John Wawrzonek

Trademark Trial and Appeal Board

Nov 2, 2000

No. 75459582 (T.T.A.B. Nov. 2, 2000)

Paper No. 14
PTH
11/2/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re John Wawrzonek
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Serial No. 75/459,582
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Charles Hieken of Fish & Richardson P.C. for John
Wawrzonek.
Steven R. Foster, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney).
_______
Before Cissel, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
On March 30, 1998 John Wawrzonek filed an application
to register the phrase THE HIDDEN WORLD OF THE NEARBY as a
trademark for “art prints.”1 The application includes the
statement that “[t]he mark is used by applying it to the
goods and three facsimiles showing the mark as actually
used are enclosed herewith.” Reproduced below in reduced

1 Serial No. 75/459,582, filed March 30, 1998, alleging dates of
first use at least as early as 1987.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/459,582
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size is the specimen which accompanied the application.
The Trademark Examining Attorney, in a priority office
action issued November 4, 1998, states that on October 6,
1998 he had a telephone conversation with applicant’s
attorney, who described the specimens as photocopies of
Ser No. 75/459,582
3
flyers which applicant sends to potential customers to
advertise the availability of the goods. The Examining
Attorney indicated that the specimens are unacceptable
because they are mere advertisements and requested
acceptable specimens. In addition, the Examining Attorney
refused registration under Sections 1, 2, and 45 of the
Trademark Act on the ground that the matter sought to be
registered, as shown on the specimens, does not function as
a mark.
In response to the priority office action, applicant
argued that the flyers constitute displays associated with
the goods, citing Lands’ End Inc. v. Manbeck, 24 USPQ2d
1314 (E.D. Va. 1992). According to applicant:
Manifestly, the specimen includes a picture of
the relevant goods, which in this case may be
regarded as the goods themselves because nearly
1/3 the area of the specimen is an art print,
and the specimen includes the mark sufficiently
near the art print to associate the mark with
the goods. The specimen is sent with
information necessary to order the goods.
The Examining Attorney was not persuaded by
applicant’s arguments and finally refused registration on
the ground that the matter sought to be registered, as
shown on the specimens, does not function as a mark. The
Examining Attorney also required that applicant submit
substitute specimens.
Ser No. 75/459,582
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Applicant appealed. Both applicant and the Examining
Attorney filed briefs on the case, but no oral hearing was
requested.
In this case, we agree with the Examining Attorney
that the matter sought to be registered, as shown on the
specimens, does not function as a mark for art prints.
Notwithstanding applicant’s use of “TM” after THE HIDDEN
WORLD OF THE NEARBY, we do not believe prospective
purchasers would perceive this phrase as a trademark for
applicant’s art prints. Rather, it is likely that
prospective purchasers would perceive THE HIDDEN WORLD OF
THE NEARBY as the title of the art print or even the title
of a series of publications featuring art prints,
particularly inasmuch as the words “Volume II On The Path
To Walden” appear thereunder. At best, the use of THE
HIDDEN WORLD OF THE NEARBY on the specimens is ambiguous
and it is not clear that prospective purchasers would
regard this phrase as the indication of origin of art
prints.
We turn next to the question of whether, assuming the
matter sought to be registered functions as a mark on the
specimens, the specimens are acceptable. In particular, we
must determine whether the specimens constitute displays
associated with the goods, as applicant argues.
Ser No. 75/459,582
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TMEP Section 905.06(a) states that:
In accordance with [the Lands’ End] decision,
examining attorneys should accept any catalog
or similar specimen as a display associated
with the goods, provided that (1) it includes
a picture of the relevant goods, (2) it
includes the mark sufficiently near the
picture of the goods to associate the mark
with the goods, and (3) it includes
information necessary to order the goods.
Any form of advertising which satisfies
these criteria should be construed as a
display associated with the goods.
As pointed out by the Examining Attorney, the flyers
are not catalogs, nor are they similar to catalogs.
Further, they do not include information necessary to order
the goods. There is no information regarding the price of
applicant’s art prints or how to order the art prints.
While we note the statement of applicant’s attorney that
the flyers “are furnished to potential purchasers with
sufficient information to order the goods,” this
representation does not satisfy the requirement that the
ordering information must appear on the specimens. It is
simply not enough that applicant’s attorney represents that
the ordering information is furnished. In the absence of
information necessary to order the goods, the flyers are
nothing more than normal advertising and thus, are not
acceptable specimens. See e.g., In re MediaShare Corp., 43
USPQ2d 1304 (TTAB 1997).
Ser No. 75/459,582
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Decision: The refusal to register on the ground that
the matter sought to be registered, as shown on the
specimens, does not function as a mark for art prints is
affirmed. The requirement for acceptable specimens is also
affirmed.
R. F. Cissel
P. T. Hairston
B. A. Chapman
Administrative Trademark Judges
Trademark Trial and Appeal Board
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