Catalogs as Specimens Showing Use in Commerce

As U.S trademark owners know, the U.S. is unique among jurisdictions in that those who wish to federally register their marks are required to show that they are using a mark “in commerce” in connection with the goods/services covered by an application or registration in order to register a mark and, later, maintain that registration. The Trademark Trial and Appeal Board (TTAB) recently reaffirmed its position with respect to situations in which catalogs can be used to satisfy this use requirement.

In the case of In re U.S. Tsubaki, Inc., 109 U.S.P.Q.2d (TTAB 2014) the TTAB refused to register TSUBAKI: THE CHOICE FOR CHAIN for “industrial machine parts, namely, chains and sprockets” on the ground that the applicant failed to provide an acceptable specimen of use. The applicant submitted six catalogs in which potential purchasers were invited to call the company phone number to obtain information and place an order, which was not sufficient information to qualify the catalogs as acceptable specimens of trademark use. The decision turned on whether the catalogs provided the potential purchaser with the information normally associated with ordering products of that kind. Catalogs or website printouts are not sufficient to show use of a mark in commerce if additional steps must be taken to put the customer at the point of purchase – such as determining price or other specifications.

This case illustrates an important practice tip for trademark owners whose products are highly customized or are sold to very specialized markets. Instead of attempting to use a catalog or website to establish use in commerce, a simpler approach may be to utilize and submit a label or tag that bears the mark and is affixed to the product or its packaging.

This article appeared in the May 2014 issue of MarkIt to Market. To view our past issues, as well as other firm newsletters, please click here.