TTAB Defines When Catalogs Are Mere Advertising

In a recent precedential decision following an ex parte refusal of registration, the TTAB offered an in-depth analysis of the specific elements required to convert a catalog from "mere advertising" to an acceptable "point of sale" specimen for products. In re Tsubaki Inc., (TTAB March 7, 2014)

In support of its use-based application to register the mark TSUBAKI: THE CHOICE FOR CHAIN for "industrial machine parts, namely, chains and sprockets," Tsubaki submitted six different specimens, each of which the Examining Attorney rejected each as mere advertising material. On appeal, the TTAB emphasized the distinction between the type of specimens that will support an application for goods versus services. Noting that while Section 45 of the Act specifically provides that use of a mark on advertising will qualify as use in commerce for a service mark, it emphasized that advertising is not included under the provision for marks used on goods.