William Hiley

Trademark Trial and Appeal Board

Jan 30, 2004

No. 75473440 (T.T.A.B. Jan. 30, 2004)

Mailed:
Jan. 30, 2004
Paper No. 34
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re William Hiley
________
Serial No. 75473440
_______
Scott K. Haight of Butler, Snow, O’Mara, Stevens & Cannada,
PLLC for William Hiley.
Tonja M. Gaskins, Trademark Examining Attorney, Law Office
112 (Janice O’Lear, Managing Attorney).
_______
Before Cissel, Bottorff and Drost, Administrative Trademark
Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant seeks registration of the mark depicted
below, for goods identified in the application (as amended)
as “furniture, mirrors, picture frames, blanket boxes of
wood, cork, reed, cane, wicker, horn, bone, ivory,
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75473440
2
whalebone, shell, amber, mother-of-pearl, meerschaum, or
plastic.”1
At issue in this ex parte appeal is the Trademark
Examining Attorney’s final refusal to register the mark on
the ground that applicant has failed to submit an
acceptable specimen showing use of the mark as a trademark
for the identified goods. The appeal is fully briefed, but
no oral hearing was requested. We affirm the refusal to
register.
1 Application Serial No. 75473440, filed on April 24, 1998 as an
intent-to-use application under Trademark Act Section 1(b), 15
U.S.C. §1051(b). In his subsequently-filed Statement of Use,
applicant has alleged April 1988 as the date of first use of the
mark anywhere and January 1992 as the date of first use of the
mark in commerce. The application includes the following
“description of mark” statement: “The mark consists of a square
border surrounding a stylized chandelier having features
resembling a human face.” The following lining statement also
appears in the application: “The lining shown in the drawing is
a feature of the mark and is not intended to indicate color.”
Ser. No. 75473440
3
The specimens at issue are of three types. The first
specimen, reproduced below, is identified by applicant as
“a copy of the initial product description page of
Applicant’s web site … In essence, the web site constitutes
an on-line catalog depicting the goods of the Applicant…”
(October 15, 2001 response to Office Action.)2
2 It is not clear from the record what is the relationship
between William Sheppee, Ltd., the entity identified in
applicant’s specimens, and William Hiley (an individual citizen
of England), the applicant named in the application. Because the
Trademark Examining Attorney made no inquiry on this point and
apparently is satisfied with applicant’s claim of ownership of
the mark, that issue is not before us in this appeal.
Ser. No. 75473440
4
Ser. No. 75473440
5
Applicant’s specimens also include copies of numerous
invoices, as well as a four-page “catalogue supplement,” a
representative page of which is reproduced below.3
3 With respect to the invoices and the catalogue supplement
specimens, we reject the Trademark Examining Attorney’s
contention that these specimens should not be considered because
they are not supported by a declaration averring that they were
in use prior to the deadline for filing a Statement of Use, as
required by Trademark Rules 2.56, 2.88(b)(2) and 2.59(b), 37
C.F.R. §§2.56, 2.88(b)(2) and 2.59(b). These specimens were
submitted on February 1, 2002, within the time allotted to
applicant for filing an acceptable Statement of Use (as extended
pursuant to applicant’s “insurance” third extension request).
Therefore, we deem the invoices and the “catalogue supplement” to
be timely and properly made of record as specimens, and we have
considered them (and applicant’s arguments regarding their
acceptability as trademark specimens) in reaching our decision
herein.
Ser. No. 75473440
6
With his request for reconsideration of the final refusal,
applicant also submitted printouts of additional pages from
Ser. No. 75473440
7
his website which, according to applicant, are not offered
as specimens but merely to further demonstrate how the
website is viewed and used by purchasers. These pages
include a “contact information” page at which applicant’s
dealer/customers may register with applicant, and pages
which display photographs of and information on particular
furniture items, such as the page reproduced below.
Ser. No. 75473440
8
Ser. No. 75473440
9
Pursuant to Section 1 of the Trademark Act, 15 U.S.C.
§1051, an applicant seeking to register a trademark on the
Principal Register must submit a specimen of the mark as
used in commerce. Section 45 of the Act, 15 U.S.C. §1127,
provides that a trademark is used “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,…
Trademark Rule 2.56(b)(1), 37 C.F.R. §2.56(b)(1), provides
that
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.
After careful consideration of the materials applicant
has submitted, we find that they do not suffice as
acceptable trademark specimens, whether considered
individually or in conjunction with each other.
First, we find that the invoices submitted by
applicant are not acceptable as trademark specimens; an
Ser. No. 75473440
10
invoice is neither a label, a tag, a container, nor a
display associated with the goods. See, e.g., In re
Chicago Rawhide Manufacturing Co., 455 F.2d 563, 173 USPQ 8
(CCPA 1972); In re Bright of America, Inc., 205 USPQ 63
(TTAB 1979).
Next, we find that the “initial product description
page” submitted by applicant (reproduced supra at page 4)
also fails to suffice as an acceptable trademark specimen.
Applicant contends that this specimen constitutes a
“display associated with the goods.” More specifically, in
his response to the Trademark Examining Attorney’s initial
refusal to accept this specimen, applicant explained that
[t]he specimen submitted is a copy of the
initial product description page of Applicant’s
web site showing the mark to be registered,
along with electronic “bottons” [sic – buttons]
to each side indicating the various lines or
categories of Applicant’s furniture, the goods
for which the mark is sought to be registered.
On the web site page, which constitutes the
specimen, when the pointer is placed upon a
specific furniture collection, the image of the
logo sought to be registered is replaced with a
photograph of an example of such furniture.
Clicking on the appropriate furniture
collection will then take one to catalog pages
featuring pictures of the various pieces in
each furniture collection. In essence, the web
site constitutes an on-line catalog depicting
the goods of the Applicant…
Ser. No. 75473440
11
At pages 2-3 of his appeal brief, applicant further
contends:
It is important to review the Applicant’s
trademark specimen as a single snapshot
printout of an interactive web site that
contains moving images. The buttons on the
right of the web page take users to various
categories of Applicant’s furniture. The user
selects a product category button and the
subject trademark design is prominently
displayed centrally each and every furniture
category page. The online customer cannot view
furniture items offered on Applicant’s website
catalog without going through a trademark
display associated with the goods being
offered. As the user slides his pointer around
the screen to view – over the trademark image
and over furniture “buttons” (without even
clicking on or leaving the page) – the
Applicant’s trademark image is superimposed and
“changes” directly over the product images as
the pointer merely glides over them. Thus, the
trademark is always directly associated with
products being sold.
Similarly, in his reply brief (at page 5), applicant
states:
When using Applicant’s online catalog,
Applicant’s customers always see the Mark in
association with the goods before ordering
them. The Applicant’s Specimen is a snapshot
printout of an interactive point-of-sale
catalog that contains changing images. The
subject trademark design is prominently
displayed centrally on the furniture page when
a furniture dealer shops for furniture items
offered in Applicant’s interactive catalog.
The online customer always sees the trademark
display directly associated with the goods
being offered because when the customer views
Ser. No. 75473440
12
furniture items (by sliding a pointer around
the screen – without clicking or leaving the
page) the Applicant’s trademark image is
automatically superimposed directly over the
product image.
Citing Lands’ End, Inc. v. Manbeck, 797 F.Supp. 511,
24 USPQ2d 1314 (E.D. Va. 1992), applicant argues that his
“on-line catalog” is a “display associated with the goods,”
and that the website page applicant has printed out and
submitted thus is an acceptable specimen of trademark use.
We are not persuaded.
In the case of In re Bright of America, Inc., supra,
the Board held that:
A display associated with the goods … comprises
essentially point-of-sale material such as
banners, shelf-talkers, window displays, menus,
or similar devices which are designed to catch
the attention of purchasers and prospective
purchasers as an inducement to consummate a
sale and which prominently display the mark in
question and associate it or relate it to the
goods in such a way that an association of the
two is inevitable…
205 USPQ at 71. Under this definition, the single-page
specimen submitted by applicant does not qualify as a
“display associated with the goods.” The mark, as it
appears on the specimen, would not be perceived by
purchasers as a trademark for any of the particular goods
identified in the application, because it is not displayed
Ser. No. 75473440
13
in close association with any of those particular goods.
Rather, the mark is displayed in close association with the
words “On-Line Showroom.” Purchasers viewing the mark as
it appears on this page, in close association with the
words “On-Line Showroom,” might perceive the mark as a
service mark for applicant’s on-line retail or wholesale
furniture store services, but they would not perceive it as
a trademark for any of the particular goods identified in
the application.
This case thus is readily distinguishable from prior
cases in which specimens were found to be “displays
associated with the goods” because the mark in question was
displayed in close association with the particular goods
that were the subject of the application for registration.
For example, in Lands End v. Manbeck, supra, the printed
mail-order catalog was held to be an acceptable “display”
specimen because the mark KETCH was displayed in close
association with a depiction and description of the
particular product identified by the mark, i.e., a purse.
Similarly, in In re Marriott Corporation, 459 F.2d 525, 173
USPQ 799 (CCPA 1972), the menu specimen was held to be an
acceptable “display” because the mark, TEEN TWIST, was
displayed on the menu in close association with an
illustration and/or description of the particular sandwich
Ser. No. 75473440
14
identified by the mark. In In re Hydron Technologies Inc.,
51 USPQ2d 1531 (TTAB 1999), the infomercial specimen was
held to be acceptable because the mark HYDRON was displayed
in close association with depictions of the particular
beauty products identified by the mark.
In contrast, applicant’s single-page specimen fails to
display the mark in close association with a depiction or
description of the particular goods identified by the mark.
In fact, the specimen fails to depict or describe any
particular goods at all. However, even assuming that
purchasers would perceive the wording depicted on the right
side of the page (i.e., “Indian Collection,” “European
Collection,” etc.) as identifying the particular goods
identified in the application, that wording is so far away
from and separated from the depiction of the mark that the
requisite “inevitable” association between the mark and the
goods would not be made by purchasers viewing the page.
Absent such an inevitable association between the mark and
the goods, applicant’s specimen does not qualify as a
“display associated with the goods.”
Applicant, in his response to the initial Office
Action and in his briefs, provides rather detailed
narrative explanations (quoted supra) of how the mark is
depicted on applicant’s actual website and how purchasers
Ser. No. 75473440
15
using the website would be able to view the mark. For
example, applicant contends that purchasers visiting
applicant’s website would see the mark superimposed over
images of applicant’s particular furniture items. However,
applicant has failed to submit any specimens which bear out
that contention,4 such as a printout of a page from the
website which depicts the mark superimposed on particular
furniture items (or a photograph of the computer screen
upon which such page is displayed – see, e.g., TMEP
§904.04(d) regarding “Specimens for Trademarks Identifying
Computer Programs, Movies or Video Tapes”).
The Trademark Act and Trademark Rules quoted supra
specifically require submission of “specimens or facsimiles
of the mark as used.” Applicant’s narrative explanations
and descriptions of how the mark would be viewed by
purchasers, however detailed, are no substitute for an
actual specimen which depicts and demonstrates how the mark
is used. The actual specimen submitted by applicant, i.e.,
the “initial product description page,” is what is at issue
4 Indeed, and contrary to applicant’s assertion, the additional
website page printouts submitted by applicant with his request
for reconsideration (one of which is reproduced supra at page 8)
which actually depict photographs of applicant’s goods do not
show the mark superimposed over the photograph of the goods.
Ser. No. 75473440
16
here. For the reasons discussed above, that page is
unacceptable as a specimen of trademark use of the mark.5
Finally, the “catalogue supplement” pages submitted by
applicant (one of which is reproduced supra at page 6)
likewise are not acceptable as trademark specimens.
Essentially, these pages are nothing but a price list, and
price lists are not acceptable trademark specimens for the
same reason that invoices are not acceptable specimens.
See In re Bright of America, supra. Moreover, this listing
of applicant’s goods does not qualify as a “display
associated with the goods,” inasmuch as there is no
evidence that it is used at the point of sale and because,
in any event, the mark does not appear in close association
with any of the particular goods identified in the
application. The mark appears in the heading at the top of
the page, in association only with applicant’s trade name
and address. Although this might suffice as evidence that
applicant uses the mark as a service mark in connection
with retail or wholesale store services in the field of
furniture and accessories, it does not suffice as a
5 We need not and do not reach the question of whether, if
applicant had submitted actual specimens which demonstrate use of
the mark in the manner described in applicant’s narrative
explanations, such specimens would be acceptable as trademark
specimens (e.g., as opposed to service mark specimens). No such
specimens are in the record, and that issue accordingly is not
before us.
Ser. No. 75473440
17
specimen of use of the mark as a trademark in association
with the identified goods.
Also, applicant cites to the wording “ITEMS
ILLUSTRATED IN CATALOGUE” which appears on this price list
as evidence in support of his contention that applicant in
fact has a catalog which includes illustrations of the
goods. However, applicant has failed to submit any such
catalog (which displays use of the mark in close
association with the goods) as a specimen. The price
list’s mere reference to such a catalog, like applicant’s
narrative explanations and descriptions of its online
catalog, does not suffice.
In summary, we have carefully reviewed the materials
applicant has submitted as specimens and applicant’s
arguments in support of such materials, and we find, for
the reasons discussed above, that although they might
suffice as service mark specimens, they do not suffice as
acceptable specimens of use of the mark as a trademark for
the goods identified in the application.
Decision: The Trademark Examining Attorney’s
requirement for an acceptable substitute specimen, and her
refusal to register the mark absent such specimen, are
affirmed.