Brunswick Corporation

Trademark Trial and Appeal Board

Aug 28, 2008

No. 78875524 (T.T.A.B. Aug. 28, 2008)

Hearing: Mailed:
25 June 2008 28 August 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Brunswick Corporation
________

Serial No. 78875524
_______

Catherine Ferguson of Malin, Haley & DiMaggio, P.A. for
Brunswick Corporation.

John M. Gartner, Trademark Examining Attorney, Law Office
102 (Karen M. Strzyz, Managing Attorney).
_______

Before Seeherman, Drost, and Taylor, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On May 3, 2006, applicant Brunswick Corporation
applied to register the mark AQUAPALOOZA, in standard
character form, on the Principal Register for goods
ultimately identified as “boats and structural parts
therefor” in Class 12. The application (Serial No.
78875524) alleges that applicant first used the mark
anywhere and in commerce on April 11, 2006.
The examining attorney has refused to register
applicant’s mark on the ground that the “specimens are not
acceptable because they do not show the mark used in
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 78875524

2
connection with any of the goods specified in the
application.” Brief at 1.1
After the examining attorney made the refusal final,
applicant filed two requests for reconsideration and this
appeal.
The examining attorney’s position is that “the fact
that all of the signs, posters and tags use the mark
AQUAPALOOZA solely to identify a particular boating show
makes it clear that the mark is not being used in
connection with the identified goods… They are solely
associated with the trade show and not with the boats
themselves.” Brief at unnumbered pp. 7-8. In response,
applicant argues that “[a]ll of the ancillary services
offered by Applicant including the various forms of
entertainment and the trade show displays of the
Applicant’s new models, all serve the purpose and function
of selling Applicant’s boats under Applicant’s arbitrary
trademark AQUAPALOOZA.” Reply Brief at 10.
At this point, we will summarize the evidence that
applicant has submitted to show trademark use of its mark.

1 The application originally included services that were
eventually classified in Class 35 as “dealership services in the
field of boats.” On March 22, 2007, the examining attorney
withdrew the refusal to register these services and subsequently
approved applicant’s request to divide these services from this
application. The divisional application issued as Registration
No. 3405594.
Ser. No. 78875524

3
We begin with the evidence that applicant submitted in its
second request for reconsideration inasmuch as this
evidence was submitted after the examining attorney had
allowed the Class 35 services so all the evidence was
presumably directed toward the Class 12 goods.
Exhibit C (Webpages from www.aquapalooza.com)
Between April 15 – May 31, Sea Ray Owners Can
Refer A Friend and Reap the Rewards!

Sea Ray
AQUAPALOOZA

The Largest On Water Summer Boating Party in History!

The Biggest Bash in the History of Boating
Registration begins May 1st!

Once again Sea Ray, the world’s leading boating
manufacturer of superior quality pleasure boats, has
revolutionized the world of boating, this time with an
all-summer event unlike any of its kind. In July of
2007, boaters from coast to coast will join together
for Sea Ray’s Aquapalooza.

The Aquapalooza festivities officially kick off in
July with the signature event in Virginia at Fairview
Beach on the Potomac River, hosted by Prince William
Marina. This party will be action-packed with live
entertainment by special guests, fireworks, giveaways
and much more.

Let’s Get Ready to Party! In 2007, organizers of
Aquapalooza hope the biggest boat bash ever spreads
even more successfully across twelve countries, 45
states and, this time around, involve more than 6,000
Sea Ray owners.

Exhibit A (Signs in a dealer showroom)
Sea Ray
AquaPalooza
2006
Ser. No. 78875524

4
Summer Sales Event

Sea Ray
Owners Club
AquaPalooza
2006
All Boaters Welcome To Join In For The Largest On
Water
SUMMER
BOATING PARTY
In History
July 22-23 & July 29-30, 2006

Exhibit D (advertisement apparently appearing in
magazines such as SEARAY LIVING, YACHTING, BOATING
LIFE, MOTOR BOATING, and BOAT DIGEST)

All Boaters Welcome to Join In
Sea Ray
Owners Club
AquaPalooza
The Largest On Water
Summer Boating Party
In History
July 22-23 & July 29-30, 2006
Presented by Sea Ray Boats
TO REGISTER FOR AQUAPALOOZA AND FOR MORE DETAILS
Visit www.searay.com or Call 1-800-243-8171

Applicant also submitted declarations from five of its
authorized dealers describing how they used the AQUAPALOOZA
advertising materials on “large banners and signage bearing
the trademark hanging over the boats and on walls; on
placards physically placed on the new boats themselves; and
on hang tags directly on the boats.” Second Request for
Reconsideration, Ex. 6, Phillips declaration ¶ 3.
Set out below is a picture of a showroom with signs
and displays with the AQUAPALOOZA mark. Response dated
Ser. No. 78875524

5
January 24, 2007. See also Second Request for
Reconsideration, Ex. A.

Finally, applicant has submitted the declaration of
applicant’s assistant secretary describing its marketing
efforts including the fact that the circulation of the
publications in which it advertised is approximately five
million copies.
A “trademark” is defined as “any word, name, symbol,
or device, or any combination thereof used by a person … to
identify and distinguish his or her goods, including a
unique product, from those manufactured or sold by others
and to indicate the source of goods, even if that source is
Ser. No. 78875524

6
unknown.” 15 U.S.C. §1127. The Trademark Act requires
that applications that are based on use must include:
“Such numbers of specimens or facsimiles of the mark as
used as may be required by the Director.” 15 U.S.C.
§ 1051(a)(1). The Director has specified that applicants
in this situation must “include one specimen showing the
mark as used on or in connection with the goods.” 37 CFR
§ 2.56(a). “A trademark specimen is a label, tag, or
container for the goods, or a display associated with the
goods.” 37 CFR § 2.56(b)(1).
An important function of specimens in a trademark
application is, manifestly, to enable the PTO to
verify the statements made in the application
regarding trademark use. In this regard, the manner
in which an applicant has employed the 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 named in the application.

In re Bose Corp., 546 F.2d 893, 192 USPQ 213, 216 (CCPA
1976) (emphasis in original, footnote omitted).
“To state the obvious, any specimen submitted by
applicant in this case must as a threshold matter display
the designation … either standing alone or in context to
show use thereof as a mark in commerce.” In re Roberts, 87
USPQ2d 1474, 1479 (TTAB 2008). Therefore, we must look at
applicant’s evidence to determine if the term AQUAPALOOZA
is used as a trademark for applicant’s boats and structural
Ser. No. 78875524

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parts. The examining attorney has already determined that
applicant’s evidence showed that it was using the term as a
service mark for dealership services in the field of boats.
However, the examining attorney contends that the specimens
do not show trademark use for applicant’s boats and
structural parts.
“The Trademark Act is not an act to register mere
words, but rather to register trademarks. Before there can
be registration, there must be a trademark, and unless
words have been so used they cannot qualify.” Bose Corp.,
192 USPQ at 215. “Thus, the mark must be used in such a
manner that it would be readily perceived as identifying
the specified goods and distinguishing a single source or
origin for the goods.” In re Aerospace Optics Inc., 78
USPQ2d 1861, 1862 (TTAB 2006). “The starting point for
this analysis is the specimen submitted to show use of the
mark. We must determine whether the specimen is mere
advertising or whether, in addition to advertising, the
specimen is also a display associated with the goods.” In
re Osterberg, 83 USPQ2d 1220, 1222 (TTAB 2007).
Applicant argues that it has submitted “various
examples of the Applicant’s use of their trademark
AQUAPALOOZA in association with its sale of boats,
including posters, postcards, magazine advertisements, boat
Ser. No. 78875524

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hang tags, t-shirts, website pages and other signage.”
Brief at 7.
The examining attorney responds by arguing:
The specimens show three posters, two smaller
advertisements that appear to be postcard
advertisements or tags, and copies of the covers of
five different boating magazines, none of which show
the mark. Again, the specimens all are in the form of
advertisements. Even assuming that the smaller
advertisements are tags, they advertise AQUAPALOOZA
2006, which is a “Summer Boating Party,” and therefore
cannot be said to be used in association with the
boats themselves… Again, the posters and signs do not
use the mark in association with the boats themselves
but solely as the name of a particular boating party
and trade show.

Brief at 5.

“To determine what the perception of a term is, we
must look to the specimens of record which show how the
term is used in the marketplace.” In re Walker Research,
Inc., 228 USPQ 691, 692 (TTAB 1986). To the extent that
applicant refers to some of its original and substitute
specimens as “hangtags,” the term AQUAPALOOZA does not
appear to be used as a trademark for boats and structural
parts but rather as an advertisement for an event. See
Applicant’s description and specimen below.2

2 Other specimens are T-shirts with the term “Sea Ray AquaPalooza
2006” in the left upper corner. Use of the mark on shirts does
not support applicant’s claim that the term is used as a
trademark for different goods, i.e., boats.

Ser. No. 78875524

9

The “point of sale/poster or hand tag” simply invites
potential customers to “Join in “AquaPalooza 2006,” which
applicant describes in other places as “The Largest On
Water Summer Boating Party in History.”
“The mere fact that a designation appears on the
specimens of record does not make it a trademark” for the
specified goods. Aerospace Optics, 78 USPQ2d at 1862.
Even if one trademark on a specimen demonstrates proper
trademark or service mark use, it does not necessarily
follow that any term used on those specimens functions as a
trademark or service mark for the identified goods or
services. Walker Research, 228 USPQ at 692 (“While it
appears from the specimens of record that applicant is,
Ser. No. 78875524

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indeed, rendering the services that are recited in the
application, we agree with the Examining Attorney that, as
used in the specimens, the mark ‘SegMentor’ is not used to
identify those services and distinguish them from others”).
See also In re Compagnie Nationale Air France, 265 F.2d
938, 121 USPQ 460, 461 (CCPA 1959) (“Nothing in the
advertisement pertaining to the ‘SKY-ROOM’ identifies the
air transportation service of appellant and there is no
other evidence which reveals that the public considers
‘SKY-ROOM’ as an identifying mark of this airline”) and In
re Tilcon Warren, Inc., 221 USPQ 86 (TTAB 1984) (Term WATCH
THAT CHILD on bumpers of trucks does not serve as a
trademark for crushed stone). Here, the specimens
described as “hang tags” do not identify applicant’s goods,
but rather they advertise an event that applicant sponsors.
The next question is whether applicant’s posters and
other advertisements are displays associated with the
goods. The TMEP sets out factors to consider when
determining whether a specimen is a display associated with
the goods.
A display must be associated directly with the goods
offered for sale. It must bear the trademark
prominently. However, it is not necessary that the
display be in close proximity to the goods. See In re
Marriott Corp., 459 F.2d 525, 173 USPQ 799 (C.C.P.A.
1972); Lands’ End Inc. v. Manbeck, 797 F. Supp. 511,
24 USPQ2d 1314 (E.D. Va. 1992).
Ser. No. 78875524

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Displays associated with the goods essentially
comprise point-of-sale material, such as banners,
shelf-talkers, window displays, menus and similar
devices.
These items must be designed to catch the attention of
purchasers and prospective purchasers as an inducement
to make a sale. Further, the display must prominently
display the trademark in question and associate it
with, or relate it to, the goods. In re Osterberg, 83
USPQ2d 1220 (TTAB 2007); In re Morganroth, 208 USPQ
284 (TTAB 1980) (purported mark was so obfuscated on
the specimen that it was not likely to make any
impression on the reader). The display must be
related to the sale of the goods such that an
association of the two is inevitable.

TMEP § 904.03(g) (5th ed. rev. September 2007).
These specimens advertise or refer to a specific
event, “AQUAPALOOZA 2006.”3 The posters refer to the dates
of this “Summer Sales Event” as July 22-23 and July 29-30,
2006 and they advise that: “All boaters welcome to join
in” and “To register for AQUAPALOOZA and more details visit
www.searay.com or call 1-800-243-8171.” Other posters
refer to the event as: “The largest on water summer
boating party in history.” Certainly, these posters
clearly refer to a specific event. Most of the specimens
encourage people to register for the “The Largest Summer
Boating Parting in History.”
Applicant has cited numerous cases in which displays
associated with the goods have been accepted as specimens,
Ser. No. 78875524

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a point that is not disputed. However, in those cases, the
specimen did immediately associate the mark with the
product. See, e.g., Roux Laboratories v. Clairol Inc., 427
F.2d 823, 166 USPQ 34, 41 n.14 (CCPA 1970) (Display
featuring the slogan “Hair Color So Natural Only Her
Hairdresser Knows For Sure” in beauty salons where the
“hair tints have been and are being used”).
Here, the specimens do not associate the term
AQUAPALOOZA with applicant’s goods. Instead, they promote
the “summer sales event” and “the largest on water boating
party.” Thus, the specimens cannot be considered as
displays associated with the goods. See In re Gilbert
Eiseman, P.C., 220 USPQ 89, 90 (TTAB 1983) (“It is
established that when a designation or slogan imparts an
impression of conveying advertising or promotional
information rather than of distinguishing or identifying
the source of goods or services, it cannot be the basis for
registration”). See also Osterberg, 83 USPQ2d at 1224
(“[A]pplicant’s webpage is simply advertising or
promotional material and it does not constitute a display
used in association with the goods”).

3 Applicant’s website indicates that AQUAPALOOZA was repeated in
2007. “With the triumphant Aquapalooza 2006 put to bed, sights
are now set on the upcoming oh-oh-seven version.”
Ser. No. 78875524

13
We previously set out a picture of a dealer’s showroom
in which applicant’s mark is displayed on posters and
advertisements. Again, these displays show AQUAPALOOZA
2006 and refer to a “Summer Sales Event.” Customers
entering a showroom will understand that there is a “Summer
Sales Event” that is referred to as “Aquapalooza 2006.”
Beyond that, it is difficult to see how prospective
purchasers will understand that the term AQUAPALOOZA on
these specimens is a trademark for the goods. The
specimens unequivocally describe a party or event that
boaters can register to attend. Indeed, the USPTO has
registered the mark for dealership services in the field of
boats.
However, applicant insists that upon “viewing the
poster bearing the Applicant’s trademark prominently on it
as it hangs directly above the boats, there can be no
mistaking on the part of a consumer that the boats are what
is being sold in the ‘Sales Event.’” Reply Brief at 6. We
are not persuaded by applicant’s argument. Quite simply,
the fact that purchasers would recognize that boats are
sold at the AQUAPALOOZA event does not establish that the
term AQUAPALOOZA serves as a trademark for those boats. In
re Supply Guys Inc., 86 USPQ2d 1488, 1495-96 (TTAB 2008)
(“The mere fact that the name of a store appears on the
Ser. No. 78875524

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sign outside or inside the store does not convert the
service mark into a trademark for all the goods that are
sold in those stores”). While applicant may be providing
an activity that is designed to increase its boat sales,
the name of this sales event/boat party is not a term that
applicant has shown is associated with the goods sold at
the event. Accord In re Dr Pepper Co., 836 F.2d 508, 5
USPQ2d 1207, 1209 (Fed. Cir. 1987) (The “board reasonably
has treated promotional contests as ‘routine’ sales
activity for a producer's goods” where applicant used the
term PEPPER MAN for service of sponsoring and operating a
service to promote its DR PEPPER soft drinks).
Applicant has also submitted pages from its website
that describes the 2007 event as follows: “This party will
be action-packed with live entertainment by special guests,
fireworks, giveaways and much more… Plans are in the works
to attract more sponsors, develop on-line contests and
perhaps even land a movie deal. Partying prospects are
limitless. So if you’re looking for some fun and sun on
the water this summer check out and register for Sea Ray’s
Aquapalooza 2007.” Again, the webpages do not reference
boats themselves, but rather advertise a summer
entertainment event. Applicant apparently intends this
event to boost its boat sales, but these webpages, like the
Ser. No. 78875524

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posters and other advertisements, are not displays
associated with the goods.
The board has held in a case involving webpages that:
[A]pplicant’s specimen webpage does not provide a
means of ordering the product. On the contrary, the
webpage states that the study is closed to patient
registration. Certainly there is nothing in the
specimen which shows that one can “click” on a link to
order applicant's product, nor does it explain how to
order it. Compare Lands’ End Inc. v. Manbeck, 797 F.
Supp. 511, 24 USPQ2d 1314, 1316 (E.D. Va. 1992), in
which the Court found specimen catalogs to be
acceptable displays associated with the goods because
“a customer can identify a listing and make a decision
to purchase by filling out the sales form and sending
it in or by calling in a purchase by phone.” At most,
applicant's web page indicating how one can obtain
“more information on personalized immunotherapy and
our product” may be seen as promotional material, but
advertising is not acceptable to show trademark use on
goods. See Section 45 of the Trademark Act; In re
MediaShare Corp., 43 USPQ2d 1304 (TTAB 1997).
Similarly, the 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.

In re Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006).

Here, applicant’s webpages do not provide any means to
order applicant’s goods. Indeed, the webpage concludes
with a sentence that says “if you’re looking for some fun
and sun on the water this summer check out and register for
Sea Ray’s Aquapalooza 2007.” Other buttons offer readers
the option of “Attend” and “Find a Local Event.” We
Ser. No. 78875524

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recognize that advertising, in general, is intended to
eventually induce a sale. However, that does not make
advertising an acceptable specimen of trademark use for
goods. Here, applicant’s webpage does not provide people
viewing that page with the opportunity to order the goods
beyond that of most advertising. Therefore, this specimen
is similar to ordinary advertising. It is not at all like
the catalog or website in Lands End or In re Dell, Inc., 71
USPQ2d 1725 (TTAB 2004), which provided a means to order
the goods.
In this case, we find that the specimens that
applicant has submitted do not show use of the mark on
applicant’s goods identified as boats and structural parts.
Nor can the specimens be viewed as displays associated with
those goods. Even when considered in their totality, the
specimens would not result in an inevitable association
between the mark and the goods. The only “inevitable”
association with applicant’s specimens is with the “world’s
largest on water summer boat party” and sales event.
Therefore, we affirm the examining attorney’s refusal to
register on the ground that applicant’s specimens do not
show use of the mark on boats or their structural parts.
Decision: The refusal to register is affirmed.