Originally posted 2010-11-03 01:09:48. Republished by Blog Post Promoter

You’d think a catalog page would be a great way, in a trademark registration application, to show use of a trademark “in commerce” associated with the goods or services being offered. You could be wrong, though. John Welch reports a TTAB decision upholding the denial of a trademark application for machine chain supported by a specimen of use depicting the mark in a catalog.

It seems the catalog was so fancy-shmancy that it outdid itself by not really being a sales tool so much as a kind of “brand builder” that you could hardly do anything with other than, perhaps, razor out and frame for the living room. We’re talking about machine chain here, but looking at the specimen of an ad for … yeah, chain (here’s a link! ;-)) … you would think that you were beholding an ad for fine wine, jewelry or premium gasoline.

Here’s how the TTAB explained it:

[T]here was no record evidence as to how applicant and its competitors sell chain, or “whether customers, in fact, ‘know that orders are placed over the phone.'” InValenite [where a catalog was ruled to be adequate], the appellant submitted a declaration verifying that its customers regularly order products by telephoning the customer service department.

Second, here Applicant’s specimen does not contain the information necessary to order chains. In Valenite, the webpage specimen contained links to appellant’s “Technical Resource Center,” which included specification sheets, online calculators, and reference tables, and which provided toll-free customer service telephone numbers. Thus the Valenite website provided “sufficient information that the customer can select a product and call customer service to confirm the correctness of the selection and place an order.” Valenite at 1349-1350.

The Board found that Tsubaki’s catalog page is more like a fact sheet, catalog page, or brochure. It does not contain “any information normally associated with ordering products by the telephone or the Internet.” At best, the specimen provides a telephone number and a web address, but even the website “does not provide a means for ordering applicant’s chain online (or by telephone).”

The Board therefore found that Tsubaki’s specimen is not a display associated with the goods, and the refusal was affirmed.

“The crucial factual issue in this case is whether applicant’s specimen includes the information necessary to order applicant’s chain, thus making it a point-of-sale display,” wrote the Board. Guess I can follow the TTAB’s chain of thought, after all!

By Ron Coleman

I write this blog.

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