The Board affirmed a refusal to register the mark CONEY ISLAND BOARDWALK CUSTARD, in standard character form, for frozen custards [CONEY ISLAND and CUSTARD disclaimed] due to applicant’s failure to submit an acceptable specimen of use. Applicant contended that its specimen qualified as a display closely associated with the goods offered for sale in a Boardwalk stand. The Board, however, concluded that consumers would not be likely “to associate the mark with the goods such that the specimen serves as an inducement to the sale of the goods. In re Kohr Brothers, Inc., Serial No. 85430114 (February 9, 2017) [precedential].

Section 45 of the Trademark Act states that a mark is deemed to be used in commerce 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.” Because Section 45 does not define the term “displays associated therewith,” the Board must determine on a case-by-case basis whether a particular specimen qualifies as a “display” adequate to demonstrate use in commerce. The Board observed that “mere advertising” does not suffice. A display must catch the attention of the consumer, who will associate the mark with the goods and be induced to buy them.

Applicant stated that its specimen of use, shown below, is located at eye level on a wall facing the customer as he or she approaches the counter to purchase the goods. It contended that this presentation qualified as a display associated with the goods because (1) the sign includes a picture of the goods and (2) the goods are “in close proximity to the specimen sign as displayed.”

The Board, however, noted that most cases concerning a picture of the goods involve a catalog display or a webpage that includes information about the goods to allow a customer to place an order. Here, applicant does not provide information about the goods, portion sizes, flavors, cost, etc. The stylized drawing of a cone, in conjunction with the depiction of a Ferris wheel, is likely to be seen as evoking the Coney Island amusement park in Brooklyn. [Did you know that the Ferris wheel was invented by a man named George Ferris for the 1893 World’s Columbian Exhibition in Chicago?] In short, Thus, the depiction of a cone “is more likely to be perceived as part and parcel of a composite word and design mark than as an unmistakable indication of the nature of Applicant’s goods.”

Moreover, the mark in the specimen “is not displayed at the point of purchase in such a way that the customer can easily and directly associate the mark with the goods, which are said to be in proximity but not shown to be so.” The sign is small – about the size of an envelope – and is located next to a business license and a certificate from the Delaware Health and Social Services Division of Public Health, “hardly a place where a merchant would place material intended ‘to catch the attention of purchasers and prospective purchasers as an inducement to make a sale.'” TMEP Section 904.03(g).

In any event, while a consumer might look for a menu posted on a wall facing prospective customers, a consumer would not regard a sign placed together with certificates from the health department and a regulatory agency to be a trademark for the goods. Hence, the sign cannot be considered a display associated with the goods.

Even if, as applicant contended, it was not practical to place the mark on the goods, applicant’s sign does not display the mark in such a way as to serve as an inducement to customers to buy the goods. In short, “the specimen is not a display that is easily and directly associated with the goods and cannot serve to support the required showing of use.”

And so the Board affirmed the refusal under Section 1 and 45 of the Trademark Act,

 

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