This Opinion Is Not a
Precedent of the TTAB

Mailed: June 5, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re TEK Group International
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Application Serial No. 87722507
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Nathan Gugliotta of the Law Offices of Nathan Gugliotta, P.E., Esq., LPA,
for TEK Group International.

Charles L. Jenkins, Jr., Trademark Examining Attorney, Trademark Law Office 118,
Michael W. Baird, Managing Attorney.
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Before Kuhlke, Bergsman and Coggins, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

TEK Group International (Applicant) filed an application to register on the

Principal Register the mark ZEPOXY (in standard characters) for the goods listed

below:

Oil and gas wellbore machine tools, namely, permanent
composite zonal isolation tools for use in well fracturing, in
Class 7; and
Serial No. 87722507

High temperature fiber reinforced thermoset resins for
used [sic] in the manufacture of composite wellbore tools
and composite wellbore tool components, in Class 17.1

On January 24, 2018, Applicant filed an Amendment to Allege Use claiming

January 22, 2018, as Applicant’s dates of first use anywhere and first in commerce

for the goods in both classes. Applicant identified the specimen of use filed with the

Amendment to Allege as a “tradeshow bro[c]hure distributed showing Applicant’s use

of the mark in commerce.” 2 A copy of the specimen is reproduced below:

1 Application Serial No. 87722507, filed December 15, 2017, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s claim of a bona fide intent to use
its mark in commerce.
2 The same specimen was submitted for each class.

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Serial No. 87722507

On March 29, 2018, Applicant filed a second Amendment to Allege Use alleging

January 6, 2018, as Applicant’s dates of first use anywhere and first in commerce for

the goods in both classes. Applicant identified the specimen of use filed with the

second Amendment to Allege use as “Applicant’s customer-facing quotation and offer

for sale featuring Applicant’s use of the mark in commerce.”3 A copy of the relevant

portion of the specimen is reproduced below:

3 The same specimen was submitted for each class.

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Serial No. 87722507

The Examining Attorney refused registration under Sections 1 and 45 of the

Trademark Act, 15 U.S.C. §§ 1051, 1127 and Trademark Rules 2.34(a)(1)(iv) and

2.56(a), 37 C.F.R. §§ 2.34(a)(1)(iv), 2.56(a), because the specimens do not show the

applied-for mark in use in commerce. See TRADEMARK MANUAL OF EXAMINING

PROCEDURE (TMEP) §§ 904, 904.07(a) (2018).

Section 45 of the Trademark Act states 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 such placement impracticable, then on documents
associated with the goods or their sale, and

(B) the goods are sold or transported in commerce.

Trademark Rule 2.56(b)(1), 37 C.F.R. § 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 impracticable to place the mark
on the goods or packaging for the goods.

See also 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”); In re

Marriott, 459 F.2d 525, 173 USPQ 799, 800 (CCPA 1972) (“the menu is a display of

appellant’s offering directly associated with appellant’s goods. It is from this word or

pictorial depiction of the sandwich that the customer makes his selection, and his

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Serial No. 87722507

selection is not indicated on the check by the specific ingredients of its composition

but by the mark TEEN TWIST.”).

The TMEP explains further that a qualifying “display” will essentially comprise

“point-of-sale material such as banners, shelf-talkers, window displays, menus, and

similar devices.” TMEP § 904.03(g); see also In re Tsubaki, Inc., 109 USPQ2d 2002,

2003 (TTAB 2014).

Consistent with Section 45 of the Trademark Act, 15 U.S.C. § 1127, this TMEP

section goes on to explain that “[f]olders, brochures, or other materials that describe

goods and their characteristics or serve as advertising literature are not per se

‘displays’” and that “[i]n order to rely on such materials as specimens, an applicant

must submit evidence of point-of-sale presentation.” (Emphasis added). The TMEP

also explains that “[i]n appropriate cases, catalogs are acceptable specimens of

trademark use,” but again qualifies this provision by noting that catalogs that do not

“(1) include[] a picture or a sufficient textual description of the relevant goods; (2)

show[] the mark in association with the goods; and (3) include[] the information

necessary to order the goods” may constitute “mere advertising” material and thus

not qualify. TMEP § 904.03(h). “[T]he mere inclusion of a phone number, Internet

address and/or mailing address on an advertisement describing the product is not in

itself sufficient to meet the criteria for a display associated with the goods. There

must be an offer to accept orders or instructions on how to place an order.” Id. See

also In re Siny Corp., 920 F.3d 1331, 1337, 2019 WL 1549561 (Fed. Cir. 2019)

(affirming rejection of “specimen [that] did not cross the line from mere advertising

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Serial No. 87722507

to an acceptable display associated with the goods”); In re MediaShare Corp.,

43 USPQ2d 1304, 1306 (TTAB 1997) (fact sheets, catalogs, or brochures submitted as

specimens were not displays associated with the goods, in part, because they did not

include any information as to how to order the products or the terms and conditions

under which the software was available for license).

Applicant’s trade show brochure did not cross the line from mere advertising to

an acceptable display associated with the goods because there is no information

regarding how to place an order and, thus, it is not a point-of-sale display.4

Applicant contends that the “customer-facing quotation and offer for sale” (or

invoice) is an acceptable specimen because it is impractical to affix the mark to the

products or packaging for the products because the products are shipped in bulk.5

This is because the applied-for goods are resins for use in
manufacture of wellbore tools and composite wellbore tool
components in class 17. Specifically, this is the actual resin
material that is used to make other tools. Indeed, it would
be more than impractical to place the mark on this class 17
good — it would be impossible to do so. Further, the
industrial nature of the industry in which these goods are
distributed is much different to consumer goods. Indeed, it
would be impractical to place the mark on any sort of
industrial packaging because it is shipped in bulk, as
contemplated by TMEP § 904.03(k).

4In other cases, the Board has found that the prominent display of the trademark on a trade-
show booth where product literature is distributed and orders for the goods are taken is a
display associated with the goods, In re Shipley Co. Inc., 230 USPQ 691 (TTAB 1986), and
that informational fliers or leaflets clearly depicting the mark and presented on the goods at
trade show exhibits are acceptable displays associated with the goods. In re Ancha Elec. Inc.,
1 USPQ2d 1318 (TTAB 1986). In this application, unlike the Shipley and Ancha Elec.
applications, there was no declaration or other corroborating material supporting, or
explaining how, the brochures are point-of-sale displays.
55 Applicant’s Brief, p. 3 (4 TTABVUE 4).

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Serial No. 87722507

Further, the applied for goods in class 8 [sic], namely “oil
and gas welbore machine tools, namely, permanent
composite zonal isolation tools for use in well fracturing,”
are further of the type where affixing it to the goods,
display, or packaging would be impractical. This is because
the goods themselves are placed under ground, the
packaging is industrial — not consumer — in nature and
shipped in bulk, and due to the industrial nature of the
channels of trade, displays associated with the goods are
impractical and would be futile. Therefore, the applied-for
goods in classes 8 [sic] and 17 are of the type contemplated
by TMEP § 904.03(k), and as such the invoice specimen is
sufficient to grant registration under the law.6

“[I]n rare circumstances it may be impracticable to place the mark on the goods or

packaging for the goods if the goods are natural gas, grain that is sold in bulk, or

chemicals that are transported only in tanker cars. In such instances, an acceptable

specimen might be an invoice, a bill of lading, or a shipping document that shows the

mark for the goods.” TMEP § 904.03(k). In In re Settec, Inc., 80 USPQ2d 1185 (TTAB

2006), the applicant asserted that placing the mark on the goods or on displays

associated with the goods in the traditional manner was impracticable because the

purpose of the goods was to provide digital media copy protection to media content

providers, and placing the mark on the final product available to the ultimate end-

user would impair the value of the goods, because the end-user would thereby be

armed with an additional piece of the encryption puzzle. The Board rejected this

contention, finding that there were a variety of ways in which applicant could use its

mark in the traditional manner without making it available to the end-user.

6 Id. at pp. 3-4 (4 TTABVUE 4-5).

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Serial No. 87722507

Turning to Applicant’s arguments regarding the propriety of its specimens, there

is no actual proof in the record to support Applicant’s statements. We have only

Applicant’s counsel’s statements as to how Applicant sells its “permanent composite

zonal isolation tools for use in well fracturing” and “resins for used [sic] in the

manufacture of composite wellbore tools and composite wellbore tool components.” In

re Simulations Publ’ns, Inc., 521 F.2d 797, 187 USPQ 147, 148 (CCPA 1975) (where

appellant argued that the magazines at issue deal with unrelated subject matter, the

court held that “[s]tatements in a brief cannot take the place of evidence.”); In re

Scarbrough, 500 F.2d 560, 182 USPQ 298, 302 (CCPA 1974) (where patent claims

were rejected for the insufficiency of disclosure under Section 112, the response of

appellant was argument in lieu of evidence leading the court to hold that “argument

of counsel cannot take the place of evidence lacking in the record.”); In re Tsubaki,

Inc., 109 USPQ2d 2002, 2006 (TTAB 2014) (disregarding outside counsel’s conclusory

unverified statements made without proper foundation regarding marketing of

goods); In re Vsesoyuzny Ordena Trudovogo Krasnogo Znameni, 219 USPQ 69, 70

(TTAB 1983) (applicant argued without corroborating evidence that its brochure

would be recognized as an offer of services leading the Board to hold that

“[u]nfortunately we have no evidence of record to this effect and assertions in briefs

are normally not recognized as evidence”).Compare In re Valenite Inc., 84 USPQ 1346,

1348 (TTAB 2007) (appellant submitted the declaration of its director of marketing

who testified that appellant’s customers regularly order its products by contacting

the customer service department by telephone).

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Serial No. 87722507

Taking counsel’s assertions at face value, the explanation as to why it is

impractical to place the mark on the products, packaging, or displays used in

association with the goods is lacking detail. With respect to the Class 7 “permanent

composite zonal isolation tools for use in well fracturing,” other than that the tools

are shipped in bulk, there is no explanation as to how the tools are shipped, why bulk

shipping precludes the use of the mark on packaging or containers holding the tools,

why the mark cannot be imprinted in the tools, or whether product literature

featuring the mark is distributed at trade shows where the tools are sold.

Likewise, with respect to the “resins for used [sic] in the manufacture of composite

wellbore tools and composite wellbore tool components,” other than that the resins

are shipped in bulk, there is no explanation as to how the resins are shipped, why

bulk shipping precludes the use of mark on containers holding the resins, whether

product literature featuring the mark is distributed at trade shows where the resins

are sold, or whether there are instructions for employing the resins that display the

mark.

To be clear, we are not substituting our knowledge of well fracturing tools and

wellbore resins or their marketing for Applicant’s knowledge. In this case, we simply

have an uncorroborated, unsupported statement that the products are sold in bulk

and that, therefore, it is impracticable to use the mark in a traditional manner.

Because it is in only rare circumstances that the USPTO may accept nontraditional

specimens where it is impracticable to put the mark on the goods, packaging for the

goods, or displays used in association with the goods, we find that Applicant failed to

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Serial No. 87722507

prove that is impracticable to place the mark on the goods, packaging for the goods,

or displays used in association with the goods.

Decision: The refusal to register Applicant’s mark on the ground that the

specimens do not show the applied-for mark in use in commerce is affirmed.

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