When a trademark applicant seeks to submit a statement of use to the USPTO, it must provide a specimen that shows the mark being ‘used in commerce’. This specimen must be a substantially exact representation of the mark as used on or in connection with the goods and/or services. In In Re Kristin A. Harris, the Trademark Trial and Appeal Board reversed a Trademark Examining Attorney’s finding that the specimens Applicant provided were not sufficient to satisfy the use-in-commerce requirement. In re Kristin A. Harris, Proc. No. 77807042 (T.T.A.B. Jan. 23, 2015).
The Applicant, Kristin Harris, sought to register CELIABRATE in four classes, for goods and services including gift bags, shirts, baked goods, and a website promoting medical information about Celiac’s disease. She based her application on an intent-to-use basis and later submitted a statement of use showing the mark in use on her goods and services for sale on her website. In addition to her original specimens, she submitted supplemental specimens in response to the Office Action showing how the mark was used on, or before, the statement of use date.
(Applicant’s specimen is the first image on the left. The second image is the logo blown up.)
Applicant also used the mark below the KRISTANN’s mark and in the products’ descriptions. (Highlighting added by blog author.)
The Examiner argued that the CELIABRATE mark was being used a composite mark because CELIABRATE was not separable from the phrases “CELIABRATE LOVE!” “CELIABRATE LIFE” & “CELIABRATE BLISS” in the Applicant’s specimens. Therefore, the specimens did not show that the mark CELIABRATE was in use in commerce as a unitary mark.
The TTAB disagreed and held that the CELIABRATE mark functioned as a unitary mark and that the specimens were sufficient to show use in commerce. It started off by stating that Applicant “may seek to register any portion of a composite mark if that portion presents a separate and distinct commercial impression which indicates the source of