When it comes down to details, the USPTO is draconian, and rightfully so. Suppose a business registers one Trademark and uses a minor variant of that Mark for its product. The minor variant cannot be fully enforced as a Registered Trademark, because it’s not what was registered.
Clients often supply me with a specimen of use for their Trademark application, and the specimen does not exactly match the originally-filed Trademark. This is a recipe for disaster: not only will the USPTO Examining Attorney never approve any specimen with even the most insignificant amendments to the Mark, if the TM Owner chooses to enforce the Mark based on USPTO Registration, the Defendant can always invoke that the Mark has never been Registered.
The Applicant of the FindTheBiz App Icon has made such a mistake. Instead of pursuing the App Icon as it appears on iTunes, being this:
the USPTO Registration No. 4199155 (Registered on August 28, 2012) is for this:
A review of the file history reveals that the latter image was used as specimen showing use. The pro se applicant made a mistake, and should have used the Icon as it appears on iTunes. In a hypothetical situation, if a competitor released an App whose Icon was also of a little man with a fedora hat and magnifying glass, FindTheBiz may encounter problems on the enforcement end because their App MUST be sold with the words “FindTheBiz” underneath the Icon.
Arguably, an informed judge in a court of law will extend common law rights and equity to give cause to FindTheBiz, but there is no reason to tempt fate like this. Conclusion: file the App Icon Trademark for the Icon and the Icon alone.
