Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE LANDS' END, INC.
Serial No. 74/018,922
September 24, 1991
Hearing: August 28, 1991
Janice Block of Kirkland & Ellis for applicant
Trademark Examining Attorney
Law Office 13
(Craig Morris, Managing Attorney)
Before Rooney, Simms and Hanak
An application was filed to register the term INTERLOCHEN for clothing, namely, knit tops, knit shirts, and knit pajamas. Use since December 1983 was alleged. Registration was finally refused on the ground that the specimens of record, which comprise pages from applicant's catalog, fail to illustrate trademark use of the alleged mark.
Section 45 of the Trademark Act, as amended, defines use in commerce as follows:
For purposes of this Act, a mark shall be deemed to be used 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 ...
Applicant takes the position that its catalog pages constitute "displays associated with the goods"; that the catalog functions as the store where the consumer shops by reviewing the pictures and text describing the merchandise in the catalog rather than by observing the actual merchandise in the store; that the customer purchases the merchandise at home by either dialing a toll-free number or by filling out the order form attached to the catalog; and that, in either case, the customer must use the catalog to provide the proper product identification, which is done, claims applicant, by identifying each item by its trademark and style number. Catalogs, argues applicant, are the primary vehicle by which Lands' End presents its merchandise to consumers. The catalogs display the goods and identify them by their trademarks, asserts applicant, and it is these depictions in the catalogs that induce the customers to select a particular item of merchandise.
Citing In re Marriott Corporation, 459 F.2d 525, 173 USPQ 799 (CCPA 1972) and In re Shipley Co., 230 USPQ 691 (TTAB 1986), applicant argues that the illustration of the alleged mark and of the goods in applicant's catalogs satisfies the "use in commerce" test of the Trademark Act because the catalogs themselves are point-of-purchase display materials. In essence, applicant espouses the idea that because its catalogs are sent out to large numbers of potential customers and that a photograph of the goods appears in its catalog on same page as the mark, the provisions of the statute with respect to use in commerce have been fulfilled. We disagree.
There have been numerous cases presenting the question of whether various types of specimens satisfied the requirements of the statute, particularly with respect to "displays associated with the goods". See In re Marriott Corporation, supra; In re Ancha Electronics Inc., 1 USPQ2d 1319 (TTAB 1986) and In re Shipley Company Inc., supra, for facts found to support a holding that a mark was in use on "displays associated with the goods". Cf. In re Drilco Industrial Inc., 15 USPQ2d 1671 (TTAB 1990); In re Columbus Chase Corporation, 215 USPQ 478 (TTAB 1982); In re ITT Rayonier Incorporated, 208 USPQ 86 (TTAB 1980); In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); and In re International Paper Company, 153 USPQ 424 (TTAB 1967).
*2 Of the many cases on the subject, this one appears to be most similar to the Drilco case. In that case, the applicant offered "informational sheets" as specimens of the manner of use of the mark. Applicant explained that the specimens of record were, in fact, part of a larger manual that covers other goods offered for sale by applicant and that purchasers placed their orders for applicant's DUOTUBE products based on the information and instructions contained in the specimens. An additional factor in that case, not present here, is that the goods were specialized equipment, custom-ordered to fit the requirements of the user and that the information contained in the specimens gave specifications of the pipe for custom ordering, showed the intended use of the pipe and illustrated the sealing mechanism used between the pipes. The Board said that "[T]o 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', [FN1] and would go beyond the permissible line drawn by the statutory definition language of a display associated with the goods." See also In re International Paper Co., supra.
The prohibition against accepting catalogs and catalog pages as specimens of use was clearly stated in In re Bright of America, Inc. 205 USPQ 63 (TTAB 1979), relying on In re Chicago Rawhide Manufacturing Co., 455 F.2d 563, 173 USPQ 8 (CCPA 1972).
"In summary, it is apparent from the language of Section 45 of the Statute and the interpretation thereof by the Court in In re Chicago Rawhide Manufacturing Co. that invoices, announcements, order forms, bills of lading, instruction sheets as well as other types of leaflets and brochures and other printed advertising material used as such, including catalogs, catalog sheets, circulars, publicity releases, and the like do not constitute acceptable specimens of use of a mark referred to therein as a trademark for goods.
The Board went on to say
A display associated with the goods within the scope of Section 45, as interpreted by the Court of Customs and Patent Appeals and other tribunals, comprises essentially point-of-sale material such as banners, shelf-talkers, window displays, menus, or similar devices which are designed to catch the attention of purchasers and prospective purchasers as an inducement to consummate a sale and which prominently display the mark in question and associate it or relate it to the goods in such a way that an association of the two is inevitable even though the goods may not be placed in close proximity to the display or, in fact, even though the goods may not physically exist at the time a purchaser views the display.
Applicant contends, despite the above-stated prohibition against accepting catalog pages as specimens, that its specimens fulfill the requirements set forth in Bright of America, supra, because they comprise point-of-sale material designed to catch the attention of purchasers as an inducement to consummate a sale; and that they prominently display the mark and associate or relate it to the goods so that an association of the two is inevitable.
*3 Applicant has offered a number of arguments in uring that its catalogs should be considered displays associated with its goods. Applicant contends that its specimens are analogous to the displays accepted in the Shipley and Ancha cases as point-of-sale material exhibited at trade shows. Applicant also argues that its business is unique because it sells its goods only through catalogs and that there is no sound justification for denying the same trademark protection to the mail-order catalog business as has been afforded to other businesses whose point-of-purchase display materials have been found sufficient to satisfy the use requirements of the statute.
In re Bright, supra, indicates that catalogs and catalog pages are generally not acceptable specimens of use of a mark. While it may be that such pages, if used in the manner of a display, may qualify as a "display associated with the goods", there is no such use in this case. A display is defined in Bright, as material such as banners, shelf-talkers, window displays, menus, or similar devices which are designed to catch the attention of purchasers and prospective purchasers as an inducement to consummate a sale. If applicant's catalog pages were to be incorporated into a device such as those above noted, that is, exhibited in such a way as to catch the eye of the observer, there might be some validity to its contention (as conceded by the Examining Attorney at the oral hearing). But, that is not the case. Rather, the alleged mark in this case appears on a page within a catalog consisting of more than 150 pages, requiring the potential purchaser to search for the illustration of the goods and the mark. This hardly qualifies as a "display" within the meaning of the statute.
With respect to applicant's "emerging business" argument, we note that applicant's own evidence, Exhibit B (a Lexis/Nexis printout), says that "(C)atalogs first entered the American scene in 1744 when Benjamin Franklin offered the first catalog of nearly 600 books. Today, consumers can choose from an estimated 8,000 to 10,000 specialized catalogs to locate a diverse selection of unique and unusual products." The Board can take judicial notice of the fact that there are and have long been numerous companies which do business through mail-order catalogs. Applicant's business methods are not so new or unique or its goods so unusual as to justify a departure from the rationale of the case law regarding the subject of what constitutes acceptable specimens to support use in commerce. Nor is applicant being deprived of the same opportunity to protect its marks as any other business entity which complies with the requirements of the statute.
It was stated in the Drilco case that "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." In the case before us, applicant stated at the oral hearing that the reason labels were not used on the goods was strictly one of economics, that to do so would be prohibitively expensive. This is hardly a compelling reason to allow such a departure from the requirements of the statute as interpreted by the case law.
*4 For the foregoing reasons, we do not believe that applicant's catalog pages may be accepted as specimens illustrating trademark use of the mark sought to be registered. Accordingly, the refusal to register is affirmed and registration to applicant is refused.
L. E. Rooney
R. L. Simms
E. W. Hanak
E. W. Hanak
While I concur with the result reached by the majority, I do not share the majority's view that there is an absolute prohibition "against accepting catalogs and catalog pages as specimens of use." [FN2] The dictum in In re Bright of America, Inc. cited by the majority, merely states that "printed advertising material used as such, including catalogs, catalog sheets ... do not constitute acceptable specimens of use." 205 USPQ at 71 (emphasis added). Obviously, if a catalog or any other printed matter is being used merely as advertising material, it would not constitute an acceptable specimen of use of a mark. However, as the court intimated in In re Marriott Corp., what constitutes an acceptable display associated with the goods (i.e. specimen of use) is a question which is closely tied to the specific facts of each case, and which is generally not subject to broad answers. 173 USPQ at 800.
To paraphrase from Bright, if a catalog prominently displays the mark sought to be registered in close association with a description of and/or picture of the goods for which registration is sought "in such a way that an association of the two is inevitable," and if the catalog serves as an inducement and provides the means (e.g. specific price information, order forms etc.) for consummating the sale of the goods, there is no reason why the catalog could not be considered point-of-sale material, that is, a display associated with the goods. [FN3] 205 USPQ at 71. See also Marriott, 173 USPQ at 800. The fact that the catalog is not in close proximity to the actual goods--and might be thousands of miles from the actual goods--should not be a determinative factor. Indeed, the court and this board have held that the actual goods need not even physically exist at the time the purchaser is viewing the point-of-sale material. Marriott, 173 USPQ at 800; In re Griffin Pollution Control Corp., 517 F.2d 1356, 186 USPQ 166, 167 (CCPA 1975); Bright, 205 USPQ at 71; In re Shipley Co. Inc., 230 USPQ 691, 693 n. 3 (TTAB 1986) ("We believe, instead, the Marriott case rejected the notion of 'actual proximity' ...").
The reason I concur with affirming the refusal to register is that I do not believe that in the catalog page submitted as a specimen, the mark (INTERLOCHEN) and the goods (inter alia, knit tops [FN4] are used together "in such a way that an association of the two is inevitable." Bright, 205 USPQ at 71. In the catalog page, the mark INTERLOCHEN appears three times, along with text and pictures of knit tops (some on models, some alone). At the top of the page, there appears the following in fairly large print: "Our Interlochen Knit Tops are soft as a cotton ball, hard to wear out!" However, in the text, the mark INTERLOCHEN appears in the following two places:
*5 Soft, "breathable" 100% cotton Interlochen fabric is cut moderately low in front and back to keep you cool.
Made with our softest knit--100% cotton Interlochen. A fabric that drapes gracefully for an easy-going look, feels incredibly comfortable against your skin.
While it could be argued that in this catalog page, INTERLOCHEN is used as a mark both for knit tops and for fabric, I think that many prospective purchasers reading this page would be at least somewhat confused as to exactly what INTERLOCHEN identifies. At a minimum, I do not believe that the mark INTERLOCHEN is used in the specimen in a manner such that its association with the goods for which registration is sought (knit tops) is inevitable. [FN5] Cf. Griffin Pollution Control, 186 USPQ at 167 ("The board concluded that these descriptive materials were not displays associated with the goods ... We do not agree ... [However,] we believe that a purchaser viewing these descriptive materials would directly and distinctly associate OXINITE with a treatment process ... and would not associate OXINITE with a mixture of gases [the goods for which registration is sought] ... [The refusal to register] is affirmed.")
FN1. A "display" is "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 1976)
FN2. To be clear, the majority notes if "catalog pages were to be incorporated into a device such as [a banner, shelf-talker etc.]," they might be considered displays associated with the goods. However, the majority sets forth an absolute prohibition disallowing catalogs and catalog pages, functioning as such, from being considered proper specimens of use.
FN3. In contrast, if a catalog featured merely the mark and a picture of the goods without providing specific price information, order forms etc., the catalog would be simply advertising material for the goods. Automobile catalogs or brochures--which lack specific price information and order forms--are examples of catalogs serving as simply advertising material.
FN4. Applicant was not required to submit specimens for its other two goods (knit shirts and knit pajamas) because all three types of goods fall in the same class (International Class 25).
FN5. Further detracting from an inevitable association of the mark INTERLOCHEN with the knit tops is the fact that the catalog page shows six knit tops each of which bears on a label attached to the inside collar the mark LANDS' END (and only the mark LANDS' END). While a product can, of course, have more than one trademark, in this instance, the use of only the mark LANDS' END on the labels attached to the tops coupled with the use in the text of "INTERLOCHEN fabric" would cause many purchasers to associate LANDS' END with the tops and INTERLOCHEN with the fabric.