When it comes to proving use of marks in commerce, perception by consumers is everything. If consumers perceive a mark as identifying only a particular component or feature of the goods in a specimen, the PTO will likely refuse registration of the mark on the basis that the specimen does not show the mark in use in connection with the goods specified in the Statement of Use/Amendment to Allege Use.
In a recent TTAB case, In re Ther-A-Pedic Associates, Inc., Applicant Ther-A-Pedic’s specimen of use for the mark THERAFIT was refused as not showing the mark in use with the goods, “bed sheets” in Class 24:
In the specimen, the mark is used as one of the larger phrases on packaging for THERAPEDIC sheets – “with Therafit technology.” The Examining Attorney refused registration on the grounds that THERAFIT is used as a component mark to identify a component or feature of the goods, not the goods themselves. The Applicant argued that the mark refers to the finished bed sheets, since any components of the sheets (i.e., the elastic feature identified by the mark) cannot be disassociated with the sheets, or otherwise sold separately. This argument was unsuccessful, and the TTAB affirmed the refusal.
What lessons can be learned from this case? When filing for a mark, carefully consider how the mark will be used – will it only identify a feature or component of the goods? If so, consider ways to work around the issue before filing. Perhaps the component mark should be filed for only the identified component of the goods; this could give the Registrant some future flexibility, if the feature or component is useful in a different finished product than originally anticipated. Another potential work-around is to revise the marketing plan for the goods so that the proposed mark identifies the goods as a whole. In the case of the Therapedic sheets, marketing the sheets as THERAFIT sheets (instead of THERAPEDIC sheets with Therafit technology), or as THERAPEDIC THERAFIT SHEETS, may have a been a way to avoid the component mark refusal.