A specimen “must in some way evince that the mark is ‘associated' with the goods and serves as an indicator of source.” In re Sones, 590 F.3d 1282 (Fed. Cir. 2009); In re Safariland Hunting Corp., 24 USPQ2d 1380, 1381 (TTAB 1992) (specimen must show “direct association” with goods).

Trademarks are used in commerce when “placed in any manner on the goods or their containers or the displays associated therewith.” See Section 45 of the Trademark Act, 15 U.S.C. § 1127.

A display that is merely advertising, however, is not sufficient to show trademark use. Powermatics, Inc. v. Globe Roofing Prods. Co., 341 F.2d 127 (CCPA 1965) (“it being well settled that mere advertising … do[es] not constitute technical trademark use”); Land's End Inc. v. Manbeck, 797 F.2d 127 (E.D. Va. 1992) (“Specimens are invalid for registration purposes only if they constitute mere advertising”).

“[T]o 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 U.S. Tsubaki, Inc., 109 USPQ2d 2002, 2009 (TTAB 2014) (quoting In re Bright of America, Inc., 205 USPQ 63, 71 (TTAB 1979)).

Factors to consider include 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). The display should provide a “level of information … capable of allowing a consumer to consummate a physical order ….” Id. at 1382.

“[A]n Internet web page that merely provides information about the goods, but does not provide a means of ordering them, is viewed as promotional material, which is not acceptable to show trademark use on goods.” In re Quantum Foods Inc., 94 USPQ2d 1375, 1378 (TTAB 2010) (citing In re Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006)).

IT'S ABOUT THE FABRICS

The Trademark Trial and Appeal Board (“TTAB”) recently addressed whether the website displays submitted as specimens of use showed the applied-for IT'S ABOUT THE FABRICS mark used with the specific identified goods, namely “fabrics.” In re Striker Brands LLC, Serial No. 88519404 (TTAB May 19, 2022).

Three website specimens submitted by the Applicant had been rejected by the Examining Attorney, asserting they were for the sale of finished clothing goods in International Class 25 and not for fabrics as raw goods in International Class 24. The third specimen further included a link to “inquire about our fabrics,” which linked to a contact form rather than an order form.

The TTAB affirmed the Examining Attorney.

Applicant's use of ITS ABOUT THE FABRICS supports a finding that consumers who encounter the mark will perceive it as referring to an integral component of the finished clothing items, namely specialized performance fabrics built into the clothing, and not a reference to the raw materials–fabric–used for the manufacture of clothing. Thus, Applicant's first, second, and third specimens create a direct association between the mark and a component of Class 25 finished clothing goods, rather than fabric goods in Class 24.

As for the link to a contact form in the third specimen, the TTAB found that information essential to a purchasing decision was absent from Applicant's third specimen. See In re Siny Corp., 920 F.3d 1331 (Fed. Cir. 2019) (affirming specimen refusal for fabric goods where the specimen did not display essential purchasing information); In re Quantum Foods, 94 USPQ2d at 1379 (specimen constituted advertising and did not show an actual offer for sale of goods and to complete an online purchasing as it lacked a sales form, pricing information, offers to accept orders, and special instructions for placing orders anywhere on the specimen.); In re Anpath Group, 95 USPQ2d at 1381 (“[o]ur hypothetical, potential customer, … 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”).

There is no information at all regarding the price, or even a range of prices, for fabric goods. There is no information regarding the weight or thickness of the fabric or the dimensions in which a bolt of the fabric would be available. There is no information about the minimum quantities one may order, how one might pay for the products, or how the goods would be shipped.

* * *

We find the invitation to contact Applicant regarding its fabrics is simply a means of getting information about Applicant's clothing items and not a means of ordering Applicant's fabrics.

* * *

“[a] simple invitation to call applicant to get information—even to get quotes for placing orders—does not provide a means of ordering the product.” In re U.S. Tsubaki, 109 USPQ2d at 2005. Similarly, the contact form here is a simply a call to get information, but not a means to order a fabric product.

In conclusion, the TTAB found the submitted IT'S ABOUT THE FABRICS specimens were for finished clothing rather than fabric goods, and the “inquire” link in the last website specimen was informational rather than a point of sale.

The trademark attorneys at Thomas P. Howard, LLC are experienced in prosecuting trademark applications before the USPTO, as well as in enforcing trademarks or defending against infringement claims in litigation nationwide including in Colorado.