Veritas Medical Solutions LLC

This Opinion is Not a
Precedent of the TTAB

Mailed: December 20, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Veritas Medical Solutions LLC
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Serial No. 86154703
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John J. O’Malley of Volpe and Koenig PC,
for Veritas Medical Solutions LLC.

Kevin S. Corwin, Trademark Examining Attorney, Law Office 112,
Renee Servance, Managing Attorney.

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Before Cataldo, Greenbaum and Coggins,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:

Veritas Medical Solutions LLC (“Applicant”) seeks registration on the Principal

Register of the mark VROC (in standard characters) for

Modular buildings, room and suites made primarily of non-
metal, namely, modular radiation therapy buildings, room
and suites including modular radiation therapy rooms and
interiors therefor, all sold as a unit, in International Class
19.1

1 Application Serial No. 86154703 was filed on December 30, 2013, based upon both
Applicant’s allegation of a bona fide intention to use the mark in commerce under Section
1(b) of the Trademark Act, 15 U.S.C. § 1051(b), and Applicant’s claim of first use anywhere
and use in commerce at least as early as June 1, 2011 under Section 1(a) of the Trademark
Serial No. 86154703

The Trademark Examining Attorney refused registration of Applicant’s mark

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

Applicant failed to submit a specimen showing proper use of the mark in commerce.

After the Examining Attorney made the refusal final, Applicant appealed to this

Board. We affirm the refusal to register.

I. Background

Before we discuss the merits of the appeal, we review the prosecution history and

Applicant’s three specimens.

A. Initial Examination; Original Specimen Submitted on December 30,
2013

Applicant submitted a specimen identified as a “copy of brochure” when it filed

the application on December 30, 2013. The Examining Attorney rejected the specimen

because it was an advertising brochure, and explained that “[a]dvertising materials

generally are not acceptable as specimens to show use in commerce for goods. See In

re MediaShare Corp., 43 USPQ2d 1304, 1307 (TTAB 1997); In re Shiapparelli Searle,

26 USPQ2d 1520, 1522 (TTAB 1993); TMEP § 904, 904.07(a).”2 He advised Applicant

of the types of specimens that would be acceptable:

Examples of specimens for goods include tags, labels,
instruction manuals, containers, photographs that show
the mark on the actual goods or packaging, and displays

Act, 15 U.S.C. § 1051(a). The application ultimately was amended to seek registration solely
under Section 1(b) of the Trademark Act, and a Notice of Allowance issued on August 11,
2015. Applicant filed a Statement of Use on August 11, 2016, claiming first use anywhere
and use in commerce since at least as early as August 1, 2016.
2March 31, 2014 Office Action, TSDR p. 5. All references to the Trademark Status &
Document Retrieval database (“TSDR”) are to the prosecution history in .pdf format.

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Serial No. 86154703

associated with the actual goods at their point of sale.
Webpages may also be specimens for goods when they
include a picture or textual description of the goods
associated with the mark and the means to order the goods.
(Internal citations omitted.)3

The Examining Attorney issued other requirements, including one to amend the

filing basis to either Section 1(a) or Section 1(b). In its September 30, 2014 Response

to Office Action, Applicant deleted the Section 1(b) filing basis, asserted, without

argument, that its original specimen was acceptable, and complied with the other

requirements. Applicant also stated that it would file a supplemental response with

a substitute specimen, but it did not do so. The Examining Attorney issued an Office

Action on November 2, 2014 making final the specimen refusal under Sections 1 and

45 of the Trademark Act because it is advertising material. He explained that the

brochure is not acceptable because it “does not contain any images showing the mark

actually placed on the goods, on packaging for the goods, or in an acceptable display

associated with the goods[.]”4 Applicant filed a Request for Reconsideration on May

4, 2015 in which it amended the filing basis to Section 1(b), making moot the specimen

refusal, and the application was published in the Trademark Official Gazette on June

16, 2015.

B. Statement of Use; August 11, 2016 Specimen

Applicant filed a Statement of Use on August 11, 2016 with a five-page specimen

that Applicant describes as a “Catalog for the modular buildings.” The identical first

3 Id.
4 November 2, 2014 Final Office Action, TSDR p. 2.

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Serial No. 86154703

and last pages consist of right and left panels, which appear to be the front and back

covers of the catalog. The right panel bears the title “Veritas Rapid Oncology Center.”

The first and last pages include the VROC mark, images of the applied-for goods and

information about Applicant’s experience, and Applicant’s corporate contact

information at the bottom. The other pages display other images of the VROC mark,

the applied-for goods, and information about the goods.

In a September 7, 2016 Office Action, the Examining Attorney rejected the

specimen under Sections 1 and 45 of the Trademark Act because the specimen is mere

advertising. Citing TMEP § 904.03(h), the Examining Attorney explained that

although the catalog shows the mark and images or descriptions of the goods, it does

not include a means for ordering the goods (e.g., an order form, or a phone number,

mailing address or email address to place orders) and therefore does not function as

a display used in association with the goods. He explained further that

the inclusion of a phone number, Internet address, and/or
mailing address merely as part of corporate contact
information on an advertisement describing the products 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. See In re
MediaShare Corp., 43 USPQ2d 1304, 1306 (TTAB 1997)
(finding applicant’s fact sheet brochure, which included an
address and phone number but omitted any information as
to product price and how to order applicant’s software, was
merely advertising material).5

5 September 7, 2016 Office Action, TSDR p. 3.

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Serial No. 86154703

C. Statement of Use; March 7, 2017 Substitute Specimen

Applicant traversed the refusal by submitting, on March 7, 2017, a 12-page

substitute specimen that Applicant describes as “point of sale displays.” The cover

page of this specimen bears the title “Choosing Your Deliverable Radiotherapy

Oncology Suite.” Most of the pages in the March 7, 2017 Substitute Specimen show

Applicant’s mark VROC in proximity to images and diagrams of, and textual

information about, Applicant’s identified goods, as well as corporate contact

information at the top or bottom of the pages. The last page provides a “Typical

Veritas VROC Production and Installation Timeline”:

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Serial No. 86154703

The Examining Attorney issued a Final Office Action on April 12, 2017 in which

he rejected the March 7, 2017 Substitute Specimen because it is mere advertising
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Serial No. 86154703

material, unacceptable as a print display associated with the goods. The Examining

Attorney provided guidance on what constitutes an acceptable print display

specimen:

Acceptable print display specimens are essentially point-
of-sale materials such as banners, shelf-talkers (a printed
card or sign affixed to a store shelf to call a buyer’s
attention to a particular product displayed on a shelf), and
window displays, which are designed to catch the attention
of purchasers and prospective purchasers as an
inducement to make a sale. Brochures and other
advertising material may be acceptable specimens as print
displays only if sufficient evidence, such as a photograph of
a trade show booth, is provided showing how such
specimens are used in an actual display featuring the goods
and associated advertising material together. Otherwise,
such materials are generally not acceptable as specimens
for showing use in commerce for goods, as in the present
case. (Internal citations omitted.)6

He also explained that “applicant submitted brochures and/or product

specification sheets identified as point-of-sale displays but has not provided any

evidence/documentation of such use.”7

II. Applicable Law

Section 1(d)(1) of the Trademark Act, 15 U.S.C. § 1051(d)(1), requires an applicant

to file a “specimen” or facsimile “of the mark as used in commerce.” See also

Trademark Rule 2.56(a), 37 C.F.R. § 2.56(a) (an applicant filing an intent-to-use

application must file “one specimen … showing the mark as used in commerce on or

6 April 12, 2017 Final Office Action, TSDR p. 2.
7 Id.

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Serial No. 86154703

in connection with the goods or services.”). Under Section 45 of the Trademark Act, a

mark is used in commerce 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, ….

Each of the three specimens discussed above consists of several pages, and each

includes the VROC mark, images of the applied-for goods, information about the

goods and Applicant’s experience, and Applicant’s corporate contact information at

the top or bottom of some of the pages. Also, the March 7, 2017 Substitute Specimen

contains additional technical information, mechanical/architectural drawings and a

timeline for typical production and installation of Applicant’s modular buildings.

None of the specimens show use of the mark VROC on the goods or on their

containers, and Applicant does not argue, nor do we find, that the nature of the goods

makes it impracticable to place the mark on the goods. The issue, therefore, is

whether any of the specimens constitute a display associated with the goods or any

other acceptable use of the mark in connection with the recited goods. We focus, as

did Applicant, on the March 7, 2017 Substitute Specimen, although our discussion

below applies equally to Applicant’s other proffered specimens.8

8Applicant attached to its brief copies of the August 11, 2016 Specimen and the March 7,
2017 Substitute Specimen. This was unnecessary as they are already part of the record. See
TBMP § 1203.02(e) (2018). Also, although Applicant, in its brief, mistakenly referred to the
August 11, 2016 Specimen as the “Second Specimen” and the March 7, 2017 Substitute
Specimen as the “First Specimen,” Applicant’s arguments in its brief are limited to the
acceptability of the March 7, 2017 Substitute Specimen.

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Serial No. 86154703

The Court of Appeals for the Federal Circuit instructs that the Trademark Act

“specifies no particular requirements to demonstrate source or origin; for displays,

the mark must simply be ‘associated’ with the goods.” In re Sones, 590 F.3d 1282, 93

USPQ2d 1118, 1122 (Fed. Cir. 2009) (citing In re Marriott, 459 F.2d 525, 173 USPQ

799 (CCPA 1972)). However, in the context of reviewing a Board determination that

a webpage specimen did not qualify as a display associated with the goods, the court

also stated that a relevant consideration was whether the webpage specimen had a

“point of sale nature.” Sones, 93 USPQ2d at 1124 (citing Lands’ End Inc. v. Manbeck,

797 F. Supp. 511, 24 USPQ2d 1314, 1316 (E.D. Va. 1992)). The determination of

whether a proffered catalog specimen is merely advertising or serves the function of

a display associated with the goods is a question of fact. In re Shipley Co., 230

USPQ2d 691, 694 (TTAB 1986). A display used in association with the goods is

essentially a point-of-sale display designed to catch the attention of purchasers as an

inducement to consummate a sale. Id. at 694 (“A crucial factor in the analysis is if the

use of an alleged mark is at a point of sale location.”). “Factually, we need to ask

whether the purported point-of-sale display provides the potential purchaser with the

information normally associated with ordering products of that kind.” In re Anpath

Grp. Inc., 95 USPQ2d 1377, 1381 (TTAB 2010).

Applicant asserts in its brief that its identified modular radiation therapy rooms

are specialized goods that require multiple steps and technical assistance from

Applicant’s sales staff to place a customized order.9 Applicant points to the initial

9 10 TTABVUE 6-7.

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portion of the timeline from the March 7, 2017 Substitute Specimen, reproduced

above, as evidence that

the sale and design process for a VROC modular room is
lengthy and complicated. The customer and Applicant
must consult regarding project prospectus, and a physics
evaluation and shielding estimate before a quote can even
be prepared. After that further design services and
consultation ae [sic] required. Applicant submits that its
goods require careful calculations and technical knowledge
in order to order the goods.10

The assertions as to how Applicant sells its products, made by Applicant’s counsel,

are without evidentiary support. As the Court of Appeals for the Federal Circuit

recently reiterated, “Attorney argument is no substitute for evidence.” Zheng Cai,

d/b/a Tai Chi Green Tea Inc. v. Diamond Hong, Inc., ___ F.3d ___, 127 USPQ2d 1797,

1799 (Fed. Cir. 2018) (quoting Enzo Biochem, Inc. v. Gen-Probe Inc., 424 F.3d 1276,

1284 (Fed. Cir. 2005)). Moreover, the record is silent as to the customary and usual

ways companies like Applicant provide point-of-sale information to their customers.

The facts in this appeal closely resemble In re U.S. Tsubaki, Inc., 109 USPQ2d

2002 (TTAB 2014), where that applicant’s counsel explained how applicant and its

competitors conducted business, but provided no foundational information regarding

counsel’s investigation or understanding of applicant’s business that would put him

in a position to make statements about the marketing of the products at issue, which

was essential to analyzing the registrability of the mark. Id. at 2006 (citing numerous

cases including In re DeBaun, 687 F.2d 459, 214 USPQ 933, 934 n.4 (CCPA 1982)

10 10 TTABVUE 7.

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Serial No. 86154703

(“we need not evaluate the weight to be given to the attorney’s declaration with

respect to statements more appropriately made by appellant”)).

Applicant cites In re Valenite Inc., 84 USPQ2d 1346, 1349-50 (TTAB 2007) and

TMEP § 904.03(i)(c)(2) as support for the proposition that “[i]n such cases, a

telephone number can suffice to show the requisite ability to order.”11 In Valenite,

however, 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. There is nothing similar in this record. In

fact, in Tsubaki, the Board explained the need for the type of evidentiary support that

is lacking here by citing, with approval, the evidence in the Valenite case:

If applicant wished to show that orders for its industrial
chain cannot readily be ordered by reference to particular
goods and pricing information, and are regularly ordered
by telephone following customer review of technical
information in its specimens and consultation with
employees of applicant, so that applicant’s specimens are
viewed as point of sale displays, applicant was obligated to
introduce such evidence to rebut the prima facie case made
by the Trademark Examining Attorney. In cases such as
this, where it is asserted that the nature of the goods and
the consumers therefor require more involved means for
ordering products, it is critical that the examining attorney
be provided with detailed information about the means for
ordering goods, and that such information be corroborated
by sufficient evidentiary support, for example, a
declaration from the applicant about its process for taking
and filling orders, as in the Valenite case. At best,
applicant’s catalog pages provides applicant’s telephone
number and domain name as information about applicant;
the telephone number and domain name do not constitute

11 10 TTABVUE 6-7.

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Serial No. 86154703

a means to order applicant’s chains by telephone or the
Internet.

Tsubaki, 109 USPQ2d at 2006-07.

In short, none of the specimens contain adequate information for making a

decision to purchase the goods and placing an order. We therefore find that

Applicant’s specimens are advertisements that do not show the mark VROC used in

commerce as a trademark for the identified modular buildings in Class 19. The mere

listing of telephone numbers and emails do not transform what are otherwise

ordinary advertisements into a point-of-sale display or a “display used in association

with the goods” and, thus, into valid specimens showing technical trademark use.12

Cf. In re Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006) (“[T]he company name,

address and phone number that appears at the end of the web page indicates only

location information about applicant; it does not constitute a means to order goods

through the mail or by telephone, in the way that a catalog sales form provides a

means for one to fill out a sales form or call in a purchase by phone.”).

Decision: The refusal to register Applicant’s mark VROC for failure to submit an

acceptable specimen of use is affirmed.

12 Although Applicant presented no argument about the original December 30, 2013
Specimen or the August 11, 2016 Specimen, the reasoning in this decision applies equally to
them.

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