Catalogues held not to qualify as acceptable specimens of use

In In re US Tsubaki Inc (Serial No 85267349, March 7 2014), in a precedential decision, the Trademark Trial and Appeal Board (TTAB) has provided guidance to trademark owners seeking to secure trademark registrations for their marks. In re Tsubaki involved the question of whether advertising material and catalogues may be relied upon to fulfil the requirement that a trademark applicant submit, in support of its application for registration, a specimen showing its use of the mark in commerce. The TTAB’s decision reiterated that catalogues and advertising material that do not provide potential purchasers with the means by which to actually consummate a purchase of the goods for which registration is sought do not satisfy the specimen requirement.

Trademark owners almost universally spend significant amounts on advertising to help increase consumer awareness of their brands and products. As such, it is frequently the case that when the time comes during the life of a US trademark application to submit the necessary specimens evidencing the manner in which the mark is used in commerce, advertising materials and the like (eg, catalogues) are often the first things trademark owners look to as evidence of the manner in which their mark is communicated to the public. Unfortunately, advertising materials and catalogues are not typically accepted by the US Trademark Office as evidence of use in commerce because they are not actually associated with the goods at the point of sale. 

The Trademark Act and the rules associated with it state that “a[n acceptable] trademark specimen is a label, tag, or container for the goods, or a display associated with the goods”. In situations where it is impracticable to place the mark on the goods or packaging for the goods, the Trademark Office may accept another document “related to the goods or the sale of the goods”. To the extent folders, brochures or other materials that describe the goods or serve as advertising or literature, they are only acceptable as specimens where the applicant can make a sufficient showing that such evidence is used at “point-of-sale” - that is, where the consumer makes the actual purchasing decision. Catalogues are similarly treated, and in order for a catalogue to be acceptable as a specimen of use, the catalogue must include “a picture or a sufficient textual description of the... goods;... must show the mark in association with the goods;... [and must] include the information necessary to order the goods”. Catalogues (or other materials) that do not include all of the following are viewed by the Trademark Office as mere advertising and thus are not acceptable as specimens. Moreover, the fact that advertising or a catalogue includes a phone number, internet address and/or mailing address, does not in and of itself make it an acceptable specimen. The key to using such materials to fulfil the specimen requirement is that there is “an offer to accept orders or instructions on how to place an order”.

The applicant in In re Tsubaki had applied to register the trademark TSUBAKI: THE CHOICE FOR CHAIN for use in connection with “industrial machine parts, namely, chains and sprockets”. In support of its application, the applicant submitted several specimens consisting of catalogues, advertising brochures, specification sheets and a 'Visit Us' promotional card inviting consumers to visit the company’s trade show booth. Despite the fact that all of the specimens showed the mark applied for, the trademark examining attorney refused to accept them because they were not evidence of use of the mark on the claimed goods (eg, product labelling, packaging and hang tags). The trademark examining attorney took the position that the specimens were mere advertising because they did not contain the information necessary for a consumer to order the goods. 

On appeal, the TTAB addressed each of the specimens and affirmed the trademark examining attorney’s refusal. The applicant attempted to argue that the inclusion in the specimens of references to its corporate headquarters, to its website, and invitations to contact it for additional information, all should have been sufficient in that “to the relevant customer, [information of that type] invites an order”. The TTAB was not persuaded: “A simple invitation to call the applicant to get information - even to get quotes for placing orders - does not provide a means of ordering the product.” None of the submitted specimens contained the type of information normally associated with ordering products, whether by phone or over the Internet: “[t]here were no sales forms, no pricing information, no offers to accept orders, and no special instructions for placing orders.”

While the TTAB recognised that point-of-sale displays can be accepted in appropriate circumstances, “neither the ability to request a quotation via the Internet or by phone evidences that the specimen constitutes [such] a display”. The TTAB went on to clarify that to the extent a trademark examining attorney makes a prima facie case that a specimen submitted as a point-of-sale display is insufficient, the applicant is obliged to rebut that showing by providing “detailed information about the means for ordering goods” and how the submitted specimen correlates to those means. Such information must be corroborated by adequate evidentiary support - for example a declaration from the applicant (and not merely attorney argument) about its process for taking and filling orders – such that the trademark examining attorney has the evidence necessary to conclude that the specimen truly is “calculated to consummate a sale”.

The decision in In re Tsubaki, although precedential, does not create new law. Rather, it reiterates concepts that the advertising and marketing groups within trademark-owning companies have to keep in mind when discussing with counsel what US trademark filings to pursue. To the extent that a particular mark will not be featured on product, or on product packaging, labelling or hang tags affixed to the product, it may prove difficult to secure a trademark registration because of the need to provide a specimen that fulfils the requirements discussed in In re Tsubaki. Such an outcome could prove frustrating to marketers who may have invested heavily in marketing-related materials and who would like to protect the marks and slogans used in such materials; those materials alone may not be sufficient to satisfy the specimen requirement. In order to avoid this, trademark counsel should work with their marketing teams so that, when specimens are necessary, appropriate materials as used in commerce in the ordinary course of the trademark owner’s business can by identified and provided in support of the application.

Timothy J Kelly, Fitzpatrick Cella Harper & Scinto, New York