TTAB Affirms Service Mark Refusal: Specimen Failed to Show Service Mark Use.

The Board affirmed a refusal of the mark WIRELESS MEDICAL TECHNOLOGY under Sections 1, 2, 3, and 45 of the Lanham Act because the specimen did not show the mark "used to identify and to distinguish" Applicant's electromagnetic energy treatment services. In re Diapulse Corp. of America, Serial No. 76592393 (December 6, 2006) [not citable].


The specimen submitted by Applicant Diapulse comprised a four-page brochure for its "DIAPULSE Wound Treatment System." The subject mark was displayed on the last page of the brochure in the manner shown below:

Portion of Specimen of Use
The issue was the acceptability of the brochure as evidence of service mark use. Examining Attorney Elizabeth M. Winter did not challenge Applicant's statement that it renders electromagnetic energy treatment services, that such services are "registrable services," or that a mark may function as both a trademark and a service mark.

"The problem that the Examining Attorney has with the brochure specimen is that it makes absolutely no reference to the applicant's services. It is the Examining Attorney's position that a service mark specimen must make some reference to the services, otherwise there will be no association between the mark sought to be registered and the services specified in the application."

The Board observed that here the specimen makes "absolutely no reference, not even an indirect reference" to the recited service. Nor was there any evidence that the mark is used in connection with advertising the services, nor that it is used in the rendering of the services.

"The crux of our analysis is that a purchaser or prospective purchaser of applicant's services (either electromagnetic energy treatment services or the rental of applicant's product) would view the mark in the brochure as referring to applicant's product, the Diapulse® electromagnetic medical treatment system. We have no basis upon which to conclude that purchasers would regard the mark as anything other than a trademark."

The Board therefore affirmed the refusal.

TTABlog note: The reader will recall that a specimen that shows the mark used in the course of performing services is generally acceptable. See, e.g., In re Red Robin Enterprises, Inc., 222 USPQ 911 (TTAB 1984) (photograph of costume worn by performer during performance of entertainment services held to be an acceptable specimen). Also see TMEP Section 1301.04(b) and the TTABlog posting here.

Text Copyright John L. Welch 2006.