Wednesday, June 03, 2009

TTAB Says a Principle is not a Service, Affirms PTO Rejection of Specimens of Use

Okay, this will take some explaining. Applicant Michael Labellarte was attempting to register the mark SOFT ROOM for various audio-visual, graphic design, and editing services. He submitted specimens of use on five different occasions, but Examining Attorney Kevin S. Corwin rejected every one because the specimens did not show the phrase used as a service mark. The Board agreed with the PTO and affirmed the refusal. In re LaBellarte, Serial No. 76526520 (May 29, 2009) [not precedential].

part of Applicant's fifth specimen
(click on figure for larger picture)

The original specimen, an advertising brochure states that "Outsider has developed its editing and design environments around its proprietary soft room principle." Even though the words "soft room" appear in the color red and the rest of the text is black, that is not use as a source identifier for Applicant's recited services.

"Soft room" is identified as a proprietary principle, described as "dispensing with equipment in the actual creative room thus allowing creatives and Outsiders to concentrate on the project at hand and not be distracted by the clanking and humming of machinery."

The next two specimens were essentially the same as the first and suffered from the same defect.

Applicant's fourth attempt comprised two advertisements (depicted in the Board's opinion). In the first, the phrase "soft room" appears randomly displayed along with the words "noise," "brand," "production" and "enhancement," and would not be perceived as a source identifier. In the second, Applicant refers to his "propietary soft room system," with the words "soft room" in red and the other text in black. Not good enough, said the Board:

By referring to a media room with certain capabilities, and by labeling the “Soft Room system” proprietary, from this specimen, purchasers would not perceive “Soft Room” as the source identifier of any of applicant's services.

Turning to the fifth and final specimen, "soft room" again is identified as a proprietary principle.

In the paragraph on the right, the specimen states that "Outsider, Inc. uses the soft room principle for our Editing and Design services." The specimen states that "soft room" is a principle; and that principle is used in rendering editing and design services. There is no direct association of "soft room" with the services listed in the application.

Nor would the words "soft room" appearing at the top of the specimen be perceived as a source identifier for the services mentioned in the specimen: "the identification of 'soft room' as a principle in the text of the specimen precludes a direct association with the stated services and there is nothing else in the specimen to make the necessary direct association."

Five strikes and you're out! The Board affirmed the refusal to register.

TTABlog comment: Just because one coins a phrase and uses it in an advertisement, even in the color red, does not make it a service mark. Using the phrase as the name of a principle is pretty much the antithesis of trademark use. I suspect every trademark practitioner has run into this type of problem all too often: the client wants to register a word or phrase that it coined, but it has never used same as a mark and has no clue how to do so.

Text Copyright John L. Welch 2009.


At 10:41 AM, Anonymous Anonymous said...

Seems like there should have been a generic/descriptive refusal too.

At 9:21 PM, Anonymous Anonymous said...

I actually don't think that the reference to the mark as a "principle" is what sunk the boat here. Rather, it's that even on specimens where the mark is at the top of the page and is otherwise probably sufficient to signify that SOFT ROOM is a mark, there was no mention of the applicant's services.

Even if the applicant had kept the references to the "soft room principle" in the specimen shown in the blog post, if there had been text on that page that actually described the services being offered, rather than the loose, marketing drivel that appears there now, I think things would have turned out differently.

Indeed, much to the chagrin of many a trademark lawyer, applicants often have specimens that, while showing fairly solid trademark use, also demonstrate use of the mark as a noun or some other trademark usage no-no. Such specimens are never objected to, though of course they're never a great thing to have laying around if someone is trying to challenge a registration or other demonstrate erosion of a party's trademark rights.

If possible, preparation for filing a Statement of Use is a great time to coach clients on proper trademark usage.


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