Home Care Developments, Inc.

Trademark Trial and Appeal Board

Nov 16, 1998

No. 74618806 (T.T.A.B. Nov. 16, 1998)

Paper No. 21
ejs
THIS DISPOSTION IS NOT
CITABLE AS PRECEDENT OF THE TTAB NOV. 19 ,98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Home Care Developments, Inc.
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Serial No. 74/618,806
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Adrienne L. White of Burns, Doane, Swecker & Mathis for
Home Care Developments, Inc.
Joyce A. Ward, Trademark Examining Attorney, Law Office 105
(Thomas Howell, Managing Attorney)
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Before Seeherman, Hohein and Walters, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Home Care Developments, Inc. has appealed from the
refusal of the Trademark Examining Attorney to register
SIC-KIT for “medical bags, sold empty.”1 A final refusal of
registration issued on the basis that applicant failed to

1 Application Serial No. 74.618,806, filed January 9, 1995,
asserting first use and first use in commerce in August 1994.
Ser No. 74/618,806
2
provide adequate specimens to support use of the mark with
the identified goods.
Applicant and the Examining Attorney submitted briefs,
and applicant filed a reply brief. An oral hearing was not
requested.
Section 45 of the Trademark Act, 15 U.S.C. 1127,
states, in part, 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….” Trademark Rule 2.56 provides, in part, that an
application based on use in commerce must “include three
specimens of the trademark as used on or in connection with
the goods in commerce. The specimens shall be duplicates
of the labels, tags, or containers bearing the trademark,
or the displays associated with the goods and bearing the
trademark….”
The question at issue before us is whether applicant’s
specimens constitute displays associated with the goods.2

2 We note that in its application applicant stated that “the
mark is used by placing it on the goods, and/or their containers,
Ser No. 74/618,806
3
The specimens submitted by applicant consist of a two-
sided, one page glossy 8½ by 11 sheet on which SIC-KIT
appears in large letters at the top of the page, and below
which is a medical bag with “Home Care,” shown on its side.
The text material on both sides refers to the features of
the bag, and includes such statements as “Everything a
caregiver needs is in one easy-to-carry bag,” “Lightweight,
with shoulder strap for easy carrying,” and “Bag is stain
resistant and machine washable.”
Applicant and the Examining Attorney have discussed at
great length whether the specimens, as direct mail pieces,
constitute displays associated with the goods. However, we
do not believe it is necessary to make such a determination
because the specimens have also been used as displays at
trade shows. According to the declaration of Derick Nance,
applicant’s president, the information sheets which were
submitted as specimens are displayed periodically at trade

and/or the displays associated therewith, and/or on tags, and/or
labels affixed thereto, and/or in other suitable ways.” It
appears, in light of the statements in its briefs, that applicant
does not use the mark on the goods, their containers, tags,
labels or “other suitable ways”, and that the only manner in
which applicant actually claims to use its mark is as a display
associated with the goods. Although the statements made in the
“manner of use” clause cannot be said to be false, in that
applicant has used the connective word “or” in listing the ways
in which the mark is used, the better practice is to list in the
“manner of use” clause only those ways in which the mark is
actually used.
Ser No. 74/618,806
4
shows along with the bags themselves. Mr. Nance also
stated that a customer who wishes to purchase a bag based
on its review of the information sheet then contacts the
party identified on the sheet, either in writing or by
telephone, with the particulars of the order.
We find that the placement of the information sheets,
with the prominent depiction of the mark and the goods,
along with the bags at the trade shows constitutes a
display associated with the goods. See In re Ancha
Electronics, Inc., 1 USPQ2d 1318 (TTAB 1986). Because of
the declaration of applicant’s vice president, this case
differs from In re MediaShare Corp., 43 USPQ2d 1304 (TTAB
1997), in which the Board pointed out that there was no
explanation or evidence concerning the possible use of the
specimens in point-of-sale presentations, and therefore
applicant failed to show that the specimens functioned as
displays associated with the goods.
Decision: The refusal of registration is reversed.
E. J. Seeherman
G. D. Hohein
C. E. Walters
Ser No. 74/618,806
5
Administrative Trademark Judges
Trademark Trial and Appeal Board