Seelect, Inc.

Trademark Trial and Appeal Board

Apr 7, 2010

No. 76671623 (T.T.A.B. Apr. 7, 2010)

Mailed: 4/7/10

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________

In re Seelect, Inc.
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Serial Nos. 76671619 and 76671623
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Thomas I. Rozsa of Rozsa Law Group for Seelect, Inc.

Scott K. Bibb, Trademark Examining Attorney, Law Office 109
(Dan Vavonese, Managing Attorney).
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Before Seeherman, Quinn and Walsh, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

Seelect, Inc. filed applications to register the marks
SEELECT TEA (“TEA” disclaimed) and SEELECT TEA & NUTRITION
(“TEA” and “NUTRITION” disclaimed) for “dietary and
nutritional supplements; herb teas for medicinal purposes”
(in International Class 5); and “herb teas” (in
International Class 30).1 Applicant claims ownership of

1 Application Serial Nos. 76671623 and 76671619, respectively,
both filed on January 22, 2007, based on a bona fide intent to
use the mark in commerce. Applicant subsequently filed a
statement of use in each application. With respect to the mark
SEELECT TEA, applicant claims first use anywhere and first use in
commerce in both classes on January 2, 1935. With respect to the
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Ser. Nos. 76671619 and 76671623
2
Registration No. 3057028 of the mark for “dietary
nutritional supplements and medicated herb teas” (in
International Class 5) and “herb teas for beverage use” (in
International Class 30).
The trademark examining attorney refused registration
under Sections 1, 2 and 45 of the Trademark Act, 15 U.S.C.
§§1051, 1052 and 1127, on the ground that the applied-for
marks, as used on the specimen of record, do not function
as trademarks to identify and distinguish applicant’s goods
from those of others, and to indicate the source of
applicant’s goods.
When the refusal was made final in each application,
applicant appealed. Applicant and the examining attorney
filed briefs.
Because the appeals involve common issues of law and
fact, and the evidentiary records are identical, we will
decide the appeals in this single opinion.
Applicant originally filed a printer’s proof of
packaging for the goods as a specimen. When the examining
attorney declined to accept the proof as a specimen,
applicant filed the identical substitute specimen in each

mark SEELECT TEA & NUTRITION, applicant claims first use anywhere
and first use in commerce in both classes on January 2, 2000.
Ser. Nos. 76671619 and 76671623
3
application. The proffered specimen, according to
applicant, “consists of the front and back of the packaging
in which the goods are sold. Please note that the mark
appears above the bar code.” (1/21/09 response to Office
action). The specimen is reproduced below.

The examining attorney maintains that the use of the
marks sought to be registered, as shown above on the
Ser. Nos. 76671619 and 76671623
4
packaging in the form “SEELECT TEA™ and SEELECT TEA &
NUTRITION™ are trademarks of SEELECT, Inc.,” is merely
informational in nature. As such, the applied-for marks
SEELECT TEA and SEELECT TEA & NUTRITION do not function as
trademarks for applicant’s goods. The examining attorney
points out that not every word used in the sale of an
applicant’s goods functions as a trademark, and that the
use of “™” by applicant merely shows the intent to claim a
trademark, but does not show that the term is actually
perceived as a source indicator. The examining attorney
also makes the following points with respect to each of the
involved marks:
The applicant’s mark does not appear on
the front of the package. Nor does the
applicant’s proposed mark appear on the
top, or the sides of the packaging.
The applicant’s proposed mark appears
at the bottom of the packaging in a
small font underneath the applicant’s
URL. Additionally, the URL is also in
a larger font than applicant’s mark.
The average consumer would perceive the
applicant’s mark to be the stylized
“SEELECT” mark. The informational
statement does not necessarily even
accord [with] applicant’s intent to
trademark the name for the particular
goods at issue here. Since the
proposed mark does not appear elsewhere
on the packaging for the identified tea
products, it is likely that this
informational statement could be
perceived as the applicant’s general
assertion of rights in a trademark for
other products. The bottom portion of
Ser. Nos. 76671619 and 76671623
5
the specimen of use, argued by the
applicant to be acceptable trademark
usage, merely serves to inform the
purchasing public of the applicant’s
intent to trademark the words and/or
phrases, and does not function as a
trademark, or as an indicator of
source. (Brief, p. 4).

Applicant contends that it has complied with the
statutory requirement that the trademark be used on the
goods by placing the mark “in any manner on the goods or
their containers.” Applicant asserts that the trademarks
are clearly on the packaging in which the goods are sold,
and that SEELECT TEA and SEELECT TEA & NUTRITION are
clearly designated as trademarks of applicant and are
accompanied by a statement to that effect. In applicant’s
words, “How can it be more clear that this is intended as a
source identifier for the Appellant? What more can the
Appellant do?” (Reply Brief, pp. 2-3).
Section 45 of the Trademark Act defines “use in
commerce” as “the bona fide use of a mark in the ordinary
course of trade, and not merely to reserve a right in a
mark.” For purposes of the Trademark Act, a mark is deemed
to be in use in commerce “on goods when it is placed in any
manner on the goods or their containers.” “[A] showing of
the trademark on the normal commercial package for the
Ser. Nos. 76671619 and 76671623
6
particular goods is an acceptable specimen.” TMEP
§904.03(c) (6th ed. 2009).
There is no question that the marks sought to be
registered are “placed in any manner on the goods or their
containers.” It is the examining attorney’s position,
however, that the manner of placement on the packaging is
not likely to result in a consumer’s perception that
SEELECT TEA and SEELECT TEA & NUTRITION are functioning as
trademarks for applicant’s tea. As the examining attorney
points out, not everything that a party adopts and uses
with the intent that it function as a trademark necessarily
achieves this goal. See In re Standard Oil Co., 275 F.2d
945, 125 USPQ 227 (CCPA 1960). Further, use of the “™”
designation on a product or packaging does not make
unregistrable matter into a trademark. See In re Remington
Products Inc., 3 USPQ2d 1714, 1715 (TTAB 1987
At the outset, we readily acknowledge that this is a
close case. However, after reviewing the specimen as a
whole, we find that applicant’s use of SEELECT TEA and
SEELECT TEA & NUTRITION, as shown on applicant’s packaging,
is minimally technically sufficient to establish that they
function as trademarks. Given the prominent use of SEELECT
on the packaging for applicant’s tea, and the fact that the
word “tea” is used in both applied-for marks, consumers are
Ser. Nos. 76671619 and 76671623
7
likely to perceive SEELECT TEA and SEELECT TEA & NUTRITION
appearing elsewhere on the same packaging as trademarks for
applicant’s tea. There is no question that SEELECT is the
distinctive portion of these marks; in point of fact, as
indicated above, applicant claims ownership of a
registration of the mark SEELECT and design for tea, and
applicant, in the two involved marks, merely has added the
generic term “TEA” and the descriptive term “NUTRITION” to
SEELECT.
The entire phrase “SEELECT TEA™ and SEELECT TEA &
NUTRITION™ are trademarks of SEELECT, Inc.,” is not the
mark sought to be registered. Rather, SEELECT TEA and
SEELECT TEA & NUTRITION are the marks shown in the
drawings. In any event, while the entire phrase may be
informational in nature, the point of this “information” is
that SEELECT TEA and SEELECT TEA & NUTRITION are trademarks
of applicant. To assert that “this informational statement
could be perceived as the applicant’s general assertion of
rights in a trademark for other products,” (emphasis added)
as the examining attorney does, is far too speculative and,
more importantly, ignores the reality of applicant’s use.
As observed above, applicant uses SEELECT in a prominent
manner on the same packaging for its tea, and the word
“tea” is included in both of the applied-for marks. Thus,
Ser. Nos. 76671619 and 76671623
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it would be reasonable for consumers to perceive SEELECT
TEA and SEELECT TEA & NUTRITION as trademarks for
applicant’s tea, and not “other products.”
We also appreciate the examining attorney’s other
criticisms leveled at applicant’s use, namely that the
marks appear on the bottom of the packaging, and in small
type font. We agree with the examining attorney to the
extent that placing a mark on the bottom of packaging, and
displaying it in smaller font than, for example, the URL
for applicant’s website, is not an ideal way to indicate
the source of the goods to consumers, and that in other
circumstances might not constitute trademark use if we were
to find that consumers would not notice the mark. However,
in the particular fact situation in this case, which
includes applicant’s prominent use of the registered mark
SEELECT on the same packaging, we find that SEELECT TEA and
SEELECT TEA & NUTRITION function as trademarks.
Lastly, the fact that applicant’s previously
registered mark is more prominently displayed on the
packaging does not negate the source-indicating function of
the other two marks sought to be registered herein. To the
contrary, the prominent use of the registered SEELECT mark
on the packaging for applicant’s tea buttresses our view
that consumers will be likely to view SEELECT TEA and
Ser. Nos. 76671619 and 76671623
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SEELECT TEA & NUTRITION appearing on the same packaging as
source indicators for applicant’s tea. See In re
Safariland Hunting Corp., 24 USPQ2d 1380 (TTAB 1992). It
hardly need be stated that packaging for goods may (and
often does) display more than one trademark.
We conclude that SEELECT TEA and SEELECT TEA &
NUTRITION, as used on applicant’s packaging for tea,
function as trademarks and will be recognized as source
indicators for applicant’s tea.
Decision: The refusals to register are reversed.