Concord Elevator Inc.

Trademark Trial and Appeal Board

Jun 6, 2007

No. 78337318 (T.T.A.B. Jun. 6, 2007)

Mailed:
June 6, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Concord Elevator Inc.
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Serial No. 78337318
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David N. Makous and Mina I. Hamilton of Lewis Brisbois
Bisgaard & Smith LLP for Concord Elevator Inc.

Verna Beth Ririe, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney)
_______

Before Seeherman, Bucher and Cataldo, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Concord Elevator Inc. has appealed from the final
refusal of the Trademark Examining Attorney to register the
“circle and wave design,” shown below, as a trademark for
“elevators and vertical and inclined wheelchair lifts for
buildings.”1

1 Application Serial No. 78337318, filed December 5, 2003, and
asserting first use and first use in commerce as of November 1,
2001.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78337318
2

Registration has been refused on the basis that applicant
has not submitted an acceptable specimen of use.
Both applicant and the Examining Attorney have filed
appeal briefs.
A review of the application file shows that when
applicant filed its use-based application, it omitted a
specimen of use, submitting only a picture of the mark that
was identical to the picture submitted as its drawing. The
Examining Attorney, in the first Office action, required
that applicant submit an acceptable specimen and support
such specimen with a declaration stating that it was in use
as of the filing date of the application. The Examining
Attorney also advised applicant that it could amend the
basis of its application, which was filed under Section
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3
1(a) of the Trademark Act based on use in commerce, to
intent-to-use.
In response, applicant filed a specimen, which has
been referred to by the Examining Attorney as a “substitute
specimen.” Because this is the only specimen of record, we
will use the term “specimen.” This specimen consists of a
four-page document that applicant initially described as a
“catalog” but in its brief called a “sales brochure.” The
Examining Attorney found this brochure to be merely an
advertisement, and therefore unacceptable as a specimen of
use of the mark for the identified goods.
Trademark Rule 2.56 provides, in relevant part:
(a) An application under section 1(a) of
the Act, an amendment to allege use
under §2.76, and a statement of use
under §2.88 must each include one
specimen showing the mark as used on or
in connection with the goods, or in the
sale or advertising of the services in
commerce.

(b)(1) A 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 not possible to place
the mark on the goods or packaging for
the goods.

Section 45 of the Trademark Act, 15 U.S.C. §1127,
defines that a mark is deemed to be in use in commerce
(1) on goods when—
Ser No. 78337318
4
(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.

It is applicant’s position that its specimen is
acceptable either as a display associated with the goods or
because it is a document associated with the goods or their
sale. Applicant asserts that “whether one labels the
Brochure ‘a display associated with the goods’ or
‘documents associated with the goods or their sale’ is
irrelevant.” Brief, p. 5. However, the question is
definitely relevant, as the language of the statute and the
rules refer to two different circumstances. Specimens
consisting of “documents associated with the goods or their
sale” are acceptable only “if the nature of the goods makes
such placement [on the goods or their containers or
displays associated therewith] impracticable.
We turn first to a consideration of whether, because
of the nature of applicant’s goods, it would be
impracticable to affix the mark to the goods themselves or
their containers or displays associated with them. As
noted, applicant’s goods are elevators and vertical and
inclined wheelchair lifts for buildings. The brochure
Ser No. 78337318
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which applicant has submitted as a specimen shows that
these items include vertical wheelchair platforms which can
be used to lift a wheelchair from ground level to the front
door of a home or building. Although applicant states that
“the goods are bulky elevator products which are installed
in buildings, and therefore it is impractical to place the
mark on the goods themselves,” brief, p. 5, applicant has
not explained why it would be impractical to place a
trademark on the goods.2 On the contrary, there does not
seem to be any inherent reason why a trademark could not be
applied to such goods. In fact, the photographs of the
goods in the brochure show that the “handicapped” symbol
has been applied to them. It appears that a trademark
could be applied just as easily. Thus, we do not consider
the goods to be of such a nature that it is impractical to
place the mark on them, and therefore the advertising

2 Applicant’s use of the word “bulky” suggests that applicant
may be confusing the concept of a “bulky specimen” with the
concept of the impracticality of affixation of a mark. Bulky
specimens, as defined by Trademark Rule 2.56(d)(1) and (d)(2),
are specimens that are larger than 8½ inches wide and 11.69
inches long, and are not flat. If a mark is used directly on the
goods, and the goods are three-dimensional and/or larger than
this size, the applicant may submit a photograph of the goods
showing the mark. The mere fact that the actual goods cannot be
submitted because that would result in a bulky specimen does not
mean that it is impractical to affix a trademark to the goods.

Ser No. 78337318
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brochure cannot be accepted as a “document associated with
the goods or their sale.”
We next address whether the specimen constitutes a
display associated with the goods. Two pages of the four-
page brochure are shown below:

The cover page (marked as “page 1” above) bears in large
letters “Handilift” followed by the registration symbol,
under which is the explanatory phrase “Vertical Wheelchair
Platform Lift,” below which is a large photograph of a
wheelchair lift. At the bottom of the page the word
CONCORD appears, with the applied-for design mark placed to
the left of CONCORD. The words “ELEVATORS & LIFTS” are
under CONCORD. At the left side of the cover page are
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three paragraphs of text referring to “Concord’s
Handilift,” including statements about the design of the
product, where it can be installed, and the quality of the
product. The following two pages include photographs of
the products (e.g., see page 3 above), with text regarding
their features. The final page, shown below,

Ser No. 78337318
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consists of a chart listing optional features, and listing
technical aspects. Below this chart are the words
“Authorized Dealer,” but no dealer information is provided.
The following paragraph appears on the left side of the
page:
For more information about the Concord
Handilift Vertical Wheelchair Platform
Lift and other Concord products, visit
our website at:
www.concordelevator.com

Below this paragraph is applicant’s name, Concord Elevator
Inc., and its address and telephone and fax numbers in
Canada, as well as a toll-free (800) number.
The applied-for mark appears at the bottom of pages 3
and 4 in the same manner as on page 1.
As the Examining Attorney has pointed out, mere
advertising, while acceptable as a specimen for services,
is not acceptable to show use of a mark for goods. See In
re MediaShare Corp., 43 USPQ2d 1304 (TTAB 1997). Thus, the
question is whether applicant’s sales brochure can be
considered to be not simply an advertisement, but a display
associated with the goods. In Lands’ End Inc. v. Manbeck,
797 F.Supp. 511, 24 USPQ2d 1314, 1316 (E.D. Va. 1992), 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
Ser No. 78337318
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the sales form and sending it in or by calling in a
purchase by phone.”
In the present case, however, the sales brochure
cannot be used as a means of ordering the goods inasmuch as
there are no prices nor an order form nor other means by
which an order can be placed. The fact that applicant’s
name, address, telephone numbers and website address appear
on the brochures is not sufficient. As the Board stated in
In re Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006),
“the company name, address and phone number that appears at
the end of the [specimen] 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 this
case, of course, the specimen is a brochure rather than a
webpage, but the basic principle is the same. Merely
providing address and telephone information on the
brochure, does not make the brochure the equivalent of a
sales or order form.
Applicant asserts that if one visits the website
address that is listed on the brochure, the first link on
that website tells the consumer “how to buy” and leads the
consumer to further information and an authorized dealer.
Ser No. 78337318
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We point out that the webpages have not been submitted as a
specimen of use; thus, the question before us is not
whether the website would be viewed as a means by which the
goods can be ordered.3 The mere fact that the specimen
brochure contains the website address does not make the
brochure a display associated with the goods, any more than
the listing of a mailing address or phone number does. One
cannot use the specimen brochure as a means to order the
product. In fact, the brochure advises that the web
address is provided for consumers to obtain additional
information about the product; it does not tell customers
that they can order the goods by going to the website.
Because applicant has not shown that the nature of its
goods make it impractical to apply the trademark to the
goods, and because the specimen brochure does not
constitute a display associated with the goods, the
specimen is not acceptable to demonstrate use of the
applied-for mark for the goods.
Decision: The refusal of registration is affirmed.

3 In any event, the webpages do not contain an order form, but
merely a form by which one can submit one’s contact information
and areas of interest on a “Information Request & Dealer Locater”
form in order to “obtain free information from Concord Elevator
and locate an Authorized Concord Dealer in my area that will help
me find the best product and most economical solution for my
needs.”