Marsu N. V.

Trademark Trial and Appeal Board

Oct 30, 1998

No. 74083403 (T.T.A.B. Oct. 30, 1998)

Paper No. 27
GDH/gdh
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Marsu N.V.
________
Serial No. 74/083,403
_______
B. Allison Hoppert, Raymond A. Kurz and G. Franklin Rothwell of
Rothwell, Figg, Ernst & Kurz, P.C. for Marsu N.V.
Loretta C. Beck, Trademark Examining Attorney, Law Office 102
(Thomas V. Shaw, Acting Managing Attorney).
_______
Before Hanak, Hohein and Chapman, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Marsu N.V. has filed an application to register the
design, reproduced below,
Ser. No. 74/083,403
2
of an animal-like character, which it calls "MARSUPILAMI"
(hereinafter "MARSUPILAMI design"), for the following goods:
"paper bags, greeting cards, decals, gift wrapping paper, paper
napkins, pencils, posters, stationery and paper tablecloths" in
International Class 16; "cups, paper and decorative plates, [and]
mugs" in International Class 21; "outer clothing, namely, shirts,
[and] footwear" in International Class 25; and "dolls, toys, jig
saw puzzles, stuffed toys, games featuring fictional cartoon
characters and video-game machines" in International Class 28.1
Registration has been finally refused on the basis that
the drawing of the mark is not a substantially exact
representation of the mark as used on or in connection with
applicant’s goods2 and that, since any amendment of the drawing
would constitute a material alteration thereof,3 submission of

1 Ser. No. 74/083,403, filed as an intent-to-use application on July
31, 1990 and indicating that "[t]he mark is lined for the colors red
and yellow which are claimed as features of the mark." Following
issuance of a notice of allowance on June 2, 1992, applicant submitted
a statement of use on July 14, 1994 which alleges the following dates
of first use: June 1993 for "pencils" in International Class 16,
"mugs" in International Class 21 and "stuffed toys" in International
Class 28"; and December 1, 1993 for "footwear" in International Class
25.
2 Trademark Rule 2.51(a)(2) provides in pertinent part that:
In a application under §1(b) of the [Trademark] Act,
the drawing of the trademark shall be a substantially exact
representation of the mark as intended to be used on or in
connection with the goods specified in the application, and
once ... a statement of use under §2.88 has been filed, the
drawing of the trademark shall be a substantially exact
representation of the mark as used on or in connection with
the goods ....
3 In this regard, Trademark 2.72(a) specifies that:
Amendments may not be made to the ... drawing of the
mark if the character of the mark is materially altered.
The determination of whether a proposed amendment
materially alters the character of the mark will be made by
Ser. No. 74/083,403
3
substitute, properly verified specimens showing use of the
MARSUPILAMI design as a trademark for such goods is required.4
Applicant has appealed. Briefs have been filed,5 but
an oral hearing was not requested. We affirm the refusal to
register and the concomitant requirement for properly verified
substitute specimens.
Applicant, citing the Board’s interpretation of
Trademark Rule 2.51(a)(3)6 in United Rum Merchants Ltd. v.
Distillers Corp. (S.A.), 9 USPQ2d 1481, 1483 (TTAB 1988), argues
that Trademark Rule 2.51(a)(2) should likewise be read so that

comparing the proposed amendment with the ... drawing of
the mark as originally filed.
4 Trademark Rule 2.59(b) states in relevant part that:
In an application under §1(b) of the [Trademark] Act,
after filing ... a statement of use under §2.88, the
applicant may submit substitute specimens of the mark as
used on or in connection with the goods ... provided that
the use in commerce of any substitute specimens submitted
is supported by applicant's affidavit or declaration in
accordance with §2.20. In the case of a statement of use
under §2.88, the applicant must verify that the substitute
specimens were in use in commerce prior to the filing of
the statement of use or prior to the expiration of the time
allowed to applicant for filing a statement of use.
See also TMEP §905.10.
5 Although the Examining Attorney also finally refused registration on
the basis that "the proposed mark is ornamental" as used on the goods
in International Classes 16 and 21, the Examining Attorney states in
her brief that, "[u]pon further consideration," she "withdraws the
ornamentation refusal" and that, accordingly, "the only issue on
appeal is whether the mark depicted on the specimens matches the
proposed mark as depicted in the drawing."
6 Such rule currently provides that:
In an application under §44 of the [Trademark] Act,
the drawing of the trademark shall be a substantially exact
representation of the mark as it appears in the drawing in
the registration certificate of a mark duly registered in
the country of origin of the applicant.
Ser. No. 74/083,403
4
"the phrase ’substantially exact’ means ’materially the same,’
not exactly the same." Applicant maintains that, when Trademark
Rule 2.51(a)(2) is so construed, it is in compliance therewith
since (underlining in original):
While there are slight differences in
the form in which the [marks shown on the]
specimens are depicted, it is, in fact the
same character which appears in the specimens
and [in] the drawings [sic]. The drawing of
the MARSUPILAMI design as filed consisted of
the unique spotted MARSUPILAMI character
having a long spiral tail. The specimens as
filed [with the statement of use] show
substantially the exact same spotted
MARSUPILAMI animal with a long spiral tail.
The tail merely is twisting in a slightly
different direction; the MARSUPILAMI animal
is posed at a slightly different angle; and
the flower present in the drawing has been
removed. The specimens show the same
character as presented in the drawing; the
character is simply presented in a different
pose. Therefore, even given these minor
alterations, the drawing as filed and the
mark as used in the specimens create
materially the same commercial impression.
In no way do these minor alterations
rise to the level of creating a new mark.
Just as a "Mickey Mouse" or "Snoopy"
character may appear in different positions,
those characters, regardless of the physical
position in which the character is depicted,
would always be recognized as the same
character. Here, the MARSUPILAMI character
is the same essential character. Indeed, all
of the character’s physical features are
virtually identical in each of the depictions
of the character. Certainly, customers
encountering the character on the specimens
would recognize that all of the specimens
depict the same character. Customers would
also recognize that the character on the
specimen is the same character as is in the
drawing. .... As such, any differences are
non-material in nature and do not affect the
ability of the character to be recognized as
emanating from a single source.
Ser. No. 74/083,403
5
While we agree with applicant that the phrase
"substantially exact representation" in Trademark Rule 2.51(a)(2)
should be construed as meaning "materially the same," we concur
with the Examining Attorney, however, that the MARSUPILAMI design
shown in the drawing does not meet such standard7 inasmuch as it
is not materially the same as the various representations of
applicant’s "MARSUPILAMI" character which are shown on the
specimens of use. Examples of the manner in which the
"MARSUPILAMI" character is used on the specimens are reproduced
below:
Specimens for International Class 16
Specimens for International Class 21

7 The substantially exact representation standard, as the Examining
Attorney correctly points out, is a subjective determination. See
e.g., In re R. J. Reynolds Tobacco Co., 222 USPQ 552 (TTAB 1984).
Ser. No. 74/083,403
6
Specimens for International Class 25
Specimens for International Class 28
As the Examining Attorney accurately notes, the
MARSUPLIAMI design shown in the drawing "displays a spotted
character having a long twisting tail with a flower jutting out
of its mouth and its hands perched in front of it." By contrast,
"[n]one of the specimens display[s] the mark as depicted in the
drawing" and, as further noted by the Examining Attorney, while
"[t]he marks on the specimens display a spotted character ....,
its arms are outstretched and are hanging from a branch, the tail
is twisting in various directions, and the flower is removed from
its mouth."
In view thereof, the Examining Attorney maintains that
(underlining in original):
Although the substantially exact
representation standard does allow some
immaterial differences between the drawing
Ser. No. 74/083,403
7
and the specimens, the marks on all the
specimens differ considerably from the mark
as depicted in the drawing. .... These
differences, namely, the different poses, the
various tail twists, and the omission of the
flower, are material. The cumulative effect
of these differences creates marks with
different commercial impressions.
....
All of the elements of the depicted
marks [on the specimens], not just the
["MARSUPILAMI"] character, must be considered
in determining the commercial impression of
[each of] the mark[s]. .... Thus, although
the character may share some features in each
of the depictions, the marks, as a whole,
create different commercial impressions.
Based on these material differences, the
drawing of the trademark is not a
"substantially exact representation" of the
mark as it appears on [each of] the
specimens.
The applicant is seeking broad
protection for several marks, namely, that
depicted in the drawing and those depicted in
the specimens. An applicant, however, may
apply to register only one mark in each
application. In re Audi NSU Auto Union AG,
197 USPQ 649 (TTAB 1977); In re Jordan
Industries, Inc., 210 USPQ 150 (TTAB 1980);
TMEP Sections 807 and 1113.01. Since the
marks on the specimens differ from the
drawing to the extent that they create
different commercial impressions, the drawing
in the application is not a "substantially
exact representation" of the mark.
Assuming, without deciding, that as utilized on the
hang tags and products themselves, the specimens demonstrate
trademark use of the "MARSUPILAMI" character and not mere
ornamentation, none of the various depictions of the
"MARSUPILAMI" character on the specimens is materially the same
as the MARSUPILAMI design shown in the drawing. Not one of the
specimens includes the presence of any prominent flower in the
Ser. No. 74/083,403
8
character’s mouth, much less a substantially exact representation
of the blossom or bloom illustrated in the drawing. Similarly,
not one of specimens depicts even a similar pose or expression
for the "MARSUPILAMI" character, much less a stance or
countenance which is materially the same as that shown in the
drawing. Consequently, while perhaps recognizable as the same
character, the MARSUPILAMI design in the drawing is not
materially the same mark as any of the various illustrations of
the "MARSUPILAMI" character on the specimens,8 and hence is not a
substantially exact representation of such mark, since the former
does not project essentially the same overall commercial
impression as that imparted by any of the latter. Trademark Rule
2.51(a)(2). Properly verified substitute specimens demonstrating
use of the MARSUPILAMI design as a trademark for applicant’s

8 As the Board has observed in another case involving an attempt to
register an animal character design as a mark:
[F]ictitious or fanciful characters may function to
identify and distinguish the source of goods or services.
See, e.g., In re DC Comics, Inc., 689 F.2d 1042, 215 USPQ
394 (CCPA 1982) and In re Red Robin Enterprises, Inc., 222
USPQ 911 (TTAB 1984). Nevertheless in order to be
registrable, the use of such a character, however arbitrary
it may be in its conception, must be perceived by the
purchasing public not just as a character but also as a
mark which identifies and distinguishes the source of the
goods or services. ....
In re Hechinger Investment Co. of Delaware, Inc., 24 USPQ2d 1053, 1056
(TTAB 1991) ["commercial impression created by ... use of a dog design
in different poses and contexts is clearly and simply that of a
fanciful dog character named "Twobafor" which appears in certain
illustrations in applicant’s advertisements"; moreover, inasmuch as
"the specific dog design sought to be registered--that for a fanciful
hound leaning on its front paws with its tail in the air--exclusively
appears in the specimens originally submitted and not in any other
advertisements ..., none of the specimens demonstate[s] that the dog
design applicant seeks to register functions as a service mark for
applicant’s services."]
Ser. No. 74/083,403
9
goods are therefore necessary. Trademark Rule 2.59(b) and TMEP
§905.10.
Decision: The refusal on the basis that the drawing of
the mark sought to be registered is not a substantially exact
representation of the mark as used on or in connection with
applicant's goods and the requirement for submission of properly
verified substitute specimens demonstrating trademark use of the
mark shown in the drawing are affirmed.
E. W. Hanak
G. D. Hohein
B. A. Chapman
Administrative Trademark Judges,
Trademark Trial and Appeal Board