904.03(k) Specimens for Marks that are Impracticable to Place on Goods, Packaging, or Displays
The USPTO may accept another document related to the goods or the sale of the goods when it is impracticable to place the mark on the goods, packaging, or displays associated with the goods. 15 U.S.C. §1127 (definition of “use in commerce”); 37 C.F.R. §2.56(b)(1). This provision is not intended as a general alternative to submitting labels, tags, containers, or displays associated with the goods; it applies only to situations when the nature of the goods makes use on these items impracticable. For example, in rare circumstances it may be impracticable to place the mark on the goods or packaging for the goods if the goods are natural gas, grain that is sold in bulk, or chemicals that are transported only in tanker cars. In such instances, an acceptable specimen might be an invoice, a bill of lading, or a shipping document that shows the mark for the goods.
A mere assertion of impracticability does not suffice to establish that traditional trademark use is impracticable. Rather, the record must indicate that the goods are, in fact, of such a nature. In In re Settec, Inc., 80 USPQ2d 1185 (TTAB 2006), the applicant asserted that placing the mark on the goods or on displays associated with the goods in the traditional manner was impracticable because the purpose of the goods was to provide digital media copy protection to media content providers, and placing the mark on the final product available to the ultimate end-user would impair the value of the goods, because the end-user would thereby be armed with an additional piece of the encryption puzzle. The Board rejected this contention, finding that there were a variety of ways in which applicant could use its mark in the traditional manner without making it available to the end-user.