IP Law Daily, TRADEMARK—TTAB: Board affirms refusal to register stylized mark because of mutilation, (Apr 25, 2025)

By Jonathan Anderson

The design element of the applied-for mark was not separable from the composite mark in the specimens and thus did not create a separate and distinct commercial impression.

The Trademark Trial and Appeal Board has affirmed the examining attorney’s refusal to register a stylized mark because it was a “mutilation,” or not a substantially exact representation of the mark shown in the specimens of use. The design element of the applied-for mark was a letter in the word portion of the composite mark. Despite differences in font, font size, and font color between the applied-for mark and other text in the composite mark in the specimens, the Board reasoned that consumers would not perceive these as separate and distinct marks with different commercial impressions (In re Verrica Pharmaceuticals Inc., No. 90755123 (T.T.A.B. Apr. 23, 2025)).

Background. Applicant, Verrica Pharmaceuticals Inc., sought registration on the principal register of a stylized mark for “Pharmaceutical products and preparations for the treatment of dermatological diseases” in International Class 5 and “Retail services through direct solicitation by distributors directed to end users featuring pharmaceuticals” in International Class 35. The mark consisted of the stylized letter “V” with three circles above. There was no color claim.

The examining attorney refused registration on the basis that the specimens of use were unacceptable under Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051 and 1127, because the drawing was not a substantially exact representation of the mark as used on the specimens. The three specimens at issue included colorized versions of the stylized mark with additional text. In addition to the stylized letter “V,” the specimens contained the wording (1) VERRICA; (2) VERRICA PHARMACEUTICALS; and (3) VERRICA PHARMACEUTICALS REINVENTING SKIN SCIENCE. Applicant appealed the refusal.

Legal standard. At issue was whether the mark as it appeared in the drawing in the application was a “substantially exact representation of the mark” of the specimens, or whether the applied-for mark was a mutilation of the complete mark. Mutilation of a mark indicates that essential and integral subject matter is missing from the drawing.

Under Trademark Rule 2.52, 37 C.F.R. § 2.52, a drawing of a mark in an application under section 1(b) “must be a substantially exact representation of the mark as intended to be used on or in connection with the goods and/or services specified in the application, and once an amendment to allege use under § 2.76 or a statement of use under § 2.88 has been filed, the drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods and/or services.”

The issue of mutilation “all boils down to a judgment as to whether that designation for which registration is sought comprises a separate and distinct ‘trademark’ in and of itself.” In re Chem. Dynamics Inc., 839 F.2d 1569, 1571 (Fed. Cir. 1988).

Analysis. The Board affirmed the examining attorney’s refusal to register, finding that the proposed mark was not a substantially exact representation of the mark shown in the specimens of use. The Board reasoned that “the proposed mark is depicted in the specimens as part of a unitary word and cannot be regarded as a separable element creating a separate and distinct commercial impression.” Although the “V” appeared in a slightly larger font and was highly stylized compared to the remaining letters, the Board said there was not sufficient space between the letter “V” and the remaining lettering so that consumers would perceive the proposed mark as a separate and distinct mark. Rather, consumers would immediately understand the word to be “VERRICA” with a stylized “V” as the first letter.

The Board further found that the color use in the specimens was irrelevant because no colors were claimed as part of the applied-for mark, meaning the mark could be displayed in any color or combination of colors.

The Case is Serial No. 90755123.

Judge: Lavache, R.

Attorneys: Theodore A. Breiner (Breiner & Breiner LLC) for Verrica Pharmaceuticals Inc. Ronald L. Fairbanks for the USPTO.

Companies: Verrica Pharmaceuticals Inc.

Cases: Trademark USPTO