Definitive Technology, LLC

Trademark Trial and Appeal BoardSep 21, 2016

No. 86291125 (T.T.A.B. Sep. 21, 2016)

This Opinion is not a Precedent of the TTAB Mailed: September 21, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Definitive Technology, LLC _____ Serial No. 86291125 _____ Crystal Biggs, Esq., for Definitive Technology, LLC. Seth A. Rappaport, Senior Trademark Attorney, Law Office 104, Dayna Browne, Managing Attorney. _____ Before Kuhlke, Kuczma and Heasley, Administrative Trademark Judges. Opinion by Kuczma, Administrative Trademark Judge: Definitive Technology, LLC (“Applicant”) seeks registration on the Principal Register of the mark THIS IS SOUND. (in standard characters) for: Cardboard displays, namely, cardboard floor display units for merchandising products, instruction manuals in the field of audio equipment, posters, brochures about audio equipment in International Class 16.1 1 Application Serial No. 86291125 was filed on May 23, 2014, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). Subsequently, Applicant filed a Statement of Use on June 10, 2015, based on Applicant’s allegation of first use and first use in commerce on September 6, 2014. However, registration has been refused because the specimens submitted Serial No. 86291125 - 2 - The Senior Trademark Attorney refused registration of Applicant’s mark because the specimen does not show the applied-for mark in use in commerce as a trademark in connection with any of the goods specified in the statement of use, citing Trademark Act Sections 1 and 45, 15 U.S.C. §§ 1051, 1127; 37 C.F.R. §§ 2.34(a)(1)(iv), 2.56(a). When the refusal was made final, Applicant appealed and requested reconsideration. After the Senior Trademark Attorney denied the request for reconsideration, the appeal was resumed. Applicant and the Senior Trademark Attorney have briefed their positions.2 We affirm the refusal to register. Specimens A statement of use filed in support of an application based on §1(b) of the Trademark Act must include a specimen showing the applied-for mark in use in commerce for each International Class of goods and/or services identified in the application. 15 U.S.C. §1051 (d); 37 C.F.R. §2.56(a); see In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013). Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the goods, packaging, or displays associated with the goods at their point of sale, and do not show the applied-for mark in use in commerce in connection with any of the goods specified in the Statement of Use. 2 The Rules require submissions by parties to be double-spaced. Trademark Rule 2.126(b); 37 C.F.R. § 2.126(b). Applicant’s Main Brief was filed in single-space format. Despite this lapse, and in view of the lack of an objection from the Senior Trademark Attorney, Applicant’s Main Brief is accepted as filed. Serial No. 86291125 - 3 - webpages when they include a picture or textual description of the goods associated with the mark and the means to order the goods. See generally TMEP §§904.03. The specimens in a trademark application enable the USPTO to verify the statements made in the application regarding trademark use. In this regard, the manner in which an applicant has employed its asserted mark, as evidenced by the specimens of record, must be carefully considered in determining whether the asserted mark has been used as a trademark with respect to the goods identified in the application. In re Bose Corp., 546 F.2d 893, 192 USPQ 213, 216 (CCPA 1976) ; In re Manco Inc., 24 USPQ2d 1938, 1941 (TTAB 1992). Here, the goods identified in the application are cardboard displays, namely, cardboard floor display units for merchandising products, instruction manuals in the field of audio equipment, posters, brochures about audio equipment. Applicant argues that the specimens show the mark used in connection with the goods identified in the application because the displays “…ARE the applied for goods in this case. Applicant has separate registrations to protect its various marks for audio equipment. In this case, Applicant sought to protect[] its mark in connection with its displays in the field of audio equipment, and that is exactly what we have demonstrated. Applicant’s displays are often very costly. Applicant’s displays are sold and marketed, and they are essential to our customers.”3 3 Applicant’s Brief p. 2 (7 TTABVUE 3). Serial No. 86291125 - 4 - As shown below, the substitute specimens submitted by Applicant show the applied-for mark used in advertising materials for audio equipment4: ________________ 4 The specimens submitted with the Statement of Use filed June 10, 2015, are not acceptable as they do not show use of the mark on the goods in the application. Thus, Applicant submitted substitute specimens. See substitute specimens submitted with Response to Office Action of August 18, 2015, pp. 5-7; and Request for Reconsideration of March 10, 2016, pp. 6- 9. Serial No. 86291125 - 5 - ___________________ Applicant admits that its “… Endorsement Agreement with singer, John Legend, permitted Applicant to advertise its mark featuring Mr. Legend in connection with Applicant’s products at Best Buy’s Magnolia stores. Applicant provided store displays to Best Buy that featured the ‘THIS IS SOUND.’ mark ….” Applicant also submitted Serial No. 86291125 - 6 - copies of its “ads/brochures that featured the ‘THIS IS SOUND.’ mark related to Applicant’s audio equipment.”5 Applicant’s statements acknowledge that the materials submitted as specimens are used to advertise its audio products. The salient question is whether the applied-for mark THIS IS SOUND., as used, will be recognized as an indication of origin for the products identified in the identification of goods. In order to ascertain the manner of use and the commercial impact created by the asserted mark, one looks to the specimens of record and other examples of actual use in the record. In re Bose Corp., 192 USPQ at 216; In re The Signal Companies, Inc., 228 USPQ 956, 959 (TTAB 1986); In re Restonic Corp., 189 USPQ 248, 249 (TTAB 1975). This necessitates a determination as to whether the applied-for mark is used and provided in such a manner so as both to make it known to Applicant’s consumers and to have such individuals associate it with those goods as an identification symbol. In re Morganroth, 208 USPQ 284, 288 (TTAB 1980); In re Wakefern Food Corp., 222 USPQ 76, 77 (TTAB 1984). As shown in the specimens submitted, Applicant’s mark THIS IS SOUND. appears in close association with a picture of Applicant’s audio products, underscoring the relationship between the applied-for mark and Applicant’s audio products. In addition, the commercial impression of the applied-for mark THIS IS SOUND. refers directly to Applicant’s audio products.6 Thus, consumers viewing the 5 Applicant’s Brief pp. 1-2 (7 TTABVUE 2-3). 6 Moreover, it has long been held that advertising is not acceptable to show trademark use on goods. See Powermatics, Inc. v. Globe Roofing Products Co., 341 F.2d 127, 144 USPQ 430, 432 (CCPA 1965) (“it being well settled that mere advertising…do[es] not constitute technical trademark use”); Land’s End, Inc. v. Manbeck, 797 F.Supp. 511, 24 USPQ2d 1314, 1316 (E.D. Va. 1992) (“Specimens are invalid for registration purposes only if they constitute mere Serial No. 86291125 - 7 - mark on the specimens will consider it as used in connection with the audio equipment being advertised, and not in connection with the advertising materials themselves.7 While the applied-for mark shown in the specimens is applied physically to some of the goods identified in the application, the mark is not used to promote or indicate source of the goods identified in the application; rather, the mark is being used to advertise Applicant’s audio products. Consumers viewing Applicant’s applied-for mark on the specimens presented will view the mark in connection with the audio equipment being advertised in the specimens and not in connection with the displays and posters themselves. Accordingly, the specimens do not show the mark used as an identifier of source for the “cardboard displays, namely, cardboard floor display units for merchandising products, instruction manuals in the field of audio equipment, posters, brochures about audio equipment” identified in the Statement of Use. For the foregoing reasons, after considering the substitute specimens submitted by Applicant, and the arguments of both Applicant and the Examining Attorney, we find that the applied-for mark would be understood to refer to Applicant’s audio advertising.”); In re Quantum Foods Inc., 94 USPQ2d 1375, 1379 (TTAB 2010); In re MediaShare Corp., 43 USPQ2d 1304 (TTAB 1997) (“fact sheet brochures” or “catalog pages” submitted as specimens do not function as displays associated with sale of goods and were unacceptable as evidence of actual trademark use because they were mere advertising). The application was not refused registration on the ground that the specimens did not function as displays associated with the sale of the goods. Accordingly, this issue is not involved in this appeal. 7 It appears from the record that the consumers of the applied-for goods are the retailers to whom the displays and printed materials are sold to be used by the retailers to sell the audio equipment being advertised on the displays. This is presumably why there is not also a goods in trade refusal. See TMEP § 1202.06 (April 2016). Serial No. 86291125 - 8 - equipment and would not be perceived as a trademark identifying the source of the cardboard floor display units for merchandising products, instruction manuals in the field of audio equipment, posters, and brochures about audio equipment, identified in the application. Thus, the refusal to register on the basis of Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127, on the ground that the specimens submitted by Applicant do not show the mark as used in connection with the goods identified in the application, is affirmed. Decision: The refusal to register Applicant’s applied-for mark THIS IS SOUND. is affirmed.