IP Law Daily, TRADEMARK—TTAB: Board affirms refusal to register PROMATCH, finding it describes process, not product, (Jan 9, 2025)

By Patricia K. Ruiz, J.D.

The specimens of record stated, “The ProMatch process ensures unrivaled consistency of weight and pitch from stick to stick, and pair to pair.”

The Trademark Trial and Appeal Board (TTAB) affirmed an examining attorney’s refusal to register the mark, PROMATCH, finding that the mark described a process by which the applicant’s products were made and did not describe the product itself. The TTAB concluded that the applied-for mark has not yet been used as a trademark for the “drum sticks and percussion instruments” identified in the application, but solely as a term for the process by which they are manufactured, as required by the Lanham Act (In re G4 2010, LLC, No. 90281547 (T.T.A.B. Dec. 23, 2024)).

Application and refusal. G4 2010, LLC, (applicant) applied to register the mark PROMATCH for “drumsticks and percussion instruments” in International Class 15. The applicant filed a statement of use and specimens from its website showing photos of the products and the use of the mark. The examining attorney refused registration because, among other things, the term appears to describe how the goods are made. As the website states, “The ProMatch process ensures unrivaled consistency of weight and pitch from stick to stick, and pair to pair.” The examining attorney explained that, as used on the specimens of record, the mark merely identifies a process or system and does not function as a trademark to indicate the source of an applicant’s goods and to identify and distinguish the goods from others. In response, the applicant argued that the mark is featured prominently (in bolded text and in larger size font than the remainder of the text) utilizing the trademark symbol and is used in close proximity to the point of sale and on the product packaging. The examining attorney finalized the refusal, maintaining that the mark as used on the specimens of record merely identifies a process or system, noting that the photo of the product’s packaging describes PROMATCH as a process. The examining attorney denied the applicant’s request for reconsideration, and the applicant appealed.

Lanham Act requirements. While the Lanham Act provides for registration of a mark based on use of the mark in commerce, it allows an applicant to begin the registration process having only a “bona fide intention” to use a mark in commerce. However, it ultimately requires the applicant to show the mark is being used in commerce before obtaining a registration on the mark. To this end, an applicant seeking registration must include one or more specimens showing the applied-for mark as actually used in connection with the goods identified in the application. The specimen must show a direct association between the mark sought to be registered and the goods specified in the application. A specimen may fail to show such a direct association when it refers to the process by which they were manufactured, not to the goods the applicant offers for sale. A term that identifies only a process, style, method, or system is not registrable as a trademark.

Mark refers to process. The TTAB agreed with the examining attorney that the applicant’s first specimen shows the products offered for sale bearing the trademark PROMARK. The accompanying text expounds on a process by which the drumsticks are “perfected” via a system used in a manufacturing operation or other technical operation. The applicant uses PROMARK to identify the drumsticks and PROMATCH to identify their means of manufacture, suggesting how both vendors and purchasers will view PROMATCH. The TTAB concluded that PROMATCH, as used on the specimens of record, has not yet been used as a trademark for the “drum sticks and percussion instruments” identified in the application, but solely as a term for the process by which they are manufactured.

The Case is Serial No. 90281547.

Judge: Heasley, D.

Attorneys: Jordan Chisek and Gina Durham (DLA Piper LLP) for G4 2010, LLC. Chris Wolfsen for the USPTO.

Companies: G4 2010, LLC

Cases: Trademark USPTO