Test Your TTAB Judge-Ability on this Trademark Specimen of Use

Here we go again! Another specimen of use problem. Applicant Factory Direct applied to register the mark SLEEP BETTER, LIVE BETTER for "sleep products, namely, mattresses, spring mattresses, box springs and mattress foundations." It submitted the specimen shown below, in which applicant's slogan is displayed on a large, circular, illuminated sign hanging from the ceiling of its showroom. The USPTO rejected the specimen on the ground that the mark is not closely associated with the goods, as required by the Act and applicable rules. Factory Direct appealed. How would you rule? In re Factory Direct, Inc., Serial No. 77764096 (February 21, 2013) [not precedential].


Examining Attorney Linda A. Powell maintained that the sign is located some distance away from the goods, and is not associated with the goods as would be shelf-talkers, banners, and other point-of-purchase displays. Although the specimen might be suitable for a service mark application, it is not acceptable for a trademark application.

The Board agreed with the examining attorney. As Judge Bucher pithily observed: "Wishing does not a trademark make."

[A]s the prospective consumer flops down on the floor model to determine the quality and comfort of the innerspring mattress, it is the Serta, Sealy or Tempur-Pedic label on the mattress the customer will be eyeing when making a determination about the quality of the product. By contrast, the prospective consumer will not understand the suspended slogan to be a mark identifying the source of that mattress. Moreover, applicant does not argue anywhere in the prosecution of this application that the applied-for mark appears on or in close proximity to any of the goods for which registration is sought.

The Board therefore affirmed the refusal to register.

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TTABlog note: Well, how did you do? Does this appeal belong in the "WYHA?" category?

Text Copyright John L. Welch 2013.

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