MCDAVID, INC.

RESPONSE

This is in response to the Office Action issued on February 28, 2008, in connection

with the above-identified application.

REMARKS

The Applicant provides the following arguments in response to the initial

determination that the description of the mark in the application is unacceptable and does

not match the mark depicted in the drawing page.

The Office has determined that the Application contains an inaccurate description of

the mark shown on the Applicant’s drawing page. The Applicant respectfully disagrees with

this determination. The Application as filed contains a drawing page showing exactly what

the Applicant’s Hex Configuration (the mark applied for in the Application) looks like when

viewing it straight on or frontally, and the description in the Application clearly states that

the Applicant’s Hex Configuration is “a configuration of the goods.”

The Applicant’s Hex Configuration consists of repeated polygons arranged closely

together in an overall rectangular shape placed on the goods. All of the polygons of the

Applicant’s Hex Configuration are elevated slightly above the surface of the goods on which

the mark is placed. The depth aspect of the polygons in Applicant’s Hex Configuration is

very shallow. The repeated polygons of the Applicant’s Hex Configuration are positioned so

closely together and elevated so slightly above the surface of the Applicant’s goods that it

would be extremely difficult, if not entirely impossible, to provide the Office with a drawing

different from the drawing already on file that would accurately and clearly show the three-

dimensional aspect of the Applicant’s configuration.
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For reference, the Applicant provides, by way of example only, the following picture1

of the Applicant’s goods bearing its Hex Configuration mark so that the Office may see just

how difficult it would be to provide a drawing of the Applicant’s Hex Configuration as it

appears on the goods showing the three-dimensional aspect.

When comparing the above picture to the Application drawing page, one gets an indication

of how thin the depth of the Applicant’s mark is. The depth is perceptible, but given how

close together the polygons are, it would be virtually impossible to draw.

The Office cites to TMEP Section 807.01 and the Trademark Trial and Appeal Board

(“Board”) decision in In re L.G. Lavorazioni Grafite S.r.l. to support its determination of a

perceived discrepancy between the Applicant’s drawing and written application and its

procedural decision to disregard the Applicant’s written application and only to look to the

1
The Applicant does not intend this example to be a specimen of use for the purpose of alleging use of the mark
in commerce. The Applicant will file either an amendment to allege use or a statement of use separately and
later in the application process.

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Applicant’s drawing page to identify the Applicant’s mark. The Applicant submits that the

Office’s reliance on this procedure and case for identifying what mark the Applicant has

applied to register in its Application is misplaced. TMEP Section 807.01 and the In re L.G.

Lavorazioni Grafite case address meeting the minimum application filing requirements

necessary to receive an application filing date and how the Office should make that

determination in the face of a drawing actually differing from the accompanying written

description of a mark.

Unlike the application parts filed by the petitioner in the Lavorazioni Grafite case, the

application materials filed by the Applicant include a written description of a mark that

matches the mark depicted on the drawing page. The petitioner in the Lavorazioni Grafite case

submitted a written description of its mark that read only “Device Mark”, while the

application drawing page included a design as well as two written words. Because of this

discrepancy between the written portion of the application and the drawing page, the Office

could not determine which mark the petitioner had applied to register. In order to facilitate

the petitioner’s receiving a filing date and to develop a future system for examiners to use to

determine whether minimum filing requirements have been met, the Board developed a

system for handling such circumstances. The Board describes this system as follows:

“…if an applicant submits a separate drawing page showing a mark, and a
different mark appears in the written application, the Office will grant a filing
date to the application; the mark that appears on the drawing page will
control, and the Office will disregard the mark in the written application.”

In re L.G. Lavorazioni Grafite S.r.l., 61 U.S.P.Q.2d 1063, 1064 (TTAB 2001).

The Applicant’s circumstances are not the circumstances of the Lazorazioni Grafite

petitioner. Instead, the Applicant’s written description and the drawing page match one

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another, and, as a result, the Applicant received a filing date. The Lazorazioni Grafite case

concerns assessing patent discrepancies between a written description and drawing of a

mark for the purposes of giving an applicant a filing date and not for making a final

determination about the appearance of a mark in a drawing when the drawing matches the

way a mark is used on the goods.

The Applicant’s written description states that “the mark consists of a configuration

of the goods.” The Applicant’s drawing page shows the Applicant’s Hex Configuration mark

from a straight-on or front facing view. The Applicant submits that together the written

description and drawing accurately depict the Applicant’s Hex Configuration applied for in

the Application.

The main purpose of the drawing in an application is to provide notice of the nature of

the mark sought to be registered. TMEP § 807. The Applicant’s drawing as filed

accomplishes this purpose. Trademark law requires that the mark in a drawing agree with

the mark as used on the specimen in a Section 1 application. 15 U.S.C. §1051. Throughout the

TMEP, the Office repeats this requirement and provides that for a Section 1 application the

drawing of a mark must be a substantially exact representation of the mark as it appears on a

specimen of use. TMEP §§ 807.03(e) and 807.12(e). The TMEP requires that an examining

attorney determine whether the mark as used on the specimens is a substantially exact

representation of the mark on the drawing. TMEP §1109.09(b). It is the Office’s practice to

require that an applicant amend its drawing page if the drawing is not a substantially exact

representation of the mark as used on the goods, so long as such amendment would not

materially alter the mark. TMEP § 1109.12.

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Barbara A. Gold
Law Office 106

The Applicant submits that in the Office Action the Office got ahead of itself in

making a final determination as to what shall appear in the Applicant’s drawing. The Office

Action states that any amendments to the drawing which show the mark as a three

dimensional design on the goods would be unacceptable as a material alteration of the

applied-for-mark. The Applicant submits that the applied for mark is the Applicant’s Hex

Configuration, which is a three dimensional design and is accurately pictured in the

application drawing.

As demonstrated by the above representative example of the Applicant’s goods, the

drawing as filed is a substantially exact representation of the mark as it appears on the

Applicant’s goods. The Office Action states that “there is no mention in the application of a

three dimensional mark.” The Applicant disagrees. The written description clearly states

that “the mark is a configuration of the goods,” which description conveys that the mark is

three dimensional. For three dimensional marks, the trademark law states that “the drawing

must depict a single rendition of the mark, and the applicant must indicate that the mark is

three-dimensional.” 37 C.F.R. 2.52(b)(2). The Applicant’s drawing depicts a single rendition

of the Applicant’s Hex Configuration, and the Applicant’s written description indicates that

the Applicant’s Hex Configuration is three-dimensional. The Applicant respectfully submits

that it has met the statutory requirements for a three-dimensional mark. If the Office were to

require the Applicant to re-file this Application, the Applicant does not know how it would

draw the mark differently on the drawing page to reflect the three-dimensional aspect of its

mark because of how closely spaced together the polygons of its configuration are and how

thin the depth of its configuration is.

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The Applicant therefore respectfully submits that its drawing and description should

be acceptable as filed.

CONCLUSION

The Applicant respectfully requests that the requirement to amend the description of

its mark be withdrawn and that the application be allowed for publication at the earliest

convenience of the Office.

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