Sones

Trademark Trial and Appeal Board

Sep 30, 2008

No. 78717427 (T.T.A.B. Sep. 30, 2008)

Mailed: September 30, 2008
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Sones
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Serial No. 78717427
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James R. Menker of Holley & Menker, P.A. for Michael Sones.

Michael G. Lewis, Trademark Examining Attorney, Law Office
111 (Craig D. Taylor, Managing Attorney).
_______

Before Hohein, Hairston and Drost, Administrative Trademark
Judges.

Opinion by Hairston, Administrative Trademark Judge:

Michael Sones has applied to register the mark ONE
NATION UNDER GOD for goods identified as “charity
bracelets.” Application Serial No. 78717427 was filed on
September 21, 2005 based upon applicant’s allegation of a
bona fide intention to use the mark in commerce. The
application was published for opposition on May 23, 2006
and a notice of allowance subsequently issued on August 15,
2006.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78717427
2
On February 15, 2007 applicant filed his statement of
use and a specimen described as “web order pages for [the]
goods,” alleging first use anywhere and first use in
commerce on February 14, 2007. On July 23, 2007, the
trademark examining attorney issued a final refusal to
register on the ground that “the specimen is not acceptable
to show trademark use in a display associated with the
goods because the electronic catalog page or webpage does
not show the mark in close proximity to a picture of the
goods.” (Final Office Action, p. 1).
The issue for consideration is whether the specimen
submitted by applicant with his statement of use is
acceptable to show trademark use of the mark in connection
with the identified goods. In this regard, we note that
Trademark Rule 2.56(b)(1) provides:
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.

Trademark Rule 2.88(b)(2), applicable to this
application because applicant filed his specimen with his
statement of use, requires a specimen of the mark as
actually used in commerce, and specifically refers to Rule
2.56 for the requirements for specimens.
Ser No. 78717427
3
Further, Section 45 of the Trademark Act states, in
pertinent part, that a mark is 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 goods or their sale, …

Applicant’s specimen, which is shown below, consists
of an electronic catalog webpage from the website of
“Beaches Chapel School Store” and an electronic check-out
webpage for purchasing applicant’s goods from this website.

Ser No. 78717427
4

Citing Lands’ End Inc. v. Manbeck, 797 F.Supp. 511, 24
USPQ2d 1314 (E.D. Va. 1992), and In re Dell, Inc., 71
USPQ2d 1725 (TTAB 2004), the examining attorney maintains
that a webpage may be an acceptable specimen and constitute
a display associated with the goods if it: (1) includes a
picture of the relevant goods; (2) shows the mark
sufficiently near the picture of the goods to associate the
mark with the goods; and (3) contains the information
necessary to order the goods. It is the examining
attorney’s position that the webpages applicant has
Ser No. 78717427
5
submitted are not an acceptable trademark specimen because
they do not include a picture of the relevant goods, and
fail to show the mark sufficiently near a picture of the
goods to associate the mark with the goods.
Applicant, on the other hand, maintains that the
examining attorney misapprehends the holdings in Lands’ End
and Dell. Specifically, applicant argues that these cases
do not require that a webpage specimen include a picture of
the goods. According to applicant, in finding that the
catalog page in Lands’ End was an acceptable specimen, the
court focused on the fact that the catalog page contained a
description of the goods, not on the fact that it included
a picture of the goods.
Similarly, applicant argues that in finding that the
webpage in Dell was an acceptable specimen, the Board
focused “at least as much on the written description of the
product being sold as it did in [sic] the inclusion of a
picture of the product on the specimen of use.” (Brief, p.
7).
Furthermore, applicant argues that the webpages in
this case contain a description of his goods, namely, the
wording “CHARITY BRACELET CHOICE OF BLUE OR RED,” which
renders a picture of the goods unnecessary because this
description conveys sufficient information about
Ser No. 78717427
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applicant’s goods for a consumer to associate the goods
with the mark on the webpages. Applicant maintains that
charity bracelets are ubiquitous and that the purchasing
public would clearly understand what applicant’s goods are.
In this regard, applicant submitted several Internet
printouts which discuss the popularity of charity
bracelets.
While we have carefully considered applicant’s
arguments, we are not persuaded thereby. In finding that
the catalog page submitted in Lands’ End constituted a
display associated with the goods, the court pointed to the
picture of the goods in the catalog and the mark used to
identify them when it stated that:
…use of the term KETCH with the picture of the
purse and corresponding description constitutes a
display associated with the goods.

24 USPQ2d at 1316. (emphasis added)
Similarly, in finding that the webpage submitted in
Dell constituted a display associated with the goods, the
Board pointed to the display of the goods on the webpage
and the mark used in connection with them when it stated
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
Ser No. 78717427
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with the goods.” 71 USPQ2d at 1727. (emphasis added) In
short, contrary to applicant’s arguments, the picture of
the goods in the catalog in Lands’ End and the display of
the product at the website in Dell were important factors
in the holdings in those cases.
Further, we note that the Trademark Manual of
Examining Procedure (TMEP) (5th ed. 2007) §904.03(g),
relying on Lands’ End, provides that a catalog or similar
display associated with the goods may be an acceptable
specimen of use under the criteria previously set forth by
the examining attorney. In addition, TMEP §904.03(h),
relying on Dell, provides that “[a] website page that
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 web page in a
manner in which the mark is associated with the goods, and
the web page provides a means for ordering the goods.”
Applicant has offered no persuasive reasons as to why
these criteria should not be applied to the webpages
submitted in this case. Upon examination of the webpages,
it is readily apparent that they do not include a picture
of the goods. Indeed, the webpages contain the statement:
“PHOTO NOT AVAILABLE.” In the absence of a picture of the
goods, the mark does not appear on the webpage in a manner
Ser No. 78717427
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in which the mark is associated with the goods. The mere
reference to “CHARITY BRACELETS” and “CHOICE OF RED OR
BLUE” does not suffice, and the purported ubiquitousness of
charity bracelets does not obviate the requirement for a
picture of applicant’s particular charity bracelets.
Finally, applicant argues that the Board’s decision in
In re Shipley, 230 USPQ 691 (TTAB 1986) supports his
position that the webpages herein constitute a display
associated with the goods. In the Shipley case, the
applicant therein submitted as specimens of use photographs
of one of its trade show booths which displayed its mark.
The Board held that applicant’s display of its mark on
trade show booths where the goods were sold was a display
associated with the goods, even though the goods identified
by the mark were not present at the trade show booths.
Applicant maintains that the webpages submitted in this
case are displays associated with the goods, even though
the webpages do not include a picture of the goods.
The Shipley case is readily distinguishable on its
facts. As noted above, the Shipley case involved the
display of an applicant’s mark on trade show booths, not on
webpages. Also, the applicant in Shipley submitted a
declaration explaining the circumstances of use of the mark
in the specimens.
Ser No. 78717427
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Under the circumstances, we find that applicant’s
specimen does not satisfy the criteria set forth in Lands’
End and Dell that the specimen (1) include a picture of the
relevant goods and (2) show the mark sufficiently near the
picture of the goods to associate the mark with the goods;
and therefore the specimen is not acceptable to show
trademark use of applicant’s mark.
Decision: The refusal to register is affirmed.