TMEP 904.03(a): Labels and Tags

October 2017 Edition of the TMEP

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904.03(a)    Labels and Tags

In most cases, if a trademark is ordinarily applied to the goods or the containers for the goods by means of labels, a label is an acceptable specimen. However, if a mark is merely informational or incapable of functioning as a mark for some other reason, it would not be seen as an indicator of source, and registration must be refused even if the specimen of record shows what would otherwise be acceptable trademark use, including use on tags or labels. See TMEP §1202.04.

Shipping or mailing labels may be accepted if they are affixed to the goods or to the containers for the goods and if proper trademark usage is shown. In re A.S. Beck Shoe Corp., 161 USPQ 168 (TTAB 1969); Elec. Commc’ns, Inc. v. Elec. Components for Indus. Co., 443 F.2d 487, 170 USPQ 118 (8th Cir. 1971).  They are not acceptable if the mark as shown is merely used as a trade name and not as a trademark.  An example of this is the use of the term solely as a return address. In re Supply Guys, Inc., 86 USPQ2d 1488 (TTAB 2008); Bookbinder’s Sea Food House, Inc. v. Bookbinder’s Rest., Inc., 118 USPQ 318 (Comm’r Pats. 1958); I. & B. Cohen Bomzon & Co. v. Biltmore Indus., Inc., 22 USPQ 257 (Comm’r Pats. 1934).  See TMEP §1202.01 regarding trade name refusals.

For labels or tags whose appearance suggests that they are not in actual use in commerce, the examining attorney may, under 37 C.F.R. §2.61(b), inquire as to how the specimen is used in order to properly examine the application.  For example, an inquiry may be appropriate when the specimen consists of a photograph of the mark reproduced on a plain white label adhered to the goods or printed packaging or a piece of paper bearing the mark placed on top of the goods or packaging. If, based on the available evidence, the examining attorney determines that the specimen is not in actual use in commerce, registration may be refused on that basis instead of issuing an inquiry. See TMEP §904.07(a).  However, nothing prohibits the registration of a mark in an application that contains only "temporary" specimens, provided that the specimens were actually used in commerce. See In re Chica, 84 USPQ2d 1845,1847-48 (TTAB 2007) (finding applicant’s specimen unacceptable not because it was temporary but because it comprised a mere drawing of the goods with an illustration of how the mark may be displayed and not an actual specimen that applicant used in commerce).

See TMEP §904.04(a) regarding digitally created or altered specimens and §904.07(a) regarding "use-in-commerce" issues that may be raised on initial review of specimens.