Thursday, October 20, 2011

Test Your TTAB Judge-Ability on this Trademark Specimen of Use

The PTO refused registration of the mark ORGANIZED GOES BEYOND ORDINARY for "plastic storage containers for household or domestic use" on the ground that Applicant failed to provide an acceptable specimen of use. The specimen submitted comprised a screenshot from Applicant's website (immediately below), which Applicant contended constituted a "display associated with the goods." How would you rule? In re DV International, Inc., Serial No. 77501020 (September 29, 2011) [not precedential].

Examining Attorney Shaila A. Settles maintained that the specimen is merely advertising material and is not an acceptable trademark specimen. The Board agreed.

The Board found two infirmities with the specimen. First, it does not appear as a source indicator. The image "appears to be the first slide in an online presentation where the viewer who is ready immediately to make a purchase from applicant's kitchen or office collection can 'SKIP' the next dozen promotional slides."

To the person viewing such a slide show, the expression “Organized goes beyond ordinary” is no more likely to be perceived as a source indicator for these goods than would be hypothetical, prosaic slogans like “See the difference,” “Sophisticated design,” or “Soft, Textured Surface,” etc.

Second, the specimen is unacceptable as a "website-based" specimen, as the Examining Attorney contended. Web pages have been found acceptable as displays associated with the goods when the screen-print of the web page also contains "adequate information for routinely and easily placing orders for the goods." [See Valenite, Dell, Anpath, and Quantum].

As in the physical world of a catalogue (Land’s End, Inc. v. Manbeck, 797 F. Supp. 511, 24 USPQ2d 1314, 1316 (E.D. Va. 1992)), so it is in the case of the virtual, online world –- the critical threshold query is determining whether the specimen has the nature of a point-of-sale display.

Here, the purported point-of-sale display does not provide the consumers with the information normally associated with ordering products of that kind. The fact that the applied-for mark appears close to an image of the goods is not enough.

[H]ere we have only what appears to be the first slide of a series, with no idea what the skips, slides, clicks or links may be before reaching critical information (e.g., details of sizes, features, prices, ways to order, etc.) about specific goods. A prospective purchaser cannot be presumed to be at the point of making a purchase at the time this particular advertising copy appears on the screen.

The Board concluded that the specimen is merely promotional material and not a display associated with the goods.

TTABlog note: The Board observed that if Applicant were seeking to register the mark MADE SMART, this might be a good specimen, "much as would a photograph of the same label on a storage bin."

Text Copyright John L. Welch 2011.


At 10:10 AM, Anonymous Anonymous said...

But if the mark were being registered for ANY SERVICE, that would not be a good specimen because it does not also spell out the service in words.

Bah humbug.

At 3:51 PM, Anonymous Bart Selden said...

How funny - I thought they were selling Martha Stewart organizers, because the name on the bin shown in the specimen is at an angle, and I only picked up on the famous stylized initials M and S. They're really very similar. Check for a sampe of her signature.


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