Test Your TTAB Judge-Ability on This Specimen of Use Question
Applicant sought to register the word marks SEELECT TEA and SEELECT TEA & NUTRITION for dietary supplements and herb teas, but the Examining Attorney refused registration on the ground that the marks, as displayed on the specimen of use, do not function as source indicators. On the specimen packaging (see below) the marks appear only just above the bar code in the form: "SEELECT TEA™ and SEELECT TEA & NUTRITION™ are trademarks of Seelect, Inc." The question for you: is that a proper trademark use of the applied-for marks? In re Seelect, Inc., Serial Nos. 76671619 and 76671623 (April 7, 2010) [not precedential].
The Examining Attorney pointed out that the marks appear on the bottom of the packaging in a small font. The average consumer would perceive Applicant's mark to be the stylized "SEELECT" mark that appears on the top of the packaging (and which is a registered trademark), and he or she would see the statement regarding the applied-for marks as being merely informational.
Applicant contended that it complied with the statutory requirement that the trademark be used on the goods by placing it in "any manner" on the goods or their containers. (See Section 45 of the Trademark Act). Here, the marks are "clearly designated as trademarks" and are "accompanied by a statement to that effect."
The Board acknowledged that this is a close case. It pointed out that not everything a party adopts and intends to use as a mark "achieves this goal." Moreover, use of the "TM" designation does not make unregistrable matter registrable. But the Board sided with Applicant:
[W]e find that applicant’s use of SEELECT TEA and SEELECT TEA & NUTRITION, as shown on applicant’s packaging, is minimally technically sufficient to establish that they function as trademarks. Given the prominent use of SEELECT on the packaging for applicant’s tea, and the fact that the word “tea” is used in both applied-for marks, consumers are likely to perceive SEELECT TEA and SEELECT TEA & NUTRITION appearing elsewhere on the same packaging as trademarks for applicant’s tea.
The Board agreed that Applicant's display of the marks was not the "ideal way to indicate the source of the goods to the consumer," and in other circumstances such a display might not be enough because consumers would not notice the mark. Here, however, in view of Applicant's prominent use of the registered mark SEELECT on the same packaging, the two marks function as trademarks.
TTABlog note: Well, how did you do? Do you agree with the result? I don't.
Text Copyright John L. Welch 2010.