Tri/Mark Corp.

Trademark Trial and Appeal Board

Apr 26, 2004

No. 76159890 (T.T.A.B. Apr. 26, 2004)

Mailed: April 26, 2004
Paper No. 16
csl
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Tri/Mark Corporation
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Serial No. 76159890
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Wendy K. Marsh of McKee, Voorhees & Sease for Tri/Mark
Corporation.
Rebecca Gilbert, Trademark Examining Attorney, Law
Office 113 (Odette Bonnet, Managing Attorney).
_______
Before Simms, Seeherman and Hairston, Administrative
Trademark Judges.
Opinion by Simms, Administrative Trademark Judge:
Tri/Mark Corporation (“applicant”), an Iowa
corporation, has appealed from the final refusal of the
Trademark Examining Attorney to register, on the
Supplemental Register, the mark E-ACCESS for the goods set
forth below:
latches and handles having electronic
locks for vehicular applications,
namely, for fire trucks; latches and
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76159890
2
handles having electronic locks for
freestanding industrial cabinets and
enclosure systems that house and
protect electrical data communications,
instruments and control equipment, in
Class 9;
latches and handles having electronic
locks for vehicular applications,
namely, for agricultural and
construction vehicles, motor homes,
travel trailers, utility and service
trucks, ambulances, bus and motor
coaches, light, medium and heavy duty
trucks, pick-up truck caps, fitted
pick-up truck covers, fitted pick-up
truck toolboxes, off-road vehicles in
the nature of all-terrain vehicles,
lawn tractors and golf cars in Class
12.1

1 Application Serial No. 76159890, filed November 6, 2000,
on the basis of an allegation of applicant’s bona fide
intention to use the mark in commerce. The Examining
Attorney had refused to register the mark on the basis that
it was merely descriptive of applicant’s goods. Applicant
then amended this application to the Supplemental Register
with the filing of an amendment to allege use on December
6, 2002. Because of applicant’s amendment to the
Supplemental Register, the effective filing date of this
application becomes the date applicant amended to the
Supplemental Register upon filing an acceptable amendment
to allege use. See TMEP §815.02 (Third Edition 2002).
(The amendment to allege use recites dates of use of
November 26, 2002.) While initially refusing to accept the
amendment to allege use because of the rejection of the
specimen as evidence of trademark use, in her brief
(unnumbered page 3) the Examining Attorney accepted the
amendment to allege use as meeting the minimum requirements
of such an amendment. As a result of the amendment to the
Supplemental Register, the Examining attorney withdrew the
refusal under Section 2(e)(1).
The Examining Attorney had required applicant to amend
its listing of goods because its goods were indefinitely
described, overly broad, partially misclassified and beyond
the scope of the original identification, according to the
Examining Attorney. In its reply brief, 5, applicant
adopted the proposed identification suggested by the
Examining Attorney, set forth above. Accordingly, the
Ser. No. 76159890
3
The only issue before us is the acceptability of the
specimen of record as evidence of trademark use of the mark
sought to be registered. Applicant and the Examining
Attorney have submitted briefs, but no oral hearing was
requested.
The Examining Attorney argues that the specimen
(shown below) is not acceptable because it is merely an
advertisement for applicant’s E-ACCESS goods and that,
because of this improper use, applicant’s mark fails to
function as a trademark for its goods.

issue of the acceptability of applicant’s identification of
goods is no longer before us.
Ser. No. 76159890
4
According to the Examining Attorney, the issue turns on
whether the specimen is packaging for the goods or merely
an advertisement for the goods. The Examining Attorney
states that the reference to the mark E-ACCESS on the
package is merely an advertisement for goods other than
those contained in the packaging.
A packaging label is only acceptable as
a specimen if the label contains a mark
which would be viewed by the public as
a source indicator for the particular
goods within the packaging. While the
label in applicant’s specimen may be
acceptable for OTHER marks, such as,
TRI MARK or EASK, it is not acceptable
for E-ACCESS because that mark is not
shown as a source indicator for the
goods contained within the packaging.
The term E-ACCESS is featured only as
part of a secondary advertisement for
applicant’s other goods. In other
words, the label contains a mark for
the goods within the packaging, TRI
MARK EASK, and also an advertisement
for its other new line of products
which consumers may wish to purchase,
including E-ACCESS.
Brief, unnumbered page 5 (emphasis in original). The
Examining Attorney maintains that the public will not
perceive the mark E-ACCESS as a trademark for the goods in
the packaging, and that there is no showing that the
specimen shows a label for a box containing applicant’s E-
ACCESS goods.
Ser. No. 76159890
5
Applicant, on the other hand, argues that the product
label is acceptable to show trademark use because it is a
digital photograph of a label applied to the product
packaging containing applicant’s E-ACCESS product. Brief,
2, 3 and reply brief, 4. In other words, applicant
maintains that the package shown above does contain its E-
ACCESS latches and handles having electronic locks listed
in the application. Because the mark appears on a label
applied to the packaging, applicant maintains that the
specimen does not cease to be a label merely because it may
also contain advertising.
As support for its position, applicant refers to
various sections of the Trademark Manual of Examining
Procedure. TMEP §904 indicates that “[a] trademark
specimen should be a label, tag, or container for the
goods, or a display associated with the goods.” Further,
TMEP §904.04 indicates that “[i]n most cases, where the
trademark is applied to the goods or the containers for the
goods by means of labels, a label is an acceptable
specimen.” Applicant also notes that, in an application to
register the mark E-PAD (Serial No. 78086382), a mark also
shown on the specimen of record, the Examining Attorney
handling that case allowed that mark on the basis of the
same specimen. (The Examining Attorney responds to this
Ser. No. 76159890
6
argument by arguing that each case must be considered on
its own merits.)
We note that in the amendment to allege use, applicant
states that “The specimen consists of a digital photo of a
label on the product packaging.”
Section 23 of the Act, 15 USC §1091, provides, in
part:
All marks capable of distinguishing
applicant’s goods or services and not
registrable on the principal register herein
provided, except those declared to be
unregistrable under subsections (a), (b),
(c), (d), and (e)(3) of section 2 of this
Act, which are in lawful use in commerce by
the owner thereof, on or in connection with
any goods or services may be registered on
the supplemental register upon the payment
of the prescribed fee and compliance with
the provisions of subsections (a) and (e) of
section 1 so far as they are applicable.
Subsection (a) of Section 1 of the Act, 15 USC §1051,
provides that the owner of a trademark used in commerce
must submit such number of specimens or facsimiles of the
mark as used as may be required by the Director. Trademark
Rule 2.56(a) provides that an amendment to allege use under
Rule 2.76 must include one specimen showing the mark as
used on or in connection with the goods. Rule 2.56(b)(1)
provides that a trademark specimen is a label, tag, or
container for the goods, or a display associated with the
goods. Trademark Rule 2.56(c) indicates that a photocopy
Ser. No. 76159890
7
or other reproduction of a specimen of the mark as actually
used on or in connection with the goods is acceptable.
Section 904.04 of the Trademark Manual of Examining
Procedure provides that such a specimen must show the mark
as used on or in connection with the goods in commerce.
While Section 904.04(c) states that a showing of the
trademark on the normal commercial package for the
particular goods is an acceptable specimen, advertising
material is generally not acceptable as a specimen for
goods. TMEP §904.05. Any material whose function is
merely to tell the prospective purchaser about the goods,
or to promote the sale of the goods, is unacceptable to
support trademark use.
The question of whether a designation serves as a mark
must be determined on the basis of the manner and context
in which the designation is used, as revealed by the
specimen and other literature of record, and the
significance which the designation is likely to have to
members of the relevant public because of the manner in
which it is used. Therefore, in order to determine whether
applicant's specimen shows the mark as used on the goods,
we must examine the specimen itself because it shows the
manner in which the mark is seen by the public. Applicant
has submitted what it describes as packaging for its E-
Ser. No. 76159890
8
ACCESS goods. At the top in prominent letters is the mark
TriMark, followed by the wording “electronic Access
Security Keyless-entry.” There follows the statement
“TriMark has the expanded ability to provide comprehensive
electromechanical access solutions through their new line
of electronic-enabled products:”, followed by a listing of
seven trademarks, including the one here sought to be
registered. On the next line the packaging indicates the
“System kits are available and include handles, latches and
power lock actuators.”
We agree with the Examining Attorney that prospective
purchasers of applicant’s goods would perceive the mark for
the product on which the label appears as TriMark, and/or
electronic Access Security Keyless-entry. The applied-for
mark is one of seven marks which the purchaser will likely
perceive as one of the marks for applicant’s new line of
electronic-enabled products, and not as the mark for the
product contained in the package. Accordingly, the digital
photograph which applicant has submitted as its specimen
does not show use of the applied-for mark for the goods.
Decision: The refusal of registration is affirmed.