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

[Angelica McDonald]

I literally just got an office action a few minutes ago saying the "specimen does not match the drawing". The mark is a signature name my client goes by online. People have walked up to her on the street calling her this name. My client's website where she sells products has the mark in the corner. Her handle on social media is her mark. She does a good bit of her videos sharing client testimonials. For her speaking engagements, she uses the mark with a hashtag. I gave a good bit of social media posts as specimen with her using the mark as her handle and promoting her services and products online. I'm confused about the office action.
Angelica N. McDonald, Esq.
Attorney at Law
McDonald Law, PLLC
PO Box 938
116 W. Edinborough Avenue
Raeford, NC 28376
Phone: (910) 758-7575 | Fax: (910) 208-0533
Website: www.mcdonaldlaw.legal
 

    On Tuesday, January 30, 2024 at 07:17:27 PM EST, 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:
ALPHABETA
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 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

680 E. Colorado Blvd., Ste. 180Pasadena, CA 91101Main: (323) 657-3380
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