Taylor
Wellington*
Kuczma
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 Physicians Seal, LLC
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Serial No. 87169253
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Christopher M. Ramsey of Gray Robinson PA,
for Physicians 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:
Physicians 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 Applicants 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 Applicants 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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…
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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 Applicants 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 Applicants 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 applicants 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 Applicants
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, Applicants
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 inserts 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 Boards 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 Applicants 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 Dells 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
Applicants 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 Applicants
REMfresh-brand supplements.
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Serial No. 87169253
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 Applicants proposed mark is affirmed.
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