U.S Trademark Registration Process: Avoiding A Specimen Trap

In a predictable case before the U.S. Trademark Trial and Appeal Board involving the mark DELI EXPRESS SAN LUIS, the Board held that Applicant’s applied-for mark was not a substantially exact representation of the mark as used on the packaging for the goods. Accordingly, the Board denied registration.

Applicant, E.A. Sween Company, sought registration of the mark “DELI EXPRESS SAN LUIS” (shown below) for burritos; snack cakes; and snack rolls, namely sweet rolls.

In the United States, trademark applications based upon use of a mark in commerce require the filing of a specimen of use (i.e., packaging for goods or advertising materials for services depicting the applied-for mark). The applied-for mark and mark appearing on the specimen of use must be substantially exact. Meaning consumers must perceive the applied-for mark as used on the specimen as having the same overall commercial impression. 

The examining attorney handling the application argued that the applied-for mark as shown on the packaging depicts two separate trademarks; thus two different commercial impressions. Accordingly, the examining attorney refused registration of the mark. Applicant appealed that decision.

The question on appeal was whether consumers would perceive the applied-for mark as a unitary whole or as two separate marks. In support of its case on appeal, Applicant noted that it is the owner of two registrations, one for the mark DELI EXPRESS and one for SAN LUIS. Applicant then argued that its applied-for mark is a composite of its registered marks and that, pursuant to trademark rules and regulations, it is “free to choose the elements of its composite mark that it wants to register.”

In evaluating the use of the mark on the specimen, the Board noted that a portion of the applied-for mark consisting of DELI EXPRESS appears in the top left corner of the package in a red and yellow border. The Board further noted that a portion of the applied-for mark consisting of SAN LUIS appears to the right with a green background following a stylized yellow triangle.

The Board concluded that consumers would perceive the applied-for mark as two separate marks. The Board rendered its decision based upon the following factors:

1. The term DELI EXPRESS is not only in a different font but is contained within a yellow background, and then a larger red background, separated from the remainder of the packaging design by a black bar outlining the top left corner of the package.

2. The term SAN LUIS is outside of the DELI EXPRESS border and is further separated by a fanciful triangle and placed upon a green background.

Do you perceive the mark on the packaging as a single mark? I surely don’t. In my opinion, this appeal was DOA. Given the facts of this case, wouldn’t it have been a wiser decision to simply re-file the application with an acceptable specimen then take the savings and enjoy a relaxing vacation in San Luis?

Ten Essential Rules for Internet Brand Names

1. Make sure that the .com domain name is available.  Only select names that will correspond to a .com domain name. Consumers will head straight to the .com. Have you ever entered .net or .biz in a URL? I haven’t. And if I can’t find the web site on my first try, I jump to Google®. If the .com domain is not available, select a different name and don’t fall victim to the “hyphenated” domain name. Have you ever used – or thought of using – a hyphen in a domain name?

2. Keep it short and simple.  With all of today’s advertising noise and clutter, keeping the name short and simple is critical. Difficult-to-remember domain names are likely to result in misspellings, which may result in the loss of revenues to “typo-squatters.” Typo-squatters will “steal” your misspelled domain name and divert Internet traffic from your web site while generating revenue in the process. Don’t let that happen to you. Some of the best short and easy-to-remember Internet brand names are Yahoo, Amazon, Yelp and Woot.

3. Select a name that is alliterative.  Brand names that are alliterative are easy to remember. Dunkin Donuts, Kristy Kreme, Blackberry and Roto Rooter are all good examples.

4. Select a name that is speakable.  A name that is speakable is also easy to remember. Speakable names tend to receive more word-of-mouth advertising. Speakable names include Sears, Colgate, Pepsi and AeroMotive. Unspeakable names include Tokico, PLP and Chipolte. Names that are difficult to pronounce are difficult to remember, which spells disaster.

5. Spellability.  Be sure that your Internet brand name is easy to spell. Hard to spell domain names tend to lose Internet traffic for their owners. They also tend to be victims of Internet pirates a/k/a “typo-squatters.”

6. Suggestive names.  Names that are suggestive of the product category will tend to attract customers and may even help build customer loyalty. A suggestive name helps customers identify the attributes of a product and what a brand represents. Suggestive names include Die Hard, Close Up and Block Buster.

7. Reserve other domain name extensions.  Registering the .com domain name is critical. But don’t forget to make defensive registrations for other extensions, including .net, .biz and .mobi. Registering other domain name extensions is an inexpensive way to defend against third parties from registering your brand names with other extensions and then profiting from them.

8. Reserve domain names for commonly misspelled terms.  If your name can be spelled in several different ways, be sure to register, at a minimum, the .com domain name for that common misspelling. Reserving common misspellings of your brand name is another inexpensive way to prevent Internet pirates from diverting Internet traffic from your site.

9. Don’t forget to renew your domain name.  Failing to renew a domain name can result in its loss. Not good for an Internet company! If you can afford it, apply for the longest possible term, and then calendar the renewal date.

10. Don’t fall victim to domain name renewal scams.  Don’t rely upon third-party services to renew your domain name unless you have an existing relationship with that company. Unsolicited renewal invitations should be ignored. Some of those unsolicited renewal invitations are scams. Some of those companies will simply take your money and not pay the renewal resulting in the loss of your domain name.  Internet companies that lose their domain names lose what may be their most valuable assets.