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 In re Jakks Pacific, Inc., Serial No. 77404047 (March 14, 2002) [not precedential].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 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.