A Lesson in Poor Trademark Specimens
According to the opinion by Administrative Trademark Judge Kuhlke,
In view of the meaning of SPECTRUM, "a continuum of color formed when a beam of white light is dispersed (as by passage through a prism) so that its component wavelengths are arranged in order,"2 and the context of its use, i.e., among several terms identifying features of the goods, (e.g., "spectrum of colors"), prospective purchasers would not view this word as a source identifier, but rather as part of the text listing the features of the product. As used by applicant, and as likely perceived by purchasers and prospective purchasers, the applied-for mark merely informs the potential purchaser of an aspect of the goods, namely, the multiple color feature. The coloring and font are not sufficient to imbue this term, as used, with source-identifying significance or to set it apart from the other informational wording. See In re Brass-Craft, supra. Moreover, as noted by the examining attorney, the colors in the mark merely manifest and emphasize the information the word conveys.
The use of the TM symbol on the inner flap location of one specimen does not change the commercial impression of the applied-for mark, which as used in the specimen only informs the consumer of the features of the pushbutton switches. The "mere intent that a term function as a trademark is not enough in and of itself, any more than attachment of the trademark symbol would be, to make a term a trademark." In re Manco Inc., 24 USPQ2d 1938 (TTAB 1992) (THINK GREEN failed to function as a mark for, inter alia, mailing and shipping cardboard boxes). See also In re Volvo, supra (DRIVE SAFELY failed to function as a mark for automobiles and structural parts therefor); In re Remington Products, Inc., 3 USPQ2d 1714 (TTAB 1987) (PROUDLY MADE IN THE USA failed to function as a mark for electric shavers and parts thereof). Applicant attempts to distinguish these cases by noting that the subject matter was deemed unregistrable in each case due to the nature of the mark itself whereas, in this case, the mark contains both "informational aspects" and "aspects that communicate to purchasers that the mark is a trademark" and serves "both as a trademark (source/quality indicator) AND as an informational device."
However, while the applied-for mark has not been refused as descriptive under Section 2(e)(1) of the Trademark Act, the fact that the applied-for mark may be registrable if it were used in a different context is not the issue. Rather, the applied-for mark, as used, would not be perceived as a trademark, and the mere addition of the trademark symbol is not sufficient to transform the non-trademark use into trademark use. The term fails to function as a mark not only because of the informational nature of the term, but also because of the way it appears on the specimen. The manner in which the applied-for mark is used on the specimens presents the applied-for mark as part of the product features and not as a trademark. Even an inherently distinctive designation is not a trademark if it is not used in a trademark manner. See McCarthy, J. Thomas, McCarthy on Trademarks and Unfair Competition §3.3 (4th ed. database updated 2005); see also In re Niagara Frontier Services, Inc., 221 USPQ 284 (TTAB 1983) (WE MAKE IT, YOU BAKE IT! held not merely descriptive, but refusal based on failure to function as a service mark affirmed).
In summary, the manner in which the applied-for mark is being used does not support a finding that potential consumers would perceive it as a trademark. As used in the specimens of record, the applied-for mark does not convey the commercial impression of a mark identifying the source of origin of applicant’s goods. This conclusion is not altered by the fact that a TM symbol is displayed in one location in one of applicant’s brochures adjacent to the word SPECTRUM. See In re B.C. Switzer & Co., 211 USPQ 644 (TTAB 1981).