Month: July 2014

Trademark Appeals Board Defines when Catalogs Are Merely Advertising

The Trademark Trial and Appeal Board (TTAB) of the US Patent and Trademark Office has provided an analysis of the elements required to convert a catalog from “mere advertising” to an acceptable “point of sale” specimen for the purpose of trademark registration.

The case of In re Tsubaki Inc. involved U.S. Tsubaki’s use-based trademark application for the mark TSUBAKI: THE CHOICE FOR CHAIN for “industrial machine parts, namely, chains and sprockets.”

The Trademark Examining Attorney refused registration based on sections of the Trademark Act that require an applicant to submit a specimen showing proper trademark use. The Examining Attorney contended that the catalogues submitted by Tsubaki were not acceptable to show the use of the mark in connection with the goods because they were merely advertising material.

Under Section 45 of the Trademark Act, a mark is deemed to be in use in commerce on goods when:

  1. it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
  2. the goods are sold or transported in commerce.

Under Trademark Rule 2.56(b)(1),

A trademark specimen is a label, tag, or container for the goods, or a display associated with the goods. The Office may accept another document related to the goods or the sale of the goods when it is impracticable to place the mark on the goods or packaging for the goods.

According to the Trademark Manual of Examining Procedure (TMEP),  “Folders, brochures, or other materials that describe goods and their characteristics or serve as advertising literature are not per se ‘displays’” and “[i]n order to rely on such materials as specimens, an applicant must submit evidence of point-of-sale presentation.”

Also according to the TMEP, “[i]n appropriate cases, catalogs are acceptable specimens of trademark use,” but catalogs that do not “(1) include[] a picture or a sufficient textual description of the relevant goods; (2) show[] the mark in association with the goods; and (3) include[] the information necessary to order the goods” may constitute “mere advertising” material and thus not qualify.

In the Tsubaki case, the TTAB explained that catalogs can serve as acceptable specimens of trademark use where they include at least the following:

  • a picture or sufficient textual description of the relevant goods,
  • the mark in association with the goods, and
  • information necessary to order the goods.

With respect to the last factor, a phone number, URL, or mailing address in an ad describing a product, standing alone, is not sufficient.

The TTAB concluded,

After reviewing applicant’s catalogs, prospective customers are not yet at the point of purchase and would need to contact applicant to obtain additional information. It is only after obtaining such information, which is not provided on the specimens, that the purchaser would be in a position to make a purchasing decision.

The specimens simply do not contain adequate information for making a decision to purchase the goods and placing an order and, therefore, we find that applicant’s specimens are advertisements that do not show the mark TSUBAKI: THE CHOICE FOR CHAINS used in commerce as a trademark for chains and sprockets. The mere listing of telephone numbers for corporate headquarters and a website URL does not turn what is otherwise an ordinary advertisement into a point-of-sale display or a “display used in association with the goods” and, thus, into a valid specimen showing technical trademark use.

If you have questions about the trademark application process, contact our office to arrange a free initial consultation with one of our trademark attorneys.

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Photo Attribution: “Renthal R1 Chain for Motocross bikes.” by Renthal1969