Material Trademark Alterations

Posted Saturday, February 21, 2009 by Jim Ruttler.

When a federal trademark application is filed, it is necessary to provide a drawing of the mark and a specimen. The drawing is the mark for which registration is requested while the specimen is evidence that the mark is actually being used. For example, the drawing of the mark may be the text FREIGHT TRAIN and the specimen could be a photograph of the products, such as jeans, bearing the FREIGHT TRAIN label. It is of critical importance that the mark as depicted in the drawing exactly match up with the mark embodied in the specimen to avoid a rejection and the risk of having to refile with a completely new priority date. While this rule appears simple enough, in practice there is often some uncertainty involved given the tendency for marks to evolve over time. For example, would specimens bearing FREIGHT TRAIN JEANS or FREIGHT JEANS or WWW.FREIGHTTRAIN.COM be materially different from FREIGHT TRAIN as depicted in the drawings? It is almost impossible to tell in many cases without getting the opinion of the examining attorney and there is the risk of having to refile a new trademark application. Accordingly, it is important when filing a trademark application to ensure that the mark as depicted is actually the precise mark that is or will be embodied on the product.

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