Honda Motor Co., Ltd.

Trademark Trial and Appeal Board

Feb 23, 2009

No. 77044023 (T.T.A.B. Feb. 23, 2009)

Mailed: February 23, 2009

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

In re Honda Motor Co., Ltd.
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Application Serial No. 77044023
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Anthony L. Fletcher of Fish & Richardson P.C. for Honda
Motor Co., Ltd.

April K. Roach, Examining Attorney, Law Office 115 (J. Brett
Golden, Managing Attorney).
_______

Before Bucher, Zervas, and Mermelstein, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:
Honda Motor Co., Ltd. filed an application for
registration of the mark ACURA RL (in standard characters)
for “automobiles and structural parts therefor” in
International Class 12.1 The examining attorney has refused
to register the mark in light of her final requirement for
an acceptable specimen of use.
We affirm.

1 Filed November 14, 2006, alleging first use and use in commerce
at least as early as October 31, 2004.
Application No. 77044023
I. Evidentiary Matter
Before turning to the substance of the appeal, we
address the examining attorney’s objection to the evidence
attached to applicant’s brief.
The examining attorney’s final office action was issued
on December 19, 2007. Under the applicable rules, applicant
was allowed six months in which to (1) file a request for
reconsideration of the final requirement, submitting any
appropriate evidence, argument, or amendment to put the
application in condition for approval, Trademark Rule
2.64(b); or (2) file a notice of appeal, Trademark Rule
2.64(a). These options were not exclusive; applicants can
(and quite frequently do) file both a request for
reconsideration and a notice of appeal. In this case,
applicant filed its notice of appeal on June 19, 2008, the
last day available to do so, but did not file a request for
reconsideration at any time after issuance of the final
office action.
Three days before its brief was due, applicant
requested an extension of time “to review the record,
applicable precedents and, possibly, other material to write
the necessary brief ... with sufficient thought and research
to be most useful to the Board....” Req. to Extend (Aug.
15, 2008). The Board granted applicant’s request.
Nonetheless, instead of filing its appeal brief on the new
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Application No. 77044023
due date, applicant instead filed a motion to remand the
file to the examining attorney to consider approximately
twenty-one pages of new evidence. Applicant claimed the
reason the proffered evidence had not been submitted during
examination was that during examination, the examining
attorney required a proper specimen, but never specifically
advised the applicant that it could submit evidence or
argument in an attempt to convince the examining attorney
that the requirement itself was incorrect.
“The record in the application should be complete prior
to the filing of an appeal.” Trademark Rule 2.142(d).
Unlike the case with a request for reconsideration filed
prior to appeal (which will be entered into the record and
considered as a matter of course), a request to remand for
further examination in light of new evidence after an appeal
is filed will only be granted upon a showing of good cause.
In re Big Wrangler Steak House, Inc., 230 USPQ 634, 636, n.4
(TTAB 1986); In re Chung, Jeanne & Kim Company, Inc., 226
USPQ 938, 940, n.6 (TTAB 1985) (“Ordinarily, the Board will
not consider evidence submitted after appeal unless it is
accompanied by a request to suspend and remand where an
applicant shows good cause for its failure to timely
introduce the evidence.”); TRADEMARK BOARD MANUAL OF PROCEDURE
(TBMP) § 1207.02 (2d ed. rev. 2004).
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Application No. 77044023
Upon consideration of applicant’s request for remand,
the Board Paralegal Specialist found that applicant had not
shown good cause for a remand. The grounds for applicant’s
request were not among those the Board typically finds to
constitute good cause for a remand. Further, “[a]lthough
the Examining Attorney did not specifically invite applicant
to submit arguments or evidence to traverse the
refusal/requirement, it strains credulity to believe that
applicant was unaware that it could do so.” Order at 2
(Sep. 5, 2008).
Applicant filed its appeal brief on October 6, 2008.
Notwithstanding the Board’s denial of applicant’s remand
request, applicant attached to its brief approximately
eighty-seven pages of evidence in support of its argument
that the examining attorney’s requirement for a new specimen
was improper. The examining attorney objected to this
evidence in her brief. In its reply brief, applicant now
admits that it
was not unaware that it was within its right to
attempt to argue with the Examiner, and, perhaps
in retrospect it should have. However, the
decision was made at the time, not in retrospect.
And experience has taught many practitioners that
arguing with Examiners about subjective judgments
is very rarely productive.

Reply at 2.
We see no error in the Paralegal Specialist’s order.
We think it is obvious, as applicant now recognizes, that an
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Application No. 77044023
applicant always has the option to submit evidence and
argument in response to an office action.2 The evidence
applicant now wants the Board to consider could have been
submitted after the examining attorney’s Priority Action or
during the six months after the Final Office Action which
applicant had to file its notice of appeal. Had applicant
done so, the evidence would have been in the record prior to
appeal.
Applicant offered no reasonable explanation for why it
had not submitted this evidence earlier. Applicant now
argues that it may have been counter-productive to do so
because applicant feared that the examining attorney might
be stubborn. But whether timely submission of applicant’s
evidence would have resulted in the examining attorney’s
withdrawal of the requirement is beside the point; the Board
does not examine applications, and we will not consider
evidence which has not been previously considered by the
examining attorney.
Accordingly, the examining attorney’s objection is
well-taken as the evidence attached to applicant’s brief is
untimely. The evidence will be disregarded, along with
those portions of applicant’s brief which discuss it.

2 We believe these options would have been obvious to any
applicant or its counsel. Even if they were not, however, we
note that applicant’s counsel in this case has decades of
experience practicing before the USPTO, and was clearly aware of
his choices in responding to an office action.
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Application No. 77044023
II. Specimens
Applicant submitted two specimens in support of its
application. Submitted with its application, the original
specimen appears as follows:

Upon examination, the examining attorney advised
applicant that
… [r]egistration is refused because the
application seeks registration of more than one
mark. An applicant may apply for only mark in a
single application.

Elements of the mark on the drawing page
appear as two separate marks on the specimen.
Specifically, the drawing page shows: the mark as
“ACURA RL”. However, the specimen shows these
elements separated to such a degree that they
appear as separate marks.

Priority Action (Apr. 2, 2007) (citations omitted).
In response to the Priority Action, applicant submitted
the following substitute specimen (the cover of the owner’s
manual for the identified goods), supported by an affidavit
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Application No. 77044023
confirming that the specimen was in use at least as early as
the filing date of the application:

The examining attorney found the substitute specimen
inadequate for the same reason, and issued a final action
requiring an appropriate specimen:
The refusal to register pending receipt of an
acceptable specimen because the application seeks
registration of more than one mark is made final.
An applicant may apply for only one mark in a
single application.

Elements of the mark on the drawing page
appear as two separate marks on the substitute
specimen. Specifically, the drawing page shows
the following elements: “ACURA RL”. However, the
specimen shows these elements separated to such a
degree that they appear as separate marks.
Specifically, applicant’s substitute specimen
shows the wording “ACURA” just below a graphic on
the top right side of the manual and the wording
“RL on the bottom right side, separated by
significant empty space and the year “2004”.

Final Office Action (Dec. 19, 2007) (citations omitted).
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Application No. 77044023
III. Discussion
“An application under section 1(a) of the Act ... must
... include one specimen showing the mark as used on or in
connection with the goods....” Trademark Rule 2.56(a). The
application must also include a drawing of the mark, which
“must be a substantially exact representation of the mark as
used on or in connection with the goods....” Trademark Rule
2.51(a). In other words, the drawing and specimen must
agree.3
This case is “on all fours” with our decision in In re
Audi NSU Auto Union AG, 197 USPQ 649 (TTAB 1977). In Audi,
the applicant sought registration of a mark depicted in the
drawing accompanying the application as follows:

Applicant’s specimen showed use of the mark as follows:

3 When the drawing and specimen do not agree, an applicant may
amend the drawing to conform to the specimen if the amendment
does not constitute a material alteration the mark in the
original drawing, Trademark Rule 2.72(a). Alternatively, the
applicant may file a substitute specimen which conforms to the
drawing, Trademark Rule 2.59(a). The “material alteration”
standard is not an issue in this case because applicant has not
attempted to amend its drawing. See In re Yale Sportswear Corp.,
88 USPQ2d 1121, 1123, n.3 (TTAB 2008).
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Application No. 77044023

Note that the word “AUDI” appears over the left tail
light, while the word “FOX” and the stylized fox-head design
appear over the right. As in the case at bar, the examining
attorney in Audi refused registration because the specimen
showed use of two separate marks: “AUDI,” on the one hand,
and “FOX” and design, on the other.
On appeal, the Board held that
[t]he likely impact produced by a mark or by two
marks on the purchasing public has to be assessed
in the light of the way in which the relevant
purchasing public has been conditioned to perceive
other marks in the industry. It is a matter for
judicial notice that automobiles in this country
are most often sold under dual designations, the
house or divisional mark and the line mark. ...
In view of this common, indeed pervasive practice,
which is followed by foreign-based manufacturers
of cars exported to the United States ... we
believe the average person would regard “AUDI” and
“FOX” and design as two separate marks, the first
as a house mark and the second as a line mark for
the “FOX” series of vehicles produced by Audi.
... This does not, however, rule out the
possibility of combining two marks into a single
composite mark if the specimens show that the
composite projects a unitary commercial
impression. Everything depends on the specimens,
which, in this case, show the use of two discrete
marks.

Much has been made of the space between
“AUDI” and “FOX” and design on the lid of the
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Application No. 77044023
car's trunk. Applicant explains that the space
ublic's

Audi, 197 USPQ at 650-51.
at unlike Audi, this case

6

dard-character
awi
used
epicted
results from esthetic and engineering
considerations. Regardless of the cause, the
arrangement does tend to reaffirm the p
probable understanding that two marks are being
used.
Applicant complains th
involves a “special form mark,” i.e., one sought to be
registered “without claim to any particular font style,
size, or color,” Trademark Rule 2.52(a). Reply Br. at 5-
(“Both the original and second proffered specimen show the
word and letters. That they are separated by roughly 4 feet
(in the original) or two to three inches (in the later-
submitted specimen) is of no moment, because the mark is
being registered in no particular form.”).
Applicant confuses the effect of a stan
dr ng with the requirement for a specimen of the mark, and
the relation of the specimen to the drawing. While a
special form drawing permits the applied-for mark to be
in a wide variety of forms, the applicant must still submit
a specimen of the mark, and the drawing must be a
substantially exact representation of the mark as d
on that specimen. Regardless of the type of drawing in the
application, the specimens must indicate use of the applied-
for matter as a mark – i.e., a single mark. If the specimen
shows two elements of the drawing used as two separate
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Application No. 77044023
marks, rather than a single one, then a new specimen must be
submitted.4
As was the case in Audi, we find that the impression
left by the specimens of record is that of two marks, rather
than one. As used on the first specimen – applicant’s
vehicle – the word ACURA appears on the far left side of the
trunk of the car, while the letters “RL” appear on the far
right. The two marks are separated by applicant’s corporate
“A” logo, the trunk handle, and considerable space. As in
Audi, we find that the likely impression here is that ACURA
is the trademark for a line (or “make”) of cars, while RL is
a trademark for a particular “model” of that line. But
whatever the perceived meaning of the individual elements,
it is clear from the specimen – which depicts them separated
by other matter and by physical space – that they do not
form the impression of a single trademark.
Applicant’s substitute specimen fares no better. This
specimen depicts the cover of an owner’s manual for
applicant’s vehicle. On the right-hand side of the cover
appear several items: Towards the top of the page is the
word ACURA, in black, immediately below applicant’s “A”
logo, also in black. Several inches below that appear the

4 An amended drawing is clearly inappropriate if the specimen
depicts the matter to be registered as more than one mark because
any drawing accurately depicting the “mark” as used would
necessarily depict two separate marks, and an application is
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Application No. 77044023
numerals “2004” in black, above the letters “RL” in large,
white letters. Finally, the words “Owner’s Manual” appear
near the bottom edge of the page.
Similar to the depiction of the mark on applicant’s
original specimen, there is nothing about the use of “ACURA”
and “RL” on this specimen which might indicate that they are
in fact a single mark. The two elements are physically
separated by a significant amount of blank space5 and the
numerals “2004.” “ACURA” is depicted in black in close
proximity to applicant’s logo, while the letters RL appear
in a different font, different color, and different size.
As was the case with the specimen depicting the rear of
applicant’s vehicle, we do not believe that a relevant
consumer viewing applicant’s owner’s manual would understand
the terms “ACURA” and “RL” to comprise a single mark, rather
than two.

limited to a single mark. Trademark Rule 2.52 (“The drawing must
show only one mark.”).
5 Applicant makes much of the fact that the separation of “ACURA”
and “RL” on its original specimen was several feet, while the
separation on the owner’s manual is only a matter of inches. We
are not concerned with the absolute distance between the parts of
applicant’s mark in feet and inches because the perceived
distance between them is relative. It is the resulting
impression that is important. A separation of several feet might
appear negligible when used on a large billboard, while a
separation of several inches may appear large when used on a
proportionally much smaller surface like the manual cover at
issue here.

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Application No. 77044023
Conclusion
After careful consideration, we find that applicant’s
drawing of the mark is not a substantially exact
representation of the mark as used in commerce, Trademark
Rule 2.51(a), and that the examining attorney’s requirement
for a substitute specimen was appropriate.
Decision: The refusal to register is accordingly
affirmed.
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