Catalogs as Trademark Specimens – More is More

In order to register or renew a trademark, trademark owners are required to provide specimens to the U.S. Patent and Trademark Office showing use of the mark in commerce. Catalogs have long been considered an acceptable specimen, provided the catalog included information on how to place an order. TMEP § 904.03(h). However, a recent decision by the Trademark Trial and Appeal Board (TTAB) restricts the types of catalogs that may be used as specimens, and trademark owners are encouraged to include detailed ordering instructions in their print and online catalogs.

In the precedential decision In re U.S. Tsubaki, Inc. (TTAB March 7, 2014), the TTAB declined to accept applicant U.S. Tsubaki Inc.’s six catalogs as evidence of use of the slogan TSUBAKI: THE CHOICE FOR CHAIN on the grounds that the catalogs constituted “mere advertising material.” U.S. Tsubaki’s catalogs included the applicant’s telephone number and invited consumers to call for additional information. However, the specimen contained “no sales forms, no pricing information, no offers to accept orders, and no special instructions for placing orders.” In order to constitute an acceptable specimen, a catalog must be “calculated to consummate a sale.”

Trademark owners who use catalogs for promotion and generating sales are best served by including detailed information about their products and the sales process, particularly if a catalog is the only place that a mark will appear. Whether a catalog comprises a “display associated with the goods” is a subjective inquiry; thus, including detailed information about the sales process will increase the likelihood that the catalog will be accepted by the U.S. Patent and Trademark Office in the prosecution and renewal process.