TTAB Affirms Rejection of Specimen (Slide Presentation) for Oil Drilling Equipment as "Mere Advertising"

The Board upheld the USPTO's refusal to register the mark SUBSEA 2.0 for various oil and gas drilling equipment, finding that Applicant FMC's specimen of use constituted "mere advertising" and not an acceptable "displays associated with the good." The specimen was described by FMC as "slides from a live sales presentation given to potential customers for purposes of soliciting orders for the equipment." In re FMC Technologies, Inc., Serial No. 88705569 (July 25, 2023) [not precedential] (Opinion by Deputy Chief Judge Mark A. Thurmon).

Section 45 of the Lanham Act provides that, for goods, a mark is in use in commerce if "it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto" and "the goods are sold or transported in commerce."

To constitute a display associated with the goods, "the specimen must satisfy two requirements: (1) it must show use of the mark directly associated with the goods; and, (2) it must be a point-of-sale display or the equivalent of such a display." The Board examined only the second requirement and found that the slide presentation was not the equivalent of a point-of-sale display.

FMC argued that its slide presentation was similar to the trade show display in In re Shipley, which involved certain chemicals used to fabricate integrated circuit boards. The Board noted, however, that  the goods there could be ordered at the trade show booth. In contrast, FMC's slides lacked the detailed product information provided in Shipley.

FMC provided no evidence of its "selling the goods through the slide presentation." The evidence showed only that the slides were "for the purpose of obtaining orders."

When and how would such orders be made? Are they made immediately after the sales presentation, or is a quote submitted or discussed during the sales presentations? We don’t know. Applicant’s explanation and the specimen fail to show any direct connection between the slide presentation and a sale.

The slides did not provide any information about purchasing the goods: no order form, no prices, no way to obtain a quote. The slides are "general marketing information, not detailed product information that would enable one to make a purchase."

Moreover, the slide presentations were confidential, and there was no evidence that the slides were widely used within the relevant market. This "cuts against" FMC's arguments. 

And so, the Board affirmed the refusal.

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TTABlogger comment: Seems like a label on the goods would have been a better idea. If not available, amend the basis to Section 1(b)?

Text Copyright John L. Welch 2023.