Wednesday, December 10, 2008

TTAB Affirms Refusal of "DESIGN EXPRESSIONS" Mark: Not Used as Source Indicator on Specimen of Use

The Board affirmed a refusal to register the mark DESIGN EXPRESSIONS for "referral to building contractors needing building materials or sources of supply of building materials," on the ground that Applicant's specimen "fails to demonstrate use" of the mark for the identified services. In re Contractor Express, No. 76682478 (November 21, 2008) [not precedential].

[complete specimen here]

Examining Attorney Mariam Aziz Mahmoudi maintained that customers will not perceive the mark DESIGN EXPRESSIONS as a source identifier "when the mark is used in an advertisement which refers to a showroom and design center." Although the specimen informs customers about certain features of the showroom, "it is silent on the source of referral services."

Applicant Contractor Express, of course, disagreed and offered a declaration of its Vice-President, who stated:

2. Our customers are contractors who come to our facility at which, as noted on the specimen of record, they consult with our staff in "our Special Order Department to get [what they] want and how [they] want it;"
3. Accordingly, it is my experience that in our facility our contractor customers receive our DESIGN EXPRESSIONS-identified referral services….

The Board observed that, under Rule 2.56(b)(2), a service mark specimen "must show the mark as actually used in the sale or advertising of the services." The mark must be used in such a way that it would be perceived by customers as a source-identifier for the identified services. An advertisement must "show an association between the mark and the services for which registration in sought."

Here, the mark as it appears on the specimen would not be perceived as a source indicator for the recited services. Instead, it would be viewed as referring to Applicant's showroom and design center.

Indeed, the specimen includes the following statements: "It's our brand new Design Expressions Showroom and Design Center" and "With almost triple the space of our present showroom, Design Expressions will feature more products, more displays and best of all more selection." Additionally, at the bottom of the specimen there is a reference to "DESIGN EXPRESSIONS Showroom and Design Center."

The fact that the showroom is "staffed by our Special Order Department to get you what you want, and how you want it" does not help, since such a department "is not the same thing as the services of 'referral to building contractors needing building materials or source of supply of building materials.'"

And so, the Board affirmed the refusal to register.

TTABlog comment: Looking at the specimen of use, exactly what, if any, services does it refer to? And note that, according to the specimen, the DESIGN EXPRESSIONS showroom hasn't even opened yet! In fact, the specimen looks like the first page of a newsletter announcing the coming of the new showroom. I think you'd have to say the Board got this one right.

Text Copyright John L. Welch 2008.


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