Wholesale & Retail Distribution, Inc.

Trademark Trial and Appeal Board

Jun 4, 2018

No. 86586432 (T.T.A.B. Jun. 4, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 4, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Wholesale & Retail Distribution, Inc.
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Serial No. 86586432
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Barry L. Haley and Kristina M. Dimaggio of Malin Haley Dimaggio & Bowen, P.A.,
for Wholesale & Retail Distribution, Inc.
Toby E. Bulloff, Trademark Examining Attorney, Law Office 119,
J. Brett Golden, Managing Attorney.
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Before Lykos, Adlin and Coggins,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
Wholesale & Retail Distribution, Inc. (“Applicant”) seeks to register on the
Principal Register the mark OXZGEN in standard characters for goods ultimately
identified as “[n]on-metal dosing caps for bottles; non-metal dispensing caps for
containers” in International Class 20.1 Applicant has appealed the Trademark
Examining Attorney’s final refusal to register the mark under Trademark Act

1 Application Serial No. 86586432, filed April 3, 2015, under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b).
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Sections 1 and 45, 15 U.S.C. §§ 1051 and 1127, on the ground that Applicant’s
specimens fail to show the applied-for mark in use in commerce in connection with
any of the goods specified in the statement of use.
By way of background, Applicant originally applied to register its mark for two
classes of goods: the International Class 20 goods identified above and “non-alcoholic
beverages, namely, sports drinks; energy drinks; isotonic drinks; hypertonic drinks;
and hypotonic drinks” in International Class 32. In the initial Office Action dated
July 13, 2015, the Examining Attorney refused registration of the mark for the
International Class 32 goods under Trademark Act Sections 2(e)(1), 15 U.S.C.
§ 1052(e)(1) and 2(a), 15 U.S.C. § 1052(a). In response, Applicant deleted the
International Class 32 goods from the application, thereby rendering the refusals
moot. The application was then approved for publication solely for the goods listed in
International Class 20. Following issuance of a notice of allowance, on September 1,
2016, Applicant submitted a statement of use and two specimens for International
Class 20 described as “product[s] displaying the mark.” The specimens are reprinted
below:

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The Examining Attorney found both specimens unacceptable on the ground that they
did not show use of Applicant’s mark in connection with the goods because “the mark
appears on the bottles but not the caps themselves; nor is the mark shown with caps
sold separately as stand-alone goods.” October 19, 2016 Office Action at 1. Applicant
was given the opportunity to submit a “verified substitute specimen” but instead
argued against the refusal:
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Applicant’s specimen is a picture of the mark OXZGEN on
the bottle/container which is used in connection with its
non-metal dosing/dispensing caps. Here, the mark is shown
in use in commerce because it is prominently featured on
normal commercial packaging for Applicant’s goods. See
TMEP Section 904.03(c). In this case, the mark shown on
the bottle/container is normal packaging for Applicant's
dosing caps which dispense liquid into the container. Such
is the normal “mode of use” for Applicant’s “non-metal
dosing caps for bottles, non-metal dispensing caps for
containers.” Moreover, the mark on the container also
functions as a label or tag since it would be impractical to
put the mark on the actual dispensing cap.

April 19, 2017 Response to Office Action. Unconvinced, the Examining
Attorney issued a final refusal:
[T]he applied-for mark looks to be the brand of the
beverage (deleted from the Statement of Use), offering
different flavors under its subbrands of “RELAX” and
“ENERGY.” There is nothing directing consumers to a
special kind of cap or dosing mechanism under any name.
In fact, as shown, the cap looks like any other basic
beverage cap and a consumer would not perceive this to be
a special feature of the bottle or an item sold on its own for
use with other kinds of bottles or containers.

May 11, 2017 Final Office Action at 1. Applicant then filed a notice of appeal, which
is now briefed.
On appeal, Applicant reiterates the arguments made during prosecution, adding
that the “non-metal caps are sold together with the bottles for beverages;” that “[t]he
dispensing caps are attached to the bottles in order to serve the purpose of dispensing
the liquid or powder into the beverage;” and that “it is practical to place the mark on
the bottle instead of the cap itself because consumers can readily see the trademark
in large capital letters on the container/packaging.” Brief, pp. 2-3; 4 TTABVUE 6-7.
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After careful consideration of Applicant’s specimens and Applicant’s reasons why
the mark cannot be affixed to the goods, we agree with the Examining Attorney that
the specimens fail to show use of OXZGEN as a trademark for any of the goods
identified in the statement of use.
A statement of use must include a specimen showing the applied-for mark in use
in commerce for each class of goods specified in the statement of use. Trademark Act
§§ 1 and 45, 15 U.S.C. §§ 1051, 1127; 37 C.F.R. §§ 2.56(a), 2.88(b)(2). Section 1(d)(1)
of the Trademark Act, 15 U.S.C. § 1051(d)(1), requires that the applicant file a
“specimen” or facsimile “of the mark as used in commerce.” Trademark Rule 2.56(a),
37 C.F.R. § 2.56(a), amplifies that an applicant filing an intent-to-use application
must file “one specimen . . . showing the mark as used in commerce on or in connection
with the goods or services.” Section 45 of the Trademark Act, 15 U.S.C. § 1127, states
that a mark is 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.

Consistent therewith, the Office may accept another document related to the goods
or their sale when it is impracticable to place the mark on the goods, packaging for
the goods, or associated displays. Trademark Rules 2.56(b)(1) and (2), 37 C.F.R. §§
2.56(b)(1) and (2). See also In re Sones, 590 F.3d 1282, 93 USPQ2d 1118, 1123 (Fed.
Cir. 2009) (“the test for an acceptable … specimen, is simply that it must in some way
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evince that the mark is ‘associated’ with the goods and serves as an indicator of
source”). In interpreting the meaning of impracticability as set forth in the statute,
Section 904.03(k) of the TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”)
makes clear that an applicant’s mere assertion of impracticability does not suffice;
rather, the record must indicate that the goods are, in fact, of such a nature that
affixation of the mark in the typical manner is not possible:
The USPTO may accept another document related to the
goods or the sale of the goods when it is impracticable to
place the mark on the goods, packaging, or displays
associated with the goods. … This provision is not intended
as a general alternative to submitting labels, tags,
containers, or displays associated with the goods; it applies
only to situations when the nature of the goods makes use
on these items impracticable. For example, in rare
circumstances it may be impracticable to place the mark on
the goods or packaging for the goods if the goods are
natural gas, grain that is sold in bulk, or chemicals that are
transported only in tanker cars. In such instances, an
acceptable specimen might be an invoice, a bill of lading, or
a shipping document that shows the mark for the goods.

Applicant’s Class 20 goods are in no way analogous to “natural gas, grain that is
sold in bulk, or chemicals that are transported only in tanker cars.” Id. We agree with
the Examining Attorney that Applicant’s applied-for mark as displayed on both
specimens is being used as a trademark to identify the International Class 32
beverages deleted from the application, not the “[n]on-metal dosing caps for bottles;
non-metal dispensing caps for containers” in International Class 20 identified in the
statement of use. The dosing and dispensing caps are an integral component of the
bottles in which the beverages are sold, and as Applicant has confirmed, the caps are
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not sold separately. In other words, consumers are purchasing Applicant’s beverages,
not the dispensing and dosing caps.
In sum, Applicant’s specimens on their face fail to show use in commerce of the
mark OXZGEN for any of the goods identified in the statement of use.
Decision: The refusal to register is affirmed.