Catalogs as Specimens
Earlier this month, the TTAB refused registration for the mark TSUBAKI: THE CHOICE FOR CHAIN pursuant to Sections 1 and 45 of the Trademark Act on the ground that applicant U.S. Tsubaki, Inc. failed to submit a specimen showing proper trademark use. Applicant submitted six (6) specimens with its application – all of them catalogs or advertising brochures. At issue is whether the specimens are mere advertising or point-of-sale displays, designed to induce a purchase. The opinion is a precedent of the TTAB.
The TTAB’s decision whether the catalogs served as displays was a question of fact. Although each specimen contained applicant’s contact information (address, phone number, internet address), the TTAB held it did not provide a “means for ordering the product.” Thru its specimens, the applicant effectively required the customer to contact the company to obtain additional information before placing an order. The specimens lacked an order form, pricing information and the like. The Board said the specimens had no offers to accept orders, no special instructions for placing orders, no list of minimum quantities required for an order, nor was there any information on how to pay for the goods, or how the goods would be shipped anywhere on the specimens. Two of specimens even directed customers to applicant’s distributor, and not applicant.
The TTAB shared some harsh words in this opinion. It admonished that “the use of advertising material in connection with the sales of a product does not ipso facto make such advertising material into a display used in association with the goods sufficient to support technical trademark use for registration.” The purpose of advertising is to promote a product or induce people to buy it. A specimen must do more – it must consummate the sale.
In this case, the customer was required to take additional steps from the submitted specimens to consummate the sale. For this reason, the materials submitted as specimens were deemed to be mere advertising and not point-of-sale displays. Therefore, registration was refused.
This may seem like a harsh outcome, but it is a relatively straightforward opinion. If you peruse the catalogs of Land’s End, LL Bean, and other mail order businesses, you will notice there is as strict call to action in those catalogs. Prices are clearly marked, there is a stock number provided, and consumers know exactly what they need to do to make a purchase when they either call the company or log onto that company’s website. No additional research is required in order to consummate a sale. It is clear after this case that merely providing your company’s address, phone number, and/or internet address will not be enough to convert an advertising brochure into a point-of-sale display.
If you are company who wants to support trademark use via a catalog, you must abide by the factors outlined in this decision, which follows prior case law. These requirements are also more loosely defined in Trademark Rule 2.56(b)(1) TMEP section 904.03(g). If you need assistance, please feel free to Contact us for assistance.
Photo courtesy of StockFreeImages.com
Stacey C. Kalamaras is the founding partner of Kalamaras Law Office, LLC. She has extensive intellectual property experience with a particular focus on trademark prosecution and enforcement. She has protected some the world’s largest brands in more than 150 countries and specializes in helping small and medium sized businesses grow and protect their brands. Contact her at firstname.lastname@example.org.
Stacey is also the founder and lead instructor of Trademarkabilities®, an online trademark academy for lawyers, whose mission it is to prepare lawyers to be confident and effective practitioners before the USPTO. To learn more, please visit https://www.trademarkabilities.com/.