Auto Value Associates, Inc.

Trademark Trial and Appeal Board

Aug 30, 2000

No. 75338335 (T.T.A.B. Aug. 30, 2000)

Paper No. 17
Bottorff
8/30/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Auto Value Associates, Inc.1
________
Serial No. 75/338,335
_______
Harry B. Ray of Grant, Konvalinka & Harrison, P.C. for Auto
Value Associates, Inc.
Barbara Gaynor, Trademark Examining Attorney, Law Office
104 (Sidney I. Moskowitz, Managing Attorney)
_______
Before Cissel, Bucher and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant has filed an application seeking
registration on the Principal Register of the mark PARTS
MASTER ULTRA, in typed form, for goods identified in the
application, as amended, as “automobile brake parts,

1 In its reply brief, applicant asserts that its name was changed
on January 1, 2000 to Aftermarket Auto Parts Alliance, Inc.
However, it does not appear from the Office’s automated
assignment records that any name change, assignment or other
transfer document has been recorded. Accordingly, the Board
shall continue to refer to applicant by the name set forth in the
original application papers, i.e., Auto Value Associates, Inc.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/338,335
2
namely, disc brake pads.”2 The specimens submitted with the
original application papers consisted of packaging for the
goods, upon which the following design is depicted:

2 Serial No. 75/338,335, filed August 8, 1997. Applicant has
disclaimed PARTS apart from the mark as shown. The application
is based on use in commerce under Trademark Act Section 1(a), 15
U.S.C. §1051(a), and June 30, 1995 is alleged as the date of
first use of the mark anywhere and first use of the mark in
commerce. In the application, applicant has claimed ownership of
five registrations of the mark PARTS MASTER (PARTS disclaimed),
in typed form, for various automotive parts and accessories.
Applicant also claimed ownership of Registration No. 2,044,097,
issued March 11, 1997, of the typed mark PARTS MASTER ULTRA
(PARTS disclaimed), the same mark involved in the present
application, for “spark plug wire and cable.” Additionally, in
its request for reconsideration in this case, applicant asserted
ownership of Registration No. 2,201,241, issued November 3, 1998,
of the same PARTS MASTER ULTRA (PARTS disclaimed) mark for
“automobile batteries.” Finally, the Board notes that
Registration No. 2,308,596 was issued to applicant on January 18,
2000. The mark depicted in that registration is the composite
design and word mark appearing on the original specimens of
record in this case, as depicted in the main text of this opinion
at page 2. Color is not claimed as a feature of this registered
mark, and applicant has disclaimed PARTS and THE ULTIMATE
REPLACEMENT PARTS apart from the mark as shown. The goods
identified in the registration are “spark plug wire and cable.”
Ser. No. 75/338,335
3
On the specimens, the pennant or banner background element
of the design is yellow with red borders, and the three
parallel rectangles are blue with white borders. The words
PARTS MASTER and THE ULTIMATE REPLACEMENT PARTS are in
white on the blue background of the rectangles, and the
triangle to the left of the word PARTS is in yellow. The
word ULTRA is in red.
The Trademark Examining Attorney refused registration
under Trademark Rule 2.51(a)(1), 37 C.F.R. §2.51(a)(1), on
the ground that the drawing of the mark was not a
substantially exact representation of the mark used on the
goods, as evidenced by the specimens. In response,
applicant argued that its original specimens of use are
sufficient under Trademark Rule 2.51(a)(1), but also
eventually submitted, in the alternative, two different
brochures as substitute specimens pursuant to Trademark
Rule 2.59(a). The Trademark Examining Attorney, however,
maintained her rejection of the original specimens, and
also rejected each of applicant’s proffered substitute
specimens on the ground that they are merely advertising
brochures which do not suffice, under Trademark Rule 2.56,
Ser. No. 75/338,335
4
as acceptable specimens of trademark use of the mark on the
identified goods.3
When the refusal to register was made final, applicant
filed this appeal. Applicant and the Trademark Examining
Attorney have filed main briefs, and applicant has filed a
reply brief. No oral hearing was requested. We affirm the
refusal to register.
We turn first to the Trademark Examining Attorney’s
rejection of the original specimens. In support thereof,
she contends that those specimens do not evidence use of
PARTS MASTER ULTRA as a single, unitary mark as depicted on
applicant’s drawing. Rather, she argues, these specimens
show use of two separate marks, i.e., PARTS MASTER, and
ULTRA. She argues that the designations PARTS MASTER and
ULTRA, as they appear on the specimens, would be not be
perceived as a single, unitary mark because they are
physically separated by space and by the wording THE
ULTIMATE REPLACEMENT PARTS, and because they appear on the

3 Initially, the Trademark Examining Attorney also rejected the
substitute specimens because they were not supported by a
declaration establishing that they were in use in commerce as of
the application filing date. Applicant filed such a declaration
along with its main appeal brief, and the Board remanded the
application to the Trademark Examining Attorney for consideration
thereof. The Trademark Examining Attorney then accepted the
declaration, but maintained her rejection of the substitute
specimens on the ground that they are merely advertising
materials.
Ser. No. 75/338,335
5
specimens in two different type styles, in two different
colors, and in two different sizes. Citing In re Jordan
Industries, Inc., 210 USPQ 158 (TTAB 1980) and In re Audi
NSU Auto Union AG, 197 USPQ 649 (TTAB 1977), the Trademark
Examining Attorney contends that applicant is impermissibly
attempting to register two different marks in a single
application, i.e., a house mark, PARTS MASTER, and a
product mark, ULTRA.
Applicant, by contrast, argues that its original
specimens evidence use of PARTS MASTER ULTRA as a unitary
composite mark. Applicant notes that both PARTS MASTER and
ULTRA appear within the borders of the overall banner
design, and that they are much larger and more prominent
than the other wording appearing therein, i.e., THE
ULTIMATE REPLACEMENT PARTS. Applicant contends that
because PARTS MASTER and ULTRA are so much larger than that
other wording, and because they are symmetrically placed
above and below that other wording, the three words would
be perceived together as the components of a single,
unitary mark, i.e., PARTS MASTER ULTRA. Finally, applicant
argues that it never uses the term ULTRA alone, but rather
always in conjunction with PARTS MASTER, and accordingly
that it is seeking to register one mark, not two.
Ser. No. 75/338,335
6
We have carefully considered applicant’s arguments,
but we agree with the Trademark Examining Attorney’s
contention that PARTS MASTER and ULTRA, as they appear on
these specimens, do not comprise a single, unitary mark,
but rather would be perceived as two separate marks.
First, we note that when determining whether the composite
sought to be registered projects a single, unitary
commercial impression, “[e]verything depends on the
specimens.” In re Audi NSU Auto Union AG, supra, 197 USPQ
at 650. Therefore, we accord no weight to applicant’s
assertion that it never uses ULTRA alone, but always in
conjunction with PARTS MASTER.4 The issue is whether the
specimens of record establish use of PARTS MASTER ULTRA as
a unitary mark.
This is not a case in which the two components at
issue appear immediately and contiguously above and below
each other within the same background field. Compare,
e.g., New England Fish Company v. The Hervin Company, 179
USPQ 743 (TTAB 1973)(specimens depicted BLUE MOUNTAIN (in
one typestyle) positioned directly above KITTY O’S (in a
very different typestyle), both designations within a blue

4 Additionally, we note that even if applicant might never use
ULTRA alone as a mark, it is clear from the record that it uses
PARTS MASTER alone as a house mark. See, e.g., applicant’s
“Exhibit B” substitute specimen, infra, and applicant’s various
registrations of the mark PARTS MASTER, supra at footnote 2.
Ser. No. 75/338,335
7
rectangular design; mark held to be unitary). Rather, in
this case, the word ULTRA is separated from the words PARTS
MASTER by the intervening words THE ULTIMATE REPLACEMENT
PARTS. Moreover, although ULTRA and PARTS MASTER are both
within the borders of the overall yellow banner design
element, ULTRA (in red lettering) is conspicuously excluded
from the large blue rectangle (made up of three parallel
blue rectangles) within which the words PARTS MASTER and
THE ULTIMATE REPLACEMENT PARTS appear in white lettering.
Indeed, if any two of the components of the design
create a single, unitary commercial impression, it is not
the components PARTS MASTER and ULTRA, but rather the
components PARTS MASTER and THE ULTIMATE REPLACEMENT PARTS,
both of which appear in white lettering within the larger
composite blue rectangle. The manner in which THE ULTIMATE
REPLACEMENT PARTS is displayed in the design in conjunction
with PARTS MASTER makes it unlikely that purchasers would
combine PARTS MASTER with ULTRA into a single, unitary
mark. See In re Jordan Industries, Inc., supra (as
presented on specimens, JIF-LOK more likely to be perceived
as part of the phrase JIF-LOK MIRACLE FASTENER than as part
of a mark sought to be registered, i.e., JORDAN JIF-LOK;
held, JORDAN JIF-LOK two marks, not a unitary mark).
Ser. No. 75/338,335
8
Normally, the mere fact that PARTS MASTER and ULTRA
appear on the specimens in different type styles, in
different colors, and in different sizes would not
necessarily preclude a finding that the two designations
together comprise a single, unitary mark. See New England
Fish Company, supra. In this case, however, those basic
distinctions between PARTS MASTER and ULTRA, when combined
with the presence of the intervening words THE ULTIMATE
REPLACEMENT PARTS and the fact that ULTRA, alone among all
of the words appearing in the mark, is not included within
the blue rectangle, lead us to conclude that ULTRA and
PARTS MASTER would be perceived as two separate marks,
rather than as components of a single unitary mark.
In addition to its arguments based on the specimens
themselves, applicant also argues, essentially, that the
Trademark Examining Attorney should be estopped to reject
applicant’s original specimens in this case. More
specifically, applicant contends that it owns two prior
registrations of the typed form mark at issue here, PARTS
MASTER ULTRA, for goods which are closely related to the
goods identified in the present application;5 that the

5 See supra at footnote 2. The first such registration is
Registration No. 2,044,097, issued March 11, 1997, of the typed
form mark PARTS MASTER ULTRA (PARTS disclaimed) for “spark plug
wire and cable.” Applicant asserts in its briefs that the goods
identified in the present application, “automobile brake parts,
Ser. No. 75/338,335
9
specimens submitted by applicant with each of the
applications which led to those registrations were
essentially identical to the original specimens applicant
submitted with the present application, insofar as the
manner in which the mark was displayed; that the Office,
acting through two different Trademark Examining Attorneys,
accepted those specimens in the other two applications as
acceptable evidence of applicant’s use of the mark PARTS
MASTER ULTRA; that, notwithstanding the general rule that a
Trademark Examining Attorney is not bound by the decisions
of prior Trademark Examining Attorneys in other
applications, the Trademark Examining Attorney’s rejection
of the essentially identical original specimens in the
present case constitutes an impermissible collateral attack
on the validity of applicant’s prior registrations which,
pursuant to (or by extension of) Trademark Rule
2.106(b)(2)(ii), should only be allowed to be raised by way
of a petition to cancel those prior registrations; and
that, under the doctrine set forth in Park ‘N Fly, Inc. v.
Dollar Park and Fly, Inc., 105 S.Ct. 658, 224 USPQ 327

namely, disc brake pads,” originally were included in the
application which matured into this registration but were deleted
by amendment during prosecution. The second registration cited
by applicant is Registration No. 2,201,241, issued November 3,
1998, of the typed form mark PARTS MASTER ULTRA (PARTS
disclaimed) for “automobile batteries.”
Ser. No. 75/338,335
10
(1985) and In re The American Sail Training Association,
230 USPQ 879 (TTAB 1986), applicant’s ownership of those
registrations, and the Office’s acceptance of applicant’s
specimens in those cases, precludes the Office from
rejecting the essentially identical specimens submitted by
applicant in this case.
Applicant’s arguments are without legal basis or
merit. It is well-settled that, in an ex parte proceeding
involving a particular application, neither the Trademark
Examining Attorney nor the Board is bound by the decisions
of other Trademark Examining Attorneys made in connection
with other applications. This is so even where, as in the
present case, the applicant, the facts, and the legal
issues involved in the application on appeal are identical
to those presented in the prior application(s). For
example, the case of In re Medical Disposables Co., 25
USPQ2d 1802 (TTAB 1992) involved an application to register
MEDICAL DISPOSABLES and design, in which applicant sought
to enter separate disclaimers of MEDICAL and DISPOSABLES.
The Board affirmed the Trademark Examining Attorney’s
requirement that a single disclaimer of MEDICAL DISPOSABLES
be entered, finding that the phrase was unitary and that
the words accordingly could not be disclaimed separately.
The applicant in that case argued that because it owned a
Ser. No. 75/338,335
11
prior Principal Register registration of the word mark
MEDICAL DISPOSABLES in which separate disclaimers had been
permitted by a different Trademark Examining Attorney, it
was entitled to separately disclaim those words in its
later application. The Board rejected that argument.
Similarly in the present case, the acceptance by the prior
Trademark Examining Attorneys of applicant’s specimens as
evidence of applicant’s use of the typed mark PARTS MASTER
ULTRA is not binding on the Board in this case, and does
not excuse or preclude the Board from reaching its own
decision on the issue presented.
Applicant’s reliance on Trademark Rule 2.106(b)(2)(ii)
is without legal basis. That rule, and its counterpart in
cancellation proceedings, Trademark Rule 2.114(b)(2)(ii),
are essentially compulsory counterclaim rules which apply
only to inter partes litigation proceedings at the Board
(e.g., opposition and cancellation proceedings).6 On their
faces, those rules are inapplicable to ex parte proceedings
such as this one. Moreover, and contrary to applicant’s

6 Trademark Rule 2.106(b)(2)(ii) provides: “An attack on the
validity of a registration pleaded by an opposer will not be
heard unless a counterclaim or separate petition is filed to seek
the cancellation of such registration.” Likewise, Trademark Rule
2.114(b)(2)(ii) provides: “An attack on the validity of a
registration pleaded by a petitioner for cancellation will not be
heard unless a counterclaim or separate petition is filed to seek
the cancellation of such registration.”
Ser. No. 75/338,335
12
contention, those rules cannot be extended to the ex parte
examination and appeal process, inasmuch as neither the
statute nor any other of the Trademark Rules provides for
any mechanism by which the Trademark Examining Attorney
might petition to cancel an applicant’s prior registration.
Applicant’s reliance on Park ‘N Fly and In re American
Sail Training Association is also fundamentally misplaced,
because applicant’s prior registrations are not
incontestable, and because the goods identified in the
present application are not the same as or included among
the goods identified in applicant’s prior registrations of
the mark in question. Contrary to applicant’s wholly
unsupported contentions, these distinguishing factors are
not inconsequential or immaterial. Rather, the Board and
its primary reviewing court have repeatedly held that two
essential prerequisites to the applicability of the
doctrine established in Park ‘N Fly and In re American Sail
Training Association are that the goods or services
identified in the later application must be identical to or
encompassed within the goods or services identified in the
prior registration, and that the prior registration must be
incontestable. See, e.g., In re Merrill Lynch, Pierce,
Fenner, and Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed.
Cir. 1987); In re Loew’s Theatres, Inc., 769 F.2d 764, 226
Ser. No. 75/338,335
13
USPQ 865 (Fed. Cir. 1985); In re Sunmarks Inc., 32 USPQ2d
1470 (TTAB 1994); and In re American Sail Training
Association, supra. Neither of those prerequisites has
been satisfied in this case.
In summary, it is of no avail to applicant in this
case that, in the course of issuing two other registrations
to applicant of the typed mark PARTS MASTER ULTRA for goods
which are not the same as goods identified in the present
application, the Office apparently accepted specimens which
were essentially identical to the original specimens
rejected by the Trademark Examining Attorney in the present
application. The decisions and actions of the prior
Trademark Examining Attorneys in issuing applicant’s prior
registrations have no bearing on our decision in this case
as to whether the present Trademark Examining Attorney’s
rejection of applicant’s specimens should be affirmed or
reversed. See In re Sunmarks Inc., supra, and In re
Medical Disposables Co., supra. For the reasons stated
earlier in this opinion, we find that applicant’s original
specimens are unacceptable and insufficient as evidence of
applicant’s use in commerce of the mark sought to be
registered, PARTS MASTER ULTRA.
We turn next to the issue of whether applicant’s
proffered substitute specimens are acceptable as specimens
Ser. No. 75/338,335
14
of use of the mark sought to be registered. The first
substitute specimen, submitted by applicant as “Exhibit A,”
is an 8½ x 11 brochure or flyer, reproduced below:7

7 The brochure is printed in color. Applicant apparently is
relying on the text toward the top which reads “FOR TOP
PERFORMANCE AND NOISE-FREE BRAKING, USE ONLY PARTS MASTER ULTRA
SEMI-METALLIC DISC BRAKE PADS.” Those words are printed in red
ink, with the exception of the words PARTS MASTER, which are
printed in blue. The yellow triangle design element to the left
of the word PARTS does not reproduce satisfactorily, but it is
the same design element that is visible to the left of the word
PARTS in the “banner” logo in the top left corner of the
brochure.
Ser. No. 75/338,335
15
Applicant has presented no actual evidence of how this
brochure is used in connection with the goods, but relies
instead merely on the assertions and arguments of its
counsel. In applicant’s request for reconsideration, with
which the brochure was originally submitted, applicant’s
counsel stated that “[o]n occasion, these specimens are
shipped with the brake part products by the manufacturer to
the distributor and then reshipped by the distributor to
the auto parts stores.” (Request for reconsideration, at
page 1.) In applicant’s appeal brief, applicant’s counsel
states that these brochures “are shipped with the brake
part products by the manufacturer to the distributor and
then reshipped by the distributor to the auto parts stores.
These materials are packaged with the goods and would be
visible to a potential customer examining the goods.”
(Appeal Brief at 3.) In applicant’s reply brief,
applicant’s counsel states: “[a]s shown by the record,
these specimens were directly associated with the goods
offered for sale. They were included in the packaging.”
Applicant also argues in its reply brief that the
brochure satisfies the three criteria set out in TMEP
section 905.06, as established in the case of Lands’ End,
Inc. v. Manbeck, 797 F.Supp. 51, 24 USPQ2d 1314 (E.D.Va.
1992), by which a catalog or other advertising might
Ser. No. 75/338,335
16
constitute a display associated with the goods. That is,
applicant argues, the specimen includes a prominent
depiction of the mark in close proximity to a photograph of
the goods, and it includes
sufficient information to order the goods,
because it shows the name of the
manufacturer, Morse Automotive Corporation.
Morse Automotive Corporation manufactures the
goods in accordance with the product
specifications established by the Applicant.
The Applicant strictly controls the nature
and quality of the goods identified by the
mark. Any warehouse distributor or
automotive parts store receiving this display
would know how to order the goods, merely by
seeing the name of the manufacturer as they
are well acquainted with each vendor the
Applicant permits to manufacture goods
identified by its marks.
(Reply brief at 3.)
Finally, applicant argues that the brochure is
acceptable as a specimen because it is a package insert
which is part of the goods themselves, within the meaning
of TMEP section 905.07. “In this case, the specimens
contained important information regarding various features
of the goods and should not be considered as merely
advertising.” (Reply brief at 4.)
Taking applicant’s last argument first, we find that
the “Exhibit A” brochure cannot be deemed to be “part of
Ser. No. 75/338,335
17
the goods,” and that the appearance of the mark thereon8
accordingly does not constitute use of the mark “on the
goods.” The “inserts as specimens” referred to in the
heading of TMEP section 905.07 are of the type involved in
In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984), in which
the goods (powered hang-glider sold in kit form), as
packaged by the applicant, included a printed manual which
contained the instructions for assembling the kit. The
Board held that the manual was an integral part of the
goods themselves, and that use of the mark on the manual
therefore constituted use of the mark on the goods
themselves. In the present case, by contrast, applicant’s
brochure is not a component of the goods, nor is it needed
in order to assemble, install or operate the goods.
Rather, the brochure merely touts the advantageous features
of the goods, and serves no identifiable purpose except
that of advertising and promoting the goods. See In re
Drilco Industrial Inc., 15 USPQ2d 1671 (TTAB 1990).
Next, we find no basis in the record for concluding
that the “Exhibit A” brochure is a “display” associated
with the goods. As the Board explained in In re Bright of
America, Inc., 205 USPQ 63 (TTAB 1979):

8 We are assuming, arguendo, that the brochure in fact evidences
use of the unitary mark PARTS MASTER ULTRA.
Ser. No. 75/338,335
18
A display associated with the goods within
the scope of Section 45, as interpreted by
the Court of Customs and Patent Appeals and
other tribunals, comprises essentially point-
of-sale material such as banners, shelf-
talkers, window displays, menus, or similar
devices which are designed to catch the
attention of purchasers and prospective
purchasers as an inducement to consummate a
sale and which prominently display the mark
in question and associate it or relate it to
the goods in such a way that an association
of the two is inevitable even though the
goods may not be placed in close proximity to
the display or, in fact, even though the
goods may not physically exist at the time a
purchaser views the display.
205 USPQ at 65. With respect to brochures of the type
involved in this case, the TMEP correctly states:
Folders and brochures describing goods and
their characteristics or serving as
advertising literature are not per se
“displays.” In re Schiapparelli Searle, 26
USPQ2d 1520 (TTAB 1993); In re Drilco
Industrial Inc., 15 USPQ2d 1671 (TTAB 1990).
In order to rely on such materials as
specimens, an applicant must submit evidence
of point-of-sale presentation. See In re
Ancha Electronics Inc., 1 USPQ2d 1318 (TTAB
1986); In re Columbia Chase Corp., 215 USPQ
478 (TTAB 1982).
TMEP section 905.06.
In the present case, there is no declaration or other
evidence in the record from which we might conclude that
the brochure is displayed at the point of sale. Compare,
Ser. No. 75/338,335
19
e.g., In re Ancha Electronics Inc., supra. Even the non-
evidentiary statements made by applicant’s counsel fail to
establish that the brochures are used as point-of-sale
display materials. He states that the brochures are
shipped with the goods by the manufacturer to the
distributor and then reshipped by the distributor to the
auto parts retailers. However, by the time the distributor
sees the brochure shipped with the goods, it presumably has
already purchased the goods. Likewise, the retailer will
already have purchased the goods from the distributor by
the time it sees the brochure.
Further, there is no evidence that the brochures are
displayed by the retailers to the ultimate consumers in
such a manner as to induce the consummation of a sale.
Counsel states that the brochures are “packaged with the
goods and would be visible to a potential customer
examining the goods,” and that they “were directly
associated with the goods offered for sale. They were
included in the packaging.” These assertions, even if they
had been properly attested to by persons with first-hand
knowledge, are far too indefinite to serve as a basis for
finding that the brochures are displayed to the ultimate
consumers at the point of sale. “Material which is no more
than advertising does not necessarily cease to be
Ser. No. 75/338,335
20
advertising because it is placed inside a package.” TMEP
section 905.07. Although an advertising brochure such as
applicant’s, inserted into the packaging for the goods,
might have been acceptable evidence of use under the Act of
1905, it is not acceptable under the Lanham Act of 1946.
See In re Chicago Rawhide Manufacturing Co., 173 USPQ 8, 10
(CCPA 1972)(distinguishing a decision under the 1905 Act in
which a leaflet inserted within a carton was deemed to be a
proper trademark use).
Finally, we reject applicant’s contention that its
brochure satisfies the three criteria for categorization as
a “catalog or other display” set out by TMEP section 905.06
and in Lands’ End, Inc. v. Manbeck, supra. What the Board
said in In re Schiapparelli Searle, supra, a case much like
the present one involving brochures which were asserted by
the applicant to be “displays” within the meaning of Lands’
End v. Manbeck, applies equally to the present case:
In that case [Lands’ End v. Manbeck], the
court held that a mail-order retailer’s use
of a mark in a catalog together with a
picture of the goods, words describing the
goods, specifications and options from which
a customer might choose, as well as mail-
order forms and telephone numbers for phone
orders were sufficient use to satisfy the
trademark statute. In Lands’ End, goods were
offered and sales were completed directly
from the catalog. No sales are made from
applicant’s brochures, which bear little
Ser. No. 75/338,335
21
resemblance to the mail-order catalog with
order forms in Lands’ End.
In re Schiapparelli Searle, supra, 26 USPQ2d at 1522.
Applicant’s argument that its brochure qualifies as a
Lands’ End-type display because the name of the
manufacturer of the goods is included thereon is not
persuasive. By that reasoning, just about any advertising
flyer which included the name of the advertiser or
manufacturer would qualify as a display and hence as an
acceptable specimen of trademark use. That clearly is not
the law under Lands’ End.
In summary, we have carefully considered applicant’s
arguments in support of its contention that its “Exhibit A”
substitute specimen is an acceptable specimen of trademark
use, but we are not persuaded. The brochure is merely an
advertisement, and as such it is not evidence of use of the
trademark on the goods identified in the application.
We turn finally to applicant’s “Exhibit B” substitute
specimen, another 8½ x 11 color brochure which is
reproduced below:
Ser. No. 75/338,335
22
This brochure is unacceptable as a “display” specimen
for all of the same reasons discussed above with respect to
the “Exhibit A” brochure. It is merely an advertising
brochure. Applicant, however, appears to be contending
that it is not the brochure, per se, that is being
submitted as a specimen, i.e., as a display associated with
the goods. Rather, the specimen is said to be the
photograph, in the center panel of the brochure, of
applicant’s product container which allegedly bears the
mark.
Ser. No. 75/338,335
23
We note that the product container depicted in the
photograph is the same product container which applicant
submitted as its original specimen, upon which the
composite design reproduced supra at page 2 appears. For
the reasons discussed at length earlier in this opinion,
the Board has already found that this product container,
bearing that design, is unacceptable as evidence of
trademark use of the typed mark PARTS MASTER ULTRA.
Applicant argues that the photograph on the brochure is so
small that one cannot readily read the small-print words
THE ULTIMATE REPLACEMENT PARTS which appear between PARTS
MASTER and ULTRA, such that the only words of the composite
which are legible and readily ascertainable in the
photograph are the larger-type words PARTS MASTER ULTRA.
We are not persuaded. Having found that the actual product
container is not acceptable as a specimen, we also find
that a photograph of that same container, even if it is
small, illegible or otherwise poorly reproduced, is not an
acceptable specimen either.
To summarize, we find that neither applicant’s
original specimens nor either of its two substitute
specimens is acceptable evidence of trademark use of the
Ser. No. 75/338,335
24
mark sought to be registered, i.e., PARTS MASTER ULTRA.
Decision: The refusal to register is affirmed.
R. F. Cissel
D. E. Bucher
C. M. Bottorff
Administrative Trademark Judges
Trademark Trial and Appeal Board