Wednesday, January 04, 2012

Test Your TTAB Judge-Ability on this Service Mark Specimen of Use

Able was I 'ere I saw Elba? How would you decide this case involving the acceptability of Elba Inc.'s specimen of use [shown below] for the mark FORMULATING HEALTH for manufacturing services in the fields of personal care and pharmaceutical products. The Examining Attorney refused registration, maintaining that the wording of the mark is so small and difficult to find that the phrase fails to function as a source indicator. In re Elba, Inc., Serial No. 77424767 (December 16, 2011) [not precedential].

(click on photo for larger picture)

Elba argued that the phrase FORMULATING HEALTH appears in a different font from the rest of the text, is physically separated from the text describing its services and from the company logo, and is presented in a manner that would be perceived as a service mark for its services. The Examining Attorney did not dispute any of this except for the last part - whether the phrase would be perceived as a service mark - since it is so difficult to discern.

The Board pointed out that "there is no requirement that applicant display the mark FORMULATING HEALTH in any particular size or degree of prominence on its website specimen." End of story. Refusal reversed.

TTABlog comment: Really? How small a font size can one get away with? The smallest one I know of is called "Lilliput," and with it one can write the entire TBMP on the head of a pin. Is that not too small?

Text Copyright John L. Welch 2012.


At 11:03 AM, Blogger Pamela Chestek said...

The discussion by the TTAB may have been terse, but I think it is a trademark use. Given its location and proximity to the company name, which makes it non-descriptive of the product, what else could it be but a slogan?

I question why there wasn't a better specimen, though. Maybe failure of the bona fide use in commerce.

At 11:10 AM, Anonymous Joshua Jarvis said...

The actual use can be seen at I'm going to have to agree with the Examining Attorney on this one -- it would easily be service mark use except that it's barely legible. That is, I can't "perceive it as a service mark" because I can't perceive it at all.

At 11:51 AM, Anonymous Anonymous said...

It seems obvious to me there is no minimum size requirement for a mark. What if the goods were in fact pins and you put the mark on the head of every pin?

There is no rule that says a mark has to be displayed prominently. If it is used very small on a stamp on the bottom of a large clay pot sitting on the ground you would not see it at all. However, that does not make it any less of a mark.

We often have to use a super close up camera to take pictures of marks that are extremely small.

Perhaps an owner would even want to use a very tiny mark secretly on a product to protect against counterfeiting. Would that make it any less of a trademark? Not in my opinion.

Where was the managing attorney here? This was a waste of government resources.

At 6:32 PM, Anonymous Anonymous said...

The case is not about a product or good as the comments suggest. Read the case! These arguments about placement of the mark are not on point. The case is not about placement of a mark on goods, it's about whether a mark will be viewed as such in association with SERVICES. Therefore, the size of the mark or its placement is not restricted by ths size limitations such as that of a pin. The question is whether the mark would be perceived as a service mark not a trademark.


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