Mailed:
`May 13, 2010
`Bucher
`
`
`
`THIS OPINION IS A
`PRECEDENT OF THE
`TTAB
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________
`
`Trademark Trial and Appeal Board
`________
`
`In re Anpath Group, Inc.
`________
`
`Serial No. 77004809
`_______
`
`Lauri S. Thompson of Greenberg Traurig, LLP for Anpath
`Group, Inc.
`
`
`Dominic Fathy, Trademark Examining Attorney, Law Office 108
`(Andrew Lawrence, Managing Attorney).
`_______
`
`Before Quinn, Hairston and Bucher, Administrative Trademark
`Judges.
`
`Opinion by Bucher, Administrative Trademark Judge:
`
`Anpath Group, Inc. seeks registration on the Principal
`
`Register of the mark ANPATH (in standard character format) for
`
`“all purpose disinfectant cleaning preparations for
`
`household, commercial and industrial use” in International
`
`Class 5.1
`
`
`1
`Application Serial No. 77004809 was filed by EnviroSystems,
`Inc. on September 21, 2006 based upon applicant’s allegation of a
`bona fide intention to use the mark in commerce. On May 6, 2008,
`this application was assigned to Anpath Group, Inc. according to
`the Assignment Division of the United States Patent and Trademark
`Office, at Reel 3772, Frame 0684. The statement of use was filed
`on August 19, 2008.
`
`
`
`May 13, 2010
`Bucher
`
`
`
`THIS OPINION IS A
`PRECEDENT OF THE
`TTAB
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________
`
`Trademark Trial and Appeal Board
`________
`
`In re Anpath Group, Inc.
`________
`
`Serial No. 77004809
`_______
`
`Lauri S. Thompson of Greenberg Traurig, LLP for Anpath
`Group, Inc.
`
`
`Dominic Fathy, Trademark Examining Attorney, Law Office 108
`(Andrew Lawrence, Managing Attorney).
`_______
`
`Before Quinn, Hairston and Bucher, Administrative Trademark
`Judges.
`
`Opinion by Bucher, Administrative Trademark Judge:
`
`Anpath Group, Inc. seeks registration on the Principal
`
`Register of the mark ANPATH (in standard character format) for
`
`“all purpose disinfectant cleaning preparations for
`
`household, commercial and industrial use” in International
`
`Class 5.1
`
`
`1
`Application Serial No. 77004809 was filed by EnviroSystems,
`Inc. on September 21, 2006 based upon applicant’s allegation of a
`bona fide intention to use the mark in commerce. On May 6, 2008,
`this application was assigned to Anpath Group, Inc. according to
`the Assignment Division of the United States Patent and Trademark
`Office, at Reel 3772, Frame 0684. The statement of use was filed
`on August 19, 2008.
`
`
`
`
`Serial No. 77004809
`
`The Trademark Examining Attorney refused registration
`
`on the ground that the proffered specimens are unacceptable
`
`as evidence of trademark use because they do not show the
`
`involved mark functioning as a trademark for the goods
`
`identified in the Notice of Allowance dated March 27, 2007.
`
`Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§ 1051, 1052
`
`and 1127.
`
`After the Trademark Examining Attorney made the refusal
`
`final, applicant appealed to this Board. We affirm the
`
`refusal to register.
`
`Applicant’s original specimen shown below, identified
`
`as a “scanned pamphlet,” was submitted on August 19, 2008
`
`with applicant’s Statement of Use:
`
`- 2 -
`
`
`
`Serial No. 77004809
`
`When the Trademark Examining Attorney rejected the
`
`specimen on the basis that it was an advertisement for the
`
`goods, applicant argued that this pamphlet is provided to
`
`customers in conjunction with the product, and contains a
`
`toll-free telephone number for ordering product from
`
`applicant. After the final refusal, along with its Request
`
`for
`
`Reconsider-
`
`ation and a
`
`Notice of
`
`Appeal,
`
`applicant
`
`submitted a
`
`verified
`
`substitute
`
`specimen,
`
`shown at
`
`right,
`
`identified by
`
`applicant as
`
`“product
`
`ordering
`
`information.”
`
`
`
`- 3 -
`
`
`
`Serial No. 77004809
`
`Statute and Rules
`
`We turn first to review the statutory definition of
`
`“use in commerce.”
`
`Use in commerce. The term “use in commerce” means the
`bona fide use of a mark in the ordinary course of
`trade, and not made merely to reserve a right in a
`mark. For purposes of this chapter, 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, and
`
`(B) the goods are sold or transported in commerce,
`…
`
`Trademark Act § 45 (15 U.S.C. § 1127). The statute and
`
`attendant regulations2 focus on actual affixation of the
`
`mark (e.g., a close physical association – either on the
`
`goods or on tags, labels and/or containers for the goods).
`
`
`2
`SPECIMENS
`§ 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 impracticable to place the
`mark on the goods, packaging for the goods, or displays
`associated with the goods.
`37 C.F.R. § 2.56.
`
`
`- 4 -
`
`
`
`Serial No. 77004809
`
`In addition to the requirement that a trademark for goods
`
`performs its function of identifying the source of the goods
`
`to the consuming public, the rules also require that the
`
`specimen of use demonstrates a sufficient association
`
`between the trademark and the identified goods. In re
`
`Bright of America, Inc., 205 USPQ 63, 71 (TTAB 1979).
`
`Applicant’s “pamphlet” and its “product ordering
`
`information” do not purport to show affixation of the mark
`
`on “a label, tag, or container for the goods.” 37 C.F.R.
`
`§ 2.56. At no point does applicant argue that these
`
`proffered specimens function as labels affixed to industrial
`
`containers for the goods or that they are part of shipping
`
`documents that accompany the goods. In re Ultraflight Inc.,
`
`221 USPQ 903 (TTAB 1984) [first page of the manual having
`
`assembly instructions for hang-glider contained the mark,
`
`and was deemed to be acceptable as affixation of the mark to
`
`the goods themselves].
`
`Yet as applicant points out, the statutory definition
`
`is expanded beyond affixation, and includes “displays
`
`associated” with the goods, In re Marriott, 459 F.2d 525,
`
`173 USPQ 799 (CCPA 1972), and applicant argues that its
`
`specimens should be treated as such. As discussed below,
`
`decisions under this Lanham Act provision have for decades
`
`found “point-of-purchase” or “point-of-sale” displays to be
`
`- 5 -
`
`
`
`Serial No. 77004809
`
`valid specimens showing use of a mark in commerce if
`
`“associated with the goods.”
`
`Nonetheless, in view of the legislative history leading
`
`up to the enactment of the Lanham Act, and the case law
`
`interpreting the Act, a clear “line of demarcation” has been
`
`drawn between mere advertising materials, which have been
`
`found unacceptable as specimens showing use of a mark for
`
`goods, and point-of-purchase promotional materials which
`
`have been found acceptable as a display associated with the
`
`goods. For example, in Avakoff v. Southern Pacific Company
`
`et al., 764 F.2d 1097, 226 USPQ 435 (Fed. Cir. 1985), the
`
`Court found that Avakoff’s advertising in the nature of form
`
`letter solicitations sent to retailers about its program are
`
`mere advertisements and this use of the purported mark apart
`
`from the goods does not constitute trademark use for those
`
`goods]. It has long been held that specimens are invalid
`
`for registration purposes if they constitute mere
`
`advertising. See Powermatics, Inc. v. Globe Roofing
`
`Products Co., Inc., 341 F.2d 127, 144 USPQ 430 (CCPA 1965)
`
`[mere advertising and documentary use of a notation apart
`
`from the goods do not constitute technical trademark use];
`
`and In re Shipley Co., 230 USPQ 691, 694 (TTAB 1986).
`
`- 6 -
`
`
`
`Serial No. 77004809
`
`On which side of this line of demarcation these
`
`specimens fall is the point of disagreement herein between
`
`applicant and the Trademark Examining Attorney.
`
`In response to the initial rejection of the original
`
`EnviroTru™ pamphlet, applicant contended rather obliquely
`
`that “[t]he pamphet [sic], used as the specimen, is provided
`
`in conjunction with the product.” As noted above, applicant
`
`does not contend that the initial specimen serves as a label
`
`for the product, or that this accompanies the goods in a
`
`manner analogous to an insert packaged with the container.
`
`Nor does applicant make the argument that its proffered
`
`specimens are presented in connection with the goods at a
`
`trade show exhibit. Without acquiescing in the position of
`
`the Trademark Examining Attorney on the original specimen,
`
`applicant submitted a substitute specimen, and then argues
`
`in its brief that it “has submitted a flyer that is either
`
`mailed, emailed or left with a customer by a sales
`
`representative …. ” [emphasis added] Accepting that as
`
`true, it still begs the question of whether either specimen
`
`is truly a “display associated with the goods.”
`
`Applicant correctly identifies the critical issue as
`
`whether either of its specimens is in the nature of a point-
`
`of-sale device. See In re Sones, 590 F.3d 1282, 93 USPQ2d
`
`1118, 1124 (Fed. Cir. 2009). Applicant answers that
`
`- 7 -
`
`
`
`Serial No. 77004809
`
`question in the affirmative, arguing that these specimens
`
`are the mechanism though which purchases of its ANPATH goods
`
`can be made.
`
`By contrast, the Trademark Examining Attorney takes the
`
`position that applicant’s pamphlet and “flyer,” despite the
`
`prominent inclusion of a toll-free telephone number, contain
`
`insufficient information for the prospective consumer
`
`actually to order the goods; consequently, the Trademark
`
`Examining Attorney maintains that the specimens are mere
`
`advertising.
`
`We begin our analysis with a reminder that “[t]he
`
`determination of whether a specimen is mere advertising or a
`
`display associated with the goods is a factual question
`
`amenable to proof.” Shipley, 230 USPQ at 694 [trade booth
`
`did promotional work and served as a sales counter]; and In
`
`re Hydron Technologies Inc., 51 USPQ2d 1531 (TTAB 1999) [in
`
`half-hour infomercial for the QVC buying channel, the
`
`mark/slogan was “proximate” to display of images of the
`
`involved goods]. The predecessor to our current reviewing
`
`Court made it clear that the statute does not require “close
`
`physical association” between the mark and finished goods.
`
`Marriott, 173 USPQ at 800 [menu item TEEN TWIST was a
`
`display associated with applicant’s sandwich].
`
`- 8 -
`
`
`
`Serial No. 77004809
`
`Accordingly, we view the entire file before us,
`
`including both proffered specimens (e.g., the original
`
`“pamphlet” and the substitute “product ordering information”
`
`or “flyer”), in reaching a determination herein. We seek to
`
`view the specimens in the context of the actual marketplace.
`
`In re Dell Inc., 71 USPQ2d 1725, 1727 (TTAB 2004); and
`
`Hydron, 51 USPQ2d at 1534.
`
`Applicant argues that unlike the facts of In re
`
`Schiapparelli Searle, 26 USPQ2d 1520 (TTAB 1993) [fact sheet
`
`brochures held not to qualify as a catalog under the Land’s
`
`End3 criteria], this is not the situation in this case,
`
`namely, that “its specimen does show its mark near a
`
`description of the product, and does include information as
`
`to how to order the goods.” Applicant’s brief, at 2-3.
`
`However, we find that applicant’s “pamphlet” and its
`
`“product ordering information” do not have the many
`
`characteristics of the Land’s End catalogue (e.g., detailed
`
`descriptions and pictures having trademarks displayed
`
`prominently nearby, specifications and options, prices,
`
`colors, sizes, a detailed order form, etc.) and hence are
`
`not clearly analogous to printed material from which the
`
`goods are ordered.
`
`
`3
`Land’s End, Inc. v. Manbeck, 797 F. Supp. 511, 24 USPQ2d
`1314 (E.D. Va. 1992).
`
`- 9 -
`
`
`
`Serial No. 77004809
`
`Applicant also analogizes its “pamphlet” and “product
`
`ordering information” to digital displays of product
`
`information on a website. However, web pages have been
`
`found to be acceptable as displays associated with the goods
`
`where the screen prints of web pages submitted as specimens
`
`of use contain adequate information for routinely and easily
`
`placing orders for the goods via the Internet. Dell,
`
`71 USPQ2d at 1727; In re Valenite Inc., 84 USPQ2d 1346, 1348
`
`(TTAB 2007); and In re Quantum Foods, Inc., 94 USPQ2d 1375
`
`(TTAB 2010). In the case of both the virtual, online world
`
`and the physical world of a catalogue, the point-of-sale
`
`nature of the display is the critical threshold issue that
`
`must be answered in the affirmative.
`
`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. This has long been an important factor to the
`
`Board and its reviewing Courts. Marriott, 173 USPQ at 800;
`
`Land’s End, 24 USPQ2d at 1316; and Shipley, 230 USPQ at 693-
`
`94.
`
`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
`
`- 10 -
`
`
`
`Serial No. 77004809
`
`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. MediaShare Corp., 43 USPQ2d at 1306-07. Our
`
`hypothetical, potential customer, after reviewing
`
`applicant’s specimen with its limited ordering information,
`
`is simply not yet at the point of purchase, and would
`
`contact applicant to obtain preliminary information
`
`necessary to order the goods; it is only after obtaining
`
`such information, which is not provided on the specimen,
`
`that the purchaser could actually place an order with
`
`applicant’s sales office.
`
`Contrast the limited nature of the information
`
`available to this prospective customer upon reviewing
`
`applicant’s specimen with the ordinary consumer walking down
`
`the aisle of the local brick-and-mortar retail store. In
`
`terms of information and interaction with the product, the
`
`in-store consumer has probably been able to do some product
`
`comparisons, has handled the goods, had the opportunity to
`
`learn the details from packaging, labeling and/or a shelf-
`
`talker, before asking questions of the clerk at the check-
`
`out register.
`
`- 11 -
`
`
`
`Serial No. 77004809
`
`Neither is our potential customer of applicant holding
`
`a detailed catalogue with an equally-detailed order form to
`
`be mailed, faxed or called-in to the vendor.
`
`Finally, this is very different from those cases
`
`involving online purchasing in which specimens of web pages
`
`have been found acceptable. Here, our hypothetical
`
`purchaser is not viewing an interactive computer screen
`
`having information about the product (e.g., with the price
`
`of various quantities, options for shipping and handling,
`
`how the costs of the transaction are being paid, etc.), with
`
`the option of completing the transaction by clicking on
`
`items to add them to a shopping cart.
`
`The specimens herein simply do not contain adequate
`
`information for making a decision to purchase the goods and
`
`placing an order, and hence, we conclude that applicant’s
`
`specimens are nothing more than mere advertisements that do
`
`not show use of ANPATH as a trademark for the goods.
`
`We find that these specimens are promotional pieces of
`
`literature primarily designed to tout the benefits of a
`
`product. We recognize that they list the URL of applicant’s
`
`website and/or a telephone number for contacting applicant’s
`
`sales representatives/ordering personnel; however, this
`
`level of information does not create the same point-of-sale
`
`situation as a detailed catalogue capable of allowing a
`
`- 12 -
`
`
`
`Serial No. 77004809
`
`consumer to consummate a physical order, or a detailed web
`
`page, or even the same as a situation where there is the
`
`option of placing an order via telephone based upon detailed
`
`information from the proffered specimen.
`
`Like the original specimen for EnviroTru, applicant’s
`
`substitute specimen for SurfaceTru does contain the
`
`following notation towards the bottom of the page:
`
`For SurfaceTru™ ordering information call: 1-800-374-0017
`
`Much of the argument contained in applicant’s main
`
`brief and reply brief and in the Trademark Examining
`
`Attorney’s brief focused on these substitute specimens. As
`
`noted earlier, applicant argues that it “has submitted a
`
`flyer that is either mailed, emailed or left with a customer
`
`by a sales representative … .” According to applicant, its
`
`sales representatives use this flyer because it promotes
`
`applicant’s disinfectants and cleaners, and prompts
`
`inquiries from potential customers. Applicant argues that
`
`this flyer includes information as to how to order the
`
`product. We do not find that level of information
`
`sufficient. We find that the mere listing of the URL of a
`
`website4 or a telephone number for the sales office cannot
`
`
`4
`In re Osterberg, 83 USPQ2d 1220, 1224 (TTAB 2007) [A listing
`of “where to buy” websites is not sufficient to make the
`originating web page a display associated with the goods].
`
`
`- 13 -
`
`
`
`Serial No. 77004809
`
`turn what is otherwise an ordinary advertisement into a
`
`point-of-sale display, into a “display associated with the
`
`goods,” and hence, into a valid specimen showing trademark
`
`use under the Lanham Act.
`
`Decision: The refusal to register under Sections 1, 2
`
`and 45 of the Lanham Act is hereby affirmed.
`
`- 14 -
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
