ZT-1800 Fails to Function as a Trademark for Tranaxles, Specimens of Use Inadequate, Says TTAB

The Board affirmed a bifusal (TM) of the proposed mark ZT-1800 for "land vehicle parts, namely, transaxles," finding that the term is no more than a model designation that fails to function as a trademark, and further finding that Applicant Hydro-Gear's substitute specimens of use are mere advertisements and do not show trademark use. In re Hydro-Gear Limited Partnership, Serial No. 87641657 (December 4, 2020) [not precedential] (Opinion by Judge Melanye K. Johnson).

Hydro-Gear's original specimens of use consisted of six shipping labels (see the example above). Examining Attorney Justin Miller rejected the specimens because they showed the term ZT-1800 being used as the transaxle’s model number, not as an indicator of source. The Board agreed. "“It is well settled that terms used merely as model, style, or grade designations are not registrable as trademarks because they do not serve to identify and distinguish one party’s goods from similar goods manufactured and/or sold by others.” In re Dana Corp., 12 USPQ2d 1748, 1749 (TTAB 1989)."

[T]he Applied-For Mark appears on Applicant’s Shipping Label Specimens in nondescript block lettering, which is displayed on the same line and in the same size, font style, and boldness as the other wording or lettering in that part of the specimen. Indeed, the Applied-For Mark appears in a font size much smaller than most of the other elements on the shipping label; that is, in a manner more befitting informational matter, such as in this case, a model number, rather than an indicator of source.

The Board found that ZT-1800, as it appears on the original specimens of use, "functions as a model designation and not as a trademark."

Hydro-Gear submitted two substitute specimens comprised of (1) electronic images of Applicant’s product brochures (below), and (2) excerpts from Applicant’s website which feature the proposed mark. 

 

The Examining Attorney maintained that the substitute specimens are mere advertising: “Specifically, the screenshot specimens do not show any ‘Add to Cart,’ ‘Shopping Cart,’ or similar functionality commonly used to purchase goods online, and the inclusion of a link to ‘Request Information’ is insufficient because it does not show ability to directly order the goods." The Board agreed again.

Here, we find that the Substitute Specimens, whether used separately or together, are mere advertising for Applicant’s transaxles due to the absence of information sufficient enough for consumers to make a basic purchasing decision. Although Applicant’s stylized alphanumeric term is prominently featured on these specimens, they lack critical information such as pricing, minimum quantities that can be ordered, accepted methods of payment, shipping information, and direct ordering information. Moreover, a virtual shopping cart is nonexistent on the web page specimen.

Hydro-Gear contended that, based on the website and the brochure, orders can be placed via telephone. The Board, however, pointed out that "if virtually all important aspects of the transaction must be determined from information extraneous to the web page, then the web page is not a point of sale." In re Siny, 2019 USPQ2d 127099 at *3 (Fed Cir., 2019).

And so the Board affirmed the refusals to register.

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TTABlogger comment: The Board noted that a model designation may be registrable if it has acquired distinctiveness. Would Hydro-Gear still have a failure-to-function problem in light of the obscurity of the appearance of the mark on the label specimens?

BTW: What's with the term "applied-for mark"? One doesn't apply for a mark. One applies to register a mark.

Text Copyright John L. Welch 2020.