Who Defines a Trademark Design?

A recent precedential opinion from the TTAB reinforces the practical difficulty in defining -- at times -- a design trademark. In In re Pharmavite, the applicant's drawing defined its design mark as representing two bottles, depicted on the left.

In the applicant's specimen, the bottles were depicted differently, according to the examiner and the TTAB, depicted below, left. The specimen sought to display the actual use of the trademark on the goods in commerce. In doing so, the TTAB held that the mark changed from the two-dimensional design in the drawing to a three-dimensional depiction on the goods packaging, with the in-use design modified by the accompanying labels and words.

The design in the drawing consisted of two stylized pill bottles, with one bottle slightly overlapping the other, and with no labels or words. The stylized design appearing on the specimen, however, added additional features to the pill bottle design, including labels and, on one bottle, the words NATURE MADE and RX ESSENTIALS and, on the other bottle, the wording RX.

The examiner refused registration because the mark in the drawing was not a substantially exact representation of the mark depicted in use on the specimen. The Applicant asserted that the mark of two bottles shown on the specimen "contains the essential and integral subject matter of the mark as shown in the drawing." Id., at 4. However, the examiner maintained, and the TTAB agreed, that the mark used on the specimen is a different mark due to the presence of the label and word elements.

The TTAB explained that the commercial impression made by the design on the specimen is that the entire stylized design consisting of both the stylized bottles plus the labels and wording constitutes the mark. The TTAB rejected the contention that the background design of the two bottles, partially hidden by the accompanying labels, are separately recognized as the trademark apart from the label and words.

The issue of adding additional elements to a stylized mark is important for purposes of communicating the correct source identifier to the consuming public. If a simply designed mark is enhanced with additional components for display to the public, there is a serious question as to which portion of the mark and added components will be recognized by the public as the true mark -- is it the simple design initially envisioned by the applicant or the simple design buttressed by added elements? If the simple mark becomes confused by the public, and if the commercial impression on the public includes the additional elements beyond the simple design, then an important issue for the PTO and TTAB relates to the identification of the true trademark.

There are many examples of stylized designs in conflict with in-use design enhancements that have been refused registration. In re Boyd Coffee Co. is cited in the opinion, and there are many others, as well. In the Boyd Coffee case, the applicant's drawing of a stylized coffee cup and saucer was enhanced with similarly colored star bursts emanating from the coffee cup. The TTAB held that the drawing and specimen were in conflict, and that the mark presented in the drawing was thereby incomplete and unregistrable.

Sect. 807.12(d) of TMEP refers to this problem as a mutilated or incomplete mark. That is, if the mark depicted in the specimen is the full mark, then the mark in the drawing is mutilated or incomplete if it contains fewer connected elements. The mark in the drawing is somehow incomplete, lacking all of the elements depicted in the specimen, and cannot be registered. As explained in Sect. 807.12(d), the central inquiry relates to whether the drawing mark makes a separate and distinct commercial impression apart from the added elements depicted in the specimen. If there does not exist a separate and distinct commercial impression with consumers, then the drawing (absent the specimen's enhancements) does not accurately depict the full mark, and registration is not permitted.

The solution here is to be careful in adding enhancements to a stylized mark. If you are going to do so, be careful that the enhancements are depicted in such a way that it is clear to consumers that the enhancements are separate and distinct from the mark and not a part of the mark. Change the size, color, drawing or other attributes of the enhancements so as to set them off from the stylized design, thereby creating -- hopefully -- sufficient separation and distinction so as to maintain the integrity and recognition of the initial mark as the one, true mark.