Bacardi & Company Limited

Trademark Trial and Appeal Board

Jan 5, 2021

87726842 (T.T.A.B. Jan. 5, 2021)

This Opinion is not a
Precedent of the TTAB

Mailed: January 5, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
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In re Bacardi & Company Limited
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Serial No. 87726842
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John P. Murtaugh of Pearne & Gordon LLP,
for Bacardi & Company Limited.
Justine N. Burke, Trademark Examining Attorney, Law Office 121,
Richard White, Managing Attorney.
_____

Before Kuhlke, Kuczma and Heasley,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Bacardi & Company Limited (“Applicant”) seeks registration on the Principal
Register of the mark:

Serial No. 87726842
- 2 -

for:
Alcoholic beverages except beers; Liquor; Spirits; Wines, in
International Class 33.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Trademark Rule § 2.52, 37 C.F.R. § 2.52, for failure to provide a clear drawing
of the mark.

1 Application Serial No. 87726842 was filed on December 19, 2017, based upon Applicant’s
assertion of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).

The mark consists of a three-dimensional configuration of a bottle with a white cap at the top
of a neck, the upper half of the neck being white with a black band at the bottom of the white
portion, the bottle having a shoulder below the neck, the sides of the bottle extending
downward from the neck to the bottom of the bottle. There is a red disk presented on a white
label below the shoulder. The label features a series of nine decorative black seals and the
wording “EL RON MAS” and “PREMIADO DEL MUNDO” above the seals in black font.
Below the seals is the wording “PROVEEDORES DE LA REAL CASA” in black font. Inside
the seals is presented black portraits representing different cities. Underneath the seals is
presented a stylized laurel branch in black. There is a silver rectangular area located between
the decorative seals and the bottom of the bottle. The broken lines depicting the exterior
shape of the bottle, the bottle cap, and the bottom of the bottle indicate placement of the
aforementioned elements on the goods and are not part of the mark. The color gray represents
background, outlining, shading and/or transparent areas and is not part of the mark.

The colors white, black, silver and red are claimed as a feature of the mark.

“EL RON MAS PREMIADO DEL MUNDO” and “PROVEEDORES DE LA REAL CASA” are
disclaimed.

The English translation of “EL RON MAS PREMIADO DEL MUNDO” and “PROVEEDORES
DE LA REAL CASA” is “THE WORLD’S MOST AWARDED RUM” and “SUPPLIER TO THE
ROYAL HOUSEHOLD,” respectively.

While this image is the image of record, the image showing Applicant’s mark that is the
subject of this appeal is shown below; see footnote 3.

Serial No. 87726842
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After the refusal was made final, Applicant requested reconsideration and filed a
Notice of Appeal.2 The Examining Attorney denied the request for reconsideration
and the appeal was resumed. Subsequently, Applicant filed a motion to suspend,
requesting that the application be remanded to the Examining Attorney for
consideration of a new drawing. The appeal was suspended and the application was
remanded to the Examining Attorney for reconsideration, which was denied. The
appeal was resumed and Applicant and the Examining Attorney filed briefs in
support of their positions. For the reasons set forth below, the refusal to register is
affirmed.
Clear Drawing of Mark
The issue in this case is whether Applicant’s drawing of its mark3 satisfies the
requirement to provide a clear drawing of the mark. Trademark Rule § 2.52(b), 37
C.F.R. § 2.52(b).
Below is a copy of the substitute specimen filed with Applicant’s Motion to
Suspend Appeal and Return to Examiner for Reconsideration:

2 On June 21, 2019, Applicant filed a Petition to the Director pursuant to 37 C.F.R. § 2.146
and TMEP 807.10 with an amended drawing of the mark using the maximum number of
pixels allowed by the Trademark Office. Since Applicant’s drawing utilized the maximum
number of pixels, Applicant requested that its amended drawing be accepted. The Petition to
the Director was denied on September 24, 2019.
3 The drawing of the mark involved in this appeal is the substitute drawing filed on May 28,
2020 submitted with Applicant’s Motion to Suspend Appeal and Return to Examiner for
Reconsideration at TSDR 3, 7 TTABVUE 3. See Applicant’s Appeal Brief p. 2 (11 TTABVUE
3) and Examining Attorney’s Brief (13 TTABVUE 6).
Page references to the application record refer to the online database of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the briefs on appeal
refer to the Board’s TTABVUE online docketing system.
Serial No. 87726842
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Serial No. 87726842
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The description of Applicant’s mark is:
The mark consists of a three-dimensional configuration of
a bottle with a white cap at the top of a neck, the upper half
of the neck being white with a black band at the bottom of
the white portion, the bottle having a shoulder below the
neck, the sides of the bottle extending downward from the
neck to the bottom of the bottle. There is a red disk
presented on a white label below the shoulder. The label
features a series of nine decorative black seals and the
wording “EL RON MAS” and “PREMIADO DEL MUNDO”
above the seals in black font. Below the seals is the wording
“PROVEEDORES DE LA REAL CASA” in black font.
Inside the seals is presented black portraits representing
different cities. Underneath the seals is presented a
stylized laurel branch in black. There is a silver
rectangular area located between the decorative seals and
the bottom of the bottle. The broken lines depicting the
exterior shape of the bottle, the bottle cap, and the bottom
of the bottle indicate placement of the aforementioned
elements on the goods and are not part of the mark. The
color gray represents background, outlining, shading
and/or transparent areas and is not part of the mark.
The colors white, black, silver and red are claimed as a
feature of the mark.
The Examining Attorney required Applicant to provide a new drawing because
the drawing Applicant submitted with its Motion to Suspend Appeal and Return to
Examiner for Reconsideration includes matter that is “illegible”4 and thus does not
show a clear depiction of the mark, as required by Trademark Rule § 2.52.
“Specifically,” the Examining Attorney notes, “the drawing submitted on May 28,

4 Definition of “illegible”: adjective not legible; impossible or hard to read or decipher because
of poor handwriting, faded print, etc.: This letter is completely illegible.
dictionary.com/browse.illegible, based on The Random House Unabridged Dictionary, ©
Random House, Inc. 2020; December 31, 2020.
The Board may sua sponte take judicial notice of dictionary definitions, Univ. of Notre Dame
du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983), including definitions in online dictionaries that exist in printed
format or have regular fixed editions. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4
(TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016).
Serial No. 87726842
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2020 features wording presented around the ‘shoulder’ of the bottle, just below the
bottle neck, that appears to wrap around the circumference of the bottle and thus is
illegible as presented. Additionally, some of the matter presented within the seal
designs is also illegible and not clear. As such, Applicant has failed to provide a mark
drawing that is clear and that shows all aspects of the mark in sufficient detail as
required by the Trademark Rules.”5
According to the Examining Attorney, the requirement for all lines to be clean,
sharp, and solid also applies to the lines that form the wording and design elements
in the mark, to ensure their legibility; matter that is illegible cannot, by nature, be
sufficiently clean, sharp, and solid to constitute a clear drawing. Additionally, the
Examining Attorney notes that Applicant itself admits that “each seal [in Applicant’s
drawing] is so small and the artwork/imagery is so miniature, that a blowup and
magnifying glass would be required before you could figure out what is on the seal.”6
Thus, the Examining Attorney concludes that Applicant’s drawing is not acceptable
as a clear drawing of its mark.7
In response, Applicant points to TRADEMARK MANUAL OF EXAMINING PROCEDURE
(TMEP) § 807.04(a) (Oct. 2018), arguing its drawing need only “be of a quality that
will reproduce satisfactorily for scanning into the US Trademark Office database and
for scanning and printing in the Official Gazette and on the certificate of
registration.” Applicant maintains that its drawing is sufficient for scanning and

5 Examining Attorney’s Brief, 13 TTABVUE 6.
6 Applicant’s Appeal Brief at p. 4 (11 TTABVUE 5).
7 Examining Attorney’s Brief, 13 TTABVUE 7.
Serial No. 87726842
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printing purposes, arguing that it is not “outside of the boundaries of what is legally
required.”8
Additionally, Applicant contends that because the words “legible” and “illegible”
used in the refusal of registration9 do not appear in the wording of Trademark Rule
§ 2.52, there is no legal requirement for a drawing to be presented in a legible manner.
Applicant maintains that the requirement to provide a clear drawing may be satisfied
by either an illegible or legible drawing because the overall commercial impression of
the mark is what is critical, not whether specific portions of the mark are legible or
illegible.10 Noting that the words “legible” and “illegible” are not found in Trademark
Rule § 2.52, Applicant argues what is required is the submission of a “clear drawing
of the mark.” Thus, according to Applicant, the illegible elements of its drawing do
not alter the commercial impression of its applied-for mark and as such, the drawing
satisfies the clear mark drawing requirement.11
However, as set forth in the September 24, 2019 denial of Applicant’s Petition to
the Director, Applicant’s drawing “contains illegible wording and does not show the
design of the seals in clear detail. While petitioner declares the amended drawing

8 Applicant’s Appeal Brief p. 2 (11 TTABVUE 3).
9 See February 20, 2018 Office Action at TSDR 2; September 28, 2018 Office Action at TSDR
3; April 15, 2019 Office Action at TSDR 4; September 27, 2019 Office Action at 2; March 31,
2020 Request for Reconsideration After Final Action Denied at TSDR 2 (“Specifically, the
wording presented around the decorative seals is illegible, as well as detailing on the [s]eals
themselves.”); and June 17, 2020 Request for Reconsideration After Final Action Denied at
TSDR 2 (“Specifically, the wording presented around the top of the bottle, just below the
bottle neck, is illegible. Further, the wording presented around the perimeter of some of the
seals which surround the portraits is illegible.”).
10 Applicant’s Appeal Brief pp. 3-4 (11 TTABVUE 4-5).
11 Applicant’s Appeal Brief pp. 3-4 (11 TTABVUE 4-5).
Serial No. 87726842
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‘uses the maximum number of pixels allowed by the Trademark Office,’12 petitioner
has not communicated an extraordinary situation detailing why it is unable to
provide a master drawing that shows all wording and elements appearing in the mark
in clear detail.” Moreover, the interests of third-parties and the administrative
requirements of the USPTO must also be considered. As explained in the denial of
Applicant’s Petition, third-parties may search USPTO records and rely to their
detriment on Applicant’s unclear and illegible drawing of its mark, and examining
attorneys may conduct searches and take actions that would otherwise be
inappropriate because Applicant’s mark is not accurately depicted in the X-search
database.13
Trademark Rule § 2.52 requires a clear drawing of the mark in an application.
Additionally, a “special form drawing” is required when filing an application seeking
to register a mark, like Applicant’s mark, comprised, in whole or in part, of special
characteristics such as two or three-dimensional designs, color, style(s) of lettering,
or unusual form(s) of punctuation:

12 § 2.53 Requirements for drawings filed through the TEAS.
The drawing must meet the requirements of § 2.52. In addition,
in a TEAS submission, the drawing must meet the following
requirements:
. . .
(c) Requirements for digitized image: The image must be in .jpg
format and scanned at no less than 300 dots per inch and no
more than 350 dots per inch with a length and width of no less
than 250 pixels and no more than 944 pixels. All lines must be
clean, sharp and solid, not fine or crowded, and produce a high
quality image when copied.
13 See September 24, 2019, Petition to Director Denied in the examination file for Applicant’s
mark.
Serial No. 87726842
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§ 2.52 Types of drawings and format for drawings.
A drawing depicts the mark sought to be registered. The
applicant must include a clear drawing of the mark when
the application is filed. . . .
(b) Special form drawing. Applicants who seek to register a
mark that includes a two or three-dimensional design;
color; and/or words, letters, or numbers or the combination
thereof in a particular font style or size must submit a
special form drawing. . . .
(1) Marks that include color. If the mark includes color, the
drawing must show the mark in color, and the applicant
must name the color(s), describe where the color(s) appear
on the mark, and submit a claim that the color(s) is a
feature of the mark.
(2) Three dimensional marks. If the mark has three-
dimensional features, the drawing must depict a single
rendition of the mark, and the applicant must indicate that
the mark is three-dimensional.
. . .
(4) Broken lines to show placement. If necessary to
adequately depict the commercial impression of the mark,
the applicant may be required to submit a drawing that
shows the placement of the mark by surrounding the mark
with a proportionately accurate broken-line representation
of the particular goods, packaging, or advertising on which
the mark appears. The applicant must also use broken
lines to show any other matter not claimed as part of the
mark. For any drawing using broken lines to indicate
placement of the mark, or matter not claimed as part of the
mark, the applicant must describe the mark and explain
the purpose of the broken lines.
(5) Description of mark. A description of the mark must be
included.
. . .
To ensure proper examination, the drawing and description of a trade dress mark,
such as Applicant’s mark, must accurately depict the mark an applicant intends to
register. For example, both the drawing and the description of the mark must clearly
Serial No. 87726842
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indicate those portions that are claimed as part of the mark and those that are not.14
Trademark Rule § 2.52(b)(4), (5), 37 C.F.R. § 2.52(b)(4), (5). If the drawing does not
meet the requirements of Trademark Rule § 2.52, the examining attorney must
require the applicant to submit a substitute drawing and a substitute description of
the mark. TMEP § 1202.02(c).
The Examining Attorney required Applicant to submit a new drawing showing a
clear depiction of the mark, noting that the wording presented around the top of the
bottle, just below the bottle neck, is illegible. Additionally, the wording presented
around the perimeter of the seals surrounding the portraits, the design of the seals,
and the matter within the seals, is all illegible.15 In other words, the Examining
Attorney maintains, the wording around the top of the bottle and the wording
surrounding the portraits and the design of the seals and the matter within the seals
must be shown if it is part of Applicant’s mark.
Applicant argues that “what is important is the commercial impression of the
overall mark, that is, what the ordinary American consumer sees and understands
when they look at the mark in the ordinary course of the marketplace.” Because the

14 The written description of Applicant’s mark appears to be inconsistent with the drawing of
the mark. For example, the written description claims that: “The broken lines depicting the
exterior shape of the bottle, the bottle cap, and the bottom of the bottle indicate placement of
the aforementioned elements on the goods and are not part of the mark.” However, the
drawing of the mark appears to display the exterior shape of the bottle, the bottle cap, and
the bottom of the bottle as part of the mark. The dotted lines in the drawing do not indicate
the exterior shape of the bottle, placement of the bottle cap or the bottom of the bottle.
Additionally, the designation “F 1862 B” appears near the bottom of the bottle and has not
been identified in the written description. Also, the mark description refers to “a silver
rectangular area located between the decorative seals and the bottom of the bottle.” However,
the section of the drawing underneath the seals does not show a silver part of the label; rather
it appears to show a section of the bottle, with a white part of the label underneath.
15 See September 27, 2019 Final Office Action, and March 31 and June 17, 2020 Request for
Reconsideration After Final Action Denied.
Serial No. 87726842
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ordinary consumer does not focus on any specific portion of the mark, or notice
whether any specific portion is legible or illegible, Applicant contends they focus on
the overall impression of the mark. That is why small portions of the mark can be
illegible, since they do not impact the overall commercial impression of the mark.16
However, Trademark Rule § 2.51(b), 37 C.F.R. § 2.51(b), provides in part:
§ 2.51 Drawing Required
In an application under section 1(b) of the Act, the drawing
of the mark must be a substantially exact representation
of the mark as intended to be used on or in connection with
the goods and/or services specified in the application, . . .
Inasmuch as Applicant’s drawing must be a substantially exact representation of the
mark as it is intended to be used on Applicant’s goods, the wording around the top of
the bottle and the wording surrounding the portraits and the design of the seals and
the matter within the seals must be shown.17
Last, Applicant contends that the requirement to provide a single rendition of its
mark under Trademark Rule § 2.52(b)(2) precludes it from providing a fully legible
rendition of its three-dimensional configuration mark.18 However, during prosecution
the Examining Attorney, citing TMEP § 807.10, advised Applicant that it could file a
petition to the Director requesting that the requirement to provide a single rendition
of the mark be waived if Applicant was unable to adequately depict its three-

16 Applicant’s Appeal Brief p. 4 (11 TTABVUE 5).
17 Once an amendment to allege use under Trademark Rule § 2.76 has been filed, the drawing
of the mark must be a substantially exact representation of the mark as used on or in
connection with the goods.
18 Applicant’s Appeal Brief pp. 4-5 (11 TTABVUE 5-6).
Serial No. 87726842
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dimensional configuration mark in a single rendition.19 As set forth in TMEP §
807.10:
If the applicant believes that its mark cannot be adequately
depicted in a single rendition, the applicant may file a
petition under 37 C.F.R. § 2.146 requesting that the rule be
waived.
Thus, Applicant was informed of the exception to the general rule requiring a single
rendition of mark in a drawing, and could have petitioned the Director under
Trademark Rule § 2.146, 37 C.F.R. § 2.146, to waive the requirement and accept a
drawing featuring multiple views of the mark. See TMEP §§ 1011.04, 1202.02(c)(iv).
But, Applicant did not do so.
Because Applicant’s drawing does not satisfy the requirement to provide a clear
drawing of the mark as set forth in Trademark Rule § 2.52, registration is refused.

Decision: The refusal to register Applicant’s mark is affirmed.

19 See February 20, 2018 Office Action (“For marks consisting of a configuration of the goods
or their packaging or a specific design feature of the goods or packaging, the drawing must
depict a single three-dimensional view of the goods or packaging, showing in solid lines those
features that applicant claims as its mark. See 37 C.F.R. § 2.52(b)(2); TMEP §§ 807.10,
1202.02(c)(iv); . . . . If the mark cannot be adequately depicted in a single rendition, applicant
must file a petition to the Director requesting that the requirement to provide a single
rendition of the mark be waived. TMEP §807.10.”); the same language regarding the option
of filing a petition to the Director was subsequently mentioned in September 28, 2018 Office
Action.