Brian Jay Osterberg

Trademark Trial and Appeal Board

Feb 21, 2007

No. 78331176 (T.T.A.B. Feb. 21, 2007)

Mailed:
February 21, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Brian Jay Osterberg
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Serial No. 78331176
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Mark D. Schneider of Gifford, Krass, Groh, Sprinkle,
Anderson & Citkowski, P.C. for Brian Jay Osterberg.

Charlotte K. Corwin, Trademark Examining Attorney, Law
Office 117 (Loretta C. Beck, Managing Attorney).
_______

Before Holtzman, Taylor, and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Brian Jay Osterberg has applied to register CondomToy
condom (in standard character form) for condoms.1 The
application, which was filed on November 21, 2003, was
originally based on applicant’s asserted bona fide
intention to use the mark in commerce. The application was
approved by the examining attorney and published for
opposition. Eventually a notice of allowance issued. On
April 13, 2005, applicant filed a statement of use,

1 Applicant disclaimed the exclusive right to use “Condom.”
THIS OPINION IS A PRECEDENT
OF THE T.T.A.B.
Serial No. 78331176
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alleging first use anywhere and first use in commerce on
January 31, 2004. On May 16, 2005, the examining attorney
issued an Office Action in which she found the specimen
submitted in support of the statement of use to be
unacceptable because it did not show use of the mark on the
goods identified in the application. Registration was
finally refused on that basis. It is from this refusal
that applicant has appealed.
The appeal has been fully briefed.
We affirm.
The sole issue in this appeal is whether the specimen
submitted by applicant on April 13, 2005 with his statement
of use is acceptable to show use of the mark in connection
with the identified goods.
Trademark Rule 2.56 provides, in part:
§2.56 Specimens

(a) An application under section 1(a)
of the Act, an amendment to allege use
under §2.76, and a statement of use
under §2.88 must each include one
specimen showing the mark as used on or
in connection with the goods, or in the
sale or advertising of the services in
commerce.

(b)(1) A trademark specimen is a label,
tag, or container for the goods, or a
display associated with the goods. The
Office may accept another document
related to the goods or the sale of the
goods when it is not possible to place
Serial No. 78331176
3
the mark on the goods or packaging for
the goods.

Section 45 of the Lanham Act, 15 U.S.C. §1127, states, in
part, that:
For purposes of this Act, 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 . . .

The specimen submitted by the applicant is a webpage
taken from the Intellx website, which he asserts is a
display associated with the goods. An excerpt from the
webpage displaying the relevant portion of the specimen is
reproduced below. In addition, the applicant submitted a
Declaration wherein he attested to the following facts:2

2 In response to the December 16, 2005 Office Action, applicant,
on February 23, 2006, filed what appears to be a signed draft
declaration. Applicant filed a “clean” version of his
declaration with his appeal brief. The examining attorney
objected to the “clean” version of the declaration on the ground
that this version of the declaration is untimely. The examining
attorney argues that the record for an application must be
complete before the filing of an appeal. 37 C.F.R. §2.142. See
also, In re Norfolk Wallpaper, Inc., 216 USPQ 903, 904 (TTAB
1983). The examining attorney’s objection is overruled. While
the examining attorney is technically correct, the two versions
of the declarations are substantively the same. The “clean”
version includes nonmaterial edits. Striking the “clean” version
of the declaration would simply exalt form over substance.
Serial No. 78331176
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1. Applicant, the president of Intellx, Inc.,
authorized Intellx to use the mark “CondomToy
condom” in connection with a line of condoms;

2. Applicant has personally attended an
estimated 20 sales presentations in which he
personally distributed copies of the webpage
submitted as a specimen; and,

3. During at least some of those sales
presentations, applicant was successful in
obtaining orders for condoms.

Applicant argues that the webpage is an acceptable
specimen for two reasons:
Serial No. 78331176
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(1) The specimen has been distributed to prospective
customers at sales presentations resulting in
sales. “As such, the specimen is and has been
used in a manner that created a direct and
unambiguous connection in the minds of customers
between the mark, the goods and the source of the
goods.” (Applicant’s Brief, p. 2); and,

(2) The Intellx webpage displays the mark, the
products, and a means for ordering the products.
“Specifically, the website page specimen includes
a link entitled ‘Where to Buy’ at the top of the
first page (i.e., page 1 of 3) that connects
shoppers to online distributors of the goods.
Therefore, as in Dell [In re Dell, Inc., 71
USPQ2d 1725, 1727 (TTAB 2004)], “[t]he single
webpage is, thus, a point of sale display, a
display by which the actual sale is made.”
(Applicant’s Brief, p. 4).

Whether a specimen is a display associated with the
goods is a question of fact. Land’s End Inc. v. Manbeck,
797 F.Supp. 311, 24 UPSQ2d 1314, 1316 (E.D. Va. 1992); In
re Hydron Technologies Inc., 51 USPQ2d 1531, 1533 (TTAB
1999); In re Shipley Co. Inc., 230 USPQ 691, 694 (TTAB
1986). The starting point for this analysis is the
specimen submitted to show use of the mark.
We must determine whether the specimen is mere
advertising or whether, in addition to advertising, the
specimen is also a display associated with the goods.
A crucial factor in the analysis is if
the use of an alleged mark is at a
point of sale location. A point of
sale location provides a customer with
the opportunity to look to the
displayed mark as a means of
Serial No. 78331176
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identifying and distinguishing the
source of the goods.

Land’s End Inc. v. Manbeck, supra, citing In re Shipley Co.
Inc., supra.
In the above-noted cases, the determinative factor was
that the mark was used at the point of sale (i.e., the
location where the goods could be ordered). In Land’s End,
the specimen of trademark use at issue was a mail order
catalog that featured an order form and a telephone number
so that a customer could order a product directly from the
catalog.
The Shipley case involved a mark prominently displayed
at a trade show booth where orders for products were taken.
The Board likened the trade show booth to a sales counter
and concluded that since the mark was prominently
displayed, the customer would associate the mark with the
products in deciding whether to buy the products.
Hydron involved an infomercial aired on QVC, a cable
television channel devoted to shopping. Programming on
this channel consists of advertising products and offering
to send them to viewers who call and order them by
telephone. In the infomercial at issue, the mark was
displayed three times followed by photographic
representations of the products. A telephone number was
Serial No. 78331176
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displayed during the infomercial for placing an order for
the products.
Finally, in a case involving a webpage as a specimen
for computer products, the Board held that “a website page
which displays a product, and provides a means of ordering
the product, can constitute a ‘display associated with the
goods,’ as long as the mark appears on the webpage in a
manner in which the mark is associated with the goods.” In
re Dell, Inc., 71 UPSQ2d 1725, 1727 (TTAB 2004).
Another factor in the analysis of whether a specimen
is an acceptable display used in association with the goods
is whether the mark is displayed in a such a way that the
customer can easily associate the mark with the goods. In
re Dell, Inc., supra at 1728. See also, Land’s End Inc. v.
Manbeck, supra at 24 USPQ2d 1316 (the prominent display of
the mark in the catalog combined with the point of sale
nature of the display constitutes a display associated with
the goods); In re Hydron Technologies Inc., supra at 1534
(the mark was prominently featured in the infomercial three
times); In re Shipley, supra (the mark was prominently
displayed on the trade show booth); TMEP §904.06 (“It must
bear the trademark prominently”).
As can be seen from applicant’s webpage, a package of
condoms is prominently featured. The webpage and the
Serial No. 78331176
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package of condoms featured in the webpage prominently
display the INSPIRAL trademark. Also, the Intellx logo is
prominently displayed in the upper left-hand corner of the
website, as well as the legend “The Condom With Curves”
directly below the logo. Buried in the middle of the text
is the purported mark.3
CondomToy condom is not so prominently displayed in
the website that customers will easily associate the mark
with the products. While the mark is printed in bold type,
so are the terms “natural beautiful curves,” “CRAZY sexual
friction!” and “my favorite.” Under these circumstances,
prospective customers are likely to view the term
“CondomToy” as a descriptive term, advertising puffery, or
merely informational (e.g., INSPIRAL condoms have “natural
beautiful curves,” provide “Crazy sexual friction,” and are
“my favorite” condom, as well as being a “CondomToy”),
rather than as a trademark.4 Specifically, because the mark

3 Even though the mark sought to be registered is “CondomToy
condom,” the mark is displayed as “CondomToy™ condom.” Thus, it
appears that applicant’s mark is actually CondomToy. No
objection to the drawing of the mark was raised on this basis,
and we have, therefore, not considered this point in our
decision.

4 The mere use of a superscript “tm” cannot transform a
nontrademark term into a trademark. In re Brass-Craft
Manufacturing Co., 49 USPQ 1849, 1853 (TTAB 1998); In re
Remington Products Inc., 3 UPSQ2d 1714, 1715 (TTAB 1987). The ™
symbol is not so prominently displayed that it outweighs the
informational nature of CondomToy in the text of the webpage.
Serial No. 78331176
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CondomToy condom appears as part of the sentence, “That’s
why Inspiral is also called a CondomToy™ condom,” the
commercial impression that is conveyed, particularly
because of the use of the indefinite article “a” before
CondomToy™ condom,” is that CondomToy condom is a
descriptive term for condoms sold under the Inspiral
trademark. Unlike the mark in the Dell case where the mark
at issue was set out from the surrounding text as the first
word in a bullet list, CondomToy condom is not so prominent
that consumers will recognize it as a trademark for
condoms. In fact, viewers of the webpage will have to
search through the descriptive text even to find the
purported mark. Cf. In re Aerospace Optics, Inc., 78
USPQ2d 1861, 1864)(the manner in which the purported mark
is used does not support a finding that consumers would
perceive it as a mark); In re Gilbert Eiseman, P.C., 220
UPSQ 89, 90 (TTAB 1983)(purported mark conveys advertising
or promotional information rather than identifying and
distinguishing source); In re Royal Viking Line A/S, 216
UPSQ 795, 797 (TTAB 1982)(purported mark would not be
perceived as a source indicator); In re Morganroth, 208
USPQ 284, 288 (TTAB 1980)(the purported marks was so
obfuscated in the specimen that it was not likely to make
any impression on the reader); In re Dun-Donnelley
Serial No. 78331176
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Publishing Corp., 205 USPQ 575, 578 (TTAB 1979)(purported
mark would be perceived as a indicia of the contents of the
magazine, not as an indicia of source).
With respect to the webpage as a point of purchase
display, the webpage does not directly provide a means for
ordering the condoms. There is no telephone number or
online process for ordering the condoms. Although, the
webpage includes a link entitled “Where to Buy,” there is
no information in the record regarding what that link
includes. In his brief, applicant explains that this link
connects shoppers to online distributors of the goods.
(Applicant’s Brief, p. 4). Presumably, this means that
applicant provides a list of distributors and a link to
their websites. Thus, it does not appear on this record
that a purchase can be made directly from the webpage or
from the information provided in the webpage. In other
words, purchasers will have to access the website of a
distributor to make a purchase. In effect, the Intellx
webpage is simply an advertisement for condoms. 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).
Serial No. 78331176
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In further support of his claim that the use of the
mark in the Intellx webpage is a display used in
association with the goods, applicant argues that the
webpage was used in sales presentations. Applicant
attested to the facts that he has “personally attended an
estimated 20 sales presentations in the United States,”
that he has personally handed out copies of the webpage at
the sales presentations, and that he was successful in
obtaining orders for condoms at the sales presentations.
Based on our review of the record in this case,
applicant’s webpage is simply advertising or promotional
material and it does not constitute a display used in
association with the goods. As discussed previously,
because the mark is not prominently displayed in the web
page, it is unclear whether purchasers of the INSPIRAL
condoms at these sales presentations associate “CondomToy
condom” as a source indicator for condoms.
Moreover, applicant’s mere statement that he
distributed copies of the webpage at sales presentations is
not sufficient to persuade us that the Intellx webpage is a
display used in association with the goods. Applicant’s
declaration lacks sufficient detail to transform the
webpage from advertising into a display used in association
with the goods. For example, there is no discussion
Serial No. 78331176
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regarding how the applicant used the webpage at sales
presentations to make an association between the mark and
the products or whether consumers, in fact, associated the
mark with the products. Without sufficient detail, any
statement by an applicant that advertising copy has been
used in the sale of a product potentially transforms every
advertising brochure, flyer, leaflet, etc. into a display
used in association with the goods. Congress did not
create the use requirement of a trademark as a “straw man”
to be so easily knocked down by a pro forma statement that
the advertising material displaying the mark is used in
connection with actual sales of the product. The use of
advertising material in connection with the sales 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.
We are not stating categorically that advertising and
promotional material used at sales presentations can never
be considered a display used in association with the goods.
However, the mere statement that advertising and
promotional materials are used in connection with sales
presentations is not sufficient, in and of itself, to
transform advertising and promotional materials into
displays used in association with the goods.
Serial No. 78331176
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Because applicant’s webpage cannot be considered a
point of sale display, the webpage submitted by applicant
as a specimen of use is not a display used in association
with the goods sufficient to support registration.
Decision: The refusal to register is affirmed.