[E-trademarks] Determining Whether Specimen Matches Drawing Based on Line Breaks

[Spencer Cross]

Hi all,

We recently received a "specimen does not match the drawing" refusal where
we applied for the mark as a compound word mark:

ALPHABETA

But the specimen, which is a screen capture of a website, uses a logo
design that shows the two words stacked:

ALPHA
BETA

Everywhere else on the site the mark is used as a compound word on one line
(e.g., in the copyright notice in the footer). Unfortunately, it's a
relatively sparse site and none of those other uses are great options for a
specimen.

That refusal seems inappropriate to me. I can't imagine, for example, that
a specimen depicting the vertically stacked red LEVI'S tag would be refused
because it shows the mark as "L E V I ' S" or that a specimen for SUPERCELL
showing their logo <https://supercell.com/en/for-media/> would be refused
for showing the mark as "SUP ERC ELL".

Before we talk to the client about revising their website, I'm curious if
anyone knows of any authority addressing whether it's appropriate to
conclude a standard character mark is two separate words based on its
design expression? Unfortunately I wasn't able to find anything in TMEP or
McCarthy or my other go-to secondary sources, all of which only address
mismatches in punctuation. I assume in the end it will be easier to just
ask the client to update the website, but I'd rather not capitulate because
I don't think it's an appropriate refusal.

Feel free to send responses off-list if you prefer.

Thanks,
Spencer

-- 
*SPENCER CROSS*
Senior Associate Attorney


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