88372456 (T.T.A.B. May. 12, 2020)

Frank J. Martin Company

Trademark Trial and Appeal BoardMay 12, 2020

88372456 (T.T.A.B. May. 12, 2020)

This Opinion is Not a Precedent of the TTAB Mailed: May 12, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Frank J. Martin Company _____ Serial No. 88372456 _____ Michael J. Folise of Lowe Graham Jones PLLC, for Frank J. Martin Company. Mark Riso, Trademark Examining Attorney, Law Office 108, Kathryn Coward, Managing Attorney. _____ Before Ritchie, Pologeorgis and English, Administrative Trademark Judges. Opinion by English, Administrative Trademark Judge: Frank J. Martin Company (“Applicant”) seeks registration on the Principal Register of the standard character mark FJM SECURITY PRODUCTS (SECURITY PRODUCTS disclaimed) for “metal goods, namely, padlocks, cabinet door and drawer security locks and keys therefore.”1 Applicant filed the application on April 4, 2019 1 Application Serial No. 88372456. Citations to the prosecution record are to the Trademark Status & Document Retrieval (“TSDR”) system by page number in the downloadable .pdf versions of the documents. All other citations are to TTABVUE, the Board’s online docketing system. Serial No. 88372456 - 2 - claiming use of the mark in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). The Examining Attorney refused registration pursuant to Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051 and 1127, on the ground that Applicant failed to submit a specimen showing the applied-for mark in use in commerce. After the refusal was made final, Applicant filed this appeal.2 The appeal is fully briefed. For the reasons explained below, we reverse the refusal to register. Under Section 1 of the Trademark Act, the owner of a trademark used in commerce may apply to register the mark on the Principal Register by filing a written application and specimen of the mark as it is used in commerce. Section 45 of the Trademark Act provides that a mark is in use in commerce 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. 15 U.S.C. § 1127. 2 On November 13, 2019, Applicant filed through the Trademark Electronic Application System (TEAS) a “Request for Reconsideration,” but the document was in the nature of a notice appeal. The Examining Attorney “denied” the request for reconsideration and advised Applicant that a notice of appeal must be filed with the Board through the Board’s electronic filing system, ESTTA. December 5, 2019 Recon. Denial at TSDR 2. Applicant timely filed a notice of appeal with the Board on December 6, 2019. 1 TTABVUE. Serial No. 88372456 - 3 - Applicant’s President, Gerald E. Martin, avers that Applicant’s specimen, reproduced below, “is a packing slip bearing the mark and placed on or in the box in which the goods are shipped in commerce”:3 The Examining Attorney asserts that Applicant’s specimen is not “an acceptable type of document showing use in commerce”4 Specifically, the Examining Attorney 3 September 28, 2019 Office action response at TSDR 10, Martin Declaration, ¶ 3. 4 As another basis for final refusal, the Examining Attorney asserted that none of “[t]he items specified in Applicant’s ‘packing slip’” are covered by the application. October 22, 2019 Final Office Action at TSDR 2. In his brief, however, the Examining Attorney treated the issue as resolved acknowledging that in its September 28, 2019 Office action response, Applicant “provided a declaration from Applicant’s principal stating, that ‘the Keyguard Pro series of Serial No. 88372456 - 4 - argues that it is not impracticable for Applicant to place its mark on goods, containers, labels, or tags for the goods, or displays associated with the goods and that the “packing slip” does not show use of the mark in one of these manners because it is a business document “closely related” to an invoice used “internally to tell a shipping department what inventory to release for delivery.”5 Applicant does not assert that it is impracticable to place the applied-for mark on the identified goods, containers, labels or tags for the goods, or displays associated with the goods. Instead, Applicant argues that “[t]he purpose of a packing slip is not to communicate information to the consumer about the goods or to promote the sale of the goods, but rather to indicate to the consumer what goods are inside the box to which the packing slip is attached” and “[f]or this reason, packing slips are not advertising materials and have always been acceptable as specimens of use of a mark on goods.” Generally, material that serves only a business function for the applicant, such as an invoice, order form, or bill of lading, is unacceptable to show use of a mark for goods.6 In re Bright of Am., Inc., 205 USPQ 63, 65-66 (TTAB 1979); TMEP §904.04(c). Applicant’s “packing slip” may be used “internally to tell a shipping department what locks are large shackle style metal padlocks with internal storage compartments accessed by a keypad.’” 6 TTABVUE 4. Accordingly, we treat this basis for refusal as moot and have given it no further consideration. 5 Examining Attorney’s Brief, 6 TTABVUE 5. 6 An invoice or “shipping document” may be an acceptable specimen only in the “rare” circumstance when it is impracticable to place the mark on the goods, containers, labels, or tags for the goods, or displays associated with the goods. TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 904.03(k) (October 2018). As Applicant acknowledges, that circumstance is not present here. Serial No. 88372456 - 5 - inventory to release for delivery,”7 but that is not the sole function of Applicant’s specimen. Applicant’s president has averred that the “packing slip” bearing the applied-for mark “is placed on or in the box in which the goods are shipped in commerce.”8 As such, the mark is used on packaging for the goods and this constitutes “use in commerce” under Section 45 of the Trademark Act. Accordingly, under the particular facts of this case, we find that Applicant’s “packing slip” constitutes an acceptable specimen of use for Applicant’s identified goods. Decision: The refusal to register Applicant’s mark on the ground that the specimen does not show the applied-for mark in use in commerce is reversed. 7 Examining Attorney’s Brief, p. 4; 6 TTABVUE 5. 8 September 28, 2019 Office action response at TSDR 10, Martin Declaration, ¶ 3 (emphasis added).