 155 USPQ at 672. Here, the house mark or trade name "RBC's" performs its function of identifying a line of products from applicant much as the surname Meyer identified a product sold under the trademark RESPONSER rather than a product identified by the unitary mark MEYER RESPONSER. Emco, 158 USPQ at 623.
  • Case Finding: The design and the word are merged such that specimens containing both indicate a mutilation of the applied for mark (just the design).
    • In re Miller Sports, Inc., Serial No. 75/143,020, (TTAB 1999).
      • In this case, it is our view that the elements asserted by the Examining Attorney to be the mark, the word "Miller" with the design of a skater as the initial stroke in the letter "M", are so merged together in presentation that the M and skater design cannot be regarded as a separable element creating a separate and distinct commercial impression. The word "Miller" flows from the initial M and skater design, and the M and skater design is an integral part of the word "Miller." We find that the applied-for mark, M and skater design, does not form a commercial impression separate and distinct from the entire word "Miller". Therefore, the applied-for mark, M and skater design, as used on the specimens, does not function as a mark for the identified goods in and of itself. As such, it is a mutilation of the mark as depicted on the specimens.
  • As stated by the Federal Circuit, "There must be a recognition among the purchasing public that the common characteristic is indicative of a common origin of the goods."
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • As stated by the Federal Circuit, "There must be a recognition among the purchasing public that the common characteristic is indicative of a common origin of the goods." Id. at 1891.
  • Case Finding: In this case, although opposer submitted its registrations of SCHICK and SCHICK formative marks, the evidence is insufficient to support a finding that "the pattern of usage of the common element is sufficient to be indicative of the origin of the family."
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • In this case, although opposer submitted its registrations of SCHICK and SCHICK formative marks, the evidence is insufficient to support a finding that "the pattern of usage of the common element is sufficient to be indicative of the origin of the family." The Black & Decker Corp. v. Emerson Electric Co., 84 USPQ2d 1482, 1490 (TTAB 2007) citing J & J Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991).
  • Case Finding: Opposer has failed to prove that it has a family of SCHICK marks.
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • In the present case, opposer's evidence consists of examples of packaging of its razors and razor blade cartridges under the mark [SCHICK] with the additional wording/marks INTUITION PLUS, QUATTRO, XTREME3, QUATTRO POWER and SILK EFFECTS.12 This material may suggest that the public has been exposed to opposer's [SCHICK] mark as part of or in connection with the additional designations noted above. However, opposer has failed to demonstrate that it advertises or promotes various SCHICK formative marks to the public in such a manner that creates exposure and recognition of common ownership thereof based upon the SCHICK feature of each mark. See Truescents LLC, 81 USPQ2d at 1338. As a result, we find that opposer has failed to prove that it has a family of SCHICK marks.
  • Case Finding: To the extent that opposer is asserting that it has a family of marks, opposer did not plead this in its notice of opposition. Nonetheless, based on the testimony, as well as the fact that applicant addressed opposer's arguments directed toward its asserted family of marks in its brief, without objection, this issue was tried by the implied consent of the parties.
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • To the extent that opposer is asserting that it has a family of marks, opposer did not plead this in its notice of opposition. Nonetheless, based on the testimony, as well as the fact that applicant addressed opposer's arguments directed toward its asserted family of marks in its brief, without objection, we find this issue was tried by the implied consent of the parties, and will consider opposer's arguments with regard thereto. See Fed. R. Civ. P. 15(b). Cf. Long John Silver's Inc. v. Lou Scharf Inc., 213 USPQ 263, 266 n.6 (TTAB 1992).
  • Opposer must demonstrate that the marks asserted to comprise the family, or a number of them, have been used and advertised in promotional material or in everyday sales activities in such a manner as to create common exposure and thereafter recognition of common ownership based upon a feature common to each mark.
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • Accordingly, opposer must demonstrate that the marks asserted to comprise the family, or a number of them, have been used and advertised in promotional material or in everyday sales activities in such a manner as to create common exposure and thereafter recognition of common ownership based upon a feature common to each mark. See Truescents LLC v. Ride Skin Care LLC, 81 USPQ2d 1334, 1337 (TTAB 2006) citing American Standard, Inc. v. Scott & Fetzer Co., 200 USPQ 457, 461 (TTAB 1978).
  • The fact that opposer has used and registered several marks incorporating a common element is not in itself sufficient to establish the existence of a family of marks.
    • Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009)
      • Thus, the requisite showing of a family of marks has not been made. The fact that opposer has used and registered several marks incorporating SCHICK is not in itself sufficient to establish the existence of a family of marks. See J & J Snack Foods, 18 USPQ2d at 1891.
  • Whether a mark is or is not a house mark is not conclusive in determining whether there is a likelihood of confusion.
    • In re Toshiba Medical Systems Corporation, Serial No. 79046106 (TTAB 2009)
      • Whether a mark is or is not a house mark is not conclusive in determining whether there is a likelihood of confusion. Compare In re Fiesta Palms LLC, 85 USPQ2d 1360 (TTAB 2007) (CLUB PALMS MVP confusingly similar to MVP; MVP not shown to be highly suggestive term) with Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005) (No likelihood of confusion between NORTON McNAUGHTON ESSENTIALS and ESSENTIALS where the evidence demonstrated that "Essentials" was a highly suggestive term).
Eveready Battery Company, Inc. v. Green Planet, Inc., Opposition No. 91180015 (TTAB 2009) In re Toshiba Medical Systems Corporation, Serial No. 79046106 (TTAB 2009) In re Royal BodyCare, Inc., Serial No. 78976265, (TTAB 2007) In re 1175856 Ontario Ltd., Serial No. 78442207, (TTAB 2006) In re Big Pig, Inc., Serial No. 78249582, (TTAB 2006) Grand Total
In re Fiesta Palms LLC, 85 USPQ2d 1360 (TTAB 2007) 1
The Black & Decker Corp. v. Emerson Electric Co., 84 USPQ2d 1482 (TTAB 2007) 1
In re 1175856 Ontario Ltd., 81 USPQ2d 1446 (TTAB 2006) 2
Truescents LLC v. Ride Skin Care LLC, 81 USPQ2d 1334 (TTAB 2006) 1
Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005) 1
In re Hacot-Colombier, 105 F.3d 616, 41 USPQ2d 1523 (Fed. Cir. 1997) 1
Institut National Des Appellations D'Origine v. Vintners Int'l Co., 958 F.2d 1574, 22 USPQ2d 1190 (Fed. Cir. 1992) 1
J & J Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991) 1
In re Chemical Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828 (Fed. Cir. 1988) 1
Long John Silver's Inc. v. Lou Scharf Inc., 213 USPQ 263 (TTAB 1982) 1
Amica Mutual Insurance Company v. R. H. Cosmetics Corp., 204 USPQ 155 (TTAB 1979) 1
American Standard Inc. v. Scott & Fetzer Co., 200 USPQ 457 (TTAB 1978) 1
In re Andes Candies Inc., 478 F.2d 1264, 178 USPQ 156 (CCPA 1973) 1
In re Berg Electronics Inc., 163 USPQ 487 (TTAB 1969) 1
In re Emco Inc., 158 USPQ 622 (TTAB 1968) 1
Textron Inc. v. Cardinal Engineering Corp., 164 USPQ 397 (TTAB 1969) 1
In re Barry Wright Corp., 155 USPQ 671 (TTAB 1967) 1
Grand Total 5 2 9 1 1 18

Sec. 1052. Trademarks registrable on principal register; concurrent registration

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it--
  1. (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.
  2. (b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.
  3. (c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.
  4. (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; (2) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Use prior to the filing date of any pending application or a registration shall not be required when the owner of such application or registration consents to the grant of a concurrent registration to the applicant. Concurrent registrations may also be issued by the Director when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Director shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons.
  5. (e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional.
  6. (f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant's goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant's goods in commerce before December 8, 1993.
A mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be refused registration only pursuant to a proceeding brought under section 1063 of this title. A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be canceled pursuant to a proceeding brought under either section 1064 of this title or section 1092 of this title.

 

 

C.F.R. Sec. 2.61. Action by examiner.

  1. (a) Applications for registration, including amendments to allege use under section 1(c) of the Act, and statements of use under section 1(d) of the Act, will be examined and, if the applicant is found not entitled to registration for any reason, applicant will be notified and advised of the reasons therefor and of any formal requirements or objections.
  2. (b) The examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application.
  3. (c) Whenever it shall be found that two or more parties whose interests are in conflict are represented by the same attorney, each party and also the attorney shall be notified of this fact.

 

 

C.F.R. Sec. 2.72. Amendments to description or drawing of the mark.

  1. (a) In an application based on use in commerce under section 1(a) of the Act, the applicant may amend the description or drawing of the mark only if:
    1. (1) The specimens originally filed, or substitute specimens filed under §2.59(a), support the proposed amendment; and
    2. (2) The proposed amendment does not materially alter the mark. The Office will determine whether a proposed amendment materially alters a mark by comparing the proposed amendment with the description or drawing of the mark filed with the original application.
  2. (b) In an application based on a bona fide intention to use a mark in commerce under section 1(b) of the Act, the applicant may amend the description or drawing of the mark only if:
    1. (1) The specimens filed with an amendment to allege use or statement of use, or substitute specimens filed under §2.59(b), support the proposed amendment; and
    2. (2) The proposed amendment does not materially alter the mark. The Office will determine whether a proposed amendment materially alters a mark by comparing the proposed amendment with the description or drawing of the mark filed with the original application.
  3. (c) In an application based on a claim of priority under section 44(d) of the Act, or on a mark duly registered in the country of origin of the foreign applicant under section 44(e) of the Act, the applicant may amend the description or drawing of the mark only if:
    1. (1) The description or drawing of the mark in the foreign registration certificate supports the amendment; and
    2. (2) The proposed amendment does not materially alter the mark. The Office will determine whether a proposed amendment materially alters a mark by comparing the proposed amendment with the description or drawing of the mark filed with the original application.