The Board reversed a refusal to register the mark SPEED EZ for "cleaning brushes for use on automobiles, motorcycles, boats and other vehicles; cleaning brushes for use on wheelchairs; cleaning brushes for use on bicycles," finding Applicant's specimen of use to be acceptable. The examining attorney had maintained that the specimen was a "digitally altered image or a mock-up of the mark on the goods or their packaging" that did not show the proposed mark in actual use in commerce. In re E Z Products, Inc., Serial No. 87906813 (October 21, 2021) [not precedential] (Opinion by Judge David Mermelstein).
The examining attorney explained: "it appears that the applicant has merely printed the applied-for mark on a piece of paper and attempted to attach it to its current product labels. Thus, the submitted specimen cannot be accepted." Applicant's counsel responded that the label "is not a piece of paper, but an actual label that is affixed to the tag."
Counsel argued that "[t]here is no rule that says a label when affixed to the goods cannot cover other graphics (in this case the bubbles), nor is there a rule that says the wording has to be in the same font or match the arrangement of the other wording on the tag."
Applicant provided a photograph of one of its products as it is displayed in the marketplace, showing the specimen tag on the product.
The Board sided with the applicant:
Applicant has stated that it uses the mark in commerce and has provided a full explanation of how it uses the mark by affixing the label to tags for the goods. As pictured above, in the actual sales environment, the provided specimen is exactly how the mark is actually used in commerce. Thus, the submitted specimen and the photographs of actual use are consistent and do not contradict each other. While the mark is not preprinted onto the tag, the fact that Applicant printed a label that it affixed to a preprinted tag is not prohibited nor does it make the specimen a mockup. See In re Chica, Inc., 84 USPQ2d 1845, 1847-48 (TTAB 2007) (temporary nature of specimens is not a characteristic that is “fatal” to registration). See also In re Brown Jordan Co. 219 USPQ 375, 376 (TTAB 1983) (the fact that mark is not stamped on tags affixed to the goods until after order is received is not prohibited).
And so, the Board reversed the refusal.
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TTABlogger comment: Who says a specimen of use has to look professional?
Text Copyright John L. Welch 2021.
I love this opinion - now we need the Trademark Office to realize the opposite is true! I have had many specimens rejected because they look too perfect! I have resorted to asking clients to hold the specimen in their hands (if possible) and take a lousy picture with their phone!
ReplyDeleteGood lord, with the avalanche of garbage specimens coming from you-know-where, why is the EA wasting time on this one?
ReplyDeleteWhat a nightmare over such a trivial issue. The applicant reasonably asked for two reconsiderations that were denied! Really!! Why was the examining attorney so particular needing to spend 7 pages of argument on such a trivial issue!?! The attorney's brief was one page of argument. Glad the nightmare is over.
ReplyDeleteLol to Miriam. I have started doing the same. I tell clients not to send me "beauty shots" of the product but to make it look as amateur as possible and hopefully include a limb or finger in the shot. Needless to say, they are baffled when I return a specimen because it is "too good."
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