Thursday, March 15, 2012

Test Your TTAB Judge-Ability: Two Classes, One Specimen of Use, Divided Panel

Jakks Pacific, Inc. applied to register the mark BIONICAM for goods in two classes: magnifying glasses, video cameras and microscopes, and similar goods in class 9, and toy magnifying glasses, toy microscopes, and toy video cameras, in class 28. Jakks submitted one specimen label bearing the mark (see immediately below). Examining Attorney Brian Peno refused registration for the class 9 goods on the ground that the specimen shows use of the mark only for toy goods in class 28. Jakks appealed. The Board's opinion runs 46 pages. How do you think it came out? In re Jakks Pacific, Inc., Serial No. 77404047 (March 14, 2002) [not precedential].

Applicant's specimen of use

Applicant's BIONICAM product may be better understood by viewing this video:

Majority: Judge Bucher, writing for the panel majority, observed that a single specimen of use may support registration of a mark in multiple classes. See, for example, In re International Salt Co., 166 USPQ 215 (TTAB 1970) [Specimen bag stamped with the word SALT and the mark TX-10 is proper specimen for both salt for food purposes and salt used in chemical industries]. However, the panel majority agreed with the Examining Attorney that this is not such a case.

the evidence in this record, including several images submitted by applicant that serve as valid specimens, fails to show the applied-for mark used by applicant in connection with “microscopes” qua scientific instruments in Class 9. Rather, the specimens of record demonstrate use of the BIONICAM mark in connection with a mere toy. That is, the specimens of record do not show applicant’s use of its mark in association with the sale of any of the goods specified in International Class 9 in the application.

Dissent: Judge Mermelstein focused on the word "microscopes" in Applicant 's class 9 identification of goods. He maintained that Applicant's specimens are adequate to show use of the mark for microscopes.

Judge Mermelstein noted that while Applicant's products goods are sometimes referred to as toys, the are also sometimes referred to as useful tools. He noted that some purchasers commented on the perceived shortcomings of the device as a microscope, but that merely "highlights the fact that the posters considered the device as a microscope, and not simply as a toy." Even if the device is not a high-quality microscope, it is still a microscope, urged the Judge.

As far as I am aware, International Class 9 is not an exclusive club that may only be joined by microscopes used by post-doctoral researchers in white lab coats, or ones that cost a certain amount of money, are of a certain quality, or are even used by anyone over eight years old. (Every student of science has to begin at some point.)

In sum, Judge Mermelstein concluded that, although the PTO's evidence showed that some purchasers considered Applicant's product as a toy, others found use for it as a microscope. "All of that is entirely consistent with the application claiming use in both Classes 9 and 28." And so he would have reversed the refusal.

TTABlog comment: I am still without power, and energy as well. The judges said a lot more in their 46-page opinion, and I suggest that you read it, if you have lights.

Text Copyright John L. Welch 2012.


At 9:22 AM, Anonymous Anonymous said...

I don't have the patience nor energy to read a 46 page opinion about such a topic. They and the examining corps have made this topic way too complicated. no one could have predicted I guess the internet, but there was a fear when TLRA was being proposed that the specimen issue would give the PTO examiners another "bite at the apple" on something that should be prefunctory. It has come to pass and needs to be buried.

At 11:50 AM, Blogger Frank said...

This is a very bad decision. The dissenter is 100% correct in my view. The ID Manual says "microscopes" in Class 9 and not "microscopes for use in scientific research" or "microscopes for use by scientists." I think the Examiner here is showing that he's been working for the government too long. This restrictive view of the ID Manual serves no public policy function. Would the Examiner allow the same mark to be registered for microscopes and toy microscopes?

At 12:47 PM, Anonymous Anonymous said...

This case isn't so much about specimens as it is about the class system. It highlights the problems that arise when you attempt to categorize all goods under the sun into 45 distinct classes … not all products are so clear cut. The toy is clearly marketed toward older children, where the line between toy and scientific instrument becomes blurred.

Don’t get me wrong, there are obvious benefits to the usage of the class system, but in this case it failed. Applicant is forced to dumb down the classification of its product to that of a mere toy, which may cost it protection against related class 9 instruments in the future.

At 1:06 PM, Anonymous Anonymous said...

While the dissent makes a compelling argument, and I agree, "[e]very student of science has to begin at some point," the applicant's goods appear to be packaged, marketed and sold as toys. Educational toys, by definition, are "useful tools." The applicant should try to gain the broadest scope of protection possible. But this seems to be a channels of trade issue. If opposed by a manufacturer of lab equipment, would class 9 survive?

At 2:26 PM, Anonymous Neill Levy said...

What about mutilation? After watching the video I get the impression that the trademark is CYCLOPS BIONICAM and not BIONICAM.

Aside from mutilation I guess the ultimate question is whether the applicant actually uses that label, or whatever it actually is, in association with its product and not merely as an advertisement.

At 3:23 PM, Anonymous Neill Levy said...

Please change "cyclops" in my previous comment to "eye clops"


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