Thursday, December 08, 2016

TM Specimen Fails to Associate Mark With Goods, Says TTAB

The Board affirmed a refusal to register the mark shown below, for "direct current to direct current converter whose use in a battery operated electronic device allows the device to utilize more of the battery's stored energy, electronic circuits, integrated circuits," because the specimen of use failed to show the mark associated with the goods. In re 2nd Life Tech, LLC, Serial No. 86415828 (December 2, 2016) [not precedential].

Applicant's specimen of use consisted of a Kickstarter page displaying the mark in the upper left hand corner beneath the KICKSTARTER mark. The page refers to a "project," "The Problem," and "The Solution," and under the heading "The Solution" appears a picture of a prototype of applicant's device attached to an Energizer brand battery.

A web page that displays a product may constitute a "display associated with the goods" under Section 45 of the Lanham Act if it (1) contains a picture or description of the goods, (2) shows the mark in association with the goods, and (3) provides a means for ordering the goods.  See TMEP Section 904.03(i).

The Board found that applicant did not satisfy the second prong of the test. It concluded that "the applied-for mark is not displayed in a manner that would enable a viewer to easily associate the mark with the goods." See In re Osterbert, 83 USPQ2d 1220, 1223 (TTAB 2007). [TTABlogged here]. The only product depicted on the specimen web page bears a different design mark (a lightning bolt) and is identified by the word mark BATTERY VAMPIRE.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: WYHA?

Text Copyright John L. Welch 2016.


At 9:07 PM, Blogger Pamela Chestek said...

Not only would I have appealed, I think the TTAB is wrong. What else would it be a trademark for? I hope they try the Federal Circuit (and good experience for the student).

At 8:10 AM, Blogger John L. Welch said...

I agree with the Board. Why would anyone (other than a TM lawyer with a liberal view of what constitutes a proper specimen) think it's a trademark at all?


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