Aug
06

Don’t Lose Out on Trademark Registration by Submitting Faulty Specimens!

I.   Background

Trademark applicants may mistakenly assume the USPTO’s specimen requirements play second fiddle to other trademark registration requirements (e.g., no likelihood of confusion, not merely descriptive or generic, etc.)  That is, if the examining attorney finds that the proposed mark meets non-specimen related registration requirements, the submission of specimens is a mere formality for being granted registration of the mark.  This misplaced belief can result in a refusal by the examining attorney to register the mark.

The commentator has previously blogged about specimen-related issues that will likely prevent an otherwise satisfactory applied-for mark from being registered.  The Trademark Trial and Appeal Board’s recent decision in In re Midwestern Pet Foods, Inc. (July 18, 2018) is another reminder that non-compliant specimens will prevent registration of the mark.

In Midwestern, the applicant’s word mark EARTHBORN REBORN for pet food, submitted to the USPTO  as in intent-to-use application, received a Notice of Approval.  The applicant’s registration problems started when it submitted specimens with its Statement of Use.   Under the Trademark Act, the specimen must show a substantially exact representation of the mark as used in commerce.  Additionally, for goods (in this case pet food under International Class 31) the specimen must establish that the mark is used in connection with the identified goods.  Put another way, the specimens must establish that the consumer will readily identify the mark as being associated with the goods the consumer plans to purchase.

In Midwestern, the applicant had submitted a website shot of the actual product as its specimen.   Oddly the screen shot mentioned nothing about a pet food product but instead stated “Turn your empty earthborn holistic bags into recycled products and earn money for pet charities in the process.”   The applied-for mark was a simple word mark for the words EARTHBORN REBORN.  The specimen displayed the mark as EARTHBORN HOLISTIC inside of a circular design with the wording REBORN below and overlapping the circle.  Basically the specimen showed a mark with the intervening word  “holistic” separating the words Earthborn and Reborn.  This presentation was deemed an unacceptable material alternation of the approved word mark EARTHBORN REBORN.  Nor was there any reference to pet food in the submitted specimen.

The types of specimens acceptable for goods include tags, labels, instruction manuals, and packaging showing the mark on the actual goods or displays associated with the actual goods at their point of sale.  The USPTO, in recognition of the fact that many goods are sold on websites, will accept webpages as specimens as long as they include a picture or textual description of the goods associated with the marks and specify the means to order the odds or services associated with the mark.  Generally, the mark in combination with the good/service and the ordering means must be presented on the same webpage.  Such a website page layout should serve as an acceptable point of display of the mark.

The USPTO allows an applicant to submit a substitute specimen if the original specimen is not accepted by the examining attorney for registration purposes.  Surprisingly, the Midwestern applicant did not submit a substitute specimen but instead filed a response that did not address the specimen’s deficiencies and even stated that the recycling container depicted in the specimen as an acceptable point-of-sale display as ancillary services to goods.

Not surprisingly, the examining attorney issued a final refusal.  Then the applicant filed a Request for Reconsideration and submitted a substitute specimen.  The substitute specimen was an advertisement faxed to the USPTO containing an image of the applicant’s recycling bin which now featured the prominent EARTHBORN REBORN abutting images of the applicant’s pet food contained in bags.  The substitute specimen was accompanied by an affidavit of a corporate representative stating that the recycling bins featuring the mark are located in the same retail locations as the where the applicant’s pet food is sold, thus “encouraging our customers to buy our pet foods and recycle out bags.”  The affidavit further stated that the bins serve as point-of-sale displays that further “strengthen our customers’ association of the EARTHBORN REBORN mark with our pet food.”

The examining attorney denied the Request for Reconsideration on the same grounds she had specified in her final rejection and the applicant appealed.  The Board considered both the original and substitute specimens in rendering its opinion.

II. The Board’s Conclusions

  • The original specimen was not a substantially exact representation of the mark because EARTHBORN HOLISTIC is not congruent with the word REBORN. As depicted, the word EARTHBORN is “entwined” both physically and conceptually with the word HOLISTIC.   This presentation prevents EARTHBORN and REBORN from “engendering a separate commercial impression apart from the remaining elements” of the specimens.   That is the mark EARTHBORN REBORN is not presented  as a “stand-alone” mark.
  • The substitute specimen which included the words “Through our EARTHBORN REBORN” recycling program . . . .” Here, the Board deemed this presentation as a substantially exact representation of the drawing presented in the application.
  • Both the original and substitute specimens failed to show the applied-for mark in connection with the identified goods. The Board noted that the specimens did not involve containers, tags, or labels.  The deciding factor was whether the provided specimens constituted a display associated with the goods specified in the application, namely pet food.   To be an appropriate point of sale display, the usage of the mark must be at the “point of sale location to provide a customer with the opportunity to look to the displayed mark as a means of identifying and distinguishing the source of the goods.”  The Board citing In re Sones, 590 F.3d 1282, 1293 (Fed. Cir. 2009).

Regarding the original specimen, the Board found that the webpage specimen did not contain a picture or textual representation of pet food;  it did not show the mark EARTHBORN REBORN in association with pet food; and it did not provide a recognizable means for the customer to order the pet food.  The only product depicted was a recycling bin.  The Board also stated that website tabs labelled, e.g., “Learn Me” and “Find a Dealer” are not recognized means of ordering website goods for trademark specimen purposes.

Regarding the substitute specimen (which was found to meet the first prong of the specimen suitability test), the applicant argued that the advertisement constituted a point of sale display.  Again, the Board found that EARTHBORN REBORN mark functioned as a source identified for a recycling program, not pet food.  The Board had no information as to how the flyer was used in connection with the marketing and sale of the applicant’s pet food in retail locations.  Accordingly the Board refused to register the mark because the substitute specimen failed to meet the “point of display” requirement.

III.  Discussion and Take-Home Points

This case is a good example of how lack of communication can result in the rejection of an otherwise acceptable mark.  Here the applicant had come up with a catchy mark which was subsequently denied registration on “inadequate” specimen grounds.   So what went wrong?

It is this commentator’s opinion that an attorney who files, in particular an intent-to-use application, should inform the applicant of the specimen requirements should the mark receive a Notice of Approval early on.  Sometimes a great deal of time can pass between the issuance of the Notice of Approval and the submission of the required Statement of Use because the applicant is working on the getting the product to market and can request up to 5 extensions of time for submitting the required specimens.  The attorney should also inform the applicant that it would be a good idea for the attorney to review labels, marketing materials, etc. showing the mark before these items are actually used in commerce to ensure that they will meet the requirements of the USPTO from a specimen perspective. This would include examining website pages to ensure that the “point-of-sale” requirements will be met with a website page specimen.

If a 1A application is to be submitted, the attorney should not be hesitant to tell the applicant to “design” or “fix” a specimen so as to prevent a registration problem.

Also, specimens are to be current representations showing usage of the mark in commerce.  Furthermore, any future updates of the specimens once the mark is registered must continue to show the mark as depicted in the application’s drawing; material alternations may affect the mark’s registration status.

In Midwestern, it is also not clear why the original application did not specify both pet food as a good and recycling services as a service for which trademark registration was being sought since it seems that its “favorite” marketing focus aspect was promoting the recyclability of its pet food’s packaging, not the pet food itself.  Nevertheless, a specimen showing usage of the mark in connection with the pet food good would still have been required.

In conclusion, with the appeal, the applicant spent a lot a money trying to overcome obvious specimen errors only to still be denied registration of its mark.   There were also some procedural issues concerning the appeal process itself that are not discussed here but are detailed in the opinion.

The Bottom Line: The trademark registration process should not be conducted in a vacuum. Attorneys should be consult with the applicant about the specifics concerning the presentation of the applied-for mark in its marketing endeavors from labels to website presentations to ensure that they comply with specimen and mark usage requirements.  This proactive approach will help ensure that an otherwise acceptable mark will not miss out on registration due to faulty specimens.

 

© 2018 by Troy & Schwartz, LLC

WE THANK YOU FOR READING THIS BLOG.  HOWEVER, THE FOREGOING IS NOT LEGAL ADVICE AND IS PRESENTED FOR INFORMATIONAL PURPOSES ONLY.  IF YOU ARE CONTEMPLATING ANY ACTION THAT MAY HAVE LEGAL CONSEQUENCES, YOU SHOULD CONSIDER CONSULTING WITH AN ATTORNEY.