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Trademark Specimens of Use: A “Necessarily Subjective” Standard

Posted in Advertising, Branding, Food, Marketing, Product Packaging, Trademarks, TTAB

John Welch, over at the TTABlog, reported on a recent trademark specimen of use case (pdf here); one near and dear to my heart, since I represented the Applicant seeking to register the composite word-only mark DELI EXPRESS SAN LUIS for sweet rolls. At issue in the case was whether the product label specimen (appearing below) shows use of the DELI EXPRESS SAN LUIS word-only mark as set forth in the standard character drawing of the trademark application:

The Trademark Trial and Appeal Board (TTAB), in what it admitted to be a "necessarily subjective" analysis, examined the product label specimen — and on that basis alone — concluded it does not show use of the claimed DELI EXPRESS SAN LUIS mark:

Here, we agree with the examining attorney that the specimen depicts the two literal portions DELI EXPRESS and SAN LUIS in such a manner that consumers would not perceive them as constituting a single composite mark. First, the DELI EXPRESS portion is not only in a different font but is contained within a yellow-background, and then a larger red background, separated from the remainder of the packaging design by a black bar outlining the top left corner of the package. The other literal portion, SAN LUIS, is outside of that border area and is further separated by a fanciful triangle design and placed upon a green background. The term CONCHA appears below these two elements in a lighter green box. Taken together, we find that the impression left by this specimen is that the two elements, DELI EXPRESS and SAN LUIS, are two separate trademarks rather than the single mark shown on the drawing page (emphasis added).

I respectfully submit that these kinds of determinations — especially since they are admittedly and "necessarily subjective" — are not binary, either-or propositions. For example, it is entirely possible for a single specimen to show two trademarks that function as separate individual trademarks and also function together in the same specimen as a unitary word-only composite mark (see third-party registration examples below the jump).

Here, it seems to me, that the specimen in question shows multiple word-only marks (among others too, when designs and stylization is considered), including DELI EXPRESS, SAN LUIS, and the composite of those words, DELI EXPRESS SAN LUIS. Indeed, if a consumer were shown the product label and asked what brand of concha or sweet roll this is, it would be entirely reasonable and appropriate to answer: DELI EXPRESS SAN LUIS. If so, how can it be that the specimen does not show use of the claimed mark?

Given that the drawing shows the mark sought to be registered by applicant (TMEP 807; 37 CFR 2.52), given that applicants enjoy some latitude in choosing the mark to register and include in the drawing (TMEP 807.12(d)), given that the main purpose of the drawing is to provide notice of the nature of the mark sought to be registered (TMEP 807), given that the mark shown in a standard character word-only drawing need not appear on the specimen in the same font, style, size, or color (TMEP 807.03(e)), given that the USPTO actually encourages applicants to use standard character drawings (TMEP 807.04(b)), given that a standard character drawing is a quick and efficient way of showing the essence of a verbal mark (TMEP 807.04(b)), and given the "necessarily subjective" nature of the determination, I submit that the appropriate test for determining whether the specimen shows use of the verbal, word-only mark claimed in the standard character drawing, is whether it would be reasonable for consumers to request applicant’s product by the claimed trademark, given what actually appears on the specimen.

In other words, how might consumers request applicant’s sweet roll product? Again, I submit it is entirely reasonable that consumers who have seen the product label would request the product by asking for a "DELI EXPRESS SAN LUIS concha or sweet roll." Now, while they might also request a "DELI EXPRESS" concha or sweet roll, or perhaps a SAN LUIS concha or sweet roll, the most complete, accurate, and precise way to request the product would be to ask for a "DELI EXPRESS SAN LUIS" brand concha or sweet roll, and also thereby treat the words as a unitary composite mark, because:

  1. The DELI EXPRESS house brand (and primary brand) and the SAN LUIS secondary or sub-brand are the only brands and word-marks on the entire label;
  2. They appear proximate to one another, side-by-side on the same horizontal plane, at the top of the label, for easy, conventional reading from left to right;
  3. They form the dominant portion of the label since the design elements can’t be spoken;
  4. The DELI EXPRESS phrase appears in solid black lettering on a yellow-background, and the SAN LUIS phrase has a black-outlined border and it stems from a triangle design element matching the same yellow-background carrying the DELI EXPRESS phrase;
  5. There is no requirement to include generic words as part of the claimed mark, i.e., concha or sweet roll;
  6. Consumers familiar with applicant’s products are accustomed to similar label formats where the DELI EXPRESS house brand is proximately positioned with other sub-brands like SUPER MEGA, SNACKERS, COFFEES OF THE WORLD, and SUB SELECTS, to form federally-registered word-only standard character trademarks: DELI EXPRESS SUPER MEGA, DELI EXPRESS SNACKERS, DELI EXPRESS COFFEES OF THE WORLD, and DELI EXPRESS SUB SELECTS; and
  7. Consumers of packaged food products have been conditioned to perceive house marks and secondary marks as not only having separate trademark significance from each other, but also significance together, in the same specimen, even when different colors, styles and fonts may be used for each or portions of each, and even when other matter or wording may appear between them(see third-party registration evidence below the jump).

Unfortunately, the Board did not acknowledge or address the third-party registration evidence submitted along with the specimens of use previously accepted by the USPTO for the same third-party registrations. More on that later . . . .

In the meantime, given the Board’s rationale for ruling that the above product label specimen does not show use of the DELI EXPRESS SAN LUIS mark, can you reconcile that "necessarily subjective" decision with any of these standard character word-only federally-registered trademarks and their supporting specimens? Would it be reasonable for consumers, seeing these specimens, to request the goods using the federally-registered standard character word-only marks highlighted below?

PEPPERIDGE FARM SIMPLY DELICIOUS:                  KELLOGG’S SMORZ:

              

 HOT POCKETS TOASTER MELTS:

 

HEINZ EASY SQUEEZE:

Given that other admittedly "subjective" trademark registration determinations favor applicant’s in close cases (e.g., scandalous and immoral determinations under Section 2(a) of the Lanham Act, and merely descriptive/suggestive determinations under Section 2(e) of the Lanham Act), whereby the marks are published for opposition, does it not make sense to do the same when deciding a close case of whether a specimen shows use of the mark claimed in the drawing?

  • John Welch

    If the Board were bound by the actions of every and any Examining Attorney, wouldn’t that mean that the law would be shaped by the least competent EAs?
    I think the Board’s decision, while subjective, was not arbitrary. It seems to me that the EA made a prima facie case and it was up to the applicant to rebut it with evidence (a survey?)
    I suggest an appeal (review) via a civil action in applicant’s home court, wherein additional evidence could be offered.
    JLW

  • John, thanks for dropping by. I agree that we don’t want trademark registration law shaped by the least competent Examining Attorneys. I don’t think that would be the case, however, had the Board considered and relied on the substantial third-party trademark registration evidence of record: https://www.duetsblog.com/2010/01/articles/the-relevance-of-thirdparty-trademark-registrations/
    From my perspective, any prima facie case was overcome by this evidence. Moreover, I also continue to advocate for a less subjective test in determining whether the specimen shows a mark “substantially identical” to a standard character word-only composite mark claimed in the drawing: If it is reasonable for a consumer to request the product by the claimed trademark — given what appears on the specimen — then the drawing and the specimen match and must be considered “substantially identical.”
    While a civil action to review the decision has a number of appealing features, one of the strong deterrents to a federal district court review is the requirement that the applicant foot the bill for the government’s costs.

  • Lori

    Does a snapshot of an eBay sale of product constitute a valid specimen of use? The name is on the packaging and it’s for sale . . .