Thursday, March 01, 2007

Precedential No. 15: "CONDOMTOY CONDOM" Fails TTAB Specimen Test

The Trademark Trial and Appeal Board affirmed the PTO's refusal to register the mark CONDOMTOY CONDOM in the standard character form shown below, for condoms ["CONDOM" disclaimed], because Applicant Osterberg's specimen of use was inadequate. Osterberg's main problem was that the alleged mark failed to stand out sufficiently from the text of Osterberg's specimen webpage so that consumers would recognize it as a trademark. In re Osterberg, 83 USPQ2d 1220 (TTAB 2007)[precedential].


Osterberg argued that his specimen webpage [shown in part below] qualified as a display associated with the goods. [See Rule 2.56(b)(1)].


The Board, however, disagreed, distinguishing the facts here from those of several seminal cases in which a "display" was used at the point of sale (i.e., the location where the goods could be ordered). For example in Land's End Inc. v. Manbeck, 24 USPQ2d 1314 (E.D.Va. 1992), a mail order catalog was acceptable as a trademark specimen because it "featured an order form and a telephone number so that a customer could order a product directly from the catalog." In In re Dell Inc., 71 USPQ2d 1725 (TTAB 2004), a webpage was deemed a proper trademark specimen because it provided a means of ordering the product and "the mark appears on the webpage in a manner in which the mark is associated with the goods."

The Board found that on Osterberg's specimen, however, the subject mark is "not so prominently displayed ... that customers will easily associate the mark with the products." Customers are likely to view the term "CondomToy" as "a descriptive term, advertising puffery, or merely informational." Moreover, the webpage "does not directly provide a means for ordering the condoms."

Osterberg flaccidly argued that his webpage qualified as a display because he handed out copies of the webpage at sales presentations, where he successfully obtained orders for the condoms. [TTABlog comment: one is tempted to say that he ran the product up the flagpole, and several buyers saluted. But one won't]. However, there was no proof that those purchasers viewed "CondomToy condom" as a source indicator for the goods.

And so the Board affirmed the refusal to register.


TTABlog comment: I think the Board got this one right. I still think the Dell decision is wrong because the supposed mark QUITECASE, like Osterberg's mark, did not stick out in your face and say "I'm a trademark."

Text Copyright John L. Welch 2007.

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