Cashflow Technolo-gies, Inc.

Trademark Trial and Appeal Board

Mar 2, 2005

No. 75665000 (T.T.A.B. Mar. 2, 2005)

Mailed:
March 2, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Cashflow Technologies, Inc.
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Serial No. 75665000
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David E. Rogers of Squire, Sanders & Dempsey L.L.P. for
Cashflow Technologies, Inc.

Curtis W. French, Trademark Examining Attorney, Law Office
115 (Tomas Vlcek, Managing Attorney).
_______

Before Seeherman, Walters and Holtzman, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Cashflow Technologies, Inc. has applied to register
the mark shown below for “books for financial education.”1

1 Application Serial No. 75665000, filed March 22, 1999.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75665000
2
The application was filed pursuant to Section 1(b) of the
Trademark Act, based on applicant’s asserted bona fide
intention to use the mark in commerce. Applicant
subsequently, after receiving a Notice of Allowance, filed
a Statement of Use, along with the specimen shown below.

The Examining Attorney refused registration on the basis
that the specimen did not support use of the mark shown in
the drawing. The Examining Attorney required that
applicant submit substitute specimens along with a
declaration that they were in use in commerce prior to the
expiration of the time allowed to the applicant for filing
a statement of use. The Examining Attorney further advised
applicant that it could not simply amend the drawing to
conform to the specimen, as such an amendment would
Ser No. 75665000
3
constitute a material alteration of the mark.2 When the
refusal was made final, applicant filed the instant appeal.
The appeal has been fully briefed. Applicant did not
request an oral hearing.
We affirm the refusal.
Trademark Rule 2.51(b) provides that (emphasis added):
(b) 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, and once an amendment to allege use
under §2.76 or a statement of use under §2.88 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 and/or
services.

Applicant has asserted that all that is required
is that the two forms of the mark shown in the drawing
and the specimen create the same general commercial
impression, citing Visa International Service
Association v. Lifer Code Systems, Inc., 220 USPQ 740
(TTAB 1983). In fact, the language in that decision,
which deals with whether an amendment to the drawing
would constitute a material alteration, is that “the
new form must create the impression of being

2 Although applicant has couched its arguments in terms of the
specimen not being a material alteration of the mark shown in the
drawing, in fact, the question is whether the mark shown in the
drawing is supported by the specimen.
Ser No. 75665000
4
essentially the same mark.” Id. at 743.3 See also, In
re The Wine Society of America, Inc., 12 USPQ2d 1139
(TTAB 1989); In re Nationwide Industries inc., 6 USPQ2d
1882 (TTAB 1988); In re Pierce Foods Corporation, 230
USPQ 307 (TTAB 1986).
As noted above, Trademark Rule 2.51(b) requires that
the mark shown in the drawing must be a substantially exact
representation of the mark as used on the goods. It is
obvious from just a cursory viewing of the mark shown in
the drawing and the mark shown in the specimen (shown side-
by-side below) that the drawing is not a substantially
exact representation of the mark as used on the goods.

3 This decision involved an interpretation of Trademark Rule
2.72, which the decision stated provided that: "Amendment may not
be made if the nature of the mark is changed thereby." It should
be noted that Trademark Rule 2.72(b)(2) was subsequently changed
to provide, in part, that the drawing may be amended only if “the
proposed amendment does not materially alter the mark. The
Office will determine whether a proposed amendment materially
alters a mark by comparing the proposed amendment with the
description or drawing of the mark filed with the original
application.”
Ser No. 75665000
5

There is a clear difference in the way the “plus” sign is
depicted, such that this element in the specimen would not
even be described as a plus sign. The orientation of the
overall mark is different, with the mark in the specimen
being perhaps 30° from the vertical, while the mark is the
drawing is shown as a true vertical. The mark as shown in
the specimen contains a ribbon design which wraps around
the letters and the “plus” sign, and ties everything
together. (Because of this, we disagree with applicant’s
assertion that the ribbon design is merely a background
design.) In the mark shown in the drawing, the ribbon
design is totally absent. The mark in the drawing looks
like a flat, two-dimensional typeset representation, while
the mark in the specimen has a three-dimensional aspect.
Perhaps if there were a change in only one of these
elements the mark shown in the drawing might still be
Ser No. 75665000
6
considered a substantially exact representation of the mark
shown in the specimen. But when all of these differences
are combined, the overall impression of the two marks is
not substantially the same. The mark in the drawing has a
minimalist look, with the letters being the focus of the
mark. The mark as shown in the specimen, however, conveys
a more lyrical impression, and the design elements have a
significant presence.
Both applicant and the Examining Attorney have cited
various cases that discuss whether or not an amendment to a
drawing would be considered a material alteration, or
whether or not a specimen supports use of the mark shown in
the drawing. Although each case recites certain
principles, the application of the principles varies
according to how the particular marks/proposed
amendments/specimens are perceived. The cases dealing with
word marks, in particular, have relatively little
application to the present situation, since the mark
involved herein is essentially a stylized letter mark. As
the Court of Appeals for the Federal Circuit observed in a
different situation, “the nature of stylized letter marks
is that they partake of both visual and oral indicia.” In
re Electrolyte Laboratories, Inc., 913 F.2d 930, 16 USPQ2d
1239, 1240 (Fed. Cir. 1990).
Ser No. 75665000
7
We also note that applicant has filed applications and
owns registrations for various versions of its EBSI mark.4
Among these are registrations for both the mark shown in
the drawing in this application5 and for the mark as shown
in the specimen (but without the ribbon design),6 both for
“audio tapes and videos for financial education.” The fact
that applicant applied for and obtained registrations for
both marks indicates that applicant did not regard these
marks as being essentially the same. Moreover, since the
USPTO does not issue registrations for the same mark, it is
clear that the USPTO did not regard the marks as being the
same. See Ex parte The International Nickel Company, Inc.,
113 USPQ 351 (Com’r Pats 1957).
Decision: We affirm the refusal of registration.

4 In the first Office action, the Examining Attorney refused
registration on the ground that applicant’s mark was likely to
cause confusion with Registration No. 1907108 for the mark GROUPE
EBSI. Applicant then filed a petition to partially cancel this
registration (which resulted in a default judgment), and provided
the Examining Attorney with a copy of the petition to cancel.
The petition for cancellation lists applicant’s applications and
registrations.
5 Reg. No. 2834726.
6 Reg. No. 2681509.