Using your trademark correctly as filed – How to avoid office action refusal from the USPTO

Using your trademark correctly as filed – how to avoid refusal from the USPTO

Mark Differs on Drawing and Specimen”

It is important to note that the trademark must be used exactly as filed. It means that the trademark (called “drawing” by the USPTO) must be substantially the exact representation of the mark as intended to be used on products and services, as shown by the specimen (trademark in use is shown via specimen – a photograph of your products showing your brand).

Extraneous matter shown on the specimen that is not part of the mark (the symbol “TM,” ” the registration notice ®, the copyright notice ©, or informational matter such as net weight or contents) cannot show on a trademark drawing.

If you file for a standard character mark (word mark), it’s essential that there are no symbols or images that separate/break the wording or are integrated into the formulation.

Some examples:

  • Trademark filed: ALL STOP
  •  

Trademark used on products (specimen provided):ALL STOP

Conclusion: use of this logo will not be considered as use of the word mark ALL STOP as there is a design of a shield with caduceus inside and this design visually breaks or separates the wording “ALL STOP.” So if a trademark is filed for ALL STOP, but the logo above is used, the Trademarks Office will ask for different photographs. The takeaway: if you use a stylized version with an image or symbol inside your wording, it’s best to file for the logo, not wordmark.

  • Trademark Filed: FRESH HEALTHCARE

Trademark used:FRESH HEALTHCARE

Conclusion: The image is shown on the left and doesn’t interfere with the wording, so if the wordmark.

 

FRESH HEALTHCARE is filed, but the logo is used, then the use of the logoFRESH HEALTHCAREwill still support the use of the word mark.

It will be best to protect both the standard characters mark (FRESH HEALTHCARE and the logoFRESH HEALTHCAREorFRESH HEALTHCARE logo) and this is what our client did in this case.

  • Trademark filed: THE PACK.

Trademark used:THE PACK

Conclusion: The sword visually breaks the wording, so the use of the logo will not support the use of the word mark. Trademarks Office will ask to see the use of the mark THE PACK without any elements inside the wording.  Correct trademark to file was THE PACK.

  • Trademark filed: THREE ARROWS.

Trademark used: THREE ARROWS

Conclusion: The words THREE ARROWS cannot be separated or broken with another symbol or image, and in this case, three arrows appear between the words “THREE” and “ARROWS.” Trademarks Office will ask for substitute specimens in this case. Correct trademark to file was THREE ARROWS.

  • Trademark filed: ACTIVIVA

Trademark used: ACTIVIVA

Conclusion: The dot above the letter “i” is shown as a leaf and the three stylized drops to the left from the word “ACTIVIVA” are shown too close. So, the correct mark to file is the logo ACTIVIVA

  • Trademark Filed: STONE’S GOODS

Trademark used: STONE’S GOODS

Conclusion: The ping is shown on top of the wording and doesn’t interfere with the text, so if a word mark is filed, but the logo is used, then the use of the logo will still support the use of the word mark. It will be best to protect both the standard characters mark (STONE’S GOODS and the logo STONE’S GOODS), and this is what our client did in this case.

  • Trademark filed: L’AUTRE PEAU

Trademark used on products: L’AUTRE PEAU

Conclusion: The correct mark to file is the logo L’AUTRE PEAU logo as the leaves on the left from the word “PEAU” are too close so they form an integral part of the mark.

  • Trademark filed: KLENBLU

Trademark used: KLENBLU

Conclusion: Letters “N” and “B” are joined together and form a new symbol. They no longer show letters “N” and “B.” Also, there is a horizontal stroke above the letter “E.” The correct mark to file inKLENBLU this case is.

  • Trademark filed:Erzinkyan's Narine

Trademark used on products:ERA OF PROBIOTICS INC

Conclusion: The logo as registered has to match the logo as used (in this case the client added “ERA OF PROBIOTICS INC.” and “since 1949” inside the logo. Also, the font was different. Before the statement of use was filed, our client had to re-do the labels to show the logo precisely as registered. Even small things make a difference.

  • Trademark filed: girl design

Trademark used:     (girl design) displays the mark with flowers

Conclusion: Trademarks Office determined that the logo, as applied, displays the mark with flowers in the girl’s hair; however, the drawing (logo as filed) displays the mark without flowers in the girl’s hair. In this case, it’s possible to change the logo as presented to the logo as used (as the change was considered immaterial).

  • Trademark filed: GAMES2PEOPLE

Trademark used: GAMES TO PEOPLE

Conclusion: This is not acceptable as a trademark that is used is different from the trademark as filed.

  • Trademark filed: IBIYAYA

Trademark usedIBIYAYA

Conclusion: This is not acceptable as the dot above the letter “i” it too stylized and shows a dog’s paw. This trademark IBIYAYAshould have been submitted:

Some changes are acceptable. For example, filing in ALL CAPITAL LETTERS will allow you to use your mark in all CAPITAL letters, Initial Capital letters or all small letters. Also, you can use different fonts if a standard characters mark is filed. So, if IBIYAYA, standard characters word mark, is submitted, it can be used in any stylized font, as long as individual letters are not broken or parts of the letters are not shown as images or symbols.

IBIYAYA.. So this use is excellent and will support the use of IBIYAYA.

 

  • Mark filed: AYA SUSHI

Mark used:  AYA SUSHI

Conclusion: This is not acceptable as the mark that is used is “aya” even though Japanese characters read “sushi.” So, in this case, either a word mark AYA should be filed or the exact logo AYA SUSHIas used on products.

  • Mark filed: LIMO LINER

Mark used: LIMO LINER

Conclusion: It’s important to pay attention to small things. Even spaces between words matter. In this case, the mark should have been filed as LIMOLINER, the combined logo.

LIMO LINER or as two trademarks:LIMOLINER logo and LIMOLINER (and this is what was done in this case).

  • Trademark filed: Crafts of Egypt

Trademark used on products: Crafts of Egypt

Conclusion: The change is not material, so in this case, it’s possible to amend the registered trademark to match the one that is used (without spaces). We were able to change the client’s mark in this case.

Takeaway:

It’s especially important to pay attention to how you start using your mark if you initially filed for a standard character (word mark). Please don’t break your mark or stylize too many parts of your mark.

In some cases (as discussed in Girl design and Crafts of Egypt, it may be possible to change the trademark after filing if the change is not “material” but it’s not always possible, so it’s best to use your trademark precisely as it was presented.

If in doubt, please send us examples of your proposed use BEFORE you print your labels and order your products. We don’t charge for asking.

Also, we suggest you check out: Which trademark should I File? Word Mark or Logo?

By |2019-04-10T21:57:38+00:00March 4th, 2019|Trademark|0 Comments

About the Author:

Leave A Comment

Anita photo

Anita Mar
CEO and Registered Trademark Agent at Trademark Angel Inc.

Sign up to our newsletter

Sign up to our newsletter to get inside tips about trademarks and also to benefit from our promotions. We promise we don’t spam.

When you subscribe, you will receive a PowerPoint presentation of our tips: “Trademark Usage Rules”.