Tuesday, July 02, 2019

Precedential No. 17: Specimens Fail to Show Use of Mark for Retail Store Services, Says TTAB

The Board affirmed a refusal to register the mark THE CARDIO GROUP & Design for "retail store services featuring medical devices," finding that applicant's specimens of use were unacceptable because they failed to show the mark used in connection with the services. Although applicant is engaged in selling products, "nothing in the documents submitted by Applicant ... refer to a retail store (of either on-line or brick-and-mortar variety) or create an association of any kind between THE CARDIO GROUP and design and a retail store service." In re The Cardio Group, LLC, 2019 USPQ2d 227232 (June 20, 2019) [precedential] (Opinion by Judge Karen Kuhlke).

The question for the Board, of course, was "whether the evidence of Applicant's use of its mark creates an association between the mark and Applicant's retail store services."

"Specimens showing the mark used in rendering the identified services need not explicitly refer to those services in order to establish the requisite direct association between the mark and the services, but 'there must be something which creates in the mind of the purchaser an association between the mark and the service activity.'" In re Way Media, 118 U.S.P.Q.2d 1697, 1698 (T.T.A.B. 2016) (quoting In re Johnson Controls, Inc., 33 U.S.P.Q.2d 1318, 1320 (T.T.A.B. 1994)).

To create such a "direct association," the specimens must both contain a reference to the service and identify the service and its source. In re Way Media, 118 U.S.P.Q.2d at 1698.

Applicant submitted a website screenshot, a confidential sales agreement, and an invoice, all displaying the subject mark. However, the website specimen presented the results of an analysis from a medical device but did not refer to any retail store services. [See Nice Agreement definition of "retail store services."] The sales agreement did not indicate how the sale was made (i.e., whether through a retail store or personal sales call or otherwise). The invoice likewise did not refer to any activity that might be considered a retail store service.

While the two documents may evidence a November 2, 2015, transaction involving the sale of a medical device, they do not reveal, for example, how the goods were, if at all, advertised, brought to the attention of, or sold to a customer. Thus they do not evidence advertising that the goods were available via retail store services. More generally, these documents reflect product sales. They do not indicate that any service, in any form, was provided.

In assessing the adequacy of specimens, the USPTO must consider any explanations offered by an applicant that "clarify the nature, content, or context of use of the specimen that are consistent with what the specimen itself shows." See In re Pitney Bowes, Inc., 125 U.S.P.Q.2d 1417, 1420 (T.T.A.B. 2018); In re DSM Pharms., Inc., 87 U.S.P.Q.2d 1623, 1626 (T.T.A.B. 2008). Applicant stated that its services are in the nature of activities provided by a retail store - i.e., it is selling goods - and it argued that such activities do not have to take place in an actual retail store. [The Board noted that retail stores services may be offered in various ways, including through physical locations, catalogs, or online. Applicant's specimens of use did not suggest any of these.] The Board, however, found that this explanation did not clarify the matter.

Applicant also tried to amend its description of services to retail sales services, but the Examining Attorney Laura Golden refused to enter the amendment, contending that the amendment would improperly broaden the scope of the services. The Board found that the proposed change simply restated that applicant's specimens "reflect a product sale" and not that any retail store services were provided.

Considering all the specimens along with applicant's explanations, the Board found "no direct association in any of the specimens between THE CARDIO GROUP and design and any type of retail store service."

Nothing in these documents demonstrates that consumers would perceive THE CARDIO GROUP and design as a source indicator for retail store services. Ultimate consumers who choose to purchase Applicant’s products very well may understand they are engaging in a retail sales transaction with Applicant, but even if this is assumed, it would not establish that such consumers, prior to making their decision to make such a  purchase, were exposed to any advertising or promotion of Applicant as the operator of a retail store selling medical devices.

And so the Board affirmed the refusal under Sections 1 and 45 of the Lanham Act.

Read comments and post your comment here.

TTABlog comment: Should applicant have recited the services as "distribution services in the field of medical devices?"

Text Copyright John L. Welch 2019.


At 9:50 AM, Anonymous Anonymous said...

It's important to remember that the mere act of selling one's own products and/or services is not considered a registrable service because it is done primarily for the seller's benefit and not the benefit of others. TMEP §§1301.01(a)(ii), 1402.11. Thus, the applicant's attempt to amend to "retail sales" wouldn't be acceptable even if it wasn't considered to broaden the original description. I think here, if the applicant is selling third-party goods directly to others (as the specimens and applicant's statements seem to suggest), a better ID would've been "retail services by direct solicitation by sales agents in the field of medical products," since it suggests a face-to-face transaction instead of providing a store where someone can come and shop.

At 10:08 AM, Blogger Ratty said...

Properly omitted from the decision, because it would be subjective and unnecessary, is the anomaly of requiring a purported retail purchaser to sign a confidential sales agreement for a $10,500 system including a transducer, computer and promotional materials. When's the last time you went to a store and were asked to sign a confidentiality agreement?


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