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.

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Text Copyright John L. Welch 2014.