Wednesday, July 02, 2008

TTAB Affirms Rejection of Catalog Page as Trademark Specimen of Use

Distinguishing In re Valenite Inc., 84 USPQ2d 1346 (TTAB 2007), the Board found Applicant U.S. Tsubaki, Inc.'s specimen of use unacceptable, and so affirmed a refusal to register the mark TSUBAKI: THE CHOICE FOR CHAIN for machines and various machine parts. In re U.S. Tsubaki, Inc., Serial No. 78698066 (June 17, 2008) [not precedential].

(Click on photo for larger image)

Applicant Tsubaki submitted an excerpt from a catalog as its specimen of use (see above). Examining Attorney Anthony M. Rinker maintained that the specimen did not qualify as a display associated with the goods. (See Lanham Act Section 45 (definition of "use in commerce") and Rule 2.56(b)(1)).

The Board observed that a display used in association with the goods "is essentially a point-of-sale display designed to catch the attention of purchasers as an inducement to consummate a sale." TMEP Section 904.04(h) states that a catalog may be an acceptable specimen of use if (1) it includes a photo or picture of the goods; (2) the mark is displayed near the depiction of the goods; and (3) it includes information necessary to order the goods (e.g., an order form or a phone number, mailing address, or e-mail address for placing orders).

"However, the mere inclusion of a phone number, Internet address and/or mailing address on an advertisement is not in itself sufficient to meet the criteria for a display associated with the goods. There must be an offer to accept orders or instruction on how to place an order." Id.

Here, the crucial issue was whether the specimen "includes the information necessary to order applicant's chain." Tsubaki contended that, as in Valenite [TTABlogged here], an order form would not be appropriate in light of "the multitude of different types of chains and the need for customization to suit particular applications" which may necessitate "some technical consultation."

The Board was not impressed. First, there was no record evidence as to how applicant and its competitors sell chain, or "whether customers, in fact, 'know that orders are placed over the phone.'" In Valenite, the appellant submitted a declaration verifying that its customers regularly order products by telephoning the customer service department.

Second, here Applicant's specimen does not contain the information necessary to order chains. In Valenite, the webpage specimen contained links to appellant's "Technical Resource Center," which included specification sheets, online calculators, and reference tables, and which provided toll-free customer service telephone numbers. Thus the Valenite website provided "sufficient information that the customer can select a product and call customer service to confirm the correctness of the selection and place an order." Valenite at 1349-1350.

The Board found that Tsubaki's catalog page is more like a fact sheet, catalog page, or brochure. It does not contain "any information normally associated with ordering products by the telephone or the Internet." At best, the specimen provides a telephone number and a web address, but even the website "does not provide a means for ordering applicant's chain online (or by telephone)."

The Board therefore found that Tsubaki's specimen is not a display associated with the goods, and the refusal was affirmed.

Text Copyright John L. Welch 2008.


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