TTAB Finds "DIGITALBOOK" Trademark Specimen Unacceptable

Affirming the PTO's refusal to register, the Board found Applicant Sagoma's specimen of use unacceptable for the mark DIGITALBOOK for, inter alia, binders for holding media discs. The specimen (shown below) fails to qualify as a display associated with the goods because it does not contain adequate ordering information. In re Sagoma Plastics, Inc., Serial No. 76576594 (July 11, 2008) [not precedential].

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Under Section 45 of the Trademark Act, in pertinent part, a mark is deemed to be in use in commerce on goods when it is placed on the goods or their containers, or on displays associated therewith. "A display used in association with the goods is essentially a point-of-sale display designed to catch the attention of purchasers as an inducement to consummate
a sale."

The TMEP provides that a catalog or similar display may be an acceptable specimen of use if (1) the catalog includes a photograph of the goods; (2) it displays the mark in association with the goods; and (3) it includes the information necessary to order the goods (e.g, an order form, phone number, mailing address, or e-mail address for placing orders). Furthermore, "[t]here must be an offer to accept orders or instructions on how to place an order."

Sagoma's specimen met the first two prongs, and so the question became whether the specimen "includes the information necessary to order applicant's binders and binding systems, thus making it a point-of-sale display." Applicant, of course, argued that the inclusion of its phone number, address, and e-mail address were sufficient.

The Board noted the lack of record evidence as to how Sagoma sells its binder and systems or whether the goods may be purchased by telephone or Internet. The assertions of Sagoma's counsel, the Board observed, are not evidence.

Based on an examination of the specimen, the Board found it to be "more akin to the fact sheet, catalog page, or brochure submitted in In re MediaShare Corp., 43 USPQ2d 1304." Sagoma's specimen contains no information "normally associated with ordering products via telephone of the Internet." For example, there is "no sales form, no pricing information, no offers to accept order, and no special instructions for placing orders ...."

The Board distinguished this case from its precedential decision in In re Valenite Inc., 84 USPQ2d 1346 (TTAB 2007). Valenite's webpage contained links to its Technical Resource Center, "including specification sheets, online calculators, and reference tables, as well as providing appellant's toll-free customer service telephone numbers." A Valenite customer could thereby "select a product and call customer service to confirm the correctness of the selection and place an order."

Sagoma's specimen provides no such information. Consequently, it does not qualify as a display associated with the goods and is not an acceptable specimen of trademark use.

TTABlog note: See the recent, similar TTAB decision in In re U.S. Tsubaki, Inc., TTABlogged here.

Text Copyright John L. Welch 2008.