Robert E. Bushnell

Trademark Trial and Appeal BoardJul 9, 2014

No. 77698976 (T.T.A.B. Jul. 9, 2014)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: July 9, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Robert E. Bushnell _____ Serial No. 77698976 _____ Robert E. Bushnell of Robert E. Bushnell & Law Firm, pro se. Dominic J. Ferraiuolo, Trademark Examining Attorney, Law Office 102 (Mitchell Front, Managing Attorney). _____ Before Seeherman, Ritchie and Adlin, Administrative Trademark Judges. Opinion by Adlin, Administrative Trademark Judge: Robert E. Bushnell (“Applicant”), an attorney acting pro se, seeks registration of the mark shown below for: “Advertising and advertisement services, advertising and commercial information services, via the internet, advertising services, billing, clerical services, computer file management, invoicing, copying of documents and direct marketing, and administration, arranging, dissemination, compilation and distribution of advertising of assemblies, businesses, entities, institutions and organizations Serial No. 77698976 2 responsively receptive to inquires (sic) and transactions from others.”1 The application includes the following description of the mark: “The mark consists of the wording ‘Repairsdot’ in plain type font with a fanciful representation of the dot over the letter ‘I’.” Following issuance of a Notice of Allowance, Applicant filed, on August 27, 2012, a Statement of Use of the mark with the two-page specimen reproduced below, described in the Statement of Use as “[s]creen shots of the Applicant’s organization Internet www homepage showing the mark …”: 1 Application Serial No. 77698976, filed by Paul E. Bushnell on March 25, 2009, based on an intent to use the mark in commerce under Section 1(b) of the Act. At the time of filing, current Applicant Robert E. Bushnell served as original applicant Paul E. Bushnell’s attorney, but on January 29, 2010 Robert E. Bushnell acquired the application by assignment from original applicant Paul E. Bushnell, as recorded at Reel 4204/Frame 0758. Serial No. 77698976 3 The Examining Attorney refused registration of the mark under Trademark Rule 2.51(b) on the ground that “The mark on the specimen disagrees with the mark on the drawing. In this case, the specimen displays the mark as the wording REPAIRS DOT with the letter ‘I’ dotted with a design of a checkmark, while the drawing shows the mark as REPAIRSDOT with the letter ‘I’ dotted with the design of an acorn.” After the refusal was made final, Applicant appealed, his request for reconsideration was denied and Applicant and the Examining Attorney filed briefs. Under Trademark Rule 2.51(b), “[i]n an application under section 1(b) of the Act … once … a statement of use under § 2.88 has been filed, the drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the … services.” In re Yale Sportswear Corp., 88 USPQ2d 1121, 1122 (TTAB 2008). Thus, the question presented is whether the mark as used in the specimen, shown below on the right, is a “substantially exact representation” of the mark in the drawing, shown below on the left: We find that it is not. There are clear differences between the mark shown in the drawing and the mark shown in the specimen. An acorn forms the “dot” above the “i” in the original drawing, while a “check” mark in a circle forms the “dot” above the “i” in the specimen. While neither the acorn nor the check mark is much larger than the letters comprising REPAIRSDOT, they are each significantly larger than would be a Serial No. 77698976 4 standard, textual “dot” above the “i,” and they therefore attract significantly more attention than would a standard “dot” above the “i.” These design elements are also significant features of the marks in the drawing and specimen because of their incongruity and apparent randomness, in that neither acorns nor check marks have any obvious connection to the term REPAIRSDOT or the services identified in the application. Perhaps most importantly, the acorn and the check mark create entirely different commercial impressions from each other, from the term REPAIRSDOT and from the identified services. Indeed, an acorn is a nut, while a check mark is generally used to signify that something is correct, or has been addressed or chosen. Neither connotation relates to or calls to mind the term REPAIRSDOT or Applicant’s services, and, importantly, they do not share a common commercial impression. Finally, we note that REPAIRSDOT appears in a different font in the specimen than in the drawing, and that while the “D” is capitalized in the specimen it is written in lower case in the original drawing. These differences are sufficient for us to find that the mark in the specimen is not a “substantially exact representation” of the mark in the original drawing. See e.g., In re Guitar Straps Online LLC, 103 USPQ2d 1745 (TTAB 2012); (GOT STRAPS? not a substantially exact representation of GOT STRAPS); Yale Sportswear, 88 USPQ2d at 1123-24 (UPPER 90º with the degree symbol not a substantially exact representation of UPPER 90); In re Innovative Companies LLC, 88 USPQ2d 1095, 1096-97 (TTAB 2008) (“Applicant’s drawing for FREEDOMSTONE is not a substantially exact representation of the mark as used Serial No. 77698976 5 on the specimen of use,” specifically FREEDOM STONE in stylized format); see also, In re Dillard Department Stores Inc., 33 USPQ2d 1052 (Commr. 1993) and In re DeWitt International Corp., 21 USPQ2d 1620 (Commr. 1991). Applicant’s arguments to the contrary are unavailing. Applicant appears to take the position that if his mark is displayed in 11 or 12 point font, the acorn and check mark designs will be so small as to be “indistinguishable” and thus appear as substantially exact representations of each other. Applicant’s Brief at 12-13. This argument is not persuasive because Applicant has applied to register his mark in special form, and therefore the ratio of the size of the dot design to the wording will remain the same as shown in the drawing; any increase in the size of the wording without a concomitant increase in the size of the design would only make the mark used in the specimen even less of a “substantially exact representation” of the mark shown in the drawing. Furthermore, while Applicant correctly states that “[f]or applications under § 1 of the Trademark Act, the drawing must always be compared to the specimen of record to determine whether they match, not the description of the mark,” Applicant’s Brief at 7 (emphasis supplied), Applicant at the same time argues that the description of his mark (which references only a “fanciful representation of the dot” without specifying the design) “allows [him] to alter or change material elements of the mark as shown on the specimens from how they actually appear in the drawing.” Applicant’s Brief at 8. This is incorrect, for as the Examining Attorney points out, “[a] drawing depicts the mark sought to be registered.” Serial No. 77698976 6 Trademark Rule 2.52. Furthermore, Applicant’s position is contrary to the principle that an application may only seek registration of a single mark; an applicant may not “alter or change” the material elements of his mark and still maintain the benefits of registration, which by definition apply to the single mark in the registration. See generally, In re International Flavors & Fragrances Inc., 183 F.3d 1361, 51 USPQ2d 1513, 1516-17 (Fed. Cir. 1999). In short, the specimen must be a substantially exact representation of the drawing of the mark, rather than the description of the mark. Trademark Rule 2.51(b). Applicant’s attempt to analogize the acorn and check mark designs to punctuation is misplaced. While Applicant is correct that “punctuation, such as quotation marks, hyphens, periods, commas and exclamation marks generally does not significantly alter the commercial impression of the mark,” TMEP § 807.14(c) (2014), in this case the designs comprising the “dot” above the “i” in Applicant’s mark are not mere “dots,” much less punctuation, but instead distinctive designs which convey particular meanings. Cf. Guitar Straps Online, 103 USPQ2d at 1748- 52 (question mark added to mark changed its commercial impression); Yale Sportswear, 88 USPQ2d at 1121 (addition of degree symbol “º” changed mark’s commercial impression). These different designs coupled with the different displays of the literal portion of the mark result in the mark in the specimen creating a different overall commercial impression from the mark in the drawing. Finally, Applicant argues that the mark in the specimen is not a “material alteration” of the mark in the drawing. The issue of whether something is a Serial No. 77698976 7 “material alteration” normally arises when an applicant seeks to amend the drawing of the mark, and the amended mark must be compared to the mark as shown in the original drawing. Here, Applicant has not sought to amend the drawing of his mark. Cf. Trademark Rule 2.72(b)(2) and Guitar Straps Online, 103 USPQ2d at 1745 (in which, unlike this case, the applicant filed with its statement of use a proposed amendment to the drawing of its mark which would conform it to the mark as shown on the specimen). In short, the “material alteration” question is not before us. In re Yale Sportswear Corp., 88 USPQ2d 1121, 1123 (TTAB 2008) (“However, the ‘material alteration’ standard is not the issue in this case because applicant has not attempted to amend its drawing.”). Decision: The mark shown in the specimen is not a “substantially exact representation” of the mark in the drawing. Accordingly, the refusal to register Applicant’s mark under Trademark Rule 2.51(b) is affirmed.