Friday, March 13, 2009

TTABlog Twin-Bill: Two More "Bad Specimen" Cases To Ponder

Today we have two more "bad specimen" cases that, for better or worse, were taken up on appeal. In the first, Applicant Atlas Media (who beat a bad-specimen rap in January [TTABlogged here]), was hoping to register the mark HOW NOT TO DIE for a television program about longevity. But its specimen of use (immediately below) was dead on arrival. In re Atlas Media Corp., Serial No. 76685286 (March 6, 2009) [not precedential].

The specimen comprised a sheet of paper that Applicant characterized as promotional material. Examining Attorney Rudy R. Singleton pointed out that the specimen included no reference to a television program, and so consumers "will not perceive the involved mark as identifying the source of such services."

Atlas's attorney, Myron Amer, submitted a declaration of its president, stating that Atlas owns several service mark registrations for television services and that "the specimen of record is the practice in the trade of carrying on the business of the registrations." In other words, that's how they do it in the tv business.

The Board observed that under Rule 2.56(b)(2), a "service mark specimen must show the mark as actually used in the sale or advertising of the services." Section 45 says that a service mark is used in commerce "when it is used or displayed in the sale or advertising of services and the services are rendered in commerce ...."

However, "[i]t is not enough that the term alleged to constitute the mark be used in the sale or advertising; there must be a direct association between the term and the services. *** The mark must be used in such a manner that it would be readily perceived as identifying the source of such services."

Nowhere is a television program mentioned on Atlas's specimen, and so "the required direct association between applicant’s mark HOW NOT TO DIE and the identified services cannot be made by consumers."

Even accepting Atlas's assertion that it does offer television programs under the mark, that is not the question here. "Our task in this ex parte appeal is to determine whether the specimen of record evidences service mark use of HOW NOT TO DIE for the identified services."

The Board concluded that it does not, and so this application kicked the proverbial bucket.

In the second case, it was a trademark specimen that failed to pass muster. Applicant Mississippi Cheese Straw Factory applied to register the mark MUDPUPPIES for cookies, but its specimen of use (shown in part below) was at most half-baked. In re Mississippi Cheese Straw Factory, Inc., Application Serial No. 76617223 (March 3, 2009) [not precedential]

The specimen was a website order form that Examining Attorney Allison Holtz found unacceptable because it did not show the mark "in close proximity to a picture of the goods."

Applicant Mississippi argued that "the order form is reached by clicking the 'store' link from the preceding page which shows the cookies and tins in which the products are sold. In other words, the consumer must view such picture in order to reach the order form that comprises the Applicant’s tendered specimen." Thus, said Mississippi, the mark is in close proximity to a picture of the goods because it is just "one click away."

Mississippi accompanied its argument with a copy of the "preceding page" from the website, but it was unaccompanied by the supporting declaration required by Rule 2.59(b)(2), and so the Board refused to consider it as a specimen of use. Instead it focused on the original specimen and found it wanting:

We likewise agree with the examining attorney that the original specimen of use does not satisfy the requirements set out in the Lands' End and Dell line of cases for use as a display associated with the goods under Trademark Act § 45. Although this web page includes a means to purchase the goods, it clearly does not display the goods in association with the mark.

The Board opined that a specimen that spans two or more pages is "too attenuated, particularly where the pages involved include multiple trademarks not all of which appear to be associated with the pictured goods."

And so the cookie crumbled badly for Applicant Mississippi.

TTABlog comment: The effort expended by these two applicants in seeking to register their respective marks was all for naught due to faulty specimens. Perhaps before filing, one should work with one's client to make sure that the mark to be registered is being used on at least one specimen that the PTO will find acceptable. This may require some modification of a website, or creation and dissemination of a new specimen, but that's better than what happened here, isn't it?

Text Copyright John L. Welch 2009.


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