BTIO Educational Products, Inc.

Trademark Trial and Appeal Board

Aug 1, 2001

No. 75712224 (T.T.A.B. Aug. 1, 2001)

8/1/01
Paper No. 13
BAC

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re BTIO Educational Products, Inc., by change of name
from Baby Think It Over, Inc.1
________

Serial No. 75/712,224
_______

Michael S. Sherrill of Sherrill Law Offices for BTIO
Educational Products, Inc., by change of name from Baby
Think It Over, Inc.

Florentina Blandu, Trademark Examining Attorney, Law Office
112 (Janice O’Lear, Managing Attorney).
_______

Before Simms, Chapman and Rogers, Administrative Trademark
Judges.

Opinion by Chapman, Administrative Trademark Judge:
Applicant filed, on May 17, 1999, an application to
register the mark SOME DECISIONS LAST A LIFETIME on the
Principal Register for “educational dolls and printed
instructional materials for use with the dolls, all sold as
a unit” in International Class 28. Applicant bases its

1 Applicant’s change of name was recorded with the Assignment
Branch of this Office in January 2001 at Reel 2219, Frame 0195.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/712224
2
application on Section 1(a) of the Trademark Act, claiming
a date of first use in commerce of August 14, 1996.2
Registration has been finally refused in the
application because applicant has failed to submit
specimens acceptable to the Examining Attorney.
Specifically, the Examining Attorney asserts that the
specimens submitted by applicant do not show use of the
mark on or in connection with the identified goods as
required by Trademark Rule 2.56.3
Applicant has appealed, and briefs have been filed.
Applicant did not request an oral hearing.
The specimens submitted by applicant are photocopies
of the front page and the back page of applicant’s February
1999 catalog, the mark SOME DECISIONS LAST A LIFETIME

2 The application also included services, specifically,
“providing information in the fields of infant care simulation
programs and pregnancy deterrence by means of a global computer
network” in International Class 42. Registration was initially
refused for both classes based on the Examining Attorney’s
requirement for acceptable specimens. However, the Examining
Attorney withdrew the refusal as to the International Class 42
services. Applicant then filed a request to divide out that
class and Serial No. 75/980,029 was created for International
Class 42. (Serial No. 75/980,029 was published for opposition on
March 27, 2001.)
3 In her brief on the case the Examining Attorney cited Trademark
Rule 2.58 and TMEP §1301.04, both of which refer to specimens of
use for service marks. Moreover, Trademark Rule 2.58 was removed
and reserved by Final Rule notice appearing in the September 28,
1999 Official Gazette, with an effective date of October 30,
1999. The relevant provision of the Trademark Rules of Practice
is found in Trademark Rule 2.56. (The Examining Attorney had
cited Trademark Rule 2.56 and TMEP §905 in the first Office
action.)
Ser. No. 75/712224
3
appears on the back page. A photocopy of applicant’s
specimen is reproduced below (in reduced form):

Applicant has not submitted any substitute specimens.
However, with its brief on appeal, applicant submitted
a photocopy of its entire February 1999 catalog, stating
that it was “to provide complete information in this case”
and “to assist the Board’s understanding of the case.”
(Brief, p. 4). The Examining Attorney objected to the
Ser. No. 75/712224
4
additional evidence submitted with applicant’s brief, and
she requested that the evidence be excluded.
The record in an application should be complete prior
to the filing of an appeal, and additional evidence filed
after appeal will be given no consideration by the Board.
See Trademark Rule 2.142(d), and TBMP §1207.01. Inasmuch
as the additional material was filed after the appeal, and
the Examining Attorney objected thereto, applicant’s
additional evidence is untimely pursuant to Trademark Rule
2.142(d). Accordingly, the catalog (other than the front
and back pages which were previously made of record)
attached to applicant’s appeal brief does not form part of
the record on appeal and has not been considered in making
our decision.4
Turning to the merits of the appeal, the sole issue
before us is whether the specimens submitted with the
application are acceptable specimens of use of the mark
SOME DECISIONS LAST A LIFETIME for the goods set forth in
the application.
The dissent disagrees with our statement of the issue
on appeal, and construes the issue as whether applicant’s

4 To the extent applicant’s purpose in filing the complete
catalog was to prove that its specimen truly is the back cover of
its catalog, the submission was not necessary, as the Examining
Attorney has not disputed this point.
Ser. No. 75/712224
5
slogan functions as, or would be perceived as, a mark, not
whether the specimens are acceptable proof of trademark
use. We note, however, that the Examining Attorney and
applicant discuss sufficiency of specimen cases at length,
not cases dealing with the question whether a slogan would
be perceived as a mark. Moreover, we note that the
Examining Attorney accepted the specimens in the file for
applicant’s services but refused those for applicant’s
goods. If, as the dissent argues, the Examining Attorney’s
position is that applicant’s slogan does not function as a
mark, the specimens for the services would not have been
accepted, for they present the slogan in a virtually
identical display as the specimens for the goods. The
dissent urges that we presume a certain correctness of
Examining Attorney decision-making. In fact, we do exactly
that by considering only the basis for refusal the
Examining Attorney has chosen to articulate.5
Applicant contends that pursuant to the case of Lands’
End Inc. v. Manbeck, 797 F. Supp. 511, 24 USPQ2d 1314 (E.D.
Va. 1992), and TMEP §905.06(a), the Examining Attorney
should accept as a proper specimen any catalog (a display

5 Likewise, we have acknowledged the correctness of the Examining
Attorney’s argument for exclusion of applicant’s catalog as the
subject of an untimely proffer. The dissent, without pointing to
any error in the Examining Attorney’s position, nonetheless
freely considers this untimely evidence.
Ser. No. 75/712224
6
associated with the goods), provided that it includes (i) a
picture of the goods, (ii) the mark sufficiently near the
picture of the goods to associate the mark with the goods,
and (iii) information necessary to order the goods.
Applicant concludes that applying this criteria, the back
page of its catalog is an acceptable specimen.
While agreeing with applicant’s statement of the law
in the Lands’ End case, the Examining Attorney disagrees
that applicant’s specimens meet those requirements.
Specifically, the Examining Attorney contends that
applicant’s use of its mark “appears to be a slogan that
the applicant is using in advertisements and not as wording
to identify the goods in question (the doll)” (Final Office
action, p. 2); that the specimen does not clearly indicate
that applicant offers dolls for sale under the mark SOME
DECISIONS LAST A LIFETIME, but rather the manner of use of
the applied-for mark is that “of a slogan and the doll
appears as a visual aid intended to give greater weight to
the slogan in question” (brief, p. 4); that there is much
verbiage appearing on the page, all of it in close
proximity to the slogan SOME DECISIONS LAST A LIFETIME; and
that consumers will not perceive the wording SOME DECISIONS
LAST A LIFETIME as a source indicator for dolls. Further,
while the specimens include a telephone number for ordering
Ser. No. 75/712224
7
the goods, the Examining Attorney finds the lack of
information on the cost of the doll6, or the page number
where specific information on the pictured goods could be
found inside the catalog unacceptable. In conclusion, the
Examining Attorney finds this situation more analogous to
the case of In re MediaShare Corp., 43 USPQ2d 1304 (TTAB
1997) (wherein asserted “fact sheet” brochures or “catalog
pages” were found to be mere advertising and unacceptable
specimens).
We emphasize that, despite references in the file
which might suggest otherwise, the Examining Attorney has
not refused registration on the basis that the applied-for
mark fails to function as a trademark under the Trademark
Act.7 Rather, the sole issue before us on appeal is whether
the specimens submitted with the application are acceptable
under the Court’s decision in Lands’ End interpreting the
Trademark Act, as applicant contends, or are unacceptable
advertising as in the Board’s decision in the MediaShare
case. Cf., for example, In re Walker-Home Petroleum, Inc.,
229 USPQ 773 (TTAB 1985).

6 In fact, the specimen clearly indicates that at least one model
of applicant’s dolls is available at a “special” price of $199.
It is unclear whether the pictured model is the particular model
available at this price.
7 Thus, we do not wonder, as does the dissent, about whether
applicant’s slogan, or other slogans, could properly be refused
registration as failing to function as marks.
Ser. No. 75/712224
8
Section 1 of the Trademark Act, as well as Trademark
Rule 2.56, require that prior to registration applicant
submit a specimen showing the mark as used on or in
connection with the goods in commerce. Trademark Rule
2.56(a) reads as follows:
An application under section 1(a) of
the Act, an amendment to allege use
under §2.76, and a statement of use
under §2.88 must each include one
specimen showing the mark as used on or
in connection with the goods, or in the
sale of advertising of the services in
commerce.

Following the 1992 decision of the United States
District Court for the Eastern District of Virginia in the
Lands’ End case, supra, the USPTO revised the section of
the Trademark Manual of Examining Procedure (TMEP) dealing
with catalogs as specimens. TMEP §905.06(a) reads, in
relevant part, as follows:8
In accordance with this [the Lands’
End] decision, examining attorneys
should accept any catalog or similar
specimen as a display associated with
the goods, provided that (1) it
includes a picture of the relevant
goods, (2) it includes the mark
sufficiently near the picture of the
goods to associate the mark with the
goods, and (3) it includes information

8 The Court specifically stated “[t]he question for determination
here is whether Lands’ End’s use of the term ‘KETCH’ in the
manner described above in its retail catalog constitutes a use of
‘displays associated’ with the goods satisfying the use in
commerce provision in 15 U.S.C. §1127,” and the Court found that
it did.
Ser. No. 75/712224
9
necessary to order the goods. Any form
of advertising which satisfies these
criteria should be construed as a
display associated with the goods.

We agree with applicant that the last page from its
catalog showing the mark SOME DECISIONS LAST A LIFETIME
meets the criteria set forth above. The specimen clearly
pictures a doll being held by a teenage boy. We believe
the purchasing public would certainly notice the doll, and
there is no requirement in the Lands’ End case or the TMEP
that the specimen must picture every separate doll offered
for sale. That is, even if applicant offers several
different types or models of dolls, each separate one need
not be pictured in order for the specimen to be an
acceptable display associated with the goods.9
The mark appears sufficiently near the pictured doll
to associate the mark with the goods. The Examining
Attorney acknowledges in her brief (p. 4) that the
specimens would be acceptable if the question were the
proximity of the marks BABY THINK IT OVER and/or GENERATION
4 for dolls. The applied for mark SOME DECISIONS LAST A

9 We do not, as the dissent implies, countenance registration
under Lands’ End of a mark for widely varying goods appearing
anywhere in a catalog. Rather, we simply acknowledge that an
item in a catalog may be available in different colors or sizes
or with slight variations not significant enough to utilize a
photograph of every variation, when these differences can be
noted in the catalog’s description of the goods.
Ser. No. 75/712224
10
LIFETIME appears in very large type on the left side of the
page approximately one inch from the doll’s head, whereas,
GENERATION 4 appears in smaller type approximately 2 inches
from the doll’s head. Applicant has achieved sufficient
proximity of the mark and the picture of the goods for the
purchasing public to associate the mark with the goods.
The specimen clearly includes a telephone number for
ordering applicant’s products. The Examining Attorney’s
concern that the specimen sets forth the cost of only one
model of the doll, and does not set forth the page number
inside the catalog where the specific models and associated
price information may be found is simply not required by
the Trademark Act or the Lands’ End case.
We readily acknowledge that the facts of this case are
not precisely the same as those in the Lands’ End case.
For example, in the Court case, the catalog displayed
several different goods per page, each with a picture and a
description of the item, whereas in the case now before us,
applicant’s mark is depicted on the back page with only one
featured item for sale appearing on the same page.
However, as explained earlier herein, the only refusal
before this Board is based on the requirement for
acceptable specimens, not an assertion that the applied-for
mark fails to function as a trademark, as used on the
Ser. No. 75/712224
11
specimen. If our decision is an extension of the Lands’
End decision at all, it is not a dramatic extension, but
rather is a slight extension which is clearly in keeping
with the spirit of the Lands’ End case, and the policy
stated in the TMEP regarding catalog pages as specimens for
goods. See In re Hydron Technologies Inc., 51 USPQ2d 1531
(TTAB 1999).
The MediaShare case, where applicant’s goods were
identified as “computer software for publishing information
on a computer network and instructional manuals therefor,
sold together as a unit,” and the specimens were held to be
mere advertising material is distinguishable from the case
now before us. For example, in that case applicant’s “fact
sheet” showed three computer screen displays, yet the Board
found none of these “appears to constitute or include a
picture of applicant’s ‘PB.WEB’ computer software, whether
in use or otherwise.” MediaShare, supra at 1306. Thus,
the specimens in that case failed to meet the second
requirement of the Lands’ End case.
To the extent we have any doubt on the question of
whether applicant’s use of the mark SOME DECISIONS LAST A
LIFETIME on the back page of its catalog constitutes an
acceptable display associated with the goods, we resolve
that doubt in favor of applicant.
Ser. No. 75/712224
12
Decision: The refusal to register based on a
requirement for acceptable specimens is reversed.

*****

Simms, Administrative Trademark Judge, dissenting:
Because I agree with the Examining Attorney that
applicant has not demonstrated trademark use of the slogan
sought to be registered and that customers will not view
applicant’s slogan as a means of identifying and
distinguishing the source of applicant’s dolls, I would
affirm the requirement for specimens which show use of the
asserted mark as a trademark.
A copy of the last page of applicant’s mail-order
catalog is reproduced on page 3 of the majority’s opinion.
For illustrative purposes, other pages, beginning with the
front page of applicant’s catalog, are reproduced (in
reduced form) below.

Ser. No. 75/712224
13

Ser. No. 75/712224
14
I believe the Lands’ End case cited by the majority is
distinguishable. In that case, the obvious trademark KETCH
appeared with a picture of a purse along with a description
of the goods. The court concluded the consumers can
associate the product with the mark in applicant’s mail-
order catalog, and that the catalog could be considered a
display associated with the goods. The mark KETCH and the
description of the goods, the court noted, also
distinguished that product shown in the catalog from others
shown in the catalog. That case should not be read as
holding that any word or slogan prominently used with a
picture of the goods and ordering information is acceptable
trademark use such that the catalog always acts as a
display associated with those goods. Lands’ End should not
be mechanistically applied to permit registration as a mark
of such an informational slogan merely because such slogan
is prominently displayed next to a picture of the goods
with ordering information.
While the Examining Attorney acknowledges that
catalogs used as displays associated with the goods may be
acceptable specimens showing trademark use, in this case
the Examining Attorney has refused registration because the
specimens of record do not show use of the asserted mark in
connection with applicant’s educational dolls. It is the
Ser. No. 75/712224
15
Examining Attorney’s position that the manner in which the
specimens show the asserted mark to be used is simply as a
slogan used in promoting applicant’s goods and not as a
trademark for applicant’s dolls. In other words, the
question here is not whether these specimens would be
acceptable if applicant were using a mark to identify and
distinguish its goods from those of others. The Examining
Attorney does not contend that applicant’s mail-order
catalogs would be unacceptable if applicant were in fact
using a mark to identify and distinguish its goods, as in
the Lands’ End case. The majority parses the Examining
Attorney’s refusal here to state that the Examining
Attorney is not arguing that the slogan presented for
registration does not function as a mark. However, I
believe that is precisely what the Examining Attorney is
saying. The Examining Attorney states that the asserted
mark is merely a slogan that applicant is using in its
catalog and is not wording which identifies and
distinguishes applicant’s dolls. See Final Refusal, 2.
The Examining Attorney contends, in my view correctly, that
consumers will not perceive the slogan as a trademark for
applicant’s dolls. It is difficult for me to believe that
consumers would perceive the informational or promotional
phrase “Some decisions last a lifetime” on the last page of
Ser. No. 75/712224
16
applicant’s mail-order catalog as a trademark identifying
and distinguishing applicant’s dolls, especially in view of
the use of applicant’s obvious trademark BABY THINK IT OVER
and its trade name on the same page. Cf., for example,
Hoover Co. v. Royal Appliance Mg. Co., ___ F.3d ___, 57
USPQ2d 1720 (Fed. Cir. 2001)(slogan used in close proximity
to party’s principal trademark not likely to be perceived
as a trademark). One wonders if the majority would reach
the same decision it does here if, instead of the asserted
mark SOME DECISIONS LAST A LIFETIME, applicant instead were
using simply the statement “ORDER THIS DOLL TODAY.”
Under the guise of the Lands’ End case, the majority
here sanctions the registration of a slogan which is not
used as a trademark. Applicant’s slogan is not obviously a
trademark but is more in the nature of an informational or
advertising phrase. While shown in relatively close
proximity to one of applicant’s dolls, this slogan is on
the last page of applicant’s mail-order catalog and is,
significantly, used nowhere else in the catalog. In
addition, as shown above, other slogans of a similar nature
are used on other pages in the catalog. Therefore, I agree
with the Examining Attorney that consumers would not
Ser. No. 75/712224
17
perceive the slogan shown on only one page of applicant’s
catalog as a mark for the doll pictured on that page.10
Finally, the majority, citing no authority, states
that on the issue of acceptable specimens, doubt should be
resolved in favor of applicant. It is to be noted that the
court in the Lands’ End case indicated that the issue of
whether displays associated with the goods are acceptable
as trademark use is a factual question. Where questions of
fact have been presented, the Board has on occasion
entertained a presumption of correctness of an Examining
Attorney’s judgment. See, for example, In re Tilcon
Warren, Inc., 221 USPQ 86 (TTAB 1984)(whether matter
presented for registration functioned as a mark was a
question of fact concerning which the judgment of the
Examining Attorney is entitled to a presumption of
correctness); and In re Keyes Fiber Company, 217 USPQ 730,
734 (TTAB 1983)(where the asserted mark consisted of

10 Without authority, the majority states that applicant’s
specimens need not picture every doll offered for sale under its
asserted mark. Aside from the fact that this issue does not
appear to be raised by the arguments of the attorneys, this
statement would appear to be at odds with Lands’ End, which held
that the catalog presented a display associated with the goods by
the use of the mark KETCH next to a picture and the description
of the goods. The court did not state or imply that this mark
functioned as a trademark for other goods not pictured near the
mark. In fact, the clear implication is to the contrary, the
court stating that the mark KETCH helped distinguish the product
next to which it was pictured from others.
Ser. No. 75/712224
18
subject matter not ordinarily perceived as a trademark, the
Examining Attorney’s evaluation that it was not entitled to
registration was a presumption which had to be overcome by
persuasive evidence to the contrary) and cases cited
therein.
We should only register slogans that perform the
function of a mark, and not pretend that other
informational or promotional slogans function as marks when
they are used prominently with the goods with which they
are sought to be registered. I would affirm the refusal
that the specimens do not show use of the slogan as a mark
for dolls.