Cash Systems, Inc.

Trademark Trial and Appeal Board

May 23, 2005

No. 76461663 (T.T.A.B. May. 23, 2005)

Mailed:
23 May 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Cash Systems, Inc.
________

Serial Nos. 76461663
_______

Timothy A. Czaja of Dicke, Billig, Czaja, PLLC for Cash
Systems, Inc.

Brian Neville, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______

Before Chapman, Holtzman, and Drost, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On October 25, 2002, Cash Systems, Inc. (applicant)
applied to register the mark ALL-IN-1 ATM in standard
character form on the Principal Register for “automated
teller machine (ATM) facilitating credit and POS debit card
advances” in Class 9.1 Applicant has disclaimed the term
ATM.
The examining attorney has refused registration on the
ground that applicant failed “to provide a specimen showing

1 Serial No. 76461663. The application contains an allegation of
a date of first use and first use in commerce of July 1, 2001.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser. No. 76461663

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use of the mark in commerce for the identified goods” as
required by 15 U.S.C. § 1051(a). The specimen at issue is
set out below.

Ser. No. 76461663

3
Both applicant and the examining attorney discuss the
case of Lands’ End Inc. Manbeck, 797 F. Supp. 311, 24
USPQ2d 1314 (E.D. Va. 1992). The examining attorney argues
(Brief at page 4) that applicant’s specimen “fails two of
the three Land’s End requirements: (1) providing ordering
information and (2) showing the mark in such a manner as to
associate the marks with the goods.” Applicant, on the
other hand, argues that the mark includes a picture of the
goods, is sufficiently near the picture of the goods to
associate the mark with the goods, and the specimen
includes the information necessary to order the goods.
The Trademark Act § 1(a)(1) (15 U.S.C. § 1051(a)(1))
requires an applicant who is the owner of a trademark used
in commerce to file “such number of specimens or facsimiles
of the mark as used as may be required by the Director.”
For goods, a “mark shall be deemed to be in use in commerce
… [when] 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 … [and] the goods are sold
or transported in commerce.” Section 45, 15 U.S.C. § 1127.
The Office currently requires the submission of one
specimen with use-based applications (37 CFR § 2.56(a)) and
it defines a trademark specimen as “a label, tag, or
Ser. No. 76461663

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container for the goods, or a display associated with the
goods.” 37 CFR § 2.56(b)(1).
In 1992, the Eastern District of Virginia decided the
case of Lands’ End Inc. v. Manbeck, 797 F. Supp. 911, 24
USPQ2d 1314 (E.D. Va. 1992). In that case, the court
determined that a catalog page containing a picture of a
purse in close association with the mark KETCH and ordering
information constituted a display associated with the
goods. Id. The court also held that “[s]pecimens are
invalid for registration purposes only if they constitute
mere advertising.” Lands’ End, 24 USPQ2d at 1316. In the
present case, applicant’s specimens are clearly advertising
but the question is whether they are “mere advertising.”
Relying on Lands’ End, the Trademark Manual of
Examining Procedure sets out the following test for
determining whether advertising constitutes a display
associated with the goods.
[E]xamining attorneys should accept any catalog or
similar specimen as a display associated with the
goods, provided: (1) it includes a picture of the
relevant goods; (2) it shows the mark sufficiently
near the picture of the goods to associate the mark
with the goods; and (3) it includes the information
necessary to order the goods, (e.g., a phone number,
mailing address, or e-mail address). Any form of
advertising that satisfies these criteria should be
construed as a display associated with the goods.

Ser. No. 76461663

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TMEP § 904.06(a) (3rd ed. May 2003).2

We now address whether the specimen of record
constitutes “mere advertising” and, therefore, is not a
valid specimen. Both applicant and the examining attorney
agree that the specimen meets at least one of the factors
in the Lands’ End test, i.e., the specimen shows a
photograph of the goods. Therefore, the first dispute is
whether the specimen shows the mark sufficiently near the
picture of the goods to associate the mark with the goods.
The examining attorney argues that “the proposed mark
blends in so well with other matter on [the] specimen that
it is difficult or impossible to discern what the mark is,
much less associate [it] with the goods.” Brief at 4. The
specimen shows that the term “Cash Systems All-IN-1 ATM
Package” is used below the name “CashSystemsInc.” The
second paragraph begins with the following statement:

2 Subsequent to the briefing in this case, a new edition of the
TMEP (4th ed. April 2005) was issued that changed the
parenthetical (Section 904.06(a), emphasis in original) of the
previous edition of the TMEP:

[E]xamining attorneys should accept any catalog or similar
specimen as a display associated with the goods, provided: (1)
it includes a picture of the relevant goods; (2) it shows the
mark sufficiently near the picture of the goods to associate the
mark with the goods; and (3) it includes the information
necessary to order the goods, (e.g., an order form, or a phone
number, mailing address, or e-mail address for placing orders).
Any form of advertising that satisfies these criteria should be
construed as a display associated with the goods.

Ser. No. 76461663

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“With Cash Systems All-IN-1 ATMs your customers will have
access to a standard ATM.” Under “Features,” the specimen
indicates that “Cash Systems All-IN-1 ATM provides a
standard ATM” and the fine print at the bottom of the page
refers to the “Cash Systems All-IN-1 ATM Package.”
The specimen of record contains two pictures of ATM
machines and above the pictures in large type is the phrase
“Cash Systems All-IN-1 ATM Package.” The term is repeated
several times on the specimen. There is no other
identified trademark associated with the goods on the page
besides applicant’s trade name. In a similar case, the
board held that specimens for the mark QUIETCASE were not
mere advertising even though the mark QUIETCASE was only
listed among several features of the goods. The board
pointed out that “the particular workstation is the only
product on the webpage. Thus, it is clear that this is the
product to which the trademark QUIETCASE refers.” In re
Dell Inc., 71 USPQ2d 1725, 1729 (TTAB 2004). Furthermore,
the mark was only listed as the fifth feature in the
sentence: “QUIETCASE™ acoustic environment provides easy
access to the system interior and supports tool-less
upgrades and maintenance of key internal components.” The
board determined that “QUIETCASE is sufficiently prominent
that consumers will recognize it as a trademark.” 71
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USPQ2d at 1729. Here, applicant’s mark appears four times
on the specimen. It is used prominently in the phrase
“Cash Systems All-IN-1 ATM Package.” It is also used in
the sentence beginning “[w]ith Cash Systems All-IN-1 ATMs,
your customers will have access….” It is also listed as a
feature of applicant’s ATMs: “Cash Systems All-IN-1 ATM
offers….” The overall impression of the page and the use
of the term convince us that the term is used sufficiently
near the picture of the goods to associate the mark with
the goods. It appears to be the only term that potential
customers would use to refer to the applicant’s specific
goods.
Therefore, the only remaining question is whether the
specimen contains the information necessary to order the
goods. In Lands’ End, 24 USPQ2d at 1316, the customer was
able to “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.” In Dell, the board held
that “[w]eb pages which display goods and their trademarks
and provide for the on-line ordering of such goods are, in
fact, electronic displays associated with the goods. Such
uses are not merely advertising because in addition to
showing the goods and features of the goods, they provide a
link for ordering the goods.” 71 USPQ2d at 1727.
Ser. No. 76461663

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For applicant’s goods, the key part of the specimen
that is at issue here is the fine print at the bottom of
the page, which reads: “For more information about Cash
Systems All-IN-1 ATM package or any of the services we
offer please contact one of Cash Systems specialists at
877.600.8399 or E-Mail to info@cashsystemsinc.com or visit
our website at www.cashsystemsinc.com.” Applicant argues
(Brief at 13) that the inclusion of a phone number, an
email address, and a website “as well as the accompanying
specifications and available options described in the body
of the specimen, present the information necessary to order
the goods.” In a previous case, the board was not
convinced that the simple presence of a phone number or
mailing address constituted information sufficient to order
the goods. In re MediaShare Corp., 43 USPQ2d 1304, 1307
(TTAB 1997).
Several factors convince us that the information
necessary to order the goods is not present in this case.
First, applicant itself describes its contact points as
places to obtain “more information” about the “ATM Package
or any of the services we offer.” Applicant’s email
address is listed as info@cashsystems.com, which again
suggests that the email address is used to request
information rather than to order the goods. Second, the
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specimen makes no mention either directly or indirectly of
ordering the goods. No price is listed in the advertising.
Applicant’s specimen also indicates that purchasers “will
have the ability to advertise by using electronic
couponing, on-screen advertisement and the marketing of
other dispensable items of value.” The purchasing process
for applicant’s ATM’s appears to be much more complicated
than purchasing a purse as in Lands’ End or even
configuring a computer as in Dell. It is not clear how
applicant’s ATMs could even be purchased by means of the e-
mail address identified in the specimen. Applicant’s
request to contact it by mail, email, or through its
website is consistent with the informational nature of the
specimen. Indeed, including the email address is an
indication that applicant is interested in providing
additional information as opposed to simply ordering the
ATM because there clearly is not enough information to
order the ATM by email.
When a customer calls a phone number for information,
it does not necessarily mean that the customer can place an
order. The caller may be referred to a local distributor
of applicant’s ATMs or the customer’s name may be given to
a salesman who will return the call. Applicant’s specimen
does not lead to “a decision to purchase by filling out the
Ser. No. 76461663

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sales form and sending it in or by calling in a purchase by
phone.” Lands’ End, 24 USPQ2d at 1316. See also In re
Hydron Technologies Inc., 51 USPQ2d 1531, 1534 (TTAB 1999)
(Infomercial is “a basis upon which a customer can identify
the products he or she wants to purchase, make the decision
to purchase them, and place the order”). Here, applicant’s
specimen like most advertising simply attracts a
prospective purchaser’s attention and encourages the
purchaser to obtain more information. See MediaShare, 43
USPQ2d at 1307 (“[A]ny material whose function is simply to
tell a prospective purchaser about the goods or to promote
the sale of the goods is unacceptable to support trademark
use”). The simple addition of a phone number or a web
address to an advertisement containing some product
specifications does not automatically convert mere
advertising into displays associated with the goods. It
would not be unusual for an advertisement to contain some
product information along with contact information such as
a mailing or email address.
While virtually any advertising material can lead to a
decision to purchase, to be a valid specimen of use in
commerce, the specimen must not only show a picture of the
goods in close proximity to the mark, but it must be
“calculated to consummate a sale.” In re Bright of
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America, Inc., 205 USPQ 63, 71 (TTAB 1979). While
applicant’s specimen provides a prospective purchaser some
clues that might lead to a purchase of the goods, the
specimen is not calculated to consummate a sale. It is
designed “to tell a prospective purchaser about the goods
or to promote the sale of the goods.” MediaShare, 43
USPQ2d at 1307. See also In re Schiapparelli Searle, 26
USPQ2d 1520, 1522 (TTAB 1993) (“No sales are made from
applicant's brochures, which bear little resemblance to the
mail-order catalog with order forms in Lands’ End”).
Therefore, the specimen is not acceptable to demonstrate
use of the mark on displays associated with the goods.
Decision: The examining attorney’s refusal to
register for failing to provide a proper specimen is
affirmed.