DON’T Do as I Say; Do as You Should! TTAB Issues Quirky Decision
In re Hudson Fairfax Group LLC, Serial No. 76662560 (November 21, 2008)
In this non-precedential decision, the TTAB found that that a web page displaying the words “India Continuum Fund” (shown below) was acceptable to show use of the applied-for mark CONTINUUM for financial investment services.
The Board held that, because the word “India” was geographically descriptive (as the location of the investments) and the word “fund” was generic, the word CONTINUUM was not “a mutilation of applicant’s mark,” even though the words “India” and “fund” appeared in the same size and font type as the mark CONTINUUM on the specimen page. In short, the Board found that CONTINUUM and INDIA CONTINUUM FUND created a similar commercial impression.
To say that this is a surprising result is an understatement!
The TMEP is clear that “the drawing of the mark must be a substantially exact representation of the mark . . . as shown by the specimen.” TMEP § 807.12(a) citing 37 C.F.R. §2.51(a), emphasis added. In addition, the mark on the drawing must be a complete mark, as shown on the specimen of use. When the representation on a drawing is missing an essential and integral portion, it is sometimes referred to as “mutilation,” which was ground for refusal of CONTINUUM in this case. The determinative factor is “whether or not the subject matter in question makes a separate and distinct commercial impression apart from the other element(s).” TMEP § 807.12(a).
In the specimen submitted by applicant in this case, the word CONTINUUM did not stand out in any way from the words “India” and “fund” (same font, size, color, etc.), which, arguably, creates a unitary mark (INDIA CONTINUUM FUND) that has a distinctive commercial impression from the mark CONTINUUM by itself. Longstanding TTAB case law supports this position. For example in In re Semans, 193 USPQ 727 (TTAB 1976), the Board found that the term “KRAZY,” displayed on the specimen on the same line and in the same script as the expression “MIXED-UP” did not in itself function as a registrable trademark apart from the unitary phrase “KRAZY MIXED-UP.” The recent case In re Yale Sportswear Corp., 88 USPQ2d 1121 (TTAB 2008) is also instructive: the mark UPPER 90 for clothing was refused registration because the specimen of use did not match the drawing. The specimen was a hangtag that included a degree symbol after “90,” a difference that “substantially change[d] the overall impression of the mark.”
If a degree symbol is sufficient to create a distinct commercial impression of the mark, why aren’t the words INDIA and FUND?
Practice Pointer: Regardless of this odd decision, make sure your clients submit specimens of use that are substantially exact representations of their marks, as filed. Small variations are generally fine (like punctuation; although an exclamation point has been held to change the commercial impression of a mark). Whenever possible, the mark should stand out from the words surrounding it, i.e. using a different font, size and/or color. For example, in In re Servel, Inc., 181 F.2d 192 (C.C.P.A. 1950) the Board reversed the refusal to register the term SERVEL as a mutilation of the mark SERVEL INKLINGS, where the specimen displayed an insignia between the words “SERVEL“ and “INKLINGS,“ and “INKLINGS” was printed in a large and different kind of type.