The opinion
THIS OPINION IS A
PRECEDENT OF THE TTAB
Mailed: July 31, 2007
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Valenite Inc.
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Serial No. 76482852
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Adrienne L. White, Esquire of White, Redway & Brown LLP for
Valenite Inc.
Christopher L. Buongiorno, Trademark Examining Attorney,
Law Office 102 (Thomas V. Shaw, Managing Attorney).
_______
Before Hairston, Walters and Rogers, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Valenite Inc. has applied to register the mark VALPRO
for goods identified, as amended, as “tools for power
operated metal cutting machines, namely, turning, milling,
grooving, drilling, boring and threading tools; and cutting
inserts and tool holders for power operated metal cutting
machines and tools; and component parts therefor.”
Application Serial No. 76482852 was filed on January 16,
2003 based upon applicant’s allegation of a bona fide
Ser No. 76482852
intention to use the mark in commerce. The application was
published for opposition on July 27, 2004 and a notice of
allowance subsequently issued on October 19, 2004.
Applicant filed its statement of use and specimens
consisting of two webpage printouts on April 19, 2005,
alleging first use anywhere and first use in commerce on
December 31, 2003. On May 13, 2005 the trademark examining
attorney issued a refusal to register on the ground that
applicant’s specimens were not acceptable to show use of
the mark in connection with the identified goods. On July
21, 2005 applicant filed a response wherein it argued
against the refusal. The examining attorney, however, was
not persuaded by applicant’s arguments and on August 2,
2005, issued a final refusal to register.
On February 1, 2006 applicant filed a notice of appeal
and a request for reconsideration. With the request for
reconsideration, applicant submitted another webpage
printout. On February 8, 2006 the examining attorney
denied the request for reconsideration. On July 6, 2006
applicant filed a further request for reconsideration of
the final refusal along with the declaration of its
Director of Marketing, Thomas Benjamin. The Board, in an
order issued July 24, 2006, construed the further request
for reconsideration as a request for remand, found that
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Ser No. 76482852
applicant had shown good cause therefor, and granted the
request. The Board suspended proceedings in the appeal,
remanded the application to the examining attorney and
directed him to “consider the request.” (Order at p. 2)
In an action issued July 31, 2006, the examining attorney
requested that the Board “disregard the declaration as
untimely” and “find that applicant failed to show good
cause to support its submission.” (Action at p. 2) The
examining attorney did not consider the declaration and
continued to maintain that the specimens were not
acceptable. Applicant and the examining attorney
thereafter filed briefs.
Before turning to the merits of the appeal, we will
address the examining attorney’s July 31, 2006 action. It
appears that the examining attorney is requesting
reconsideration of the Board’s decision granting the remand
request. We see no error in the Board’s decision and
accordingly deny the examining attorney’s request.
Moreover, in this situation, it would have been the better
practice for the examining attorney to consider the
declaration in the alternative, in the event his request
for reconsideration was denied. In any event, we note that
the examining attorney stated in his brief that he was not
persuaded by the declaration.
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Ser No. 76482852
We turn then to the merits of the appeal. The sole
issue for consideration is whether the specimens submitted
by applicant with its statement of use are acceptable to
show use of the mark in connection with the identified
goods.1 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 its specimen with its
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.
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
1
Insofar as the webpage printout submitted by applicant with its
request for reconsideration is concerned, applicant did not
request that this webpage printout be considered a substitute
specimen. Moreover, we agree with the examining attorney that it
may not be considered a substitute specimen because it was not
accompanied by an affidavit or declaration of use.
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Ser No. 76482852
such placement impracticable, then on documents
associated with goods or their sale, …
As indicated, applicant’s specimens are two webpage
printouts from the website http://www.valenite.com.
Relying on 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), applicant argues that the webpages
are displays associated with the goods. The examining
attorney, on the other hand, contends that the webpages do
not meet the criteria set forth in Lands’ End and Dell with
respect to displays associated with the goods, because “the
mark is not associated with the goods,” and there is not
“sufficient ordering information.” (Brief p. 2).
In the Lands’ End case, the court held that a catalog
page containing a picture of a purse in association with
the mark KETCH and ordering information constituted a
display associated with the goods. Specifically, the court
stated:
…use of the term KETCH with the picture of the
purse and corresponding description constitutes a
display associated with the goods. The catalogue
is by no means “mere advertising.” A customer
can identify a listing and make a decision to
purchase by filling out the sales form and
sending it in or by a calling in a purchase by
phone.
24 USPQ2d at 1316.
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Ser No. 76482852
In the Dell case, 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.”
Further, the Board pointed out that “[i]t is a well-
recognized fact of current commercial life that many goods
and services are offered for sale on-line and that on-line
sales make up a significant portion of trade.” 71 USPQ2d
at 1727.
As previously indicated, applicant submitted two
webpage printouts, one of which is applicant’s “home”
webpage and is reproduced below:
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Ser No. 76482852
As can be seen, VALPRO appears at the top middle of
the webpage. To the left of VALPRO is a picture of some of
applicant’s cutting inserts. Further down the webpage is
the wording “Featured Products/Events” with a picture of a
particular product which is described as “5 cutting edges
competitively priced with 4 square inserts of equivalent
size, with minimal change in DOC capability.” In addition,
the webpage contains a link to an online catalog, and,
under the heading "Service and Support," toll free phone
numbers and web links to customer service, technical
support and "an instant link [via the "Go ValPro" button]
to our Technical Resource Center." Applicant’s director of
marketing, Thomas Benjamin, states in his declaration that
“these [toll-free] numbers are now, and . . . have been,
used to place orders for the goods.” (Declaration at p.
2). Further, according to applicant, “[s]election and
ordering of VALPRO systems and components requires careful
calculation and technical knowledge, so customers expect to
purchase the goods by contacting Appellant’s Customer
Service group. The Customer Service group takes orders by
telephone and online, provides pricing information and
handles delivery scheduling.” (Brief at p. 14).
We find that the webpage satisfies the criteria set
forth in Lands’ End and Dell that the specimen (1) include
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Ser No. 76482852
a picture of the relevant goods; (2) show the mark
sufficiently near the picture of the goods to associate the
mark with the goods; and (3) contain the information
necessary to order the goods. In reaching this finding, we
are mindful of the observation in Dell that “a well-
recognized fact of current commercial life [is] that many
goods and services are offered for sale on-line, and that
on-line sales make up a significant portion of trade.” 71
USPQ2d at 1727. There is nothing in the record to suggest
that this observation is any less apt three years after it
was made. Also important is the specialized industrial
nature of applicant's goods, which is apparent from review
of the identification of goods and applicant's specimen.
Applicant states on its webpage that it offers “technical
training courses, including Machining Principles and Basics
of Cutting Tool Materials,” and, as already noted, there is
a link to applicant’s “Technical Resource Center, including
MSDS Sheets, online calculators, reference tables and
more.” (emphasis added). Thus, we have no reason to doubt
the accuracy of applicant's argument in its brief that
“[s]election and ordering of VALPRO systems and components
requires careful calculation and technical knowledge.” We
also note that the examining attorney has not disputed
applicant’s contention on this point, which we would have
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Ser No. 76482852
expected if the examining attorney disagreed with the
argument.
The examining attorney argues that “the wording
‘VALPRO products’ is not located anywhere” on the webpage;
and “there is not one instance where the term ‘products’
and the proposed mark are used together.” (Brief p. 4).
However, neither Lands’ End nor Dell requires that the mark
and the term ‘products’ (or the name of the product, for
that matter) appear adjacent to each other. In the context
of this webpage, VALPRO is prominently displayed and used
in a manner that purchasers will recognize it as a
trademark for applicant’s goods.
Further, we are not persuaded by the examining
attorney’s argument that customers would view applicant’s
VALPRO mark as identifying applicant’s customer support
activities rather than applicant’s goods because of the
presence of the “Go ValPro” icon near the bottom of the
webpage. This icon provides a link to applicant’s
Technical Resource Center and the use of “ValPro” on this
button is as a link to technical information about
applicant’s VALPRO products. In other words, applicant’s
use of VALPRO in this manner is not inconsistent with
trademark use of VALPRO.
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Ser No. 76482852
Contrary to the examining attorney, we are convinced
that the information necessary to order applicant’s goods
is present in this case. Applicant has stated, and it is
readily apparent from the record, that applicant’s tools,
cutting inserts and component parts are specialized
industrial products. Thus, it follows that customers would
need to consider technical information about the products
prior to placing an order, and may very well need technical
assistance when purchasing these products. These are not
products that can be ordered from a web page by clicking on
an image of the product to add it to a shopping cart for
checkout. Equally important, applicant’s director of
marketing, Mr. Benjamin, has stated that customers do in
fact order applicant’s products by way of the “Customer
Service” toll-free telephone numbers. Further, the term
“customer service” itself is broad enough to encompass the
service of allowing customers to order applicant’s products
by using the toll-free telephone numbers. In other words,
there is nothing inherent in the term “customer service”
that limits its meaning to solely providing information.
Thus, the fact that the webpage does not allow a customer
to click on a product to add it to a shopping cart or make
specific mention under the customer service link or phone
number that the customer should “click here” or “call now”
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Ser No. 76482852
to place an order does not compel a different result in
this case.
We find that the present situation differs from In re
MediaShare Corp., 43 USPQ2d 1304 (TTAB 1997), where the
Board held that the applicant’s fact sheet brochure
specimens did not constitute a display associated with the
goods, but rather were merely advertising material. In
MediaShare, the fact sheet did not qualify as a display
associated with goods because, among other things, “none of
the computer monitor display screens reproduced in
applicant's ‘fact sheet’ brochure … clearly appears to
constitute or include a picture of applicant’s ‘PB.WEB’
computer software, whether in use or otherwise.” Id. at
1306. In contrast, in the instant case there are multiple
pictures of VALPRO goods.
In addition, the PB.WEB product was clearly identified
in the fact sheet as “an add-on module to the [applicant’s]
ProductBase system” and the fact sheet therefore touts the
benefits of the PB.WEB product for users of the ProductBase
system. While the fact sheet includes a list of “system
requirements,” there is nothing in the fact sheet that
indicates the software product requires any customization
or technical consultation before an existing customer of
the applicant could purchase the add-on module for the
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Ser No. 76482852
product it already had. Nonetheless, as the Board noted,
the fact sheet did not include pricing information. Id.
Thus, even existing customers of the applicant would have
viewed the fact sheet as advertising for an add-on product
they might wish to consider and not as a means for placing
an order. In the instant case, however, applicant’s
website, in addition to showing pictures of the goods,
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 representatives. 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 short, we view the
applicant’s website as much more like the website in the
Dell case than the fact sheet in MediaShare.2
Moreover, it must be remembered that whether a
specimen is mere advertising or whether it is a display
2
We note, too, that the prospective purchaser’s final cost for
purchasing a product would, in Dell, be dependent on the
customization choices of the computer purchaser and, in the
instant case, the final technical consultations with applicant’s
customer service agents. This similar step also makes the
instant case more akin to Dell than to MediaShare.
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Ser No. 76482852
associated with the goods is a question of fact which must
be determined in each case based on the evidence in that
particular case. In re Shipley Co., 230 USPQ 691 (TTAB
1986). Based on the evidence in this case, and in view of
the prevalence of online retailing, and the fact
applicant’s goods are specialized industrial products, we
conclude that applicant’s “home” webpage constitutes a
display associated with the goods. In view of our finding,
we need not consider applicant’s “customer service”
webpage.
Decision: The refusal to register is reversed.
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