T.M.E.P. § 904.06
Displays as Specimens for Trademarks
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904.06 Displays as Specimens for Trademarks
A display must be associated directly with the goods offered for sale. It must bear the trademark prominently. However, it is not necessary that the display be in close proximity to the goods. See In re Marriott Corp., 459 F.2d 525, 173 USPQ 799 (C.C.P.A. 1972); Lands' End Inc. v. Manbeck, 797 F. Supp. 511, 24 USPQ2d 1314 (E.D. Va. 1992).
Displays associated with the goods essentially comprise point-of-sale material, such as banners, shelf-talkers, window displays, menus and similar devices.
These items must be designed to catch the attention of purchasers and prospective purchasers as an inducement to make a sale. Further, the display must predominantly display the trademark in question and associate it with, or relate it to, the goods. The display must be related to the sale of the goods so that an association of the two is inevitable. See In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979), and cases cited therein. See also In re ITT Rayonier Inc., 208 USPQ 86 (TTAB 1980). Cf. In re Shipley Co. Inc., 230 USPQ 691 (TTAB 1986); In re Jones, 216 USPQ 328 (TTAB 1982).
Folders and brochures that describe goods and their characteristics or serve as advertising literature are not per se "displays." In re Schiapparelli Searle, 26 USPQ2d 1520 (TTAB 1993); In re Drilco Industrial Inc., 15 USPQ2d 1671 (TTAB 1990). In order to rely on such materials as specimens, an applicant must submit evidence of point-of-sale presentation. See In re Ancha Electronics Inc., 1 USPQ2d 1318 (TTAB 1986); In re Columbia Chase Corp., 215 USPQ 478 (TTAB 1982). See TMEP §904.06(a) regarding the criteria by which a catalog or other advertising may constitute a display associated with the goods.
An infomercial was held to be a display associated with the goods, where the goods were shown either immediately before or immediately after the trademark was displayed, and the information on how to order the goods was given within a reasonable time after the goods were shown. The Board found that the infomercial created an association between the trademark and the goods, and the test for constituting a display associated with the goods was therefore satisfied. In re Hydron Technologies, Inc., 51 USPQ2d 1531 (TTAB 1999).
904.06(a) Catalogs as Specimens for Trademarks
In appropriate cases, catalog specimens are acceptable specimens of trademark use. Lands' End Inc. v. Manbeck, 797 F. Supp. 511, 24 USPQ2d 1314 (E.D. Va. 1992). In that case, the applicant had applied to register "KETCH" for purses. The specimen was a catalog page that included a picture of the goods and, below the picture, the mark and a description of the goods. The Court stated, "The alleged trademark 'KETCH' appears prominently in large bold lettering on the display of purses in the Lands' End specimen in a manner which closely associates the term with the purses." 24 USPQ2d at 1315.
The Court determined that the catalog was not mere advertising and that it met the relevant criteria for displays associated with the goods. The Court evaluated the catalog specimen as follows:
A customer can identify a listing and make a decision to purchase by filling out the sales form and sending it in or by calling in a purchase by phone. A customer can easily associate the product with the word "KETCH" in the display.... The point of sale nature of this display, when combined with the prominent display of the alleged mark with the product, leads this court to conclude that this mark constitutes a display associated with the goods.24 USPQ2d at 1316.
Accordingly, examining attorneys should accept any catalog or similar specimen as a display associated with the goods, provided: (1) it includes a picture of the relevant goods; (2) it shows the mark sufficiently near the picture of the goods to associate the mark with the goods; and (3) it includes the information necessary to order the goods, (e.g., an order form, or a phone number, mailing address, or e-mail address for placing orders). Any form of advertising that satisfies these criteria should be construed as a display associated with the goods.
The mere inclusion of a phone number, Internet address and/or mailing address on an advertisement describing the product is not sufficient. There must be an offer to accept orders or instructions on how to place an order. In re MediaShare Corp., 43 USPQ2d 1304 (TTAB 1997) (fact sheet brochures held not to qualify as a catalog under Lands' End, where the specimen failed to show the mark near a picture of the goods, and included no information as to how to order the goods). It is not necessary that the specimen list the price of the goods.
904.06(b) Electronic Displays as Specimens for TrademarksA website page that displays a product, and provides a means of ordering the product, can constitute a "display associated with the goods," as long as the mark appears on the web page in a manner in which the mark is associated with the goods, and the web page provides a means for ordering the goods. The Trademark Trial and Appeal Board has held that web pages that display goods and their trademarks and provide for online ordering of such goods are, in fact, electronic displays which are associated with the goods. Such uses are not merely advertising, because in addition to showing the goods, they provide a link for ordering the goods. In effect, the website is an electronic retail store, and the web page is a shelf-talker or banner which encourages the consumer to buy the product. A consumer using the link on the web page to purchase the goods is the equivalent of a consumer seeing a shelf-talker and taking the item to the cashier in a store to purchase it. The web page is thus a point of sale display by which an actual sale is made. In re Dell Inc., 71 USPQ2d 1725 (TTAB 2004).