Friday, September 25, 2015

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 In re Johnson & Johnson, Serial No. 85286071 (September 22, 2015) [not precedential].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.

Read comments and post your comment here.

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.


At 9:08 AM, Anonymous Anonymous said...

From a practical standpoint, was there really no other specimen that the applicant could have submitted? And if not, is federal registration warranted for a slogan that is used only on a coupon?

At 9:22 AM, Anonymous Miriam Richter, Ft. Lauderdale said...

I like this case but I too would have liked to see proof that it actually worked the way they predicted. Then again, given the size of the Safeway chain, I'm certain that there were consumers who got the coupon and it acted as a reminder that they needed baby lotion and then, did in fact, purchase it after all.

Then the question becomes one of when did they actually use it. Coupons work to drive sales and that is the only reason they are offered, but... consumers who use coupons tend to always use coupons and those who don't, don't. I'm certain there is research by some market research group that addresses this, so why didn't J&J cite it? It leads me to think that the coupons were used at a later time.

Granted, this is all conjecture on my part but as pointed out, so is the TTAB's reasoning!

At 9:46 AM, Blogger Andy K. said...

Bad decision. A coupon is an advertisement to buy a product whether issued in a store, in a newspaper or through a mailer. A coupon does not fit the stated criteria for an acceptable specimen used in connection with goods.

Perhaps we can all use this decision to stand for the proposition, when an argument is made by an Appellant that sound like it might be reasonable, the Board can simply ignore the TMEP regulations and reverse the prevailing refusal if it so chooses.

At 12:58 PM, Anonymous Sean Garrison - Phoenix, AZ said...

To me, this highlights the need to revisit the statutory definition of "use in commerce" as it applies to marks for goods for purposes of registration. That is where the affixation/product display limitation comes into play. I'm not sure the consequences of that limitation really make sense. I agree with Andy K that a coupon is a coupon no matter what it's source. The gyrations that the Board goes through (without evidence) to turn this coupon into a product display do not make sense if you really think about it. All coupons are designed to consummate a sale, and nowadays e-coupons are becoming prevalent. So, are we saying that an e-coupon bearing a mark for a product is a legitimate specimen if I download it to my mobile phone while I'm in the grocery store, but if I print that same coupon on my home printer and take it to the store, it doesn't qualify? That would be a silly distinction, no?

At 1:32 PM, Anonymous Anonymous said...

I agree with Anonymous 1. Also, the amount of time and fees spent on this issue was silly in view of the fact there had to be a better specimen. If there was not then why do you need a registration and where was the advise to help avoid the issue in the first place?

I doubt anyone who got the coupon ever noticed the "slogan" anyway.

I guess having another decision that further defines a display is good. However, at the end of the day, using such a specimen is risky because a proper specimen is what an examiner decides on any given day.

I would advise any client not to try it unless they just enjoy paying me money. I have never found such a client.

At 5:19 PM, Anonymous Anonymous said...

My guess on the no alternative specimen question is that they jumped the gun on the SOU and filed with the coupon but didn't have another specimen on hand that could be used with the same date of first use (either that or they were out of extensions). The may have had another specimen by the time the rejection came through but couldn't use the same date. Instead of filing a new application and losing priority, they decided to fight it. That's only conjecture, of course, but I could see it happening at my company (although, we would probably just refile).


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