Precedential No. 14: TTAB Affirms Three Refusals: Website Specimens Fail to Show Trademark Use

The Board affirmed the PTO's refusals to register the phrase LEADING EDGE TONERS as a trademark for toner, toner cartridges, ink sticks, and related products, on the ground that Applicant's specimens failed to show trademark use for the identified goods. In re Supply Guys, Inc., Serial Nos. 77027094, 86 USPQ2d 1468 (TTAB 2008) [precedential].


Examining Attorney Mary Boagni contended that in Applicant's original specimens (shown above), comprising a FedEx shipping label, the mark "is merely used as a trade name." The Board agreed. The term LEADING EDGE TONERS appears only in the "Ship From" section of the label, where the name of the entity that shipped the goods normally appears. The term has no distinctive stylization other than the use of upper case letters. Thus these original specimens do not demonstrate trademark use for the involved goods.

Applicant's substitute specimens (shown below) comprised webpage printouts showing several uses of the term LEADING EDGE TONERS.

(click on photo for larger picture)
Starting with Applicant's web address www.leadingedgetoners.com, the Board ruled that this use of the term LEADING EDGE TONERS was not a trademark use for the goods sold on the website, but merely identified the website "where applicant conducts its retail sales services."

Applicant also uses the phrase in the upper left corner, in the bar at the top of the webpage, and in the center of the page. The Board noted that "the term LEADING EDGE TONERS is used in phrases where other trademarks, which appear to be owned by third parties, are used to identify the toners and other goods." [E.g., "Leading Edge Toners Best Prices for Tektronix Toners and Xerox Ink Xerox/Tektronix Phaser 560P"].

"The mere fact that applicant is a retailer selling products of others does not by itself establish that applicant's mark, which may function as a trade name or service mark, necessarily also functions as a trademark for the goods applicant sells."

The Board noted that a retailer who sells goods of others does not necessarily have a trademark for those goods. A product may "contain more than one trademark, including a trademark of the distributor as well as the manufacturer." However, the law distinguishes between trademarks and service marks in part based upon how the marks are used.

Looking at all the uses of LEADING EDGE TONERS at the website, the Board could not conclude "that purchasers would understand that the term LEADING EDGE TONERS is used as a trademark for the goods identified in the three applications. Rather, the uses point to the fact that Leading Edge Toners is a retail/distributor of toner and similar products of others."

Therefore, the Board affirmed the refusals.

Text Copyright John L. Welch 2008.