Hydron Technologies, Inc.

Trademark Trial and Appeal Board

May 11, 1999

No. 74617867 (T.T.A.B. May. 11, 1999)

Paper No. 22
RFC
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Hydron Technologies, Inc.
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Serial No. 74/617,867
_______
J. Rodman Steele, Jr. of Quarles & Brady LLP for Hydron
Technologies, Inc.
Cheryl A. Butler, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney).
_______
Before Simms, Cissel and Hohein, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On January 4, 1995, applicant filed the above-
identified application to register the mark “HYDRON MAKES
THE DIFFERENCE” on the Principal Register for what were
subsequently identified by amendment as “facial, skincare,
hair, bath, and beauty preparations; namely, moisturizers,
cremes, toners, clarifiers, exfoliators, masques, lotions,
sunscreens, sunless tanning cremes and non-medicated hair
care preparations,” in International Class 3.
Ser No. 74/617867
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The application was based on applicant’s assertion
that it possessed a bona fide intention to use the mark on
such products in commerce, and on August 27, 1996,
applicant filed an amendment to allege use and a supporting
declaration. Applicant asserted first use of the mark on
the stated goods in interstate commerce at least as early
as August 13, 1995, and submitted three “screen prints from
an infomercial… showing the mark as used in point of sale
advertisements.” The “screen prints” are, in essence,
copies of individual images taken from a video recording of
the infomercial, which is an extended television commercial
for applicant’s skin care products.
The Examining Attorney held the specimens to be
unacceptable as evidence of trademark use because they do
not show use of the mark on the goods. She dismissed
applicant’s contention that the images from applicant’s
infomercial are proper evidence of trademark use of the
mark sought to be registered, characterizing them as merely
advertising, rather than evidence of use of the mark on the
goods or in some other way showing the mark used to
indicate the source of the goods. The Examining Attorney
required substitute specimens showing trademark use of the
matter sought to be registered.
Ser No. 74/617867
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Applicant responded with argument on this issue, but
the Examining Attorney was not persuaded, and in an Office
Action issued on April 2, 1997, she made final the refusal
of registration under Sections 1, 2 and 45 of the Lanham
Act, (15 USC 1051, 1052 and 1127), on the ground that the
specimens do not show use of the mark as a trademark for
the goods specified in the application. Section 1 provides
for the registration of trademarks used in commerce and
requires submission of specimens of such use of the mark
with the application. Section 2 also requires the matter
sought to be registered to be a trademark, and Section 45
defines a trademark and what constitutes use of it in
commerce.
Applicant filed a timely Notice of Appeal, along with
a request for reconsideration, on October 2, 1997. The
appeal was instituted, but action on it was suspended, and
the application was remanded to the Examining Attorney for
reconsideration.
Included with the reconsideration request were a video
cassette of the complete infomercial, additional screen
prints from the video of the infomercial, and a time-
indexed guide to viewing it.
The Examining Attorney was not persuaded, however, and
continued the refusal to register the mark “HYDRON MAKES
Ser No. 74/617867
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THE DIFFERENCE” in the absence of what she could accept as
specimens showing trademark use of the words sought to be
registered. Then the file was returned to the Board for
resumption of the appeal.
Applicant filed a brief, the Examining Attorney filed
her brief, and applicant filed a reply brief. Applicant
requested an oral hearing before the Board, but
subsequently withdrew the request, so we have resolved this
matter on the written record and arguments.
The sole issue before us on appeal is whether the
specimens submitted with the amendment to allege use are
acceptable evidence of the use of “HYDRON MAKES THE
DIFFERENCE” as a trademark for the beauty products set
forth in the application. Based on careful consideration
of the record before us, we find that the specimens are
acceptable evidence of trademark use of these words, so the
refusal to register (or, in the terms the Examining
Attorney originally used, the requirement for acceptable
specimens evidencing trademark use) is inappropriate, and
therefore must be reversed.
A detailed explanation of exactly what is shown in the
half hour infomercial is necessary in order to understand
the factual context in which this issue is presented. The
infomercial is shown on QVC, a cable television channel
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devoted to shopping. Programming on this channel consists
of advertising various products and offering to send them
to viewers who call and order them by telephone. A
subscriber to QVC may watch applicant’s infomercial and
order applicant’s “HYDRON” skin and hair care products by
calling the telephone number shown in the infomercial, or
by sending a check or money order to an address shown
therein. The products ordered are then mailed to the
person who ordered them.
The entire video presentation is twenty-eight minutes
and forty-eight seconds long. The sales presentation
begins with the primary spokesperson, a woman, holding a
baby in her lap and extolling the virtues of the infant’s
skin. After about ten and a half minutes of personal
endorsements, interviews, demonstrations, and information
concerning the history and development of the products, the
patents for the technology used in making them, and the
successful marketing role of QVC, the mark is is shown for
the first time. The mark, depicted on two lines, with
“HYDRON” on one, and “Makes The Difference” on the line
immediately below, is shown for three seconds on an
otherwise dark screen. In general, music and narrative
accompany the images throughout the video, but no narrative
is used during the times when the mark appears on the
Ser No. 74/617867
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screen. Directly following the presentation of the mark
itself, the screen is split, with the left half showing a
woman, and the right half displaying a picture of bottles
and tubes of applicant’s products bearing the mark
“HYDRON.” Two minutes and five seconds later, at the 12:34
mark, after more information and touting of the products
has been presented, a screen appears showing the price and
how to order and pay for the goods by writing or calling.
The second time the mark appears in the infomercial is
at the 19:34 mark. The slogan “HYDRON Makes The
Difference” is shown on two lines again, this time on top
of a blue circle which appears on an otherwise solid black
background. The mark again is shown for three seconds, and
then, immediately following this, the split screen
featuring both a picture of the “HYDRON” products and the
image of the woman appears. More promotional information
is then provided, and after two minutes and fourteen
seconds of that, the screen showing the price and how to
order are shown again.
The third and final time the mark is shown is at the
end of the infomercial. At 27:58, the ordering information
screen is again displayed. The image of bottles and tubes
of applicant’s products and the directions for ordering
them is held through 28:09. At 28:39, the screen is split,
Ser No. 74/617867
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featuring a woman’s face on one side and a picture of
containers of applicant’s goods on the other. Directly
following that, at 28:40, a photograph of a baby appears
for three seconds, with the slogan “HYDRON Makes The
Difference” again shown in the middle of the screen.
The Examining Attorney contends that
“[t]he rotating displays of the products on the split
screens with the various endorsers and the narrator’s
information and promotional comments result in a
piecemeal presentation of the goods and prevents (sic)
a direct association of the proposed mark with the
goods because the viewer’s focus is constantly being
subjected to changing stimuli. Even accepting
applicant’s position that there is (sic) ‘only 32
seconds’ between the display of the mark and the
relevant goods, the material presented in that time is
sufficient to prevent the formulation of an
association in the minds of the consumers.” (Examining
Attorney’s brief, p. 9).
She argues further that
“[a]pplicant’s proposed mark appears for a total of
nine seconds in an infomercial over twenty-eight
minutes in length. Combined with the overall
promotional nature of the infomercial, the nature of
the changing audio-visual presentation between the
display of the proposed mark and the ordering and
pricing information, and the inability of the
potential purchaser to control the viewing of the
infomercial, applicant’s use does not amount to a
display in direct association with the goods. Rather,
applicant’s use falls on the ‘advertising’ side of the
line.” (brief, p. 15).
Section 1 of the Lanham Act establishes that the owner
of a trademark used in commerce may apply to register it on
the Principal Register by filing a written application and
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specimens of the mark as it is used in commerce. Section
45 of the Act provides that a mark shall be considered to
be used in commerce on goods when “it is placed in any
manner on the goods or their containers or the displays
associated therewith … and the goods are sold or
transported in commerce …” (emphasis added). In the
instant case, the specimens submitted by the applicant with
the amendment to allege use are acceptable because they
satisfy the requirements for displays associated with the
goods.
Whether a specimen is merely advertising or whether it
is a display associated with the goods is a question of
fact which must be determined in each case based on the
evidence in that particular case. In re Shipley Co., 230
USPQ 691 (TTAB 1986). In that case, the applicant
displayed the mark at booths at trade shows. The crucial
factor was that the mark was being used at the point of
sale, i.e., at the location where the goods could be
ordered, even though the goods identified by the mark were
not present when the order was placed. The Board held that
the prominent display of the mark on the booth where the
goods could be ordered created the association between the
mark and the goods. Likewise, the case of In re Marriott,
459 F.2d 525, 173 USPQ 799 (CCPA 1972), dealt with the
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issue of whether menus can constitute displays associated
with the food items listed thereon. In that case, the
menus designated a sandwich as the “TEEN TWIST” sandwich,
listed its ingredients, and presented an illustration of it
as well. The Court found that the point-of-sale nature of
the display on the menu was significant because the
customer who orders the sandwich from the menu associates
the mark on the menu with the sandwich he or she receives.
The law with respect to displays associated with the
goods was extended by the decision in Lands’ End Inc. v.
Manbeck, 797 F.Supp. 511, 24 USPQ2d 1314 (E.D. Va. 1994).
There the Court found that a mail-order catalog from which
the goods could be ordered, and which showed the mark in
close proximity to descriptions of the goods, illustrations
thereof and prices for them, was an acceptable specimen
because it constituted a display associated with the goods.
The court noted that “[t]he catalogue is by no means ‘mere
advertising.’ A customer can identify a listing and make a
decision to purchase by filling out the sales form and
sending it in or by calling in a purchase by phone … The
point of sale nature of this display, when combined with
the prominent display of the alleged mark with the product,
leads this court to conclude that this mark constitutes a
display associated with the goods.” 24 USPQ at 1316.
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The case now before the Board presents an analogous
situation. The mark sought to be registered is shown in
the infomercial in close association with pictures of the
goods bearing the mark “HYDRON.” As we noted above, the
images immediately preceding or immediately following the
mark prominently feature pictures of the goods. The
information on how to order the goods is also given within
a reasonable time of when the mark and the goods are shown.
The infomercial, like the catalog in Lands’ End, supra, is
“by no means mere advertising.” Instead, it is a basis
upon which a customer can identify the products he or she
wants to purchase, make the decision to purchase them, and
place the order. Based on the evidence before us in the
instant case showing the use of the mark by this applicant,
we have reached the conclusion that the use of the slogan
“HYDRON MAKES THE DIFFERENCE” in this infomercial creates
an association between the mark and the goods. The test
for constituting a display associated with the goods is
therefore satisfied.
The Examining Attorney argues that too much is going
on in the infomercial and too much time elapses between the
time the mark is shown and the time the information about
how to order the goods is provided for a viewer to
associate the slogan with applicant’s products. In our
Ser No. 74/617867
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view, this is simply not the case. Moreover, the
characterization of the time as excessive may be more of a
comment on the quality of the production of the infomercial
than an argument against finding that the infomercial is an
acceptable specimen as a point-of-purchase display
associated with the goods.
As applicant points out, the court in the Lands’ End
case emphasized the proximity between the pictures of the
goods in the catalog and the mark used in connection with
them. The space or pages between the mark and the
illustration of the goods, on the one hand, and the
ordering information, on the other, was not discussed, and
properly so. The question was whether the catalog, which
was used at the point where the customer decided to
purchase the goods and ordered them, showed the mark in
close proximity to the goods and in such a way that the
prospective purchaser would understand the mark as
identifying the source of the goods.
The court did not hold it fatal to the acceptability
of the catalog as a point-of-purchase display that it
showed the ordering information farther away from the
depiction of the goods than the mark was shown. In a
similar sense, the important fact in the instant case is
that the goods are shown either immediately before or
Ser No. 74/617867
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immediately after the mark is displayed. That the ordering
information is not shown in direct proximity to when the
mark and the goods are shown does not detract from the fact
that sequentially depicting the mark and the goods creates
an association between the two in the mind of a person
watching the video.
When the whole infomercial is considered as a viewer
would perceive it, it is clear that the slogan sought to be
registered is associated with the goods which are the
subject of the entire video. Customers and potential
customers are likely to understand that “HYDRON MAKES THE
DIFFERENCE,” shown three times during the presentation,
each time back-to-back with the photographic representation
of the goods, identifies the source of the skin care
products which are pictured.
The very end of the presentation makes this abundantly
clear. The ordering information is presented for the last
time. Next, the testimonials conclude on one side of the
screen simultaneously with the display of a picture of
containers of product bearing the mark “HYDRON” on the
other side. Immediately, the scene returns to the setting
with which the infomercial began. The primary spokesperson
is shown again with the same baby in her lap. The screen
is filled with the image of the child and the slogan, as if
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to summarize the presentation at its conclusion. The tag
line for the whole advertisement is the last thing the
viewer sees: “HYDRON Makes The Difference.” From the
final scene alone, appearing immediately after a depiction
of applicant’s “HYDRON” products, it is clear that the
slogan “HYDRON MAKES THE DIFFERENCE” identifies the source
of the goods. It is also clear that the infomercial is a
point-of-purchase display in the same sense that the
catalog in the Lands’ End case was.
In keeping with the Court’s ruling in the Lands’ End
case, the requirements of Sections 1 and 45 of the Lanham
Act are therefore satisfied in the instant application by
the specimens that the applicant submitted with its
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amendment to allege use. Accordingly, the refusal to
register, or the requirement for substitute specimens, is
reversed.
R. L. Simms
R. F. Cissel
G. D. Hohein
Administrative Trademark Judges
Trademark Trial and Appeal Board
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