*1 IN RE DRILCO INDUSTRIAL, INC.
Serial No. 707,102
March 21, 1990
Annette P. Heller for applicant
Trademark Examining Attorney
Law Office 8
(Sidney Moskowitz, Managing Attorney)
Before Rooney, Seeherman and Quinn
Opinion by Seeherman
Drilco Industrial, Inc. has appealed the Examining Attorney's refusal to register DUOTUBE for dual wall drill pipe used with drilling equipment. [FN1] The Examining Attorney has refused registration on the basis that the specimens do not evidence trademark use because they are informational sheets.
Section 45 of the Trademark Act, as amended by the Trademark Law Revision Act of 1988, provides, in part, that a mark shall be deemed to be in use in commerce on goods when
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....
Applicant has explained that the literature which it has submitted as specimens is part of a larger manual that covers other goods offered for sale by applicant. Purchasers place their orders for applicant's DUOTUBE products based on the information and instructions contained in the specimens. Applicant has also submitted the declaration of William Wohlfield, its Vice President, Technical Services, attesting to the fact that its goods are specialized equipment which is custom-ordered to fit the requirements of the user; that the information contained in the specimens gives general specifications of the pipe for custom ordering, shows the intended use of the pipe and illustrates the sealing mechanism used between the pipes; and that detailed instruction on the use of the pipe is not necessary because the purchaser is skilled in the trade.
This Board has been liberal in assessing the acceptability of materials which have been submitted as specimens of use. For example, in In re Ultra Flight Inc., 221 USPQ 903 (TTAB 1984), this Board found that use of a mark on assembly instruction manuals packed with the goods constitutes an affixation of the mark to the goods themselves. In other cases, we found that prominent display of the trademark on a trade-show booth where product literature is distributed and orders for the goods are taken is a display associated with the goods, In re Shipley Co. Inc., 230 USPQ 691 (TTAB 1986), and that informational fliers or leaflets clearly depicting the mark and presented on the goods at trade show exhibits are acceptable displays associated with the goods. In re Ancha Electronics Inc., 1 USPQ2d 1318 (TTAB 1986).
It appears from applicant's arguments that it would like us to view its specimens either as instructional materials like those in the Ultraflight case, or as displays associated with the goods. We decline to do either.
*2 While applicant's materials describe the construction, use and advantages of its product, they do not rise to the level of the assembly instructional manual in the Ultraflight case, a manual which was part of a kit which also contained glider parts, and which the Board described as being as much a part of the goods as the various parts used to build the gliders.
Nor do we find, based on this record, that the specimens constitute displays associated with the goods. Applicant has presented no evidence that its specimens are displayed with its goods or that the specimens constitute a prominent display of the mark such as a sign at a trade show exhibit. On the contrary, the only information we have as to the use of the specimens is that the pages are part of a larger manual that features applicant's other products.
To treat applicant's product information sheet, taken from what is essentially a catalog of its products, as a display associated with the goods would distort the plain dictionary meaning of"display"', [FN2] and would go beyond the permissible line drawn by the statutory definition language of a display associated with the goods. This we cannot do.
Finally, applicant has not shown, nor do we believe, that the nature of its goods makes the placement of tags or labels on those goods impracticable. The legislative history regarding the pertinent amendment to Section 45 indicates that this language was added in order to relax the affixation requirement in the case of bulk goods. See, generally, U.S. Trademark Assn., The Trademark Act of 1988, copyright 1989. While the added language may be broad enough to cover custom-ordered goods which are not in existence at the time the product is purchased, we need not decide that question in this case. Although Mr. Wohlfield stated in his declaration that the products are custom-ordered, the declaration and the specimens show that applicant offers various sizes and types of pipe which the purchaser can choose to create a system which will meet his particular needs. Thus, while the goods may be custom-ordered, they do not appear to be custom-manufactured. We see no reason why it would be impracticable to affix the mark to this existing pipe in a manner contemplated by Section 45.
Decision: The refusal to register is affirmed.
L. E. Rooney
E. J. Seeherman
T. J. Quinn
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 707,102, filed January 22, 1988 and asserting first use and first use in commerce as early as October 7, 1969.
FN2. "Display"' is defined, inter alia, as "an exhibiting or showing of something: an unfolding or opening out to view: exhibition, manifestation; ostentatious show; exhibition for effect; an often artistic conspicuous eye-catching construction or assemblage by which something is exhibited or advertised." Webster"s Third New International Dictionary, copyright 1976.