TTAB Defines When Catalogs Are Mere Advertising

In a recent precedential decision following an ex parte refusal of registration, the TTAB offered an in-depth analysis of the specific elements required to convert a catalog from “mere advertising” to an acceptable “point of sale” specimen for products. In re Tsubaki Inc., (TTAB March 7, 2014)

In support of its use-based application to register the mark TSUBAKI: THE CHOICE FOR CHAIN for “industrial machine parts, namely, chains and sprockets,” Tsubaki submitted six different specimens, each of which the Examining Attorney rejected each as mere advertising material. On appeal, the TTAB emphasized the distinction between the type of specimens that will support an application for goods versus services. Noting that while Section 45 of the Act specifically provides that use of a mark on advertising will qualify as use in commerce for a service mark, it emphasized that advertising is not included under the provision for marks used on goods.

The Trademark Manual of Examing Procedure (“TMEP”) explains that catalogs can serve as acceptable specimens of trademark use for goods provided they include at least the following information: (1) a picture or sufficient textual description of the relevant goods; (2) the mark in association with the goods; and (3) information necessary to order the goods. In prior decisions, the TTAB emphasized that the mere inclusion of a phone number, Internet address and/or mailing address in an advertisement describing a product will not be sufficient, standing alone, to qualify as an acceptable specimen.

In this case, while each of Applicant’s specimens included customer service team contact information, none included a sales form or ordering information, minimum quantity requirements, pricing details, or shipping information. Nor, the TTAB emphasized, did Applicant produce any evidence to corroborate its counsel’s unsubstantiated claims regarding industry ordering practices and/or Applicant’s marketing and sales processes in particular.

In concluding, the TTAB emphasized that simply stating that customers are invited to contact an Applicant and providing contact information is not sufficient to “transform every catalog, website, advertising brochure, flyer, leaflet, etc. into a display used in association with the goods.” Rather, the Trademark Act requires that an Applicant be able to demonstrate that the materials are “calculated to consummate a sale.” Based upon its conclusion that prospective purchasers would have to contact the Applicant to obtain significant additional information not provided by the specimens, the TTAB upheld the denial of registration.