Dell Inc.

Trademark Trial and Appeal Board

Aug 12, 2004

No. 75851765 (T.T.A.B. Aug. 12, 2004)

Mailed: August 12, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Dell Inc.
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Serial No. 75851765
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Doreen L. Costa and Abigail Rubinstein of Baker Botts
L.L.P. for Dell Inc.
William T. Verhosek, Trademark Examining Attorney, Law
Office 114 (Margaret K. Le, Managing Attorney).
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Before Seeherman, Walters and Chapman, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Dell Inc., by change of name from Dell Computer
Corporation, has applied to register QUIETCASE as a
trademark for goods identified, as amended, as "computer
hardware; internal cases for computer hardware being parts
of computer work stations." The application, which was
filed on November 17, 1999, was originally based on an
asserted bona fide intention to use the mark in commerce.
It was approved by the Examining Attorney, published for
THIS DISPOSITION IS CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 75851765
2
opposition, and eventually a notice of allowance issued.
Applicant filed several requests for an extension of time
to file its statement of use. On May 9, 2002, applicant
filed a statement of use, alleging first use and first use
in commerce on January 31, 2002. On September 17, 2002,
the Examining Attorney issued an Office action in which he
found the specimen submitted in support of the statement of
use to be unacceptable; on October 23, 2002, applicant
filed an "insurance" request for an extension of time to
file its statement of use.
Registration was ultimately finally refused on the
basis that applicant has failed to submit a specimen which
evidences actual trademark use. It is from this refusal
that applicant has filed the present appeal.
The appeal has been fully briefed.1 Applicant did not
request an oral hearing.
The sole issue in this appeal is whether the specimen
submitted by applicant on May 9, 2002 with its statement of
use is acceptable to show use of the mark in connection
with the identified goods.2
1 Applicant's request for an extension of time to file its reply
brief is granted.
2 With its request for reconsideration, filed with a certificate
of mailing dated October 16, 2003, applicant submitted a
substitute specimen which was asserted to have been in use "prior
to the expiration of the Fifth Extension of Time to file a
Statement of Use." Because this fifth extension was filed after
Ser No. 75851765
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Trademark Rule 2.56 provides, in part:
§2.56 Specimens.
(a) 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 or advertising of the services in
commerce.
(b)(1) A trademark specimen is a label,
tag, or container for the goods, or a
display associated with the goods. The
Office may accept another document
related to the goods or the sale of the
goods when it is not possible to place
the mark on the goods or packaging for
the goods.
Section 45 of the Trademark Act states, in part, that:
For purposes of this Act, a mark shall
be deemed to be in use in commerce—
(1) on goods when—
(A) it is placed in any manner on the
goods or their containers or the
displays associated therewith or on the
tags or labels affixed thereto, or if
the nature of the goods makes such
placement impracticable, then on
documents associated with the goods or
their sale....
The specimen submitted by applicant is a printout of a
page taken from its website, which it asserts to be a
display associated with the goods. During the course of
the "insurance" fourth extension request, the Examining Attorney
advised applicant that the fifth extension was not allowed, and
therefore that any specimen which was used after the expiration
of the fourth extension was not acceptable. Applicant does not
dispute this decision, and agrees that the only issue in this
appeal is the acceptability of the original specimen.
Ser No. 75851765
4
examination, the Examining Attorney appeared to accept that
a website page could, in theory, be a display associated
with the goods, but that applicant's particular website page
was not acceptable because of the manner in which the mark
appeared on it. In his brief, however, the Examining
Attorney also states that the specimen is mere advertising,
and does not constitute a display at all. Applicant
contends in its reply brief that the Examining Attorney had
not previously objected to the specimen on the basis that it
is mere advertising.
It appears to us that the Examining Attorney has made
the statement that the specimen is mere advertising because
of the distinction that is made in the case law between
advertising, which does not constitute evidence of trademark
use, and a display associated with the goods, which does.
"Specimens are invalid for registration purposes only if
they constitute mere advertising." Lands' End Inc. v.
Manbeck, 797 F.Supp. 511, 24 USPQ2d 1314, 1316 (E.D. Va.
1992), quoting In re Shipley Co., 230 USPQ 691, 694 (TTAB
1986). The Examining Attorney seems to be taking the
position that because the specimen is mere advertising, it
is not a display associated with the goods or, perhaps, that
because the specimen is not a display associated with the
goods, it is mere advertising.
Ser No. 75851765
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With respect to the question of whether a website page
can constitute a display associated with the goods, it is
true, as the Examining Attorney points out, that
traditionally "displays associated with the goods" have been
banners, shelf-talkers and other point-of-sale material.
However, in Lands' End, the Court held that a catalog could
also be a display associated with the goods. Lands' End was
attempting to register KETCH as a trademark for purses, and
submitted a page of its catalogue
showing the picture of a purse, a verbal
description, and the term "KETCH" as
they allege constitutes trademark usage.
The alleged trademark "KETCH" appears
prominently in large bold lettering on
the display of purses in the Lands' End
specimen in a manner which closely
associates the term with the purses.
24 USPQ2d at 1315.
As the Court reiterated in that decision, citing In re
Shipley Co., 230 USPQ at 694 (TTAB 1986), "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 goods." 24 USPQ2d at 1316.
In Shipley, the Board found that a specimen showing the
mark at a trade show booth was an acceptable "display
associated with the goods" because the trade show booth was
a sales counter for the applicant's products, even though
the chemicals being sold were not physically present at the
Ser No. 75851765
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booth. The Court found this situation analogous to the
catalog involved in Lands' End; the customer could
associate this display of the mark with the goods in
deciding whether to buy the product. Using the catalog, a
customer could associate the product with the trademark in
the display, and make a decision to purchase by filling out
the sales form and sending it in or by calling in a
purchase by phone.
Following the reasoning of the Lands' End decision, we
hold 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. It is a well-recognized fact of
current commercial life that many goods and services are
offered for sale on-line, and that on-line sales make up a
significant portion of trade. Applicant itself sells many
goods on-line. In the declaration of Deborah McNair, a
Communications Specialist for applicant, she states that in
1997
Dell became the first company to record
$1 million in online sales. Today,
Dell operates one of the highest volume
Internet commerce sites in the world
based on Microsoft Corp.'s Windows
operating system. Approximately half
of Dell's business is Web-enabled.
Ser No. 75851765
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Indeed, in 2000 alone Dell surpassed
sales of 50 million dollars per day via
the Dell web site.
In today's commercial environment, we must recognize
that the banners, shelf-talkers and other point of purchase
displays that are associated with brick and mortar stores
are not feasible for the on-line shopping setting. Web
pages which display goods and their trademarks and provide
for the on-line ordering of such goods are, in fact,
electronic displays which are associated with the goods.
Such uses are not merely advertising, because in addition
to showing the goods and the features of the goods, they
provide a link for ordering the goods. In effect, the
website is an electronic retail store, and the webpage is a
shelf-talker or banner which encourages the consumer to buy
the product. A consumer using the link on the webpage to
purchase the goods is the equivalent of a consumer seeing a
shelf-talker and taking the item to the cashier in a brick
and mortar store to purchase it.
The Examining Attorney has asserted that a single
webpage does not fit within the Lands' End determination of
a display associated with the goods because it is not an
actual catalog nor is it an electronic catalog. However,
the point made in Lands' End was not that, to be a display
associated with the goods, the specimen had to be a catalog
Ser No. 75851765
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(whether actual or electronic). The single webpage
submitted in the present case is used as a vehicle for
ordering the product shown on the webpage. As the
Examining Attorney has acknowledged, the specimen directs
prospective purchasers to "Buy Online"
through the icon "Customize it". This
is much akin to online retail stores[']
icon of "Add to cart" or a shopping
cart icon.
Office action mailed April 18, 2003.
The single webpage is, thus, a point of sale display, a
display by which the actual sale is made.
The Examining Attorney has also asserted that, even if
a single webpage would be acceptable as a point of sale
display, the particular webpage submitted by applicant as a
specimen does not meet the requirements of Lands' End
because it does not prominently display the mark with the
product. The Examining Attorney points to the following
language in Section 904.06(a) of the Trademark Manual of
Examining Procedure (3d ed., rev. May 2003):
[E]xamining attorneys should accept any
catalog or similar specimen as a
display associated with the goods,
provided: (1) it includes a picture of
the relevant goods; (2) it shows the
mark sufficiently near the picture of
the goods to associate the mark with
the goods; and (3) it includes the
information necessary to order the
goods, (e.g., a phone number, mailing
address, or e-mail address). Any form
Ser No. 75851765
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of advertising that satisfies these
criteria should be construed as a
display associated with the goods. It
is not necessary that the specimen list
the price of the goods.
It is the Examining Attorney's position that
applicant's specimen is unacceptable because it does not
show the mark sufficiently near the picture of the goods to
associate the mark with the goods, in that the mark is not
near the photograph of the goods, and the mark is not
prominently displayed, but "is in small font type and
inconspicuously a part of a laundry list of descriptions
and features for the goods." Brief, p. 7.
In order to determine whether the mark which appears
on the specimen is displayed in such a way that a customer
can easily associate the mark with the identified goods, we
must look to the specimen itself, a copy of which is
reproduced below:
Ser No. 75851765
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As can be seen, a photograph of the computer
workstation appears in the top portion of the webpage.
Information about the features of this workstation appear
both next to the photograph, and also below the heading,
"NEXT GENERATION INTEL® XEON® PERFORMANCE IN A HIGHLY
Ser No. 75851765
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SCALABLE WORKSTATION." Listed in the bullet points below
this heading is the trademark at issue: "QuietCase
acoustic environment, provides easy access to system
interior and supports tool-less upgrades and maintenance of
key internal components."
The Examining Attorney is certainly correct that the
trademark QUIETCASE does not appear next to the photograph
of the goods. However, as applicant points out, the
particular workstation is the only product on the webpage.
Thus, it is clear that this is the product to which the
trademark QUIETCASE refers. The Examining Attorney is also
correct that the mark QUIETCASE is shown in a smaller type
size than other words appearing on the webpage. However,
it must be remembered that the specimen is a webpage, and
that when it is actually viewed it will fill the consumer's
monitor screen. Thus, the mark will appear larger than it
does in the specimen contained in the file, or as
reproduced in this opinion. Further, the mark appears in a
bullet listing of information about the product. This list
will be carefully perused by potential consumers because it
contains information that is critical to the purchasing
decision. In addition, in the particular bullet fact, the
mark appears at the beginning of a line and is followed by
the "TM" trademark indicator. This use of the designation
Ser No. 75851765
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"TM" next to QUIETCASE lends a degree of visual prominence
to the term. But see, In re Brass-Craft Manufacturing Co.,
49 USPQ2d 1849 (TTAB 1998); In re Remington Products Inc.,
3 USPQ2d 1714 (TTAB 1987) (mere use of the "TM" indicator
cannot transform an otherwise unregistrable term into a
trademark).
In the context of the specimen webpage, we find that
QUIETCASE is sufficiently prominent that consumers will
recognize it as a trademark for the computer hardware shown
on the webpage.3 See In re Hydron Technologies Inc., 51
USPQ2d 1531 (TTAB 1999), in which the Board found that
copies of individual images taken from a video recording of
an infomercial was a display associated with the goods,
even though the mark was shown by itself on a separate
screen print, and there was always intervening material
between the showing of the mark and the ordering
information. The Board held that when the infomercial was
considered as a viewer would perceive it, the slogan mark
was associated with the goods which were the subject of the
video. In the same way, the specimen webpage will be
3 It appears from the bullet information that QUIETCASE is being
used as a trademark to identify a feature of the hardware. No
objection to the specimen was raised on this basis, and we have
therefore not considered this point in our decision on appeal.
Ser No. 75851765
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viewed as a whole, and QUIETCASE will be perceived as a
trademark for the goods.
Decision: The refusal of registration is reversed.