Physician

This Opinion is Not a
Precedent of the TTAB

Mailed: September 6, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Physician’s Seal, LLC
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Serial No. 87169253
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Christopher M. Ramsey of Gray Robinson PA,
for Physician’s Seal, LLC.

Alicia Collins Edwards, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.

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Before Taylor, Wellington, and Kuczma,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Physician’s Seal, LLC (“Applicant”) seeks registration on the Principal Register of

the standard character mark SLEEP HYGIENE CYCLE (SLEEP HYGIENE

disclaimed) for “Dietary supplements; nutritional supplements; pharmaceutical

preparations for use in treating sleep disorders; melatonin preparations for

pharmaceutical purposes; over-the-counter pharmaceutical preparations for use in

treating sleep disorders” in International Class 5.1

1 Application Serial No. 87169253 was filed on September 13, 2016 based on Applicant’s claim
of a bona fide intent to use the mark in commerce, under Section 1(b) of the Trademark Act,
Serial No. 87169253

The Examining Attorney has refused registration on the ground that the original

and substitute specimens are not acceptable because they do not show the applied-

for mark in use in commerce on or in connection with the goods identified in the

application. Trademark Act Sections 1 and 45, 15 U.S.C. §§ 1051 and 1127.

The refusal was made final. Applicant appealed to this Board and requested

reconsideration of the refusal. The Examining Attorney denied Applicant’s request

for reconsideration and the Board resumed this appeal. The appeal has been fully

briefed. For the reasons given herein, we affirm the refusal to register the mark.

I. The Specimens and Arguments

With its Statement of Use, Applicant submitted a specimen (“first specimen”)

comprising three screenshots from its website – the first two appear as follows (with

a red arrow provided on the second to highlight location of proposed mark):2

15 U.S.C. § 1051(b). On November 9, 2017, Applicant filed a Statement of Use under Section
1(d) of the Act, alleging first use of the mark in commerce on November 9, 2017.
2 Specimen, filed November 9, 2017, TSDR pp. 1-3.

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The Examining Attorney rejected the specimen asserting that the “mark is shown

on a website but not in connection with the actual sale of the goods specified in the

statement use. Rather, the specimen appears to show use of the mark REMfresh in

relation to the goods specified in the statement of use.”3 The Examining Attorney

elaborated:

[A]lthough the specimen consisting of Applicant’s web page
does include a textual description of the goods and a means
for ordering the goods, the mark is not displayed in a
manner in which consumers would associate the applied-
for mark with the goods. Rather, the consumer is likely to
associate the wording REMFRESH with the specified
goods. The wording REMFRESH appears prominently at
the top of the web page and in numerous instances
throughout the content of the web page in direct
association to the goods, including within a shaded section
containing a textual description of the goods along with an
“ORDER NOW” button.

In response, Applicant requested that the Examining Attorney reconsider the

refusal as to the first specimen, arguing that specimen shows the proposed mark

“functions like that of a tagline that consumers relate to the source of the goods.”4

Applicant attached an “annotated copy of the [first] specimen” to show that “a

consumer who visits the webpage would see it as one continuous page that can be

viewed by scrolling up and down.”5

3 Office Action issued December 14, 2017, TSDR p. 1.
4 Response filed June 14, 2018, TSDR p. 1.
5 Id.

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In the same response, and “out of an abundance of caution,” Applicant submitted

a substitute (“second”) specimen – comprising photographs of product packaging,

including the following of the front and back of the box, and “the insert that is

packaged inside the box.”6 The photographs appear, in the aforementioned order, as

follows:

FRONT: BACK:

and

6 Id.

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INSERT (placed in box):

(with Applicant’s supplied arrow directing to its “mark.”)7

The Examining Attorney rejected the second specimen asserting that “the average

consumer viewing the mark as shown on the [second] specimen would view it as

information about good sleep habits being provided . . . rather than attributing

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thereto the special significance of a trademark to distinguish the applicant’s goods

from the goods of others.”8 The Examining Attorney points out that “information

inserts are generally not acceptable to show trademark use” and, in this case, the

specimen “shows the applied-for mark on a packaging insert containing answers to

Frequently Asked Questions about the REMfresh product.”9

II. Applicable Law – Analysis

Under Section 45 of the Trademark Act, 15 U.S.C. § 1127, a trademark is used in

commerce when “it is placed in any manner on the goods or their containers or the

displays associated therewith ….” See also Trademark Rule 2.56(b)(2), 37 C.F.R.

§ 2.56(b)(1). An applicant’s statement of use is essentially an allegation that the mark

has been used in commerce being made in order to obtain registration, and it must

be accompanied by one specimen per class showing the mark as used on or in

connection with its identified goods and/or services. 15 U.S.C. § 1051(d)(1); 37 C.F.R.

§§ 2.56, 2.88(b)(2). The specimens provide the USPTO with support for the applicant’s

verified statements regarding trademark use. In this regard, the manner in which an

applicant has employed its asserted mark, as evidenced by the specimens of record,

must be carefully considered in determining whether the asserted mark has been

used as a trademark with respect to the goods identified in the application. In re

Minerva Assocs., Inc., 125 USPQ2d 1634, 1636 (TTAB 2018) (citing In re Bose

Corp., 546 F.2d 893, 192 USPQ 213, 216 (CCPA 1976)). If the specimens fail to

8 Office Action issued July 11, 2018, TSDR p. 1.
9 9 TTABVUE 8.

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indicate use in commerce, as defined in 15 U.S.C. § 1127, registration may be refused

on that basis.

With respect to both the first and second specimens, the key issue is not so much

the format of the specimens which are comprised of screenshots from Applicant’s

website and a product packaging insert. Rather, it is the manner in which the

proposed mark SLEEP HYGIENE CYCLE, as shown in the specimens, is used and

whether it will be directly associated with the identified goods, namely, Applicant’s

supplements and pharmaceutical preparations.

Having given careful consideration to both specimens, we agree with the

Examining Attorney. That is, consumers viewing the proposed mark in the specimens

will not directly associate the proposed mark with the involved goods in a manner

that would indicate the source of the goods. See In re Sones, 590 F.3d 1282, 93

USPQ2d 1118, 1123 (Fed. Cir. 2009) (“the test for an acceptable . . . specimen, is

simply that it must in some way evince that the mark is ‘associated’ with the goods

and serves as an indicator of source”). See also In re Universal Oil Prods. Co., 476

F.2d 653, 177 USPQ 456, 457 (CCPA 1973) (term must have “direct association” with

applied-for services); see also In re Safariland Hunting Corp., 24 USPQ2d 1380, 1381

(TTAB 1992) (specimen must show “direct association” with goods). In both

specimens, the proposed mark appears as a caption before bulleted points of advice

for obtaining better sleep. Although the last point of advice is to “Take REMfresh

nightly 30-60 minutes before bedtime,” the proposed mark conjures an overall routine

or program for better sleep.

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Furthermore, with respect to the second specimen, the proposed mark is found in

the middle of the packaging insert’s “Frequently Asked Questions” – embedded into

the response to the question “What is the best way to support my sleep?” This is far

from the prominent use needed to clearly associate the proposed mark with the

identified goods. More importantly, the proposed mark only points to a suggested

program for getting better sleep, not the underlying goods.

In arguing that the first specimen should be acceptable for demonstrating use of

the proposed mark on the goods, Applicant relies heavily on the Board’s decision in

In re Dell, Inc., 71 USPQ2d 1725 (TTAB 2004). Indeed, Applicant states that the Dell

decision “is more pertinent to the present circumstances because the web page

specimen being refused in that case only sold one product, displayed other marks

associated with the same goods, and the mark in question (QUIETCASE) was not the

primary mark displayed on the web page.”10 While Applicant is correct that the

involved specimen at issue in the Dell decision contained multiple marks in

connection with a single computer product, we note the manner in which the

QUIETCASE mark was presented in the specimen is not analogous to Applicant’s use

of SLEEP HYGIENE CYCLE. The website page specimen in Dell appeared as follows:

10 10 TTABVUE 4.

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.

Id. at 1728. The involved mark, QUIETCASE, is described in the specimen in the

following manner: “Innovative new clamshell chassis with Dell’s QuietCase™

acoustic environment, provides easy access to system interior …” It is unambiguous

from this specimen that QUIETCASE is identifying the “internal cases for computer

hardware” goods and thus the Board found the specimen was acceptable.

In contrast to the circumstances in Dell, there is no such direct association of

Applicant’s mark with the goods identified in the application. At most, consumers

will perceive the proposed mark as being used in connection with the offering of

advice for obtaining better sleep which is given in conjunction with Applicant’s

REMfresh-brand supplements.

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Ultimately, the first and second specimens do not demonstrate use of the mark

on or in connection with the goods in commerce because they do not directly associate

the mark with the goods. Because the requirement to submit an acceptable specimen

showing use of the mark in commerce has not been met, registration must be refused

under Trademark Act Sections 1 and 45, 15 U.S.C. §§ 1051 and 1127.

Decision: The refusal to register Applicant’s proposed mark is affirmed.

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