What exactly is the mark filed in your trademark application or registration?
One of the most common errors in a trademark application is a mismatch between the mark shown in a trademark application drawing and the mark shown in submitted specimens. The USPTO rule is that the specimens of use must display a mark that is a substantially exact representation of the mark applied for or registered. This means your specimens must match the trademark shown in your trademark application or registration, particularly in the drawing section of your application.
What is a trademark application drawing?
A little background into the old-school days of trademark filings would help. It might seem like the dinosaur ages, but there was a time when trademark applications were filed by paper with the USPTO. The drawing was a separate page of the trademark application dedicated to showing the exact mark being applied for. If a word mark (standard characters) was sought, the drawing would simply consist of the wording typed out, typically in all uppercase letters. Otherwise, the trademark application drawing would show a stylized design mark, usually in black-and-white (i.e., no color claim.)
Nowadays, with practically all trademark applications being filed electronically through the USPTO website, there is no drawing page per se. Instead, electronic trademark applications have a “drawing” in the sense that the mark needs to be either typed out (for a word mark) in the online trademark application form, or uploaded as a JPG file (for a design mark). Note that every trademark application has a drawing, even when a word mark is sought to be registered.
What happens when specimens do not match the drawing of the trademark?
The problem arises when specimens of use submitted in a trademark application do not match the mark as applied for. A mismatch between the specimens and the drawing occurs when the specimens show a mark that is not a substantially exact representation of the drawing.
What is a substantially exact representation?
The presence of “substantially” in this standard provides some welcomed flexibility for the trademark applicant. A bit of wiggle room may be allowed for specimens that show a minor alteration of the mark, such as an added comma.
What are examples of specimens that do not match the applied-for trademark?
Though this list is not exhaustive, it should provide a fairly comprehensive guide on what not to do:
- specimens show applied-for mark combined with other words
- specimens show applied-for mark combined with another mark (i.e., not enough spacing or separation between applied-for mark and other wording)
- specimens show a mark with fewer words than the applied-for trademark
- the applied-for trademark consists of a stylized design mark with graphic design elements missing in the specimens
- the arrangement or sequence of wording in the specimen does not match the arrangement of the applied-for trademark
- a typo in the specimens
- punctuation on the applied-for mark, but not on the specimen (*note that it would be OK to have extraneous punctuation on the specimen, but not on the applied-for mark)
Can you change a trademark drawing?
Suppose you want to change the applied-for trademark to match your actual usage of the mark on your goods. Can you amend your trademark application drawing? Maybe.
The USPTO allows for amendments to the trademark drawing if the changes do not materially alter the mark. So what is a material alteration of the mark? According to the TMEP Section 807.14, the “modified mark must contain what is the essence of the original mark, and the new form must create the impression of being essentially the same mark.”
For example, the removal of quotation marks in the applied-for trademark would be acceptable since it would not constitute a material alteration.
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