Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE MEDITECH INTERNATIONAL CORPORATION DBA MIC INDUSTRIAL COMPANY, INC.
Serial No. 778,941
September 4, 1992
Issued: May 10, 1990
Robert E. Purcell for applicant.
Laurie J. Whitaker
Trademark Examining Attorney
Law Office 7
(David Shallant, Acting Managing Attorney)
Before Sams, Hanak and Quinn
Meditech International Corporation (applicant) originally sought to register DESIGN OF A BLUE STAR in typed letters for plastic and polyethylene recloseable bags. [FN1] The specimen submitted by applicant (reproduced below) did not bear the words DESIGN OF A BLUE STAR. [FNa1]
In her first office action, the Examining Attorney noted that the word mark DESIGN OF A BLUE STAR did not appear on the specimens. Continuing, the Examining Attorney stated as follows: "The Applicant cannot amend the drawing to conform with the specimens because the character of the mark would be materially altered. 37 C.F.R. Section 2.72. The Applicant must submit substitute specimens which show use of the mark as it appears in the drawing."
In response, applicant's attorney stated as follows in a paper dated June 19, 1989: "Applicant maintains that the commercial impression created by the specimen is that a blue star is a symbol, an identifier, and a distinguisher between Applicant's goods and those goods of others. Consequently, Applicant maintains that there is no need to amend the drawing or to submit new specimens showing use of a different mark." [FN2]
When the Examining Attorney made final her refusal, this appeal was taken. Both Applicant and the Examining Attorney filed briefs. Applicant did not request an oral hearing.
A drawing consisting of a single blue star, as well as a drawing consisting of a number of blue stars, would both be considered material alterations vis-a-vis a drawing consisting of the typed words DESIGN OF A BLUE STAR. Trademark Rule 2.72 prohibits amendments to a drawing if the character of the mark is materially altered. In re Wine Society of America Inc., 12 USPQ2d 1139, 1141 (TTAB1989). Accordingly, the Examining Attorney properly refused registration on the basis that the applicant was impermissibly seeking to materially alter its drawing, consisting of the typed word trademark DESIGN OF A BLUE STAR, substituting in its place either the depiction of a single blue star or the depiction of a number of blue stars.
Applicant's reliance on our decision in In re Duofold Inc., 184 USPQ 638 (TTAB1974) is misplaced inasmuch as that case involved a refusal to register on the basis that applicant's mark was confusingly similar to two registered marks. As is often the case, the differences between two marks may be great enough to constitute a material alteration and yet, by the same token, not be so great as to avoid a likelihood of confusion.
*2 Decision: The refusal to register is affirmed.
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 778,941 filed February 6, 1989 claiming first use on December 31, 1987.
FNa1. [Post-decision note: When published, the specimen is not legible. In pertinent part, it consists of a rectangular label with approximately 20 small blue stars forming a horizontal line along the lower one-eighth of the label. Beneath these 20 small blue stars are the words LOOK TO THE BLUE STARS FOR QUALITY. Other words appear in larger letters in the upper seven-eighths of the rectangular label.]
FN2. In its appeal brief, applicant offers the following explanation concerning its mark and its application: "At the time of filing the application, Applicant submitted an informal drawing describing the mark with the words 'Design of a Blue Star.' Applicant was hesitant to incur the expense of a formal, specially prepared, drawing depicting a star shape lined for the color blue until such time as applicant received a response from the Trademark Examiner which indicated that the mark was otherwise entitled to be published for opposition, at which time, it was the Applicant's intention to submit a formal drawing of a star lined for the color blue."