Test Your TTAB Judge-Ability on this Trademark Specimen of Use
Here we go again! Another specimen of use problem. Applicant Factory Direct applied to register the mark SLEEP BETTER, LIVE BETTER for "sleep products, namely, mattresses, spring mattresses, box springs and mattress foundations." It submitted the specimen shown below, in which applicant's slogan is displayed on a large, circular, illuminated sign hanging from the ceiling of its showroom. The USPTO rejected the specimen on the ground that the mark is not closely associated with the goods, as required by the Act and applicable rules. Factory Direct appealed. How would you rule? In re Factory Direct, Inc., Serial No. 77764096 (February 21, 2013) [not precedential].
Examining Attorney Linda A. Powell maintained that the sign is located some distance away from the goods, and is not associated with the goods as would be shelf-talkers, banners, and other point-of-purchase displays. Although the specimen might be suitable for a service mark application, it is not acceptable for a trademark application.
The Board agreed with the examining attorney. As Judge Bucher pithily observed: "Wishing does not a trademark make."
[A]s the prospective consumer flops down on the floor model to determine the quality and comfort of the innerspring mattress, it is the Serta, Sealy or Tempur-Pedic label on the mattress the customer will be eyeing when making a determination about the quality of the product. By contrast, the prospective consumer will not understand the suspended slogan to be a mark identifying the source of that mattress. Moreover, applicant does not argue anywhere in the prosecution of this application that the applied-for mark appears on or in close proximity to any of the goods for which registration is sought.
The Board therefore affirmed the refusal to register.
Read comments and post your comment here.
TTABlog note: Well, how did you do? Does this appeal belong in the "WYHA?" category?
Text Copyright John L. Welch 2013.
posted by John L. Welch @ 3/11/2013
6 comments
6 Comments:
Another bureaucratic decision by the examining attorney sustained by the TTAB. There is no reason to be so biased against applicants.
I think it would have sufficed for retail services in the nature of mattress and bedding sales.
Applicants, either pro se or through attorneys, seem to continue to misapprehend the difference between a true source of goods and retail store services that offer the goods. Here, an ID referring to retail store services would have been approved and may have been as effective for the applicant, in enforcement against others, as the ID that was actually used. Would I have appealed? Probably yes, but only assuming that re-filing with a services ID, with loss of filing date, would have been problematic due to intervening third party rights; absent that, it would be more efficient to re-file with a services ID.
But why, exactly, does this specimen not show a “banner”? Heck, it’s a huge sign, right above the goods. And the Board does itself no favors by stating that the applicant did not argue that the specimen was proximate to the goods – you can see it right there, in the picture. This is an administrative proceeding, not high-stakes federal court litigation; must we apply such harsh rules of appellate procedure? Moreover, the failure to explain with more specificity what will qualify as a banner or shelf-talker is one reason the Board gets so many appeals of this type. I know their obligation is only to decide the case before them on its facts, but guidance would help everyone. All we can take from this case is that “banner” must have a narrow meaning – a sheet of material behind or above the goods.
Assuming that the TTAB was correct in referring to third-party labels on the mattresses, I agree that it would support an application to register the mark as a service mark for the retail sale of mattresses, etc. If the applicant sells only its own brand of mattress, then it would not even suffice to show retail sale services, because those services consist of gathering together products from various sources in one place.
Since this was an ITU application, both services and goods should have been covered so that when the specimens were available the appropriate ID could have been selected. I would not have appealed.
I agree with the 3rd comment 100%. In one token, this is where TM registration practice is arcane & specimen rules should be relaxed which could also enable more comprehensive proof of use reqirements to ensure that deadwood marks are not registered. But this is the present state of the interpretation of the rules.
As such, this case seems like a case of insufficient TM prosecution experience bringing about a poor result for the applicant because not being wary of this examination "trap."
An experienced TM attorney would probably have known to register the mark as a retail service mark if aware of how the mark was to be used or attempt to negotiate a modification of the ID (assuming considered within scope). But I do understand the rationale for appealing from the perspective of the less experienced TM practitioner or to rectify the situation caused by the clients poor usage of the mark if not fully disclosed to the attorney when filed or if not having listened to attorney's advice.
I happen to know that examiner & LO from when I examined in that Law Office over a decade ago.
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