A catalog of errors

To register a trademark you need to provide the Patent and Trademark Office with something called a “specimen.”  The definition of “specimen” under the PTO’s rules, besides providing one reason that it’s better to be a PTO examining attorney than a doctor, is “a label, tag, or container for the goods, or a display associated with the goods.”  What could be a better specimen, you’d think, then a catalog, then?

Just about anything, actually.

A while ago I wrote a “threat? or menace?” post about the terrifying dangers of do-it-yourself trademark registrations.  My main point was that people are mistaken if they believe they have “succeeded” in the process of trademark registration if they ultimately snag that handsome certificate from the Patent and Trademark Office with its shiny seal, knighting them Sir Registered of Trademark.

The true test of a trademark registration is not how it looks in a frame on the wall.  It is how well that registration protects the registrant’s trademark rights.  That, in turn, is a function of what it is made of.  So unless you’re very lucky, you need a lawyer who knows trademark law to guide you through the application process to ensure that the registration is made of the right stuff.

On the other hand, yeah, you do want to get that registration!  And — amateur or professional — you’re not going to get it by submitting a catalog as a specimen.  I first wrote about this case further down in the procedural chain; now John Welch reports:

Trademark Rule 2.61(b) states that “[a] trademark specimen is a label, tag, or container for the goods, or a display associated with the goods.” TMEP § 904.03(g) explains that a qualifying “display” will essentially comprise “point-of-sale material such as banners, shelf-talkers, window displays, menus, and similar devices.” Tsubaki argued that its catalogs are acceptable as specimens because they satisfied the requirement set forth in TMEP §904.03(h) that they “offer to accept orders and provide instructions on how to place an order.” Examining Attorney Michele-Lynn Swain maintained that the catalogs do not contain the necessary ordering information and therefore are mere advertisements for the goods.

The TTAB agreed, writing as follows in In re U.S. Tsubaki, Inc., Serial No. 85267349 (March 7, 2014):

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…. 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.

Well, rules is rules, it seems.  And the rules is that a “display” has to be at the “point of sale.”  That, the rules say, constitutes the use in commerce required by Section 45 of the Trademark Act, which, oddly enough, does not (as the opinion points out in a footnote) require the same thing for “service marks” — only for trademarks, classically conceived as relating to tangible goods. I recommend reading the comments at this TTABlog® post.  John’s commenters tend to be trademark law pros.  And you’ll see pros, and cons, expressed very pungently on this question.  A sample:

John L. Welch said… The problem stems from trying to shoehorn a catalog to fit into “display associated with the goods.” What’s needed is a change in the Trademark Rules to recognize catalogs as trademark specimens, period. 10:26 AM

Anonymous said…

I agree with John Welch’s comment. There is no good reason for not allowing catalogs to function as a specimen for goods. In fact, there is no good reason for not allowing advertising to function as a specimen for goods as it does for services. Advertising is just as much proof of use for goods as it is for services. 11:05 AM

Anonymous said…

There is no reason not to allow catalogs–or advertising in general–to function as a specimen of use for goods as it does for services. 11:08 AM

So yes, rules is rules, but the rules, it seems, are very odd here.  The oddness is not solely a function of the distinction between goods, which have this strict point-of-sale requirement, and services, which don’t, although that is a compelling point.

Presumably the point-of-sale requirement was relaxed in connection with services because they don’t always get sold or consumed the same way as goods — i.e., in a store, with a label, etc.  They might be, and often are; but goods, being tangible, always have tangible branding at some point.  But once we are satisfied that somehow the use in commerce requirement of the statute can be satisfied without these physical manifestations in connection with services, why can’t we apply the same logic to goods?

One reason is that notwithstanding logic, rules is rules because sometimes laws is laws.  And under the statute, as the decision explains, “something other than a label, tag, container, or display associated with the goods is acceptable only upon a showing that it is ‘impracticable to place the mark on the goods or packaging for the goods.'”  That showing is not required for services, regarding which 15 U.S.C.A. § 1127 says, “a mark shall be deemed to be in use in commerce — (2) on services when it is used or displayed in the sale or advertising of services …”

So it’s not the TMEP that’s the problem here, it seems, it’s the trademark statute. When read as a whole and applying the doctrine of inclusio unius est exclusio alterius, the PTO can’t accept advertising as a specimen for goods.* This is actually a little ironic, considering that when service marks were authorized for registration under 15 U.S.C.A. § 1053, that provision specified that

service marks shall be registrable, in the same manner and with the same effect as are trademarks, and when registered they shall be entitled to the protection provided in this chapter in the case of trademarks. Applications and procedure under this section shall conform as nearly as practicable to those prescribed for the registration of trademarks.

The irony is that in amending the Lanham Act, Congress paved a one-way street here:  As we said above, § 1127, the “constructions and definitions” section of the Lanham Act, explicitly permits advertisements to be acceptable specimens for service marks yet omits that permit concerning trademarks for goods.  So while under § 1053, what’s good enough for goods is, by congressional mandate, always good enough for services as a specimen, § 1127 makes it  clear that it doesn’t work the other way around. How, then, could the TMEP rules be changed, given the state of the statute?

It appears that we’d need a statutory change first. And yes, that change should come, although due to Congress’s well-established lack of interest in actually improving how the trademark laws work it may not come soon.

The law should be amended not only because what’s good enough for services should be good enough for goods, but because outside the registration context, such as in trademark infringement cases, we treat non-point-of-sale trademark use such as advertising as use in commerce all the time.

Accepting the TTAB’s argument that a brochure (a better word for what we mean here than “catalog,” I think) is not really a so-called “point of sale,” but is merely a detailed version of advertising — the same way a website may be — still, it is preposterous not to recognize advertising as a trademark use, the proof of which should entitle the user to registration.  A number of John Welch’s commenters expressed just this sentiment. The need for this change is especially compelling considering that, as we are reminded by Steve Baird:

[A] much broader scope of confusion protection was codified in 1989 in Lanham Act Section 43(a), which protects against trademark likelihood of confusion not only as to source, but as to affiliation, connection, sponsorship, association, and/or approval. This additional scope of trademark protection makes perfect sense given the current commercial realities of trademark licensing, franchises, co-branding, affiliate marketing, and OEM relationships.

Yes, I know — § 43(a) applies to unregistered as well as registered trademarks, and here we’re talking about the standards to be employed for registration.  But what we’re really talking about is the definition of a trademark, which, as we all know, is a function of how it’s used, not whether or not it is registered (or “trademarked“).  And as demonstrated by this later, related post by Steve — based entirely on the complicated chain, if you will, of sponsorship / affiliation / brand associations arising from a trademark on a billboard — the decoupling of origin from trademarks mandates the decoupling of the relatively quaint concept that only point-of-sale use is acceptable proof of the use of trademarks for registration.

Trademarks in the 21st century float in the air, in the ether and in virtual reality, as indeed points of sale and distribution do themselves. That something as tangible and old-school as a paper catalog might not suffice as a specimen of use for purposes of trademark registration is ridiculous.  It appears, however, that the TTAB was itself bound, when deciding Tsubaki, to outdated examining rules that are themselves chained to an outdated, patchwork trademark statute.

But no, really — feel free to apply for  your own registration!  Who am I to say?

____

* The purpose of using the Latin maxim is to strike another blow against amateur lawyering, of course.