[This guest post was written by Kira-Khanh McCarthy, a rising-3L at University of Notre Dame Law School.] Last week, the Board affirmed two Section 1 and 45 refusals to register on the ground that the respective specimens were unacceptable for registration.

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In In re TEK Group Int’l, the applicant sought to register ZEPOXY for, inter alia, oil and gas wellbore machine tools. TEK submitted two specimens: a tradeshow brochure (below) and a customer-facing quotation and offer for sale. Both specimens were rejected because they failed to show the applied-for-mark in use in commerce. In re TEK Group Int’l, Serial No. 87722507 (June 5, 2019) [not precedential] (Opinion by Judge Marc A. Bergsman).

Examining Attorney Charles L. Jenkins, Jr. rejected Applicant’s tradeshow brochure because it failed to show the applied-for-mark in use in commerce. Agreeing, the Board reasoned that, “Applicant’s trade show brochure did not cross the line from mere advertising to an acceptable display associated with the goods because there is no information regarding how to place an order and, thus, it is not a point-of-sale display.” As an alternative specimen, TEK submitted a customer-facing quotation and offer for sale. TEK asserted that because its products are shipped in bulk it would be impractical to attach the mark to the products or their packaging. See TMEP § 904.03(k). The Board rejected TEK’s arguments due to lack of supporting proof in the record. The USPTO may accept nontraditional specimens only in rare circumstances, when an applicant meets its burden of proof by providing strong evidence that its products are sold in bulk and would therefore be too difficult to place its mark “on the goods, packaging for the goods, or displays used in association with the goods.” The Board found that TEK did not meet this burden.

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In In re Pure Storage, the applicant attempted to register FLASHBLADE for, inter alia, computer hardware and downloadable software. Pure Storage submitted specimens from its website showing its product and how to order it. The specimens were unacceptable because they were seen as mere advertising. In re Pure Storage, Inc., Serial No. 86895203 (June 6, 2019) [not precedential] (Opinion by Judge Cynthia C. Lynch).

Examining Attorney Michael Kazazian rejected Applicant’s website pages showing the product and how to order it, finding the pages to be mere advertising. In particular, he reasoned that Pure Storage’s “specimen does not include a way of ordering the goods; information and links are provided to contact Applicant to receive a ‘demo’ or an ‘evaluation’ but a demo or evaluation is not the means for ordering goods, pricing information, etc. . . .” Pure Storage argued that their products are customizable and required “a significant amount of customer input and information in connection with the purchase.” After providing the requisite information, consumers would have insight into product pricing. Furthermore, the “Request a Demo” button on Pure Storage’s webpage should provide the information consumers needed to make a purchase. The Board, however, found that these website features did not contain sufficient ordering means and information to qualify as a display associated with the goods. “[A] specimen fails to qualify as a point-of-sale display if it contains more limited information, and would require a prospective customer to ‘contact applicant to obtain preliminary information necessary to order the goods’ before the prospective customer could actually place an order.” Because Pure Storage’s website did not provide consumers with enough information to order the goods, the Board affirmed the rejection of the specimens of use.

Read comments and post your comment here.

KKM Comment: It seems that post-Siny [TTABlogged here], applicants will have more difficulty getting non-traditional specimens approved. Applicants should think twice before submitting non-traditional specimens that do not  provide enough information to allow consumers to order the goods.

Text Copyright Kira-Khanh McCarthy 2019.