Distinguishing Land's End and Dell, TTAB Affirms Refusal To Register Based On Failure To Provide Proper Specimen Of Use

The Board affirmed a refusal to register the mark ALL-IN-ONE ATM for automated teller machines (ATM disclaimed) because Applicant Cash Systems, Inc. failed to provide a proper specimen of use. In re Cash Systems, Inc. , Serial No. 76461663 (May 23, 2005) [not citable].

Cash Systems specimenClick on photo for larger picture
The Board found that Cash Systems' advertisement, shown above, satisfied two of the three requirements of Land's End v. Manbeck, 24 USPQ2d 1314 (E.D. Va. 1992): it includes a picture of the relevant goods, and it shows the mark sufficiently near the goods to associate the mark with the goods. However, the third requirement -- that it include information necessary to order the goods -- was not met.

The Board contrasted the instant situation with those of Land's End and In re Dell Inc., 71 USPQ2d 1725 (TTAB 2004). In the former, Land's End's catalog page allowed the consumer to "identify a listing and make a decision to purchaser by filling out a sales form and sending it in or by calling in a purchase by phone." In the latter, the Board observed that the Dell webpage provided a link for ordering the goods.

Dell QUITECASE specimenClick on photo for larger picture
Here, however, Cash Systems offered to provide more information via a phone number, an e-mail address, or a website address. However, no mention is made of ordering the goods, and no price is given.

"Applicant's specimen does not lead to 'a decision to purchase by filling out the sales form and sending it in or by calling in a purchase by phone.' *** Here, Applicant's specimen like most advertising simply attracts a prospective purchaser's attention and encourages the purchaser to obtain more information."

A proper specimen must be "calculated to consummate a sale." "The simple addition of a phone number or a web address to an advertisement containing some product specifications does not automatically convert mere advertising into displays associated with the goods."

The Board concluded that Cash Systems' specimen is not calculated to consummate a sale, and therefore the Board affirmed the refusal to register.

TTABlog comment: Sorry, but I still don't think the Dell webpage is a proper specimen of use. The phrase "QuietCase(TM) acoustic environment" is buried in one of several bullet points, and hardly leaps off the page and grabs the reader. And what is an "acoustic environment," anyway?

Text Copyright John L. Welch 2005. All Rights Reserved.