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 In re Seelect, Inc., Serial Nos. 76671619 and 76671623 (April 7, 2010) [not precedential].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.
posted by John L. Welch @ 4/23/2010
6 comments
6 Comments:
Don't agree with the Board here. This "use" by the applicant is basically just a statement along the lines of "Oh, by the way, in addition to how we are using the mark on this product, be aware the we are claiming rights to these two additional marks, even though they appear nowhere else on this product except for in this statement." Basically, the Board allowed this applicant to "hoard" these two marks based on this statement.
I don't agree with the Board either. And I don't agree with their making the case non-precedential. If they don't like what they are doing and so elect to make it unprecedential, they should not be doing it.
That is one of the beauties of stare decisis. It makes the body realize that they can't just cut a favor for this one party without having to to it for everybody. If they don't want to do it for everybody, they shouldn't do it for this one guy.
I don't agree and I predict a huge rise in trademark "use" being proven this way. At least in the future the TTAB can distinguish it as a case where the dominant component was clearly functioning as a mark on the specimen and the only additional element in the applied-for mark was descriptive. Hopefully that will preclude people from just putting random words in their legends. But I'm sure they will try.
I will be the black sheep here because I do agree that the TTAB reached the correct decision. I have long held the view that the examination process for specimens of use tends to be overly restrictive and that various uses that “function” as a mark are being rejected as being square pegs attempting to be jammed into round holes.
Consider the following rules and guidelines:
(1) Section 45 of the Trademark Act
“Section 45 of the Trademark Act defines “use in commerce” as “the bona fide use of a mark in the ordinary course of trade, and not merely to reserve a right in a mark.” For purposes of the Trademark Act, a mark is deemed to be in use in commerce “on goods when it is placed in any manner on the goods or their containers.’ … ‘[A] showing of the trademark on the normal commercial package for the particular goods is an acceptable specimen.’”
(2) TMEP Section 1209.03(m)
“A mark comprised of an Internet domain name is registrable as a trademark or service mark only if it functions as an identifier of the source of goods or services. Portions of the uniform resource locator (“URL”), including the beginning, (“http://www.”) and the top-level Internet domain name (“TLD”) (e.g., “.com,” “.org,” “.edu,”) function to indicate an address on the World Wide Web, and, therefore, generally serve no source-indicating function.”
(3) TMEP Section 1215.08(a)
“Generally, an applicant may add or delete a non-source-identifying TLD to/from the drawing of a domain name mark (e.g., COOPER amended to COPPER.COM, or COOPER.COM amended to COOPER) without materially altering the mark.”
Section 45 supports my initial comments, although the TMEP tends to be more restrictive. However, taking Section 1209 and 1215 into context, along with Section 45, there is no doubt in my mind that U.S. consumers would view the wording “Seelect Tea™ and Sealect Tea & Nutrition™ are trademarks of Select, Inc.,” shown right on the packaging, as indicating the source of the goods. A stronger case is available for “Seelect Tea” because it is used within the domain also shown on the packaging. However, the fact that they are not shown as prominently as the examining attorney would have liked should not be determinative.
I will grudgingly agree with the result, though not with enthusiasm. BUT, the applicant in this case is being stupid, to say the least. If you want something to function as a trademark, why not use it in a prominent manner? It just doesn't make any sense to me.
The Board got this one wrong. Luckily it's non-precedential. If you need a magnifying glass to find a trademark it's not a trademark.
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