1202.19(g)    Refusal – Application Seeks Registration of More than One Mark

As explained in TMEP §1202.19(a)(iii), a swatch-type drawing is acceptable only if the applicant has submitted sufficient evidence to establish that the mark is applied to various items but that these various uses of the repeating pattern nonetheless create the same commercial impression.

1202.19(g)(i)    Statutory Basis for Refusal

In the absence of the evidentiary showing discussed in TMEP §1202.19(a)(iii), a swatch-type drawing is deemed to encompass numerous versions of the mark, each of which may create a different commercial impression, and thus the examining attorney must refuse registration under Trademark Act Sections 1 and 45, 15 U.S.C. §§1051,  1127, on the ground that the application seeks registration of more than one mark. See In re Int'l Flavors & Fragrances Inc., 183 F.3d 1361, 1366, 51 USPQ2d 1513, 1516 (Fed. Cir. 1999) ("[U]nder the Lanham Act and the rules promulgated thereunder, a trademark application may only seek to register a single mark."); TMEP §1214.01; cf. In re Hayes, 62 USPQ2d 1443, 1445 (TTAB 2002) (noting that a trademark application may only seek to register a single mark and affirming refusal of registration on the basis that applicant’s mark description described more than one mark); In re The Upper Deck Co., 59 USPQ2d 1688, 1689-91 (TTAB 2001) (affirming refusal to register a mark described as "a hologram device which is applied to . . . trading cards" because the mark could encompass many different holograms having various shapes, sizes, and contents, and thus the application sought to register more than a single mark); In re Elvis Presley Enters., 50 USPQ2d 1632, 1633-34 (TTAB 1999) (affirming refusal to register a mark described as "the likeness and image of Elvis Presley" because the drawing failed to convey a substantially exact representation of the mark and, given that the mark could encompass numerous likenesses of Elvis, the application sought to register more than a single mark).

1202.19(g)(ii)    Response Options

In response to this refusal, the applicant may amend the swatch-type drawing to depict the mark on a particular item; amend the mark description to describe the placement of the mark on that item; and, if necessary, amend the identification to delete any goods or services that are inconsistent with the drawing (see TMEP §1202.19(f)).