807.12(a)   Applications Under §1 of the Trademark Act

For applications under §1 of the Trademark Act, the drawing must always be compared to the specimen of record to determine whether they match.  See 37 C.F.R. §2.51(a–(b).  The first step is to analyze whether the mark in the drawing is a substantially exact representation of the mark shown on the specimen.

In an application filed under §1(a) of the Trademark Act, the drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods/services, as shown by the specimen.  37 C.F.R. §2.51(a); see 37 C.F.R. §2.72(a)(1).

In an application filed under §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/services and as actually used, as shown by the specimen filed with the amendment to allege use or statement of use.  37 C.F.R. §2.51(b); see 37 C.F.R. §2.72(b)(1).

If the mark in the drawing is not a substantially exact representation of the mark shown in the specimen, the second step is to determine whether an amendment of the drawing to agree with the mark shown on the specimen would be a material alteration of the mark in the original drawing.  If the answer is "no," the applicant must submit either an amended drawing or a substitute specimen.  If the answer is "yes," the applicant must submit a substitute specimen and no amendment of the drawing is allowed.  See 37 C.F.R. §2.72(a)–(b). See TMEP §§807.14–807.14(f) for information about material alteration.

Extraneous matter shown on the specimen that is not part of the mark (e.g., the symbols "TM" or "SM," the registration notice ®, the copyright notice ©, or informational matter such as net weight or contents) may not be shown on the drawing.  See TMEP §807.14(a) regarding deletion of non-distinctive matter.

See TMEP §1214.02 regarding the agreement of the mark on the drawing with the mark on the specimen in an application that seeks registration of a mark with a "phantom" or changeable element, and TMEP §1215.02(c) regarding the agreement of the mark on the drawing with the mark on the specimen in an application that seeks registration of a domain name mark.

807.12(a)(i)   Role of Punctuation in Determining Whether Mark on Drawing Agrees with Mark on Specimen

In assessing discrepancies in punctuation between the mark on the drawing and the mark shown on the specimen, the general rules are that:

  • (1)   Extraneous, non-distinctive punctuation that appears on the specimen may be omitted from the mark on the drawing, because an acceptable specimen may contain additional matter used with the mark on the drawing, so long as the mark on the drawing makes a separate and distinct commercial impression apart from the other matter.  See TMEP §807.12(d) and cases cited therein regarding "mutilation" of the mark.
  • (2)   Punctuation in the mark on the drawing must also appear on the specimen because a mark sought to be registered under §1 must be "used in commerce," and if the punctuation on the drawing does not appear on the specimen, the mark on the drawing is not used in commerce.

See TMEP §1215.08(c) regarding the addition or deletion of a "." in marks for domain name registry or registration services.

807.12(a)(ii)   Punctuation on the Drawing but Not on the Specimen

If a drawing contains punctuation, the elements of punctuation are presumed to be part of the mark.  Thus, if there is punctuation in the mark on the drawing, the punctuation must also appear on the specimen or the drawing is not considered to be a substantially exact representation of the mark as used in commerce.  If deletion of the punctuation from the drawing does not alter the commercial impression, the drawing may be amended to match the specimen.  If deletion of the punctuation changes the commercial impression, i.e., constitutes a material alteration, the applicant must submit a substitute specimen to match the original drawing.    See TMEP §§807.14–807.14(f) regarding material alteration.

For example, if the mark on the drawing is "ALL THE KING’S MEN," and the mark on the specimen is ALL THE KING’S MEN, the mark on the drawing is not a substantially exact representation of the mark as used in commerce.  Since the deletion of the quotation marks from the drawing would not change the commercial impression of the mark, the drawing may be amended to match the specimen.  The applicant has the option to either:  (1) amend the drawing to delete the punctuation; or (2) submit a new specimen showing use of the mark with the punctuation.

However, if the mark on the drawing is GOT MILK?, and the mark on the specimen is GOT MILK, the deletion of the punctuation from the drawing would constitute a material alteration because it changes the commercial impression from a question to a statement.  Therefore, the drawing may not be amended and the applicant must submit a substitute specimen that includes punctuation in order for the drawing to be a substantially exact representation.  See id.

807.12(a)(iii)   Punctuation on the Specimen but Not on the Drawing

Generally, extraneous, non-distinctive punctuation marks that appear on the specimen may be omitted from the drawing, if the matter on the drawing makes an impression separate and apart from the punctuation marks that appear on the specimen.  See TMEP §807.12(d).  For example, if the mark on the drawing is HOME RUN, and the mark on the specimen is "HOME RUN," the drawing is considered a substantially exact representation of the mark as used on the specimen.  The quotation marks on the specimen are nondistinctive and do not change the commercial impression of the mark, so it is unnecessary to amend the drawing or require a substitute specimen.

However, in rare instances, the punctuation marks on the specimen result in a mark with a different commercial impression than the mark shown on the drawing.  For example, if the mark on the specimen is PREGNANT?, and the mark on the drawing is PREGNANT, the mark on the drawing is not a substantially exact representation of the mark as actually used.  The question mark on the specimen transforms the word PREGNANT from a mere statement to a question, and, therefore, changes the commercial impression of the mark.  Moreover, the drawing cannot be amended to add the punctuation because it would result in a material alteration.  Therefore, the applicant must submit a new specimen showing the mark without the punctuation. In re Guitar Straps Online LLC, 103 USPQ2d 1745, 1751-52 (TTAB 2012) (finding the mark GOT STRAPS on the drawing not a substantially exact representation of the mark GOT STRAPS? on the specimen). See TMEP §§807.14–807.14(f).