U.S. Tsubaki, Inc.

Trademark Trial and Appeal Board

Aug 11, 2008

No. 78698066re (T.T.A.B. Aug. 11, 2008)

Mailed:
August 11, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re U.S. Tsubaki, Inc.
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Serial No. 78698066
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James C. Wray, Esq. for U.S. Tsubaki, Inc.

Anthony M. Rinker, Trademark Examining Attorney, Law Office
102 (Thomas V. Shaw, Managing Attorney).
_______

Before Grendel, Rogers and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

On July 18, 2008,1 applicant, U.S. Tsubaki, Inc., filed
a request for reconsideration of the Board’s June 17, 2008
order affirming the refusal to register. Applicant had
filed a use-based application to register the mark TSUBAKI:
THE CHOICE FOR CHAIN, in standard character format, for
goods ultimately identified as “machines and parts thereof,
namely roller chain and engineering chain, drive chains,
power transmission components and gearing for machines,

1 Applicant’s request for reconsideration is supported by a
certificate of mailing dated July 17, 2008.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78698066
2
namely, power transmission chains, sprockets, bushings,
hubs, conveyor chains, top chains, and speed changers,” in
Class 7 (Serial No. 78698066). As its specimen of use,
applicant submitted an excerpt from its catalog.
The specimen is set forth below.

The Trademark Examining Attorney refused registration
on the ground that applicant’s specimen does not show
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3
acceptable trademark use: that is, the page from
applicant’s catalog is not a display used in association
with the goods. The Board affirmed the refusal because
applicant’s specimen does not contain the information
necessary to order applicant’s chains, and therefore the
catalog does not constitute a display used in association
with the goods. We held that the specimen is not, in
essence, a point-of-sale display.
In its request for reconsideration, applicant argues
that the Board erred in its analysis by not considering the
relevant public.
To order chains, the web address and
telephone number are all that the
relevant public, skilled purchasers of
chains, needs to know. The relevant
public is not ordinary citizens who use
chains in their vehicles and appliances
and who purchase goods made, packaged,
moved or transported with chains.2

Also, applicant argues that the Board’s
characterization as a display used in association with the
goods as a point-of-sale display is “archaic” and incorrect
because “[v]irtually all industrial products sales to
purchasing agents for large companies are initiated via
Internet or telephone communications,” and therefore a
telephone number or web address is sufficient information

2 Request for reconsideration, p. 1.
Serial No. 78698066
4
to place an order.3 Applicant argues that our holding in In
re Valenite Inc., 84 USPQ2d 1346 (TTAB 2007) is
controlling:
In view of the prevalence of online
retailing and the fact applicant’s
goods are specialized industrial
products … the applicant’s “home”
webpage constitutes a display
associated with the goods.

In re Valenite Inc., 84 USPQ2d at 1350.
First, we did not ignore the fact that applicant’s
chains are a specialized, industrial product. We simply
noted that applicant failed to present any evidence
regarding how and to whom the sales of its products are
made. Thus, there was no basis for us to infer that
consumers would perceive applicant’s catalog as anything
other than advertising. In fact, we noted that the
applicant in the Valenite case submitted a declaration by
its marketing director explaining how orders were made,
thus supporting its argument that the information presented
in its webpage comprised a display used in association with
the goods.
Second, we applied the three-part test set forth in
the TMEP, and used in Valenite, to determine whether
applicant’s catalog page constitutes a display used in

3 Request for reconsideration, p. 2.
Serial No. 78698066
5
association with the goods. The TMEP provides that a
catalog or similar display associated with the goods may be
an acceptable specimen of use under the following
conditions:
1. The catalog includes a photograph or picture of
the goods;
2. The catalog displays the mark near the photograph
of the goods so that consumers associate the mark
and the goods; and,
3. The catalog includes the information necessary to
order the goods (e.g., an order form, or a phone
number, mailing address, or e-mail address for
placing orders).
TMEP §904.03(h) (5th ed. 2007). In further explanation, the
TMEP provides that “the mere inclusion of a phone number,
Internet address and/or mailing address on an advertisement
describing the product is not in itself sufficient to meet
the criteria for a display associated with the goods.
There must be an offer to accept orders or instructions on
how to place an order.” Id. See also In re Valenite Inc.,
84 UPSQ2d at 1348 (the website had links to “Service and
Support,” customer service, the “Technical Resource
Center,” as well as online calculators, and reference
tables). Thus, Valenite does not hold that because on-line
Serial No. 78698066
6
and telephone sales make up a significant portion of trade,
simply displaying a telephone number or domain name in an
advertisement constitutes a display used in association
with the goods.
Likewise, we decline to hold that merely presenting a
telephone number and/or an Internet address in advertising,
as shown in applicant’s specimen of use, is sufficient to
convert the advertisement into a display used in
association with the goods no matter how common it is to
sell products on-line or over the telephone. There must be
something to invite or instruct the consumer to use the
information in the advertisement to place an order (i.e., a
point-of-sale display). In this case, applicant’s specimen
is mere advertising.
Decision: Applicant’s request for reconsideration is
denied.