Trademark Trial and Appeal Board Denies Registration for Failure to File Perfect Statement of Use

Even the most trivial of deviations between one’s trademark application and the trademark actually used in commerce will doom an application with the US Patent and Trademark Office.  As Yale Sportswear recently found, trademark examining attorneys will find that a specimen is not a “substantially exact representation” of the mark as used under Trademark Rule 2.51(a) if an applicant excludes even the most seemingly miniscule part of a mark when filing a statement of use.

In In re Yale Sportswear Corp., the Trademark Trial and Appeal Board ruled that the addition of a degree symbol to the mark filed with Yale’s statement of use conveyed a different commercial impression from the mark applied for in Yale’s initial application for UPPER 90.  The examining attorney found,

To add the degree symbol would result in the reading of the mark as “upper ninety degrees,” This would change the connotation of the mark, as the degree symbol changes the meaning of the term “90,” as “90 degrees” could now refer to a specific temperature or, as applicant would prefer, to an angle. Regardless, the degree symbol changes the significance and connotation of the term “90.”

On appeal, the Yale produced two declarations, one from its marketing director and the other from a soccer coach and player, stating that the addition did not constitute an alteration of the mark to the ordinary consumer.  The Board largely ignored these declarations. 

The Board held that the addition of the degree symbol caused the mark to make a separate and distinct commercial impression from the applied for mark.  “Although the degree symbol in applicant’s mark is not physically large, we find that it nonetheless substantially changes the overall impression of the mark. Without the degree symbol, it is unclear what the “90” in the drawing might refer to.”  The Board said that Upper 90 “does not form a “separate and distinct” commercial impression.  It cannot be severed from the degree symbol without altering the meaning, pronunciation, and, to some extent, the appearance of the mark.”  Thus, the refusal of registration was affirmed.