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

[Lori Milvain]

I too have been receiving more “specimen doesn’t match the drawing” refusals that don’t make sense.  I just spoke to an examiner that insists that a specimen is being refused as follows:

TRADEMARK – Learn More Today
TRADEMARK is a framework for …. (services are described here).  She says LEARN MORE TODAY is part of the mark.  What?

I disagreed and she told me to put my arguments in writing, so I will, (but at further expense to the client, of course).
Lori



Lori T. Milvain, Esq.
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Spencer Cross via E-trademarks
Sent: Tuesday, January 30, 2024 7:14 PM
To: Carl Oppedahl <E-trademarks at oppedahl-lists.com>
Cc: Spencer Cross <spencer at counselforcreators.com>
Subject: [E-trademarks] Determining Whether Specimen Matches Drawing Based on Line Breaks

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://linkprotect.cudasvc.com/url?a=https%3a%2f%2fsupercell.com%2fen%2ffor-media%2f&c=E,1,VS8krQvKC6phN-Qy6Lkt9_PEiqGryz2Xfhz9U8tjv2_BKXsxaNRzulSLwwWkSZhzZ0Hm4GlfIK5jtqgfVTXPViIIZq1NcWf7z7_cd2nWWzUWEiBFJp4RFQ,,&typo=1> 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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