Tessco Communications Inc.

Trademark Trial and Appeal Board

Feb 24, 1998

No. 74277559 (T.T.A.B. Feb. 24, 1998)

Hearing:
February 11, 1998
Paper No. 26
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 2/24/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Tessco Communications Incorporated
___________
Serial No. 74/277,559
___________
James E. Shlesinger of Shlesinger, Arkwright & Garvey for
applicant.
K. Margaret Le, Trademark Examining Attorney, Law Office 109
(Debra S. Cohn, Managing Attorney).
____________
Before Cissel, Hairston and Walters, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Tessco Communications Incorporated has filed a
trademark application to register the mark WIRELESS
SOLUTIONS for a “full line of parts for cellular
telephones.”1 The application includes a disclaimer of
WIRELESS apart from the mark as a whole.

1 Serial No. 74/277,559, in International Class 9, filed May 21, 1992,
based on an allegation of a bona fide intention to use the mark in
commerce. Following issuance of a notice of allowance, applicant filed
a statement of use and accompanying specimens, on July 25, 1995,
alleging a date of first use and first use in commerce of July 7, 1995.
Serial No. 74/277,559
2
The Trademark Examining Attorney has issued a final
requirement for applicant to submit substitute specimens,
contending that the specimens of record do not show use of
the mark in connection with the identified goods.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs and an oral hearing was
held. We reverse the refusal to register.
Following publication for opposition and issuance of a
notice of allowance, applicant filed, in due course, a
statement of use. With its statement of use, applicant
submitted as specimens copies of its mailing label affixed
to a padded envelope. The upper portion of the mail label
appears as below:
In the office action of September 29, 1995, following
submission of the statement of use, the Examining Attorney
stated “[t]he specimens are unacceptable as evidence of
actual trademark use because they appear to be mailing
labels which are not associated with the full line of goods
identified in the application” and noted:

Serial No. 74/277,559
3
As the applicant is aware, the identification of
goods specifies that the applicant is using the
mark on a full line of cellular phones. The
applicant must furnish specimens or proof that the
mark is indeed being used on a full line of
products and not just one or a few cellular
phones. The evidence may be submitted in catalog
form.
Applicant responded by amending the identification of goods,
which pertained to a full line of both cellular telephones
and parts, by deleting “telephones,” so that the
identification now pertains only to a full line of cellular
telephone parts. Applicant argued that the specimens of
record are acceptable and stated that the padded envelope
with mailing label previously submitted as a specimen is the
normal commercial packaging for the goods herein. Finally,
applicant enclosed a catalog and brochure, but not as
verified specimens of use, to clarify the nature and scope
of the goods in connection with which its mark is used.
In the office action of May 20, 1996, the Examining
Attorney made final the requirement for substitute
specimens.2 She stated:
The applicant has submitted additional specimens
to show use of the mark as a full line of goods;

2 The Examining Attorney mistakenly considered the catalog and brochure
submitted by applicant to be “substitute specimens” and rejected the
same as showing use of the mark in connection with services rather than
in connection with the identified goods. Even if we were to consider
the brochure and catalog to be specimens of use rather than
informational material, which we do not, the requirement for acceptable
specimens has been made and repeated in two Office Actions and the
specimens submitted with the statement of use remain of record. Thus,
we do not consider the Examining Attorney’s error in this regard to
effect either the substance of the issue before us or its ripeness for
appeal.
Serial No. 74/277,559
4
but the same is rejected for the reasons stated
below.
. . .
Examination of the additional specimens submitted
by the applicant shows that the applicant is not
using the mark WIRELESS SOLUTIONS in connection
with a full line of phone parts/accessories.
Rather, the applicant is a mail order catalog
house which uses the mark for the sale and
distribution of cellular phone accessories made by
others.
On September 18, 1996, applicant filed a response in
which it acknowledged that it also provides distributorship
services; that it distributes products manufactured by
others, which may or may not bear the marks of those
companies; and that such products are distributed “in the
same containers having labels that display Applicant’s
mark.” In support of its contention that its mark is used
in connection with a full line of cellular telephone parts,
applicant submitted a photocopy of its registration of the
mark CELLDYNE for “batteries, battery chargers, power
converters, antennas, covers and cases for use with portable
cellular telephones” and contends that these products
bearing the CELLDYNE mark are “shipped in containers (padded
envelopes) that display Applicant’s mark on the affixed
label.”
In the office action of November 12, 1996, the
Examining Attorney maintained her refusal, noting,
correctly, that applicant’s registration of the mark
Serial No. 74/277,559
5
CELLDYNE for specified cellular phone parts and accessories
is irrelevant to the question of whether WIRELESS SOLUTIONS
is used as a trademark in connection with a full line of
parts for cellular phones; and concluding that “WIRELESS
SOLUTIONS is not used as a trademark in connection with a
full line of cellular products because it is not associated
with the mark in an acceptable manner, such as labels,
hangtags, or packaging materials.”
The Examining Attorney appears to have merged several
distinct issues in her actions supporting her requirement
for acceptable specimens and in her brief. The stated basis
for the refusal and, thus, the sole question before us, is
whether the specimens of record, mailing labels affixed to
padded envelopes, are acceptable specimens of use of the
mark WIRELESS SOLUTIONS in connection with the goods
identified in this application. However, in reacting to
applicant’s submissions and repeating her requirement for
acceptable specimens, the Examining Attorney raises two
additional questions - whether applicant has demonstrated
use of the mark herein in connection with a full line of
cellular telephone parts, and whether applicant is using its
mark only in connection with mail order catalog services?
Since no actual refusals were issued on the basis of these
additional questions, i.e., either on the ground that the
identification of goods is unacceptable or that the mark is
Serial No. 74/277,559
6
not used in connection with the identified goods, we
consider these questions herein only in the context of the
Examining Attorney’s requirement for acceptable specimens.
Turning to consideration of the specimens of record,
the padded envelope with mailing label, we note that it is
well established that trademarks may, as an alternative to
being affixed to the goods themselves, be affixed instead to
the packaging for the goods. What constitutes packaging for
goods is a factual determination that will depend upon the
nature of the goods as well as upon standard commercial
practices. There are no limitations in the law or precedent
that would exclude from consideration as “packaging for the
goods” mailing labels affixed to the container used to mail
the goods. Further, there is no basis for concluding that a
padded envelope with a mail label affixed thereto may not
be, or is not, packaging for the goods herein. This is
particularly true where, as in this case, applicant has
stated that the normal commercial practice is to package the
identified goods in padded envelopes of the type submitted
as specimens herein. Thus, it is reasonable to conclude
that the specimens herein are applicant’s packaging for its
identified goods. The Examining Attorney has not
demonstrated otherwise.3

3 This is not to say that envelopes with labels affixed thereto will be
acceptable specimens of use where the evidence in a particular case
contradicts such a finding. For example, an envelope with mailing label
could be considered merely the vehicle for mailing the goods rather than
Serial No. 74/277,559
7
While the Examining Attorney has not raised this
concern, we consider, briefly, a subsidiary question,
namely, whether the mark is used on the mailing label herein
merely as a tradename, in which case, the mail label on the
padded envelope would not be considered packaging for the
goods. We find that WIRELESS SOLUTIONS is prominently
displayed on the mail label in the manner of a trademark,
separate and apart from the return address.
In the context of her requirement for substitute
specimens, the Examining Attorney contends that applicant is
rendering only mail order catalog distributorship services
under the mark. The Examining Attorney drew this conclusion
after reviewing the brochure and catalog submitted by
applicant. The mark herein appears on the cover of both the
brochure and catalog and on each page of the catalog.
However, applicant’s acknowledgment, supported by the
evidence, that it uses the mark WIRELESS SOLUTIONS in
connection with mail order distributorship services is not
inconsistent with its assertion, which is also supported by
the evidence, that, additionally, applicant uses the mark
WIRELESS SOLUTIONS in connection with a full line of
cellular telephone parts. It is well-established that a
business may use the same mark in connection with both goods

packaging for the goods if the evidence in an application showed that
other trademarks are affixed directly to the goods applicant places in
the envelopes; or that applicant’s goods or similar goods are otherwise
Serial No. 74/277,559
8
and services; that a business may sell goods identified by
its own trademark, indicating it as the source of the goods,
even if it did not manufacture those goods; and, finally,
that a business may offer for sale both goods bearing its
own trademarks and goods bearing the trademarks of third
parties. Thus, nothing in the record before us contradicts
applicant’s assertion, supported by the specimens of record,
that it uses the mark WIRELESS SOLUTIONS in connection with
the identified goods.
Also in the context of her requirement for substitute
specimens, the Examining Attorney appears to contend that
applicant has not demonstrated use of its mark in connection
with a full line of the identified goods. We disagree. In
this case, applicant’s catalog and brochure, while it does
not show trademark use of the mark herein, does show
numerous cellular telephone parts to which no third-party
trademark is affixed. Both applicant’s catalog and brochure
contain pictures and descriptions of a broad range of
cellular phone products and accessories offered for sale by
applicant. While several of the products pictured in the
catalog clearly bear trademarks other than WIRELESS
SOLUTIONS, a full range of the products pictured show no
trademarks affixed thereto. Thus, it is reasonable to
conclude that applicant’s mark on mailing labels affixed to

packaged, for example, in boxes or plastic to which a trademark is
Serial No. 74/277,559
9
padded envelopes, identifies those goods advertised in
applicant’s brochure that are packaged in such envelopes and
which do not have other trademarks affixed directly thereto.
This evidence supports the conclusion that applicant offers
a full line of cellular telephone parts identified by the
trademark WIRELESS SOLUTIONS.
In the present case, we find the specimens of record,
padded envelopes with mailing labels bearing the trademark
herein, to be acceptable evidence of use of the mark
WIRELESS SOLUTIONS in connection with the identified goods.
Decision: The refusal based on the requirement for
substitute specimens is reversed.
R. F. Cissel
P. T. Hairston
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board

affixed, prior to being placed in the envelopes for mailing.