A recent ruling from the Trademark Trial and Appeal Board (“the Board”) found a coupon to be an acceptable specimen for the U.S. Trademark Office (“Office”) showing proper trademark use. Johnson & Johnson submitted the coupon to the Trademark Examiner in support of the mark EARNING TRUST WITH EVERY BOTTLE for their usual line of products: “Facial and skin cleansers; facial and body washes; soaps; shampoos; and body lotions.” The Trademark Examiner issued an Office action in which he found the coupon to be an unacceptable specimen and eventually made the refusal to register final. After remanding to the Examining Attorney after a Request for Reconsideration, the Board finally reversed the refusal and found the coupon to be an acceptable specimen showing use of the mark in commerce.
The decision tracks the language of Section 45 of the Trademark Act (“the Act”) which states that a mark is deemed to be used in commerce when “it is placed in any manner on goods or their containers or displays associated therewith or on the tags or labels affixed thereto.” The holding turned on whether the coupon could be considered a “display” within the meaning of the Act. Ultimately, because the coupon displayed Johnson & Johnson’s goods, showed the applied-for mark next to the goods, identified the retailer where the goods could be bought, and was dispensed to the customer in the very store where the goods were located, the Board found that the presentation of the coupon to the customer began the association of the mark with the goods.
So does this mean that every clipping from the Pennysaver is enough to earn trademark rights? Probably not. But with a well-known brand and a coupon that nails the specifics of mark identification, the decision could represent a foot in the door for more creative point of sale “displays.”