The Board affirmed a refusal to register the alleged mark SLEEP HYGIENE CYCLE on the ground that Applicant’s specimens of use failed to show use of the mark with the identified goods: nutritional supplements. In re Physician’s Seal, LLC, Serial No. 87169253 (September 6, 2019) [not precedential] (0pinion by Judge Thomas W. Wellington).

Examining Attorney Alicia Collins Edwards maintained that the term REMFRESH appears prominently on Applicant’s website, not the proposed mark, but Applicant argued that when one scrolls down the page, the phrase “Sleep Hygiene Cycle” appears in the nature of a tagline. Applicant also submitted a photograph of the insert to its packaging, but the Examining Attorney rejected that specimen as well, asserting that “the average consumer viewing the mark as shown on the [second] specimen would view it as information about goods sleep habits being provided … rather than attributing thereto the special significance of a trademark to distinguish the applicant’s goods from the goods of others.” She also pointed out that product inserts are generally not acceptable as trademarks.

The Board found the “key issue” to be not the format of the specimens, but the the manner in which SLEEP HYGIENE CYCLE is used on the specimens. The Board agreed with the Examining Attorney that consumers “will not directly associate the proposed mark with the involved goods in a manner that would indicate the source of the goods.”

As to the product insert, the phrase appears in the middle of the “Frequently Asked Questions” portion, embedded in the response to “What is the best way to support my sleep.” According to the Board, [t]his is far from the prominent use needed to clearly associate the proposed mark with the identified goods. More importantly, the proposed mark only points to a suggested program for getting better sleep, not the underlying goods.”

As to the first specimen, Applicant pointed to In re Dell,Inc., 71 USPQ2d 1725 (TTAB 2004), where the mark QUIETCASE was not the primary mark displayed on the webpage specimen. The Board pointed out, however, that the mark QUIETCASE was clearly identifying the “internal cases for computer hardware.” Here, there is no such direct association with Applicant’s supplements. “At most, consumers will perceive the proposed mark as being used in connection with the offering of advice for obtaining better sleep which is given in conjunction with Applicant’s REMfresh-brand products.”

Ultimately, the first and second specimens do not demonstrate use of the mark on or in connection with the goods in commerce because they do not directly associate the mark with the goods. Because the requirement to submit an acceptable specimen showing use of the mark in commerce has not been met, registration must be refused under Trademark Act Sections 1 and 45, 15 U.S.C. §§ 1051 and 1127.

And so the Board affirmed the refusal to register.

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Text Copyright John L. Welch 2019.