Columbia Insurance CompanyDownload PDFTrademark Trial and Appeal BoardJan 19, 2011No. 77571728 (T.T.A.B. Jan. 19, 2011) Copy Citation Mailed: January 19, 2011 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Columbia Insurance Company ________ Serial No. 77571728 _______ 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 3 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 4 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 5 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 7 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 8 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 9 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. Copy with citationCopy as parenthetical citation