Odom’s Tennessee Pride Sausage, Inc.

Trademark Trial and Appeal Board

Jul 28, 2009

No. 76581899 (T.T.A.B. Jul. 28, 2009)

Mailed:
July 28, 2009
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Odom's Tennessee Pride Sausage, Inc.
________

Serial No. 76581899
_______

Marsha G. Gentner of Jacobson Holman PLLC for Odom's
Tennessee Pride Sausage, Inc.

Leigh A. Lowry, Trademark Examining Attorney, Law Office
115 (Tomas V. Vlcek, Managing Attorney).
_______

Before Hairston, Grendel and Walsh, Administrative
Trademark Judges.

Opinion by Walsh, Administrative Trademark Judge:

Odom's Tennessee Pride Sausage, Inc. (applicant) has
applied to register the mark shown below for goods
identified as “fresh sausage rolls, links and patties;
fresh souse; frozen sausage ball appetizers” in
International Class 29.1

1 The application also covers International Class 30, but the
refusal at issue in this appeal does not apply to International
Class 30.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 76581899
2

Applicant filed the application on March 18, 2004, on the
basis of applicant’s statement of its bona fide intention
to use the mark in commerce under Trademark Act Section
1(b), 15 U.S.C. § 1051(b). Applicant filed a timely
statement of use under Trademark Act Section 1(d)(1), 15
U.S.C. § 1051(d)(1), asserting use in 1994. The specimen
applicant filed with the statement of use is at issue in
this appeal.2
The Examining Attorney has issued a final refusal on
the grounds that applicant failed to file an acceptable
specimen as required by Trademark Act Sections 1, 2 and 45,
15 U.S.C. §§ 1051, 1052 and 1127. Specifically, the
Examining Attorney determined that applicant’s specimen,
shown below, consisting of a web page from applicant’s
Internet website, failed to meet the requirements to
qualify as a display associated with the goods.

2 Applicant submitted a second specimen, an “in-store display,”
after a remand. The Examining Attorney also rejected that
specimen. We need not consider the acceptability of the second
specimen in view of our determination here that the original
specimen is acceptable.

Serial No. 76581899
3

In particular, the Examining Attorney rejected the
specimen because, “… the proposed mark ‘is not so
prominently displayed in the website that customers will
Serial No. 76581899
4
easily associate the mark with the products.’ In re
Ostergerg, 83 USPQ2d 1220, 1223 (TTAB 2007).” Examining
Attorney’s Brief at 5. The Examining Attorney argues
further:
The only appearance of the mark is in the
bottom right-hand corner of the page. Here, the
applied-for mark appears directly adjacent to the
web page copyright information, the “Ecommerce”
web site designer’s name, the company profile,
the terms of use of the web site, the help guide
for the web site, and hyperlinks to various other
web site functions, such as the “Bookmark Us”
hyperlink, a link to provide feedback, the link
for privacy policy information and a return
policy link. Although this might suffice as
evidence that the applicant uses the mark as a
service mark in connection with online retail
store services, it does not suffice as a specimen
of use of the mark as a trademark in association
with the identified goods.

The depiction of the applied-for mark in the
bottom corner of the web page is not prominently
displayed “sufficiently near the picture of the
goods to associate the mark with the goods” or
prominently “displayed in such a way that the
customer can easily associate the mark with the
goods.” This particular presentation renders it
so separated from the photograph of the goods
that the requisite “inevitable” association
between the mark and the identified goods would
not be made by purchasers viewing the page. The
proposed mark is not on the goods. The proposed
mark is not near the goods or any product
information.

Id. at 6 (emphasis in the original).
On the other hand, applicant argues that the specimen
fully satisfies the requirements set forth in Lands’ End
Inc. v. Manbeck, 797 F.Supp 311, 24 USPQ2d 1314 (E.D. Va.
Serial No. 76581899
5
1992) and cases following Lands’ End. In particular,
applicant argues:
In fact, the web page print out submitted by
applicant fully satisfies each of these
requirements [referring to Lands’ End and other
cases discussed below]. First, there are several
different pictures of Applicant’s Class 29 goods
on the web page specimen. Second, above such
photographs appears the price, the unit or
package size, weight and the wording “add to
cart,” and immediately below each picture there
is a description of the product, as well as
shipping information; on the same page, and
immediately to the left of the photographs of the
goods with this information, are graphics showing
the (credit card) payment options. Finally,
Applicant’s Farm Boy mark appears immediately
below these product photographs and ordering
information.

Applicant’s Brief at 8 (emphasis in original; footnote
omitted).
In its reply brief applicant addresses the issue
again, with more focus, stating:
… Specifically, the Examining Attorney contends
that Applicant’s mark as it appears on this web
page, is not displayed “sufficiently near the
picture of the goods to associate the mark with
the goods” and that it is “so separated from the
photographs of the goods that the requisite
‘inevitable’ association between the mark and the
identified goods would not be made by purchasers
viewing the page.” (emphasis in originals;
footnote omitted)
…
Applicant’s mark prominently appears directly
below the picture and description of Applicant’s
sausage products. It is immediately below the
wording “All Tennessee Pride Sausage Products are
shipped frozen from our distribution centers.”

Serial No. 76581899
6
With all due respect, how much “nearer” to
the photographs and information regarding
Applicant’s products sold online could
Applicant’s mark be? How much less “separation”
– here approximately one-half inch of white
space, where no other wording or graphics appear
– is even possible?

Applicant’s Reply Brief at 2-3.
In an appeal from a Board decision, the United States
District Court for the Eastern District of Virginia
addressed the treatment of catalogs as specimens for goods
in trademark applications. More specifically, the Court
construed application of the specimen requirement of
Trademark Act Sections 1 and 45 in the context of catalog
sales. The Court analyzed the catalog, as follows:
The catalogues display the merchandise that
is offered for sale, with descriptions and
pictures designed to make a sale to a customer.
The pictures and words describing the goods are
supplemented by specifications and options from
which the customer can choose. These options
include the various prices, colors, and sizes of
the product. An order form and telephone number
is also provided so that a customer can make a
decision to purchase an item straight from the
identification in the catalogue.
…
Lands’ End's use of the term “KETCH” with
the picture of the purse and corresponding
description constitutes a display associated with
the goods. The catalogue is by no means “mere
advertising.” A customer can identify a listing
and make a decision to purchase by filling out
the sales form and sending it in or by calling in
a purchase by phone. A customer can easily
associate the product with the word “KETCH” in
the display. The mark and the accompanying
description also distinguish the product from
Serial No. 76581899
7
others. The point of sale nature of this
display, when combined with the prominent display
of the alleged mark with the product, leads this
court to conclude that this mark constitutes a
display associated with the goods.

Lands’ End Inc. v. Manbeck, 24 USPQ2d at 1316.
The Board has had occasion to apply Lands’ End to a
variety of online circumstances. See, e.g., In re Valenite
Inc., 84 USPQ2d 1346 (TTAB 2007); In re Osterberg, 83
USPQ2d 1220 (TTAB 2007); In re Dell Inc., 71 USPQ2d 1725
(TTAB 2004).
In Dell, the Board stated:
Following the reasoning of the Lands’ End
decision, we hold that a website page which
displays a product, and provides a means of
ordering the product, can constitute a “display
associated with the goods,” as long as the mark
appears on the webpage in a manner in which the
mark is associated with the goods. It is a well-
recognized fact of current commercial life that
many goods and services are offered for sale on-
line, and that on-line sales make up a
significant portion of trade. Applicant itself
sells many goods on-line.
…
Web pages which display goods and their
trademarks and provide for the on-line ordering
of such goods are, in fact, electronic displays
which are associated with the goods. Such uses
are not merely advertising, because in addition
to showing the goods and the features of the
goods, they provide a link for ordering the
goods. In effect, the website is an electronic
retail store, and the webpage is a shelf-talker
or banner which encourages the consumer to buy
the product. A consumer using the link on the
webpage to purchase the goods is the equivalent
of a consumer seeing a shelf-talker and taking
Serial No. 76581899
8
the item to the cashier in a brick and mortar
store to purchase it.

In re Dell Inc., 71 USPQ2d at 1727.

In Valenite, the Board placed particular emphasis on
the need to evaluate the particular facts of each unique
case to determine whether the mark, as used on the website,
is associated with the goods, even when the association may
require “turning the electronic page,” through the use of a
link, to view all of the elements required in Lands’ Ends.
In re Valenite Inc., 84 USPQ2d at 1350 (“…whether a [web
page] specimen is mere advertising or whether it is a
display associated with the goods is a question of fact
which must be determined in each case based on the evidence
in that particular case.”).
We find applicant’s position in this case entirely
consistent with Lands’ End and subsequent Board precedent.
The Examining Attorney’s analysis fails to see the forest
for the trees. While applicant’s mark does appear at the
bottom of the page near text including the boiler-plate
legal notices and standard buttons providing links, such as
“Home” and “About Us,” the Farm Boy design mark stands out
from this text. The mark is substantially larger and more
prominent; it is in no sense boiler-plate or standard; and
most importantly, as the Examining Attorney acknowledges,
Serial No. 76581899
9
it is recognizable as a design mark, although the Examining
Attorney argues that it is only a service mark.
Furthermore, we agree with applicant that the
proximity of the mark to the display of the goods is more
than sufficient here to establish the necessary association
between the mark and the goods. In this regard, we note
that the entire page is devoted to applicant’s products.
All of the products pictured are within the scope of the
goods identified in the application. Reading down the
page, the mark appears prominently and immediately beneath
the product displays. Also, there is no real dispute as to
the fact that the web page satisfies the other elements of
Lands’ End, that is, the page includes pictures of the
goods and provides both information regarding the goods and
the means to order the goods. Accordingly, we conclude
that applicant’s specimen is acceptable.
Decision: We reverse the refusal under Trademark Act
Sections 1, 2 and 45.