[E-trademarks] specimen question

[Edward Timberlake]

I'm not aware of any rule necessarily requiring design elements and word
elements to appear separately, or together on specimens.

In an application to register just a design element, it seems to me the key
for the specimens would be whether (you have good arguments supporting the
position that) the design element makes a separate and distinct commercial
impression apart from any word elements.

As in other areas, there's a chance your opinion of whether the word
elements and the design elements create separate commercial impressions
might differ from that of the Trademark Examining Attorney. For instance,
is this one mark, or two (or more)?

[image: USPTO-TSDR-Case-Viewer (70).png]



Sincerely,

Ed Timberlake
*Board Certified Specialist in Trademark Law
<https://www.nclawspecialists.gov/for-the-public/find-a-board-certified-specialist/results/detail/?id=29473>*

*Timberlake Law* <http://timberlakelaw.com/>
Chapel Hill, NC

Schedule a call on Clarity <https://clarity.fm/edtimberlake>
ed at timberlakelaw.com
919.960.1950








On Wed, Jan 17, 2024 at 6:12 AM Carl Oppedahl via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> a listserv member asks to post anonymously ...
>
>
> I understand that a proper specimen of use for a composite mark (words +
> design element) can likewise support a separate, standard character word
> mark application for just the “word” portion of the composite mark (let’s
> assume for goods).
>
>
>
> But can the same composite specimen support a separate application for
> just the design element (without the words)?  Or does the specimen have to
> show the design element on the packaging for the goods by itself without
> the words?
> --
> E-trademarks mailing list
> E-trademarks at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>
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