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

[Spencer Cross]

Agreed, but safe to assume that's not the case here and the EA doesn't make
any argument that the commercial impression is different. His entire
analysis is "The mark on the specimen does not match the mark in the
drawing because the specimen shows the term "ALPHA" over the term "BETA,"
indicating a space between both terms."

Best,
Spencer


On Tue, Jan 30, 2024 at 4:31 PM Weitzmanip <rstraussman at weitzmanip.com>
wrote:

> A space could make a difference depending on the commercial impressions of
> each. Consider:
>
> THERAPIST   vs  THE RAPIST
>
> Not the same connotation, is it?
>
>
>
> On Jan 30, 2024, at 7:16 PM, Spencer Cross via E-trademarks <
> e-trademarks at oppedahl-lists.com> wrote:
>
> 
> 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
>
> --
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>
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