Monday, March 10, 2014

Precedential No. 8: Catalogs Lacked Necessary Ordering Information to Qualify as Trademark Specimen, Says TTAB

Once again visiting the "catalog as trademark specimen" issue, the Board affirmed a refusal to register the mark TSUBAKI: THE CHOICE FOR CHAIN for "industrial machine parts, namely, chains and sprockets" on the ground that Applicant Tsubaki failed to provide an acceptable specimen of use. Tsubaki submitted six catalogs in which potential purchasers were invited to call the company phone number to obtain information and place an order. That was not, however, sufficient information to qualify the catalogs as acceptable specimens of trademark use. In re U.S. Tsubaki, Inc., 109 USPQ2d 2002 (TTAB 2014) [precedential].

Trademark Rule 2.61(b) states that "[a] trademark specimen is a label, tag, or container for the goods, or a display associated with the goods." TMEP § 904.03(g) explains that a qualifying "display" will essentially comprise “point-of-sale material such as banners, shelf-talkers, window displays, menus, and similar devices.”

Tsubaki argued that its catalogs are acceptable as specimens because they satisfied the requirement set forth in TMEP §904.03(h) that they "offer to accept orders and provide instructions on how to place an order.” Examining Attorney Michele-Lynn Swain maintained that the catalogs do not contain the necessary ordering information and therefore are mere advertisements for the goods.

The determination of whether a specimen of use is a display associated with the goods or merely advertising is a question of fact: "whether the purported point-of-sale display provides the potential purchaser with the information normally associated with ordering products of that kind." In re Anpath Group, Inc., 95 USPQ2d 1377 (TTAB 2010) (flyer that provided website and/or a telephone number for contacting applicant’s sales representatives lacked sufficient information to be considered a display associated with its goods). Reviewing Tsubaki's specimens of use, the Board agreed with the Examining Attorney:

Applicant's catalogs do not have the characteristics that would make a catalog a point-of-sale display (e.g.. sales forms, ordering information, minimum quantities, cost, payment plans, shipping, etc.). After reviewing applicant’s catalogs, prospective customers are not yet at the point of purchase and would need to contact applicant to obtain additional information. It is only after obtaining such information, which is not provided on the specimens, that the purchaser would be in a position to make a purchasing decision.

The specimens simply do not contain adequate information for making a decision to purchase the goods and placing an order.... The mere listing of telephone numbers for corporate headquarters and a website URL does not turn what is otherwise an ordinary advertisement into a point-of-sale display or a “display used in association with the goods” and, thus, into a valid specimen showing technical trademark use.

Despite the assertions of Tsubaki's attorney, there was no evidence that Tsubaki's industrial chains were typically ordered by telephone following customer review of technical information in the catalogs and consultation with Tsubaki's employees. Compare In re Valenite Inc., 84 USPQ2d 1346, 1348 (TTAB 2007) (appellant submitted the declaration of its director of marketing who testified that appellant’s customers, after reviewing information a at Valenite's website, sufficient to make a selection, regularly contact the customer service department by telephone to confirm the correctness of the selection and place an order).

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

Text Copyright John L. Welch 2014.


At 9:00 AM, Anonymous Anonymous said...

So if the catalog contained all the required information, the 'mark' suddenly begins functioning as a mark in the mind of a consumer? What is it doing now? Does anyone at the USPTO actually think?

At 9:10 AM, Anonymous Anonymous said...

Is fraud the concern? As if specimens for goods aren't 'manufactured' every day..

At 9:29 AM, Anonymous Anonymous said...

Bureaucrats' motto: "Never pass up an opportunity to tell a citizen no."

At 10:26 AM, Anonymous Anonymous said...

If INTA wants to actually do something for the US contingent, they could work on this one. The intent of ITU, indeed the intent of having specimens is to show that there is legitimate use, not to satisfy a paralegal who is playing the old gotcha game. More than a few of us back on the TLRA days were concerned that the PTO's 2nd bite of the apple with specimen filing could wind up with such wasted time/money and people in the PTO justifying their existence. If they think that they are adding value, they are not. If they think that they are honestly applying the law, then it needs to be amended because this a waste of time on the part of the PTO and applicants. And it is denying legitimate users trademark registrations which is all the more contrary to the point of applying.

At 10:26 AM, Blogger John L. Welch said...

The problem stems from trying to shoehorn a catalog to fit into "display associated with the goods." What's needed is a change in the Trademark Rules to recognize catalogs as trademark specimens, period.

At 11:05 AM, Anonymous Anonymous said...

I agree with John Welch's comment. There is no good reason for not allowing catalogs to function as a specimen for goods. In fact, there is no good reason for not allowing advertising to function as a specimen for goods as it does for services. Advertising is just as much proof of use for goods as it is for services.

At 11:08 AM, Anonymous Anonymous said...

There is no reason not to allow catalogs--or advertising in general--to function as a specimen of use for goods as it does for services.

At 10:06 AM, Anonymous Lou Ebling said...

Talk about form over substance. Another win for the bureaucrats.

At 12:14 PM, Anonymous Anonymous said...

See footnote 13 of the decision. Why the heck didn't Tsubaki's counsel just get a declaration after being told in 2008 to follow Valenite's model? It would have been really simple.

At 12:49 PM, Anonymous Anonymous said...

The decision is just and comports with the actual rule - and anyway, in most cases a catalog will have a good photo of the mark on products or packaging therefor. The REAL problem is that post-reg has gotten so lazy, that they click and accept anything, including brochures with no phone number or photo of goods, letterhead, etc. The client doesn't understand when you tell them that they aren't good specimens and particularly in the SOU context constantly reminds them of how your "spaghetti against the wall" approach to renewal could be successful despite your advice that the specimens were bad, and now you are telling them that the EA won't take their SOU spec. Literally, you can now get post-reg to approve a ham sandwich.

At 11:54 AM, Blogger Ron Coleman said...

I was also wondering, as 12:14 asks, why the attorney didn't just provide a substitute specimen?


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