Sagoma Plastics, Inc.

Trademark Trial and Appeal Board

Jul 11, 2008

No. 76576594 (T.T.A.B. Jul. 11, 2008)

Hearing: April 10, 2008 Mailed: July 11, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Sagoma Plastics, Inc.
________

Serial No. 76576594
_______

James C. Wray of Law Offices of James C. Wray for Sagoma
Plastics, Inc.

Ingrid Eulin, Trademark Examining Attorney, Law Office 111
(Craig D. Taylor, Managing Attorney).
_______

Before Seeherman, Grendel and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Sagoma Plastics, Inc. filed an application under
Section 1(b) of the Trademark Act to register on the
Principal Register the mark DIGITALBOOK, in standard
character form, for goods identified as “binders and
binding systems comprised of hinged clips, coordinated
plastic or rigid pages for holding media tapes or discs,
and stacked leaf-like trays for holding media tapes, discs,
documents, small objects, and plastic or rigid disc
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 76576594
2
holders,” in Class 16 (Serial No. 76576594). After the
application was approved for publication and published for
opposition, applicant submitted a statement of use
accompanied by an advertisement as its specimen of use.
The specimen is set forth below.

Ser No. 76576594
3
The trademark examining attorney refused registration
on the ground that applicant’s specimen does not show
acceptable trademark use; namely, that the advertisement is
not a display used in association with the goods. When the
refusal was made final, applicant appealed.1 Applicant and
the examining attorney filed main briefs and applicant
filed a reply brief. Applicant’s request for an oral
hearing was granted; and an oral hearing was held as
scheduled on April 10, 2008.2
Section 45 of the Trademark Act of 1946, 15 U.S.C.
§1127, defines “use in commerce” in relevant part as
follows:
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....

In accordance therewith, Trademark Rule 2.56(b)(1) provides

1 With its request for reconsideration, applicant submitted a
substitute specimen identified as a packing or shipping label
affixed to its goods. Such substitute specimen subsequently was
withdrawn and will not be further considered.
2 We note that on April 14, 2008, applicant filed a communication
entitled “Post Hearing Summary.” Such a communication is not
provided for under the Trademark Rules of Practice and, as such,
has been given no consideration. See Trademark Rule 2.142(b)(1).

Ser No. 76576594
4
the following:
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 the mark
on the goods or packaging for the goods.

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 Co., 230 USPQ 691, 694
(TTAB 1986). 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. See In re Shipley Co., 230 USPQ at 694 (“A crucial
factor in the analysis is if the use of an alleged mark is
at a point of sale location”); and In re Bright of America,
Inc., 205 USPQ 63, 71 (TTAB 1979).
In accordance with case law, TMEP §904.03(g) (5th ed.
2007) provides the following guidance:
Displays associated with the goods essentially
comprise point-of-sale material, such as banners,
shelf-talkers, window displays, menus and similar
devices.

These items must be designed to catch the
attention of purchasers and prospective
purchasers as an inducement to make a sale....

In order to rely on such material as specimens,
an applicant must submit evidence of point-of-
sale presentation.

Ser No. 76576594
5
Specifically with respect to catalogs, 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). “However, 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.”
See Id. See also In re MediaShare Corp., 43 USPQ2d 1304,
1306 (TTAB 1997) (fact sheets, catalogs, or brochures
submitted as specimens were not displays associated with
the goods, in part, because they did not include any
information as to how to order the products or the terms
and conditions under which the software was licensed).
Ser No. 76576594
6
Inasmuch as applicant’s specimen clearly displays a
photograph of the goods and displays the mark in close
proximity to the goods such that consumers would associate
the mark and the goods, the crucial factual issue in this
case is whether applicant’s specimen includes the
information necessary to order applicant’s binders and
binding systems, thus making it a point-of-sale display.
In this regard, applicant contends that its specimen
includes its telephone number, mailing address and email
address. Applicant argues that such information is
sufficient to meet the requirement for including
information necessary to order the goods.3
We note initially that there is no evidence in the
record regarding how applicant sells its binders and
binding systems or whether such goods may be purchased by
telephone or the Internet. In this case, we have only
counsel’s statements to the effect that the information on
the specimen of record is sufficient to order the goods.
See In re Vsesoyuzny Ordena Trudovogo Krasnogo Znameni, 219
USPQ 60, 70 (TTAB 1983) (“Unfortunately we have no evidence
of record to this effect and assertions in briefs are
normally not recognized as evidence”).
Upon examination of the advertisement submitted as

3 Brief, p. 2-3.
Ser No. 76576594
7
applicant’s specimen, we find that such specimen is more
akin to the fact sheet, catalog page, or brochure submitted
as specimens by the appellant in In re MediaShare Corp., 43
USPQ2d 1304. In MediaShare, the Board noted that
appellant’s specimens lacked any purchasing information
such as price or the conditions or terms on which
appellant’s software is licensed. Therefore, the inclusion
of appellant’s telephone number on the specimens was not
sufficient to convert the specimens from mere advertising
to displays used in association with the goods. See In re
MediaShare Corp., 43 USPQ2d at 1306. In this case,
applicant’s specimen does not contain any information
normally associated with ordering products via the
telephone or the Internet. For instance, there is no sales
form, no pricing information, no offers to accept orders,
and no special instructions for placing orders anywhere on
the specimen. Applicant is asking us to infer from the
face of the specimen that its customers may purchase
applicant’s goods through the telephone or through the
Internet. However, at best applicant’s advertisement
provides applicant’s telephone number and domain name as
information about applicant; the telephone number and
domain name do not constitute a means to order applicant’s
binders and binder systems by telephone or the Internet.
Ser No. 76576594
8
The present case is unlike the situation presented in
In re Valenite Inc., 84 USPQ2d 1346 (TTAB 2007), in which
we found that appellant’s webpage was an acceptable display
used in association with the goods because it functioned as
a point-of-sale display. The webpage contained links to
appellant’s “Technical Resource Center,” including
specification sheets, online calculators, and reference
tables, as well as providing appellant’s toll-free customer
service telephone numbers. Accordingly, we found that
appellant’s webpage “provides an on-line catalog, technical
information apparently intended to further the prospective
purchaser’s determination of which particular product to
consider, an online calculator and both a link to, and
phone number for, customer service information. Therefore,
applicant’s website provides the prospective purchaser with
sufficient information that the customer can select a
product and call customer service to confirm the
correctness of the selection and place an order.” In re
Valenite Inc., 84 USPQ2d at 1349-1350.
By contrast, the advertisement submitted as a specimen
by applicant in this case provides no such information.
Rather, and as noted above, such specimen merely contains
applicant’s contact information in the form of its address,
telephone number and email address. As a result, after
Ser No. 76576594
9
considering the specimen submitted by applicant, and the
arguments of both the applicant and the examining attorney,
we find that applicant’s specimen is not a display
associated with the goods, and therefore is not acceptable
to show trademark use of applicant’s mark.
Decision: The refusal to register is affirmed.