Green U.O.D., Inc.

Trademark Trial and Appeal Board

Mar 31, 2008

No. 76615858 (T.T.A.B. Mar. 31, 2008)

Mailed: March 31, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

In re Green U.O.D., Inc.
_______

Application Serial No. 76615858
_______

William J. Lehane of Drinker, Biddle & Reath LLP, for Green
U.O.D., Inc.

Angela Micheli, Examining Attorney, Law Office 101, (Ronald
R. Sussman, Managing Attorney).
_______

Before Holtzman, Rogers, and Mermelstein, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

U.O.D., Inc. filed an application for registration of
the mark URBAN RENEWAL (in standard characters) for “antique
furniture” in International Class 20.1
Following publication for opposition and issuance of a
notice of allowance, applicant filed a statement of use
pursuant to Trademark Rule 2.88. Upon examination of the
statement of use, the examining attorney found that the
drawing was not a substantially exact representation of the
mark as used on the specimens. Trademark Rule 2.51(a).
Inasmuch as the drawing could not be altered to resolve the

1 Filed October 8, 2004, alleging a bona fide intent to use the
mark in commerce under Trademark Act § 1(b); 15 U.S.C. § 1051.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Application No. 76615858
2
discrepancy without material alteration, Trademark Rule
2.72(b)(2), the examining attorney issued and ultimately
made final a requirement for substitute specimens.2
The specimen of use filed by applicant is reproduced
below:3

It is the examining attorney’s contention that the mark
used on the specimen is URBAN RENEWAL AT HOME, and not the
mark in the drawing, URBAN RENEWAL:

2 The examining attorney objected to material attached to
applicant’s brief, which had not been made of record prior to
appeal. Applicant responds: “With all respect to the Examining
Attorney, it is this Board’s prerogative to decide what matters
it will consider.” Reply Br. at 2. To the extent applicant
implies that it was improper for the examining attorney to
object, it is mistaken. The objection is sustained, Trademark
Rule 2.142(d), and the attachments will not be considered.
3 Applicant identifies the specimen as a hang tag, printed on
white paper (here against a dark background), which is affixed to
Application No. 76615858
3
Firstly, the AT HOME has the same type font and
color as the URBAN RENEWAL portion, and the
wording is in close proximity to each other.
Secondly, the font size for URBAN RENEWAL and HOME
is the same which creates a visual unitary phrase
rather than two separate and distinct elements.
Thirdly, the phrase flows together, suggesting
that urban renewal starts at home by purchasing
the applicant’s goods, used furniture[,] which is
emphasized by the other wording on the specimen
“This item was previously owned.”

Ex. Att. Br. at 3.

Applicant disagrees, arguing that the words URBAN
RENEWAL create a separate commercial impression from the
other matter on the specimen – here, the words AT HOME.
Applicant argues that
In this case, the mark URBAN RENEWAL is not only
capable of functioning but does, in fact, function
as a valid mark for the identified goods and
distinguishes applicant’s goods from all others.
[The examining attorney] has focused on whether
the inclusion and positioning of the words “at”
and “HOME” on the specimen somehow detract from
and even destroy the obvious registrability of the
mark.... While it is certainly part of the
Examining Attorney’s duties to review submitted
specimens, neither the statute, nor the Rules of
Practice, nor the cases grant the Examining
Attorney the prerogative to negate the Applicant’s
choice of its mark. On the contrary, the statute,
the rules and the case law support Applicant’s
right to seek and secure registration of this mark
regardless of the other wording on the specimen.

Appl. Br. at 4.
We reject applicant’s statement that “the real issue is
whether the trademark owner seeks to register a valid
mark....” Appl. Br. at 3 n.2. To be clear, there is

the goods.
Application No. 76615858
4
nothing “invalid” about either the mark depicted in the
drawing or the mark as used on the specimens, however it is
construed. The question is only whether the mark on the
drawing appears as the same mark, or substantially so, on
the specimen. Although couched as a rejection of the
specimens, the examining attorney’s refusal is actually a
rejection of the drawing, on the ground that it is not a
substantially exact depiction of the mark as actually used.
The right to registration follows the right to use and not
the other way around. The examining attorney’s argument is
not that applicant is using the wrong mark, but rather that
the mark in the drawing is not the mark which applicant
uses. This usually appears to be a specimen issue, first,
because it is not manifest until the specimens are filed and
second, because the refusal can usually be overcome only by
new specimens, as the drawing may not be materially altered.
Nor do we see the examining attorney as trying to
“negate the Applicant’s choice of a mark.” Before an
applied-for mark may be registered under Trademark Act § 1,
it must be in use. The examining attorney must examine the
specimens to determine if the mark in the drawing is the one
in use, and if not, to refuse registration. This is not a
prerogative, it is a statutory requirement.
Turning to the merits of the matter, we begin with the
remarks of the Court of Customs and Patent appeals:
Application No. 76615858
5
Most trade mark cases may be distinguished from
one another without much difficulty because of the
usual difference in facts. The citation of a case
or an array of cases is therefore of little value,
except for whatever may be contained therein with
respect to the statement or application of a
principle of trade mark law.

In re Servel, Inc., 181 F.2d 192, 85 USPQ 257, 260-61 (CCPA
1950). The Court made its observation in reviewing the same
type of refusal we now consider. These cases are nuanced,
highly fact-specific and, to a large extent, subjective.4
“In an application under section 1(a) of the Act, the
drawing of the mark must be a substantially exact
representation of the mark as used on or in connection with
the goods....” Trademark Rule 2.51(a). If the drawing is
not a complete representation of the trademark, i.e., if the
drawing includes less than the mark which is actually used,
registration must be refused. See generally TRADEMARK MANUAL
OF EXAMINING PROCEDURE § 807.12(d) (5th ed. 2007). But this
principle raises an obvious question: what mark is applicant
actually using? The answer is sometimes not clear, because
it is not at all unusual for specimens to comprise multiple
trademarks, artwork, and other matter, whether registrable
or not.

4 We have reviewed the cases cited by applicant and the examining
attorney. As suggested by the Court, however, we will not
belabor this opinion with an exegesis on each case and the marks
involved therein. We concentrate instead on basic principles and
the facts of this case.
Application No. 76615858
6
Needless to say, it is up to the applicant to choose
what it seeks to register. But what applicant wants to
register must not only be in use, it must make a distinct
commercial impression as used.5 That is, the applied-for
mark as actually used must not be so entwined (physically or
conceptually) with other material that it is not separable
from it in the mind of the consumer. In re Chem. Dynamics
Inc., 839 F.2d 1569, 5 USPQ2d 1828, 1830 (Fed. Cir. 1988).
In this case, the question is whether URBAN RENEWAL, as used
on applicant’s specimens, makes a separate impression from
the words “AT HOME,” which follow immediately thereafter, or
whether the mark would necessarily (and only) be seen to be
URBAN RENEWAL AT HOME.
This is admittedly a close case. The examining
attorney makes valid points regarding the general
consistency of the wording in appearance and its continuity,
both visually and conceptually. Nonetheless, we find that
there is at least some doubt involved, and that it is
appropriate to resolve such doubt in applicant’s favor.
As noted by the examining attorney, the wording URBAN
RENEWAL and HOME are depicted on the same visual plane and
in generally the same size and style of lettering. However,
URBAN RENEWAL and HOME are separated on the specimen by the

5 “[I]t is well settled that an applicant may seek to register
any portion of a composite mark if that portion presents a
separate and distinct commercial impression....” In re 1175856
Application No. 76615858
7
word “AT,” which is displayed in smaller, lowercase letters.
Moreover, “AT” in this case is not on the same visual plane
as URBAN RENEWAL and HOME, and thus provides both a visual
and conceptual separation between them.
Rather than implying that “urban renewal” (which to us,
connotes large public projects aimed at rejuvenating
blighted city neighborhoods) “begins at home,” the mark
seems to convey another idea, namely that URBAN RENEWAL (the
brand) will provide goods for your home. Under our
interpretation, the wording “at home” would thus suggest
where the URBAN RENEWAL goods could be used. But the
purchaser will likely see “at home” as just one place where
applicant’s goods are used; “at home” could be replaced by
other locations, such as “at work” or “at play.” With that
conception of the mark, “URBAN RENEWAL” takes on a separable
meaning from AT HOME.6
Conclusion
After careful consideration, we find that the term
URBAN RENEWAL, used as on the specimens of record, creates a
distinct commercial impression from the other matter used on

Ontario Ltd., 81 USPQ2d 1446, 1448 (TTAB 2006).
6 We need not and do not comment on whether applicant could have
(or could still) apply for registration of URBAN RENEWAL AT HOME
using the same specimens as its evidence of use. “[I]n a § 1
application, an applicant has some latitude in selecting the mark
it wants to register. The mere fact that two or more elements
form a composite mark does not necessarily mean that those
elements are inseparable for registration purposes.” TMEP
§ 807.12(d) (5th ed. 2007)
Application No. 76615858
8
the specimen. As such, we conclude that the drawing is a
substantially exact representation of the mark as used.
Decision: The refusal to register is accordingly
reversed.