U.S. Tsubaki, Inc.

Trademark Trial and Appeal Board

Mar 7, 2014

No. 85267349 (T.T.A.B. Mar. 7, 2014)

THIS OPINION IS A
PRECEDENT OF THE TTAB

Hearing: Mailed:
October 30, 2013 March 7, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re U.S. Tsubaki, Inc.
_____

Serial No. 85267349
_____

James C. Wray, Esq. for U.S. Tsubaki, Inc.

Michele-Lynn Swain, Trademark Examining Attorney, Law Office 116 (Michael W.
Baird, Managing Attorney).
_____

Before Rogers, Kuhlke and Bergsman, Administrative Trademark Judges.1

Opinion by Bergsman, Administrative Trademark Judge:
U.S. Tsubaki, Inc. (“applicant”) filed a use-based application to register the
mark TSUBAKI: THE CHOICE FOR CHAIN, in standard character form, for
“industrial machine parts, namely, chains and sprockets,” in Class 7.2

1 Judge Grendel sat on the panel at the oral argument. He has since retired, and Judge
Rogers has been substituted for him on this decision. The change in composition of the
panel does not necessitate a rehearing of the oral argument. Hunt Control Systems Inc. v.
Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1560 (TTAB 2011). See also In re
Bose, 772 F.2d 866, 227 USPQ 1, 4 (Fed. Cir. 1985).
2 Applicant disclaimed the exclusive right to use the word “Chain” and stated that the
English translation of “Tsubaki” is “camellia.”

Serial No. 85267349

2

The Trademark Examining Attorney has refused registration pursuant to
Sections 1 and 45 of the Trademark Act of 1946, 15 U.S.C. §§ 1051 and 1127, on the
ground that applicant failed to submit a specimen showing proper trademark use.
The Trademark Examining Attorney contends that the specimens of use submitted
by applicant are not acceptable to show use of the mark in connection with the
goods because they are merely advertising material.
Section 45 of the Trademark Act states that a mark is 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, and
(B) the goods are sold or transported in commerce.3
Trademark Rule 2.56(b)(1), 37 C.F.R. § 2.56(b)(1) provides:
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 impracticable to place the
mark on the goods or packaging for the goods.
See also In re Sones, 590 F.3d 1282, 93 USPQ2d 1118, 1123 (Fed. Cir. 2009) (“the
test for an acceptable … specimen, is simply that it must in some way evince that
the mark is ‘associated’ with the goods and serves as an indicator of source”); and In
re Marriott, 459 F.2d 525, 173 USPQ 799 (CCPA 1972). Thus, something other than

3 While section 45 specifically provides that use of a mark on advertising qualifies as “use in
commerce” for a service mark, it omits use on advertising under the provision for marks
used on goods, i.e., trademarks.
Serial No. 85267349

3

a label, tag, container, or display associated with the goods is acceptable only upon
a showing that it is “impracticable to place the mark on the goods or packaging for
the goods.” The TMEP explains further that a qualifying “display” will essentially
comprise “point-of-sale material such as banners, shelf-talkers, window displays,
menus, and similar devices.” TMEP § 904.03(g). Consistent with Section 45 of the
Trademark Act, this TMEP section goes on to explain that “[f]olders, brochures, or
other materials that describe goods and their characteristics or serve as advertising
literature are not per se ‘displays’” and that “[i]n order to rely on such materials as
specimens, an applicant must submit evidence of point-of-sale presentation.”
(emphasis added). The TMEP also explains that “[i]n appropriate cases, catalogs
are acceptable specimens of trademark use,” but again qualifies this provision by
noting that catalogs that do not “(1) include[] a picture or a sufficient textual
description of the relevant goods; (2) show[] the mark in association with the goods;
and (3) include[] the information necessary to order the goods” may constitute “mere
advertising” material and thus not qualify. TMEP § 904.03(h) (October 2013).
“[T]he mere inclusion of a phone number, Internet address and/or mailing address
on an advertisement describing the product is not in itself sufficient to meet the
criteria for a display associated with the goods. There must be an offer to accept
orders or instructions on how to place an order.” Id.4 See also In re MediaShare
Corp., 43 USPQ2d 1304, 1306 (TTAB 1997) (fact sheets, catalogs, or brochures

4 Contrary to applicant’s argument at the oral hearing, the TMEP does not advise that
merely providing contact information, such as a telephone number, is sufficient to
transform advertising into a display associated with the goods.
Serial No. 85267349

4

submitted as specimens were not displays associated with the goods, in part,
because they did not include any information as to how to order the products or the
terms and conditions under which the software was available for license).
Applicant asserts that the specimens of record “are catalogs that offer the
Applicant’s products to customers by inviting orders using the telephone number
show [sic] in the catalog. Thus, as required by TMEP §904.03(h) (October 2013), the
provided specimens offer to accept orders and provide instructions on how to place
an order.”5 The Examining Attorney takes the position that the catalogs do not
contain the necessary ordering information for the goods and therefore are mere
advertising.6
Our primary reviewing court has instructed that the Trademark Act
“specifies no particular requirements to demonstrate source or origin; for displays,
the mark must simply be ‘associated’ with the goods.” Sones, 93 USPQ2d at 1122,
citing In re Marriott, 459 F.2d 525, 173 USPQ 799 (CCPA 1972). However, the
court, in the context of reviewing a Board determination that a webpage specimen
did not qualify as a display associated with goods, also stated that a relevant
consideration was whether the webpage specimen had “a ‘point of sale nature.’”
Sones, 93 USPQ2d at 1124 (citing Lands’ End Inc. v. Manbeck, 797 F. Supp. 511, 24
USPQ2d 1314, 1316 (E.D. Va. 1992)). The determination of whether a proffered
catalog specimen is merely advertising or serves the function of a display associated
with the goods is a question of fact. In re Shipley Co., 230 USPQ 691, 694 (TTAB

5 Applicant’s Brief, pp. 1-2.
6 Trademark Examining Attorney Brief, unnumbered pages 4-5.
Serial No. 85267349

5

1986). A display used in association with the goods is essentially a point-of-sale
display designed to catch the attention of purchasers as an inducement to
consummate a sale. Id. at 694 (“A crucial factor in the analysis is if the use of an
alleged mark is at a point of sale location”). “Factually, we need to ask whether the
purported point-of-sale display provides the potential purchaser with the
information normally associated with ordering products of that kind.” In re Anpath
Group Inc., 95 USPQ2d 1377, 1381 (TTAB 2010).
In order to determine whether applicant or the Trademark Examining
Attorney is correct, we must turn to a consideration of the specimens. Applicant
submitted six (6) specimens with its application. We discuss each specimen below.
A. First specimen
The first specimen is an eight-page catalog or advertising brochure with the
title “There’s Nothing Standard about Tsubaki Performance.” The mark appears on
the lower right-hand corner of the first page. On page seven, applicant presents the
information set forth below.
Serial N

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Serial N

A
Applica
placing
telephon
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held in
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displays
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7 Applica
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pplicant a
nt’s custom
orders. O
e number
simple in
ng orders
Anpath, “[
n with its
e, and wou
the goods
pecimen,
fice.” In re
Q2d at 13
associate
decision t
n a purcha

nt’s Brief, p
49
rgues tha
er servic
n the ne
s for the cu
vitation to
– does not
o]ur hypot
limited o
ld contact
; it is only
that the p
Anpath G
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even “invi
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95 USPQ
rt found
cause “a c
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tes the c
ny questio
e specime
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t informat
rdering th
stomer, af
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prelimina
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2d at 1381
catalog sp
ustomer c
sales form
ustomer t
ns or to
n, the ca
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ion – even
e product
ter review
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ry informa
on, which
n order w
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ecimens to
an identify
and send
o contact
get quotes
talog lists
to get qu
. As the B
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t the poin
tion neces
is not prov
ith applica
e Land’s E
be accept
a listing
ing it in o

the
for
the
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nt's
t of
sary
ided
nt's
nd,
able
and
r by
Serial No. 85267349

8

In Anpath, the Board focused on “whether the purported point-of-sale display
provides the potential purchaser with the information normally associated with
ordering products of that kind”:
Turning then to applicant’s substitute flyer, a generous
portion of the text is devoted to touting the benefits of
these goods. What is missing is a sales form, or ordering
information anywhere on the specimen. In point of fact,
the potential purchaser has no actual information about
the minimum quantities of applicant’s goods one may
order, how much the goods cost, how one might pay for
the products, how the large containers of liquid would be
shipped, etc.
95 USPQ2d at 1381.
Likewise, in this case, applicant's specimen indicating how one can obtain
more information regarding chains and sprockets is simply promotional material. It
does not provide a sales form or ordering information. There is no information
about minimum quantities one must order, how much the goods cost, or how the
orders are shipped. Such advertising is not acceptable to show trademark use on
goods. See Section 45 of the Trademark Act; In re Anpath Group Inc., 95 USPQ2d
at 1381; In re MediaShare Corp., 43 USPQ2d at 1307. Similarly, the company
name, address and phone number that appear on the last page of the catalog
indicate only location information about applicant; it does not constitute a means to
order goods through the mail or by telephone, in the way that a catalog sales form
provides a means for one to fill out a sales form or call in a purchase by phone.
Compare In re Valenite Inc., 84 USPQ2d 1346, 1348-49 (TTAB 2007), in which, in
addition, Valenite’s director of marketing stated in his declaration that “these [toll-
free] numbers are now, and … have been, used to place orders for the goods” and
Serial No. 85267349

9

the specialized industrial nature of applicant’s goods was supported by applicant’s
webpage specimen corroborating applicant’s argument that “[s]election and
ordering of VALPRO systems and components requires careful calculation and
technical knowledge.” The Board in Valenite also noted that the examining
attorney did not dispute this point. Id. at 1349. However, in this case, the
Examining Attorney has disputed the commercial impression engendered by the
display of applicant’s contact information:
In the case at hand, the provided specimens do not
indicate to consumers that they can place orders for the
identified goods via the provided contact information.
Accordingly, because the provided specimens do not
contain instructions to consumers as to how to place an
order using the provided contact information, such
specimens are mere advertising material.8
The specimen at issue does not contain any information normally associated
with ordering products via the telephone or the Internet. There are no sales forms,
no pricing information, no offers to accept orders, and no special instructions for
placing orders anywhere on the specimen. There are no instructions regarding
what information the caller needs to have available to help applicant process an
order. Applicant is asking us to infer from the face of the specimen that it is
common for customers to purchase applicant’s chain through the telephone or
through the Internet.
We acknowledge the explanation by applicant’s counsel that “[o]rders are
taken over the telephone by skilled chain experts in U.S. Tsubaki, Inc. Customers

8 December 7, 2011 Office action. See also the Trademark Examining Attorney’s Brief, pp.
4-5 (unnumbered).
Serial No. 85267349

10

initiate telephone calls to the telephone number on the catalog and order the
products by telephone.”9 Thus, applicant concludes that “[t]he specimen includes
the information necessary to order the goods (e.g., the telephone number) for
placing orders.”10 Further, applicant argues that the “internet address provides a
website that also contains information for requesting quotations on specific
chains.”11 However, neither the ability to request a quotation via the internet or by
phone evidences that the specimen constitutes a point of sale display. Utilization of
either requires taking additional steps to consummate a sale.
Moreover, there is no actual proof to support these statements in the record.
We have only applicant’s counsel’s statements as to how applicant and its
competitors sell chains and sprockets. Putting aside whether a declaration from
outside counsel could ever qualify as acceptable proof of these sort of facts,12 we
have here no foundational information about counsel’s investigation of, or
understanding of, applicant’s business, that would put him in a position to make
statements regarding the marketing of the products at issue, which in this case is
essential to our analysis of the registrability of the mark. Cf. In re Simulations
Publications, Inc., 521 F.2d 797, 187 USPQ 147, 148 (CCPA 1975) (where appellant

9 Applicant’s June 6, 2012 response to Office action. See also Applicant’s October 3, 2011
response to Office action.
10 Applicant’s June 6, 2012 response to Office action.
11 Id.
12 Cf. In re DeBaun, 687 F.2d 459, 214 USPQ 933, 934 & n.4 (CCPA 1982) (“we need not
evaluate the weight to be given to the attorney’s declaration with respect to statements
more appropriately made by appellant”); In re Nat’l Distiller & Chem. Corp., 297 F.2d 941,
132 USPQ 271, 274 (CCPA 1962).
Serial No. 85267349

11

argued that the magazines at issue deal with unrelated subject matter, the court
held that “[s]tatements in a brief cannot take the place of evidence.”); In re
Scarbrough, 500 F.2d 560, 182 USPQ 298, 302 (CCPA 1974) (where patent claims
were rejected for the insufficiency of disclosure under Section 112, the response of
appellant was argument in lieu of evidence leading the court to hold that “argument
of counsel cannot take the place of evidence lacking in the record.”); In re
Vsesoyuzny Ordena Trudovogo Krasnogo Znameni, 219 USPQ 69, 70 (TTAB 1983)
(applicant argued without corroborating evidence that its brochure would be
recognized as an offer of services leading the Board to hold that “[u]nfortunately we
have no evidence of record to this effect and assertions in briefs are normally not
recognized as evidence”); Spin Physics, Inc. v. Matsushita Electric Industrial Co.,
Ltd., 168 USPQ 605, 607 (TTAB 1970) (“The arguments and opinions of counsel for
applicant are wholly insufficient to overcome the facts established by the Sugaya
report.”). Compare In re Valenite Inc., 84 USPQ at 1348 (appellant submitted the
declaration of its director of marketing who testified that appellant’s customers
regularly order its products by contacting the customer service department by
telephone).
If applicant wished to show that orders for its industrial chain cannot readily
be ordered by reference to particular goods and pricing information, and are
regularly ordered by telephone following customer review of technical information
in its specimens and consultation with employees of applicant, so that applicant’s
specimens are viewed as point of sale displays, applicant was obligated to introduce
Serial N

such ev
Attorne
and the
critical
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pages p
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to order
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49
rebut the
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s therefor
amining a
g goods, a
rt, for exam
ing orders
plicant’s
e telephon
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contact in
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12
ie case m
e it is ass
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ch inform
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dard
not
Serial No. 85267349

13

provide a means of ordering the product; it merely provides applicant’s location and
telephone number and URL.
In its June 6, 2012 response to an Office action, applicant submitted a six-
page copy of the “Gripper Chain” specimen which added new pages 4 and 5. In
small print on the bottom of pages 4 and 5, the catalog states that “Products listed
in green are in stock and available for immediate delivery.” Applicant argues that
“[t]o a relevant customer, an engineer, that invites an order.” Setting aside the fact
that the second “Gripper Chain” catalog was not supported by a declaration that it
was in use at least as early as the filing date of the application and, therefore, it
may not be considered to be a specimen of use, the catalog is still nothing more than
an advertisement. There are no sales forms, no pricing information, no offers to
accept orders, and no special instructions for placing orders anywhere on the
specimen.13
C. The third and fourth specimens
The third and fourth specimens are very similar. They appear to be two –
page specification sheets or flyers for “Stack Reclaimer Chains” and “WHX Series
Heavy Duty Drag Chains.” The mark appears in the upper right-hand corner of the
first page of each document. Page one of the “Stack Reclaimer Chains” document
also features the table shown below in the lower right-hand corner.

13 Applicant made these same assertions and arguments in its appeal in application Serial
No. 78698066, decided June 16, 2008, request for reconsideration denied August 11, 2008.
That application involved the same mark and the specimen set forth in Section D infra. In
that appeal, the Board pointed out that applicant presented counsel’s arguments regarding
the sales process but failed to submit any testimony or evidence from applicant itself and
the Board compared applicant’s failure to submit testimony and evidence in that
application to the successful presentation of evidence in the Valenite case.
Serial N

A
below.
A
docume
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Howeve
certified
Nos. 3 a
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14 Applic
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49
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invitatio
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th the sale
splay used
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and provi
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tion
Serial No. 85267349

16

with the goods sufficient to support technical trademark use for registration. See In
re Osterberg, 83 USPQ2d 1220, 1224 (TTAB 2007).
The simple fact that applicant provides a telephone number or website URL
for potential customers to contact applicant does not convert an ordinary
advertising display into a point-of-sale display associated with the goods. By
definition, “advertising” means “to announce or praise [a product, service, etc.] in
some public medium of communication to induce people to buy or use it.” THE
RANDOM HOUSE DICTIONARY OF THE ENGLISH LANGUAGE (unabridged) (2d ed.
1987) (emphasis added). We take judicial notice of this definition. University of
Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB
1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Therefore, to be more
than mere advertising, a point-of-sale display associated with the goods must do
more than simply promote the goods and induce a person to buy them; that is the
purpose of advertising in general. The specimen must be “calculated to
consummate a sale.” In re Bright of America, Inc., 205 USPQ 63, 71 (TTAB 1979).
See also In re Osterberg, 83 USPQ2d at 1224 (A “list of distributors and a link to
their websites” was not sufficient to make the webpage a display associated with
the goods). In considering displays associated with the goods, the point-of-sale
nature of the display has always been an important factor. See In re Marriott, 173
USPQ at 800 (menu); Land’s End, Inc. v. Manbeck, 24 USPQ2d at 1316 (catalog);
and In re Shipley Co. Inc., 230 USPQ at 694 (trade show booth). Applicant’s
catalogs do not have the characteristics that would make a catalog a point-of-sale
Serial No. 85267349

17

display (e.g., sales forms, ordering information, minimum quantities, cost, payment
plans, shipping, etc.). After reviewing applicant’s catalogs, prospective customers
are not yet at the point of purchase and would need to contact applicant to obtain
additional information. It is only after obtaining such information, which is not
provided on the specimens, that the purchaser would be in a position to make a
purchasing decision.
The specimens simply do not contain adequate information for making a
decision to purchase the goods and placing an order and, therefore, we find that
applicant’s specimens are advertisements that do not show the mark TSUBAKI:
THE CHOICE FOR CHAINS used in commerce as a trademark for chains and
sprockets. The mere listing of telephone numbers for corporate headquarters and a
website URL does not turn what is otherwise an ordinary advertisement into a
point-of-sale display or a “display used in association with the goods” and, thus, into
a valid specimen showing technical trademark use.
Having reviewed all of the specimens (and other material) submitted by
applicant, we find that applicant has not submitted evidence showing proper use of
its mark in commerce.
Decision: The refusal to register is affirmed.