Precedential No. 11: Specimen Webpages Fail the "Display-Associated-With-the Goods" Test, Says TTAB

There's nothing like a TTAB specimen-of-use case to cure your insomnia. Applicant MN Apparel applied to register the mark MOSTLY MN ONE WITH EVERYTHING for t-shirts, caps, and the like, but ran into two refusals aimed at its specimens of use: mutilation and failure to show use as a trademark. In a less than pellucid opinion, the Board rejected the first refusal but affirmed the second. In re MN Apparel LLC, 2021 USPQ2d 535 (TTAB 2021) [precedential] (Opinion by Judge Peter W. Cataldo).

Mutilation: In a Section 1(a) application, the drawing of the mark must be a "substantially exact representation of the mark as used on or in connection with the goods." Trademark Rule 2.51(a). 

Applicant's specimen of use comprised five Internet webpage excerpts from the company website. The examining attorney claimed that the specimen showed applicant's house mark or tradename MN APPAREL along with different forms of the proposed mark, and therefore that these forms of the mark could not be considered "a substantially exact representation of the mark on the drawing page." [Note; this is the reverse of what the Rule says - ed.].  The Board was unimpressed. It noted that an applicant may apply to register any element of a composite mark that creates a separate and distinct commercial impression. See, e.g., In re Chem. Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828, 1830 (Fed. Cir. 1988); Institut Nat’l des Appellations D’Origine v. Vintners Int’l. Co., 954 F.2d 1574, 22 USPQ2d 1190, 1197 (Fed. Cir. 1992). Here, the house mark was separated from the versions of the  proposed mark and so the latter created separate commercial impressions.

Next, the examining attorney maintained that none of the specimen webpages showed the exact mark of the drawing. [Again reversing the language of the Rule - ed.]. Instead of MOSTLY MN ONE WITH EVERYTHING, the following variations on the specimen webpages:

• MOSTLY MN AND ONE WITH EVERYTHING
• MOSTLY MN, ONE WITH EVERYTHING
• MOSTLY MINNESOTA ONE WITH EVERYTHING
  

The Board pointed out that "exact match" is not the standard, but rather "substantially exact representation." "A drawing displaying only a 'minor alteration' of the mark that 'does not create a new and different mark creating a different commercial impression' from the matter shown in the specimen is acceptable." In re Schehter Bros Modular Corp., 182 USPQ 694, 695 (TTAB 1974).

The Board found MOSTLY MN, ONE WITH EVERYTHING to be a substantially exact representation of MOSTLY MN ONE WITH EVERYTHING, since the added comma does not change the mark's meaning or commercial impression. [Again reversing the language of the Rule - ed.]. Likewise with MOSTLY MN AND ONE WITH EVERYTHING. However, not so with MOSTLY MINNESOTA ONE WITH EVERYTHING, despite the fact that MN is a widely recognized abbreviation for Minnesota. The two terms are significantly different aurally and visually, and further the term MN in applicant's proposed mark may not be perceived as the state abbreviation. 

Use as a Trademark: Secondly, the examining attorney argued that the specimen comprises mere advertising and not displays associated with the goods, and therefore the specimen does not show proper use of the mark in commerce. The Board agreed.

[T]he specimen must contain sufficient practical information about the goods and a way to order the goods, so as to put the prospective customer at the point of purchase. Examples include a catalog order form, a telephone number through which the consumer is invited to call in a purchase, Lands’ End, 24 USPQ2d at 1316, or in the case of webpage specimens, a way to “plac[e] orders for the goods via the Internet,” Anpath Grp., 95 USPQ2d at 1381, such as selecting goods and adding them to a virtual shopping cart.

A specimen fails to qualify as a point-of-sale display if it contains more limited information and would require the customer to "contact applicant to obtain preliminary information necessary to order the goods" before an order could be placed.  Anpath Grp., 95 USPQ2d at 1381; see also U.S. Tsubaki, 109 USPQ2d at 2005.

The Board thumbed through the five pages of applicant's specimen of use and found them wanting. Only one of the five displayed applicant's goods, along with pricing and a "shop now" button, but no version of the proposed mark appeared on the page. The other four pages "fail to include sufficient information to function as point of sale displays associated with the identified goods." See, e.g., Anpath Grp., 95 USPQ2d at 1381; U.S. Tsubaki, 109 USPQ2d at 2005.

And so, the Board affirmed the second refusal to register. 

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TTABlogger comment: I suspect this application was deemed precedential because it presents a rare instance in which the Board ruled against a law school clinic. I don't see any other reason.

Text Copyright John L. Welch 2021.