International Business Machines Corp.

Trademark Trial and Appeal Board

Apr 27, 1999

No. 74727766 (T.T.A.B. Apr. 27, 1999)

Paper No. 13
DEB
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB APRIL 27, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re International Business Machines Corporation
________
Serial No. 74/727,766
_______
Alexander Tognino for International Business Machines
Corporation.
Anne T. Madden, Trademark Examining Attorney, Law Office
102 (Thomas Shaw, Managing Attorney).
_______
Before Cissel, Hairston and Bucher, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Applicant, International Business Machines
Corporation, a New York corporation, has filed an
application to register the figurative element shown below:
Ser No. 74/727,766
2
This mark was to be registered in connection with "computer
software and instruction manuals sold as a unit therewith
for management of information on enterprise networks."1
The Trademark Examining Attorney issued a final
refusal to register based upon Section 1 of the Trademark
Act, 15 U.S.C. §1051, on the ground that applicant's mark
as shown in the drawing is not a substantially exact
representation of the matter used by applicant on the
substitute specimens of record. Furthermore, the Trademark
Examining Attorney deemed an amendment to the drawing to be
impermissible in this case -- to allow applicant to change
its earlier drawing to match the images shown on the new
specimens would constitute an impermissible alteration.
Applicant has appealed the final refusal to register.
Briefs have been filed, but applicant did not request an
oral hearing. We affirm the refusal to register.
In her initial Office action of March 26, 1996, the
Trademark Examining Attorney told applicant that the
original specimens were unacceptable for goods. Generally,
things such as informational sheets, advertisements and

1 Serial No. 74/727,755, filed September 12, 1995, alleging
use since February 28, 1994. In addition to the computer
software items in International Class 9, the original application
also rectied “services for information/management handling
systems products,” in International Class 42. However these
services were deleted from the application during the course of
prosecution.
Ser No. 74/727,766
3
newsletters are not acceptable to show use of a mark for
goods such as enterprise management software. See In re
Schiapparelli Searle, 26 USPQ2d 1520(TTAB 1993).
Applicant then submitted substitute specimens --
photocopies of packaging sleeves for the software. While
the software wrappers were an acceptable type of specimen
for these goods, the Trademark Examining Attorney argues
that the design (the “crouching hero”) shown on these
packaging sleeves is a different mark:
The Trademark Examining Attorney enumerates a litany of
visual changes that contribute to the emergence of an
entirely different character from the substitute specimens.
We agree that given the character traits of this very
different hero, the figure of a “flying hero” shown on the
drawing page is not a substantially exact representation2 of
the crouching figure shown on the substitute specimens.3

2 See language of 37 C.F.R. Section 2.51(a)(1).
3 The original service mark specimens filed herein by
applicant reflected a substantially identical image to the flying
super hero depicted on the drawing page. Even though not
appropriate to show use of this exact mark on goods, the
Trademark Examining Attorney argues that clearly applicant was
using this version of the character in its marketing program, and
Ser No. 74/727,766
4
Our reviewing court4 agreed with the agency that
“substantially exact representation” is a tight standard:
The regulation's term "substantially"
permits some inconsequential variation from
the "exact representation" standard. In
United Rum Merchants Ltd. v. Distillers
Corp. (S.A.), 9 USPQ2d 1481, 1483-84 (TTAB
1988)… the Board noted that an applicant may
delete nonmaterial informational matter,
such as net weight or content information,
from the foreign registration of an entire
label. Id. at 1484. Beyond such limited
exceptions to the "exact representation"
standard, however, any difference between
the mark in the drawing and the mark in the
foreign registration requires the examiner
to refuse registration.
In re Hacot-Colombier, 105 F.3d 616, 41 USPQ2d 1523
(Fed. Cir. 1997).
The image on applicant’s drawing page was in no way
inconsistent with the image on the specimens as originally
filed. Even the most thorough of Trademark Examining
Attorneys would detect no “ambiguity in the application as
initially filed.” See In re ECCS Inc., 94 F.3d 1578, 39
USPQ2d 2001 (Fed. Cir. 1996) [“EXAMODULE” on the drawing
page was found “internally inconsistent” with the words

fully intended with this particular application to seek the
protection of a federal registration for the image of the flying
hero.
4 In that case [In re Hacot-Colombier, 105 F.3d 616, 41
USPQ2d 1523 (Fed. Cir. 1997), the application was filed under
Section 44 of the Act.
Ser No. 74/727,766
5
“EXA” and “MODULE” appearing on different lines in the
specimens].
Here, applicant has not attempted to submit pre-
existing specimens showing the flying hero on
acceptable specimens for goods in Int. Cl 9. Neither
has it submitted an amended drawing depicting the
crouching hero. Hence, in upholding the refusal to
register on this threshold issue, we do not need to
resolve the more difficult question of material
alteration –- that is, whether the Office’s acceptance
of an amended drawing (i.e., a substantially exact
representation of the crouching hero) would entail
significant changes to the character of the mark.
Decision: We affirm the refusal to register under
Section 1 of the Lanham Act.
R. F. Cissel
P. T. Hairston
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial and
Appeal Board