TTAB TEST: Is a Coupon an Acceptable Specimen of Use for Baby Lotion?
The USPTO refused registration of the mark EARNING TRUST WITH EVERY BOTTLE for "facial and skin cleansers; facial and body washes soaps; shampoos; body lotions," deeming Applicant Johnson & Johnson's specimen of use unacceptable. J&J maintained that its coupon functions as a point-of-sale display that is given to the customer at the cash register and can be redeemed in the same store. How do you think this came out? In re Johnson & Johnson, Serial No. 85286071 (September 22, 2015) [not precedential].
The coupon specimen states that 75 cents may be saved "on any JOHNSON'S Baby Wash or Lotion product" and depicts two bottles of the goods, with the mark adjacent the bottles. The examining attorney contended that the coupon is merely advertising, not a point-of-sale display.
It is well established that mere advertising is not a proper specimen for registration of a trademark. Most of the pertinent cases concern webpages. In re U.S. Tsubaki directs that the Board consider whether "the coupon has a 'point of sale nature' and if it is designed to catch the attention of the purchasers as an inducement to consummate a sale."
In Lands' End Inc. v. Manbeck, the E.D. Va. district court ruled that a catalog that depicted the product with a description thereof, along with ordering information and a sales form, constituted a display "associated with the goods," in satisfaction of the Section 45 definition of "use" of a trademark.
In In re Anpath Group, Inc., the TTAB rejected a pamphlet and a flyer as specimens of trademark use because they lack a sales form and ordering information that would enable the purchaser to place an order.
In In re Shipley Co., the Board reversed a refusal of a specimen comprising a photo of a booth at a technical trade show because not only were sales materials available in the booth, but sales personnel were available to take orders.
Here the coupon displays an image of the goods with the applied-for mark adjacent the goods. It identifies the retailer where the goods can be purchased and the coupon is dispensed "in the very store where the goods are located and offered for sale." As in Shipley, sales personnel are directly available to answer questions regarding pricing, quantities, or location in the store. "In fact it is the cashier who hands the coupon to the customer, and the cashier, by presenting the coupon to the consumer, begins the association of the mark with the goods." The customer may be enticed by the coupon to "turn around and pick up the product ... and make the purchase."
The temporal separation between the customer's receiving the coupon, then perceiving the mark on the coupon, and then purchasing the goods, does not preclude the coupon being a display associated with the goods. In the same sense that the infomercial in In re Hydron served as a point-of-sales specimen of use, even though two minutes passed between the display of the mark and the display of ordering information for the goods, applicant's coupon functions as a point-of-purchase display.
In our view, the customer will associate the mark with the goods once presented with the coupon that contains the mark and a depiction of the goods by the cashier, in the very store in which the goods are offered for sale. Because the coupon is dispensed when the customer is in the store, and prior to his or her departure from the store, the coupon is intended to consummate a sale.
The Board therefore reversed the refusal to register.
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TTABlog comment: Seems like there was a lot of attorney argument regarding how the coupon would be used, rather than actual proof. Was the Board essentially taking judicial notice of that?
Text Copyright John L. Welch 2015.