Columbia Ultimate Business Systems, Inc.

Trademark Trial and Appeal Board

Dec 2, 2015

No. 85873075 (T.T.A.B. Dec. 2, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: December 2, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Columbia Ultimate Business Systems, Inc.
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Serial No. 85873075
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David P. Cooper of Kolisch Hartwell PC,
for Columbia Ultimate Business Systems, Inc.
Karen Bracey, Trademark Examining Attorney, Law Office 116,
Christine Cooper, Managing Attorney.
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Before Quinn, Kuczma and Masiello,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Columbia Ultimate Business Systems, Inc. (“Applicant”) seeks registration on
the Principal Register of the mark COLLECTORPLUS (in standard characters) for:
Debt collection and revenue recovery software in
International Class 9.1
The Trademark Examining Attorney has refused registration of Applicant’s
mark under Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051 and 1127,
1 Application Serial No. 85873075 was filed on March 11, 2013, under Section 1(a) based
upon Applicant’s claim of first use anywhere and use in commerce since at least as early as
December 31, 2012.

Serial No. 85873075
on the ground that the specimen fails to show the applied-for mark in use in
commerce in connection with the goods.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. For the reasons set forth below, we affirm
the refusal to register.
An application must include a specimen showing the applied-for mark in use in
commerce for each class of goods and/or services specified in the application.
Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051 and 1127; 37 C.F.R. §
2.56(a). Section 45 of the Trademark Act specifies that “a mark shall be 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, . . . .” Thus, an acceptable 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, packaging for the
goods, or displays associated with the goods. Trademark Rule 2.56(b)(1), 37 C.F.R.
§ 2.56 (b)(1).
Applicant submitted a four-page “on-line display” entitled “More Data at Your
Fingertips” as a specimen for its COLLECTORPLUS debt collection and revenue
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Serial No. 85873075
recovery software. The Examining Attorney refused registration of the mark on the
ground that the specimen was not acceptable as a point-of-sale display associated
with the goods, appearing to be, instead, mere advertising material that failed to
show the applied-for mark in use in commerce. The issue before us is whether the
term COLLECTORPLUS, as displayed on the specimen, is in use in commerce
within the meaning of Section 45. A copy of the four-page specimen filed by
Applicant is shown below:
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Upon consideration of the specimen submitted by Applicant, it does not show use
in commerce of Applicant’s trademark within the meaning of § 45 of the Trademark
Act. As indicated above, § 1(d)(1) of the Trademark Act, 15 U.S.C. § 1051(d)(1),
requires that the applicant file a “specimen” or facsimile “of the mark as used in
commerce.” To be considered used in commerce, the mark must be “placed in any
manner on the goods or their containers or the displays associated therewith … and
the goods are sold or transported in commerce . . . .” 15 U.S.C. § 1127.
Examples of specimens for goods include tags, labels, instruction manuals,
containers, photographs that show the mark on the actual goods or packaging, and
point-of-sale displays such as banners or window displays associated with the goods.
See TMEP §§ 904.03 et seq. Webpages may also be specimens for goods when they
include a picture or textual description of the goods associated with the mark and
provide the means to order the goods. TMEP § 904.03(i).
Applicant maintains that it sells its goods using various methods, including in-
person and on-line sales. Applicant argues that the specimen filed with its
application is not an advertisement, but an “on-line display associated with the
goods.”2
A web page that displays a product can constitute a “display associated with the
goods” if it (1) contains a picture or textual description of the identified goods; (2)
shows the mark in association with the goods; and (3) provides a means for ordering
the identified goods. TMEP 904.03(i). See In re Sones, 590 F.3d 1282, 93 USPQ2d
2 See July 9, 2014 Response to Office Action; January 21, 2015 Request for Reconsideration
After Final Action; App. Brief p. 1 (7 TTABVUE 2).
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Serial No. 85873075
1118, 1123 (Fed. Cir. 2009); In re Azteca Systems, Inc., 102 USPQ2d 1955, 1957-58
(TTAB 2012); In re Dell Inc., 71 USPQ2d 1725, 1727 (TTAB 2004).
Applicant’s specimen does not include a link – or any other method − to allow
customers to purchase the goods. As such, the specimen fails to provide a means for
ordering the goods. See, e.g., In re Rogowski, 104 USPQ2d 2012, 2014-2015 (TTAB
2012); In re Osterberg, 83 USPQ2d 1220, 1224 (TTAB 2007) (webpage specimen did
not directly provide a means for ordering applicant’s goods); In re Genitope Corp., 78
USPQ2d 1819, 1822 (TTAB 2006) (same). Cf. In re Dell Inc., 71 USPQ2d at 1727
(website specimen for downloadable computer software acceptable when it includes
method to download, purchase or order the software). See also, In re Sones, 93
USPQ2d at 1124 (“Relevant factors include, for example, whether Sones’ webpages
have a ‘point of sale nature. …’”) (citation omitted).
While a webpage display associated with the goods can be an acceptable
specimen for the goods, mere advertising material is not. Acceptable webpage
displays are not merely advertising, but instead serve as point-of-sale displays,
because the website on which the webpage appears is, in effect, an electronic retail
store, and the webpage is a shelf-talker or banner which encourages the consumer
to buy the product and provides the information necessary to do so. TMEP
§ 904.03(i).
A point-of-sale display is calculated to consummate a sale; that is, it includes
information necessary to order the goods. An advertisement merely describes or
touts the benefits of the goods, influences people to buy them or informs the public
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Serial No. 85873075
about the goods and the company that provides them. In re Anpath Group, 95
USPQ2d 1377, 1381-82 (TTAB 2010); In re Quantum Foods, Inc., 94 USPQ2d 1375,
1379-80 (TTAB 2010); Land’s End Inc. v. Manbeck, 797 F. Supp 511, 24 USPQ2d
1314, 1316 (E.D. Va. 1992).
The “More Data at Your Fingertips” piece submitted as a specimen contains
background information regarding the CollectorPlus software and its features.
Applicant’s specimen provides no actual means of ordering goods. Rather, it touts
the benefits of the goods, and as shown on the last page of the specimen, it invites
potential customers to contact Applicant’s representative to view a demonstration
or to request more information about the product. Moreover, the company name,
telephone number, address and website information near the bottom of the last
page merely provides information about Applicant’s location and solicits inquiries; it
is not a means of ordering the goods. Therefore, the material submitted by
Applicant does not show use in commerce of Applicant’s trademark and is not an
acceptable specimen.

Decision: The refusal to register Applicant’s mark COLLECTORPLUS is affirmed.
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