Brain Freeze Beverage, LLC

Trademark Trial and Appeal Board

Sep 30, 2021

87783180 (T.T.A.B. Sep. 30, 2021)

This Opinion is not a
Precedent of the TTAB

Mailed: September 30, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Brain Freeze Beverage, LLC
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Serial No. 87783180
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Philip M. Weiss of Weiss & Weiss,
for Brain Freeze Beverage, LLC.
Won T. Oh, Trademark Examining Attorney, Law Office 114,
Laurie Kaufman, Managing Attorney.
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Before Kuhlke, Kuczma and Johnson,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Brain Freeze Beverage, LLC (“Applicant”) seeks registration on the Principal
Register of the mark ISLAND SHORES (in standard characters) for:
Non-alcoholic drink mixes namely, concentrates, syrups or
powders used in the preparation of soft drinks, frozen and
non-frozen non-alcoholic cocktail mixes in International
Class 32.1

1 Application Serial No. 87783180 was filed on February 4, 2018, based upon Applicant’s
assertion of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), Applicant subsequently, submitted a claim of first use
anywhere and first use in commerce since at least as early as April 1, 2019 under Section
1(a) of the Trademark Act, 15 U.S.C. § 1051(a).
Serial No. 87783180
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The Trademark Examining Attorney has refused registration of Applicant’s mark
based on a requirement for an acceptable specimen that properly supports use of the
mark in commerce under Sections 1 and 45 of the Trademark Act of 1946, 15 U.S.C.
§§ 1051 and 1127; and Trademark Rules §§ 2.34(a) and 2.56(a), 37 C.F.R. §§ 2.34(a)
and 2.56(a).
After the Examining Attorney made the refusal final, Applicant petitioned to
revive the application requesting reconsideration and filed a notice of appeal. The
application was revived, the request for reconsideration was denied and the appeal
was resumed. Applicant and the Examining Attorney submitted briefs in support of
their positions. We affirm the refusal to register.
I. Does the Specimen Show the Mark for the Goods Identified in the
Statement of Use?
Registration has been refused on the ground that Applicant did not submit a
specimen showing proper trademark use.2 The Examining Attorney contends that the
specimen of use Applicant filed with its Statement of Use is not acceptable to show

Page references to the application record refer to the online database of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the briefs on appeal
refer to the Board’s TTABVUE docket system.

2 The prosecution history must indicate that registration is refused under §§ 1 and 45
of the Trademark Act because an applicant has not provided evidence of use of the
mark in commerce for the identified goods. See 15 U.S.C. §§ 1051(a)(1), 1127;
Trademark Rules 2.34(a) and 2.56(a), 37 C.F.R. §§ 2.34(a) and 2.56(a). Specimens are
required because they show the manner in which a mark is seen by the public.
TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 904 (July 2021).
Serial No. 87783180
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use of the mark in connection with the goods because it is a printer’s proof of
Applicant’s advertisement or is merely an advertisement for its goods.3
A statement of use filed in support of an application based on § 1(b) of the
Trademark Act must include a specimen showing the applied-for mark as actually
used in commerce for each International Class of goods and/or services identified in
the statement of use. 15 U.S.C. §§ 1051(b) and 1127; Trademark Rule 2.56(a); 37
C.F.R. 2.56(a); see also In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247
(TTAB 2013). If a specimen does not show the mark used for the identified goods
and/or services as identified in the statement of use, registration must be refused for
failing to show the goods and/or services actually used in commerce. Trademark Act
Sections 1 and 45, 15 U.S.C. §§ 1051, 1127; 37 C.F.R. § 2.56(a).
Section 45 of the Trademark Act, 15 U.S.C. § 1127, specifies that “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 . . .”
“A display used in association with the goods is essentially a point-of-sale display
designed to catch the attention of purchasers as an inducement to consummate a
sale.” In re U.S. Tsubaki, Inc., 109 USPQ2d 2002, 2003 (TTAB 2014) (citing In re
Shipley Co. Inc., 230 USPQ 691, 694 (TTAB 1986)). The TMEP explains further that
a qualifying “display” will essentially comprise “point-of-sale material such as

3 Examining Attorney’s Appeal Brief at 8 TTABVUE 4-5.
Serial No. 87783180
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banners, shelf-talkers, window displays, menus, and similar devices.” TMEP
§ 904.03(g). Consistent with Section 45 of the Trademark Act, this TMEP section goes
on to explain that “[f]olders, brochures, or other materials that describe goods and
their characteristics or serve as advertising literature are not per se ‘displays,’” and
the appearance of marks and product photographs in such literature does not per se
amount to use of a mark on displays without evidence of point-of-sale presentation.
In re Schiapparelli Searle, 26 USPQ2d 1520 (TTAB 1993); In re Columbia Chase
Corp., 215 USPQ 478 (TTAB 1982). “It long has been held that mere advertising is
not sufficient to show trademark use.” In re Quantum Foods Inc., 94 USPQ2d 1375,
1379 (TTAB 2010) (citing Powermatics, Inc. v. Globe Roofing Prods. Co., 341 F.2d 127,
144 USPQ 430, 432 (CCPA 1965) (“it being well settled that mere advertising ... do[es]
not constitute technical trademark use”); Lands’ End, Inc. v. Manbeck, 797 F. Supp.
511, 24 USPQ2d 1314, 1316 (E.D. Va. 1992) (“Specimens are invalid for registration
purposes only if they constitute mere advertising.”); In re MediaShare Corp., 43
USPQ2d 1304 (TTAB 1997)). See also Trademark Rule 2.56, 37 C.F.R. 2.56.
The use of advertising material in connection with the sale of a product does not
ipso facto make it a display used in association with the goods sufficient to support
technical trademark use for registration. In re Tsubaki, 109 USPQ2d at 2008; In re
Osterberg, 83 USPQ2d 1220, 1224 (TTAB 2007); In re Genitope Corp., 78 USPQ2d
1819, 1822 (TTAB 2006) (because applicant’s specimen webpage does not provide a
means of ordering the product, it is merely informational or promotional material and
not acceptable to show trademark use on goods).
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The specimen filed by Applicant on November 7, 2019 is shown below:

In the Statement of Use, Applicant identifies the specimen as a “sell sheet.”4 In
Response to a subsequent Office Action, Applicant explained that the specimen is:
. . . a sell sheet that shows the trademark, describes the
goods and gives the phone number and website address so
that a user may purchase the goods. These sheets are
provided with the goods.5
And, in its Petition to Revive Abandoned Application Applicant further asserts:
Applicant has provided a sell[] sheet which is how
Applicant receives its customers. On the Sell Sheet it

4 November 7, 2019 Petition to Revive Abandoned Application at TSDR 2, 5, 8; November 7,
2019 Statement of Use at TSDR 1, 3, 6.
5 June 4, 2020 Response to Office Action at TSDR 1-3.
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specifically states that for Sales please call and lists a
telephone number and a website where sales are made. The
se[l]l sheet provides all of the flavors that can be
purchased. Therefore, the specimen should be ac[c]eptable
for the goods.6
Looking at Applicant’s specimen, it provides some information regarding its craft
mixes listing the fruit flavors it sells, along with other information regarding the
flavors and additives.7 Additionally, in the lower left corner of the sell sheet specimen
Applicant provides its toll free phone number and website “For Sales and Service:”

However, the mere inclusion of a phone number, Internet address and/or mailing
address merely as part of corporate contact information on an advertisement
describing one’s product is not in itself sufficient to meet the criteria for a display
associated with the goods. The company name, phone number and general website
information that appear on Applicant’s specimen indicate only contact information
for Applicant. Simply inviting potential customers to contact Applicant and providing
Applicant’s contact information does not transform Applicant’s advertising material,
into a point-of-sale display used in association with the goods sufficient to support

6 March 25, 2021 Petition To Revive Abandoned Application at TSDR 1, 3.
7 The specimen lists the flavors and additives which are composed of fruit purees, and fruit
sweeteners containing the highest percentage of real fruit and fruit juice, selecting from
agave nectar, 100 % fruit juice, natural cane sugar, inverted sugar syrup, high fructose corn
syrup; also offering a sugar free product upon request.
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technical trademark use for registration. See In re Tsubaki, 109 USPQ2d at 2008-09;
In re Osterberg, 83 USPQ2d at 1224.
Although Applicant argues that its sell sheet filed with the Statement of Use
shows “the mark on frozen mixed drink machines which were using the goods,” that
the “sell sheet was also placed with the goods,” “[t]he sell sheet listed the flavors of
all the goods, and listed a phone number and a website address for a buyer to
purchase the goods,”8 that is not enough. There must be an offer to accept orders or
instructions on how to place an order. TMEP 904.03(h). See also In re Siny Corp., 920
F.3d 1331, 2019 USPQ2d 127099, *4 (Fed. Cir. 2019) (affirming rejection of “specimen
[that] did not cross the line from mere advertising to an acceptable display associated
with the goods”); In re MediaShare, 43 USPQ2d at 1306 (finding applicant’s fact sheet
brochure, which included an address and phone number but omitted any information
as to product price and how to order applicant’s software, was merely advertising
material).
Despite Applicant’s contention that its specimen provides specific and clear means
of immediately and directly ordering the goods from the specimen, that is not the
case. Although Applicant cites to TMEP § 904.03(i)(C) entitled Ordering information,
that section of the TMEP addresses webpage displays which are not at issue in this
appeal inasmuch as there is nothing in the specimen submitted by Applicant that
supports it is a webpage display. In any event, “[i]n the case of both the virtual, online

8 Applicant’s Appeal Brief p. 5 (6 TTABVUE 6); November 7, 2019 Statement of Use at TSDR
1, 3; June 4, 2020 Response to Office Action at TSDR 3.
Serial No. 87783180
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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.” In re Anpath
Grp., Inc., 95 USPQ2d 1377, 1381 (TTAB 2010).
The determination of whether a specimen is merely advertising or a display
associated with the goods is a question of fact. See In re Shipley, 230 USPQ at 694. A
printed or web catalog, web page, or similar specimen is acceptable to show
trademark use as a display associated with the goods only if it includes: (1) a picture
of the relevant goods, (2) the mark appears sufficiently near the picture of the goods
so as to associate the mark with the goods, and (3) information necessary to order the
goods (e.g., sales form, price list, instructions for ordering, etc.) or a visible weblink
to order the goods. See Lands’ End, Inc. v. Manbeck, 797 F. Supp. 511, 24 USPQ2d
1314, 1316 (E.D. Va. 1992); In re Dell, Inc., 71 USPQ2d 1725, 1727 (“we hold that a
website page which displays a product, and provides a means of ordering the product,
can constitute a ‘display associated with the goods’”).
Therefore, we need to consider whether Applicant’s purported point-of-sale
display provides potential purchasers with the information normally associated with
ordering products of that kind. In re Anpath Grp., 95 USPQ2d at 1381. To 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 Bright of America, Inc., 205 USPQ 63, 71 (TTAB 1979).
Serial No. 87783180
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Applicant’s specimen does not contain the information necessary to order the
goods and lacks the characteristics that make it a point-of-sale display. It does not
contain any information normally associated with ordering products via the
telephone or the Internet. There are no sales forms, no pricing information, no offers
to accept orders, no information about minimum quantities one must order or how
the orders are shipped, no instructions regarding what information the caller needs
to have available to help Applicant process an order and no special instructions for
placing orders, anywhere on the specimen. See In re Tsubaki, 109 USPQ2d at 2006.
Thus, Applicant’s specimen does not contain any information normally associated
with ordering products via the telephone or the Internet. Such advertising is not
acceptable to show trademark use on goods. In re Anpath Grp., 95 USPQ2d at 1381;
In re MediaShare, 43 USPQ2d at 1307.
After reviewing Applicant’s display, prospective customers would not yet be at the
point of purchase and would need to contact Applicant to obtain additional
information. It is only after obtaining such information, which is not provided on the
specimen, that customers would be in a position to make a purchasing decision and
place an order. In re Anpath Grp., 95 USPQ2d at 1381. Applicant’s specimen indicates
how one can obtain more information regarding its goods and is simply promotional
material. Therefore, Applicant’s specimen does not show use of the mark ISLAND
SHORES used in commerce as a trademark for its concentrates, syrups or powders
used in the preparation of soft drinks, frozen and non-frozen non-alcoholic cocktail
mixes.
Serial No. 87783180
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Applicant’s specimen was also found to be unacceptable because it is considered
to be a printer’s proof of an advertisement and thus, does not show use of the mark
in commerce. As set forth in TMEP § 904.04(a), the specimen may not be a “picture”
of the mark, such as an artist’s rendering, a printer’s proof, a computer illustration,
or an image of the goods or its packaging or advertising matter for services that has
been digitally created/altered or mocked up to include the mark. Such items do not
show actual use of the mark on or in connection with the goods or services in
commerce and registration must be refused under §§ 1 and 45 of the Trademark Act,
15 U.S.C. §§ 1051, 1127. Upon reviewing the specimen, it appears to be a printer’s
proof that has not been disseminated to the public. In re The Signal Cos., 228 USPQ
956, 957-58 n.4 (TTAB 1986) (noting that a printer’s proof of an advertisement would
not be an acceptable specimen because it is does not show actual use in commerce).
Applicant’s argument that it is not a printer’s proof because the “mark appears on
the drinking machine in the bottom right corner” (6 TTABVUE 5) misses the point.
The specimen itself clearly shows the crop marks, indicating it is a printer’s proof and
not the actual document distributed in commerce as the sell sheet.
II. Conclusion
A specimen must show the applied-for mark serving as a source indicator for the
goods identified in the Statement of Use. The specimen does not contain sufficient
information for making a decision to purchase the goods and placing an order. The
mere listing of Applicant’s telephone number and domain name in the specimen of
record does not render the specimen as a “display associated with the goods.” In
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addition, the specimen of use is not acceptable because it is merely a printer’s proof
of a sell sheet. Therefore, we find that Applicant’s specimen is an advertisement that
does not show the mark used in commerce as a trademark for Applicant’s goods.
Decision: The refusal to register Applicant’s applied-for mark ISLAND SHORES
under §§ 1 and 45 of the Trademark Act on the ground that the specimen does not
support use of the mark in commerce but is merely advertising for the goods identified
in the Statement of Use is affirmed.