Three Recent Affirmances in Unacceptable Specimens of Use Cases

Okay, I admit it's an awkward title, but it's an awkward time. I always wonder, in applications where specimens of use are rejected by the Examining Attorney, whether it would be better to amend to an intent-to-use basis (in order to buy some time to get a proper specimen into use) than to appeal and lose. Anyway, here are three recent specimens of failed specimens of use.

In re Iguana Yachts, Serial No. 87868306 (September 17, 2020) [not precedential] (Opinion by Judge Cindy B. Greenbaum). [Affirming rejection of specimens of use for the mark PRO IGUANA & Design for "Boats; amphibious vehicles; professional boats and professional amphibious vehicles in the fields of security, military, rescue and transport of goods and people." The specimens comprised: (1) a large sign or banner propped up on the floor, supported on the left and right lower front corners by the side arms of two red couches or chairs (see below); (2) a business card or "distributor hand-out from trade show"; and (3) a website extract with a "custom build quote form." There was no evidence that the banner or the business card were displayed or distributed at a trade show. Likewise there was no evidence as to how the quote form was used to place orders. In short, there was no evidence, only attorney argument, that would qualify these items as point of sale displays rather than mere advertisements.]

In re Charlie's Enterprises LLC, Serial No. 88200043 (September 21, 2020) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Affirming rejection of specimen of use for the mark JUST SAY PEAS OK PRODUCE & Design, for Peas, fresh; Vegetables, fresh." The specimen consisted of “[a] picture of the trademark phrase in use as a trailer wrap.”  The Board observed that in some cases like distribution of bulk goods, a trailer wrap my be a common method of displaying the mark and thus an acceptable specimen, but a trailer wrap is not common packaging for vegetables. In addition, the mark in the application drawing did not match the display on the truck.]

In re Systemax Inc., Serial Nos. 88150991 and 88151072 (September 23, 2020) [not precedential] (Opinion by Christen M. English) [not precedential]. [Affirming rejection of specimens of use for the mark SYSTEMAX & Design for "holding company services, namely, providing business management, business administration, and human resource management services to subsidiaries and affiliates.”  The specimens comprised website screenshots and copies of annual reports, none of which showed an association between the mark and the recited holding company services. Applicant's request to amend the filing basis of the application to Section 1(b) intent-to-use was denied as untimely.] 

 

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TTABlog comment: Maybe someone should offer a webinar on specimens of use.

Text Copyright John L. Welch 2020.