Faced with a Section 2(b) refusal because their proposed mark included simulations of the flags of the United States and of Bermuda, these two yacht clubs tried to amend their application drawing from the one on the left below, to the one on the right (flags removed). The Examining Attorney deemed the change to be a material alteration of the mark and refused to enter the amendment. Did the applicants have smooth sailing at the Board, or did they founder on the TTAB shoals? In re The Cruising Club of America, Inc. and Royal Bermuda Yacht Club, Serial No. 88159868 (November 6, 2020) [not precedential] (Opinion by Judge Thomas Shaw).
Trademark Rule 2.72(a)(2) provides that, in a Section 1(a) application, an applicant may amend the drawing of the mark if “[t]he proposed amendment does not materially alter the mark” as depicted in the application drawing. “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.” In re Who? Vision Sys., Inc., 57 USPQ2d 1211, 1218 (TTAB 2000)
TMEP § 1204.04(b), entitled “Deletion of § 2(b) Matter,” states that a flag design may be deleted “if the flag design is spatially separated from other matter in the mark or is used as a background for other words or designs.” The Board recognized that the TMEP “does not have the force of law,” but it held that “the guidelines regarding deletion of Section 2(b) matter, as set forth in the TMEP, are appropriate under the rules to consider ….” “We will apply those guidelines in our analysis of the acceptability of Applicants’ proposed amended drawing.”
In order to determine the mark’s commercial impression, the Board looked to applicant’s specimens of use (see above and below). The Board noted that some of the specimens of use showed the lighthouse without the flags. According to the Board, “[t]hese examples suggest that the lighthouse and crossed flagpole design has a commercial impression independent of the particular flags displayed. Indeed, the representation of the lighthouse without any flags suggests that the St. David’s Lighthouse is the heart of the mark’s commercial impression.”
The Board reviewed the examples of flags designs provided in the TMEP, including the example below of a design as to which the removal of the flags would be an impermissible mutilation, but the Board noted that “we are not bound by the TMEP’s examples”:
The Board concluded that removal of applicants’ flags would not be a material alteration of the mark. Therefore, it reversed the Examining Attorney’s refusal to permit amendment of the drawing, and it deemed the Section 2(b) refusal moot.
Read comments and post your comment here.
TTABlogger comment: Instead of applying the TMEP “guidelines,” I suggest applying common sense. Would any consumer think that the lighthouse creates a separate commercial impression when the flags are waving right in his or her face? Does “the new form . . . create the impression of being essentially the same mark”? What do you think?
Text Copyright John L. Welch 2020.