Columbia Insurance Company

Trademark Trial and Appeal Board

Jan 19, 2011

No. 77571728 (T.T.A.B. Jan. 19, 2011)

Mailed:
January 19, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Columbia Insurance Company
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Serial No. 77571728
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Lisa A. Iverson of Neal & McDevitt, LLC for Columbia
Insurance Company.

Tamara G. Frazier, Trademark Examining Attorney, Law Office
116 (Michael W. Baird, Managing Attorney).
_______

Before Bucher, Holtzman, and Bergsman,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Columbia Insurance Company has applied to register
ECOEDGE (in standard character form) for “thermoplastic
fibers and pellets for use in further manufacture,” in
Class 17. The application, which was filed on September
17, 2008, was originally based on applicant’s asserted bona
fide intention to use the mark in commerce. The
application was approved by the examining attorney and
published for opposition. Eventually a notice of allowance
issued. On August 18, 2009, applicant filed a statement of
use with a specimen displaying the use of the mark.
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 77571728
2
The examining attorney issued an Office action in
which she found the specimen submitted in support of the
statement of use to be unacceptable because it was mere
advertising and not a point of sale display comprising a
display used in association with the goods. Registration
was finally refused on that basis. It is from this refusal
that applicant has appealed.
The appeal has been fully briefed.
We affirm.
Whether a specimen is a display associated with the
goods is a question of fact. Land’s End Inc. v. Manbeck,
797 F.Supp. 311, 24 USPQ2d 1314, 1316 (E.D. Va. 1992); In
re Hydron Technologies Inc., 51 USPQ2d 1531, 1533 (TTAB
1999); In re Shipley Co. Inc., 230 USPQ 691, 694 (TTAB
1986). The starting point for this analysis is the
specimen submitted to show use of the mark.
We must determine whether the specimen is mere
advertising or whether, in addition to advertising, the
specimen is also a display associated with the goods.
A crucial factor in the analysis is if
the use of an alleged mark is at a
point of sale location. A point of
sale location provides a customer with
the opportunity to look to the
displayed mark as a means of
identifying and distinguishing the
source of the goods.

Serial No. 77571728
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Land’s End Inc. v. Manbeck, 24 USPQ2d at 1316, citing In re
Shipley Co. Inc., 230 USPQ at 694.
In the above-noted cases, the determinative factor was
that the mark was used at the point of sale (i.e., the
location where the goods could be ordered). In Land’s End,
the specimen of trademark use at issue was a mail order
catalog that featured an order form and a telephone number
so that a customer could order a product directly from the
catalog.
The Shipley case involved a mark prominently displayed
at a trade show booth where orders for products were taken.
The Board likened the trade show booth to a sales counter
and concluded that since the mark was prominently
displayed, the customer would associate the mark with the
products in deciding whether to buy the products.
Hydron involved an infomercial aired on QVC, a cable
television channel devoted to shopping. Programming on
this channel consists of advertising products and offering
to send them to viewers who call and order them by
telephone. In the infomercial at issue, the mark was
displayed three times followed by photographic
representations of the products. A telephone number was
displayed during the infomercial for placing an order for
the products.
Serial No. 77571728
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Finally, in a case involving a webpage as a specimen
for computer products, the Board held that “a website page
which 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 webpage in a
manner in which the mark is associated with the goods.” In
re Dell, Inc., 71 USPQ2d 1725, 1727 (TTAB 2004).
Applicant identified the specimen it submitted as
“point of purchase material showing use of the mark used in
connection with the goods.” The specimen consists of two
pages shown below.

Serial No. 77571728
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Applicant argues that its “point of purchase material”
is sufficient to permit a consumer to place an order
pointing specifically to the following information:
1. At the bottom of page one is applicant’s website
(shawfloors.com); and
2. On page two, is the statement “Contact us about
EcoEdgeTM PCR N6, 6 Pellet” which is directly above the
names, direct telephone numbers, and email addresses of
applicant’s sales representatives.1 Accordingly, applicant
concludes that its specimen offers “two methods of ordering
information.”
First, page one of the display includes
the website www.shawfloors.com.
Directing customers to Applicant’s
Internet website is an appropriate
method of accepting online orders. The
second method of ordering information

1 Applicant’s Brief, pp. 3-4.
Serial No. 77571728
6
on the specimen prominently displayed
on page two of the specimen [is the
“Contact us” statement directly above]
the names, direct telephone numbers and
email addresses of Applicant’s two
sales representatives for its ECOEDGE
products. An ordinary customer,
presented with this information, would
contact one of the sales
representatives via telephone or email
to inquire about ordering the goods.”2

Contrary to applicant’s argument, the “point of
purchase material” does not directly provide a means for
ordering applicant’s products, nor does it explain how to
order. There is no sales form or ordering information.
The potential purchaser has no information regarding
minimum quantities, cost, payment options, shipping
options, etc. At most, applicant’s “point of purchase
material” indicates how one can obtain more information
about applicant’s products. Simply put, after reviewing
applicant’s “point of purchase material,” the potential
customer is not at the point of purchase. A customer would
contact applicant to obtain the information necessary to
order the goods; it is only after obtaining such
information, which is not provided on the “point of
purchase material,” that the potential customer would be in
a position to place an order.

2 Applicant’s Brief, pp. 4-5.
Serial No. 77571728
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Applicant contends that the contact information on its
“point of purchase material” “amount[s] to an offer to
accept orders.”3 We disagree. The information is what it
purports to be (i.e., contact information). To hold
otherwise means that any statement providing contact
information used in the sale of a product potentially
legitimizes every advertising brochure, flyer, leaflet,
etc., as a display associated with the goods. Congress did
not create the use requirement of a trademark as a “straw
man” to be so easily knocked down by a pro forma statement
that any advertising material displaying the mark is used
in connection with actual sales of the product. The fact
that advertising material used in connection with the sales
of a product displays contact information does not ipso
facto make it a display used in association with the goods
sufficient to support technical trademark use for
registration.
Finally, applicant likens the facts in this
application to the facts in In re Valenite, Inc., 84 USPQ2d
1346 (TTAB 2007) because applicant’s products “would be
purchased after careful consideration and gathering of
price information through interaction with the sales

3 Applicant’s Brief, p. 8.
Serial No. 77571728
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representatives.”4 We agree that the purchase of
“thermoplastic fibers and pellets” will be consummated with
a high degree of consumer care. However, in Valenite,
unlike this application, the applicant submitted evidence
describing the purchasing process. Assertions in briefs
are not evidence. In re Simulations Publications, Inc.,
521 F.2d 797, 187 USPQ 147, 148 (CCPA 1975); In re
Vesoyuzny Ordena Trudovogo Krasnogo Znameni, 219 USPQ 69,
70 (TTAB 1983); see also Spin Physics, Inc. v. Matsushita
Electric Co., 168 USPQ 605, 607 (TTAB 1970) (the arguments
and opinion of counsel are insufficient to overcome the
facts). Moreover, in Valenite, the declarations of
applicant’s declarants were corroborated by the information
appearing on applicant’s web page submitted as a specimen
including links to applicant’s Technical Resource Center,
MSDS sheets, online calculators, and reference tables.
Valenite, 84 USPQ2d at 1348-1349. Thus, the fact that
applicant’s products will be purchased with a high degree
of care does not convert mere advertising into point of
purchase displays simply by adding contact information.
After considering the specimen submitted by applicant,
and the arguments of applicant, we find that applicant’s
specimen is mere advertising, not a point of purchase

4 Applicant’s Brief, pp. 8-9.
Serial No. 77571728
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display comprising a display used in association with the
goods, and therefore not acceptable to show trademark use
of applicant’s mark.
Decision: The refusal to register is affirmed.