Test Your TTAB Judge-Ability on this Specimen of Use for Financial Advisory Services
Examining Attorney Khanh M. Li issued a final refusal of the mark R&B SOLUTIONS for various financial advisory services, on the ground that the specimen of use (shown below) does not "evidence an association between the mark and the services specified in the application." The specimen consists of a photograph showing the mark on signs in front of and on a building. Applicant appealed. How would you rule? In re R & B Receivables Management, Inc., Serial No. 77855168 (September 23, 2011) [not precedential].
Applicant requested that, if the Board should find the specimen unacceptable, Applicant be allowed to amend the application to a Section 1(b) intent-to-use basis. No, said the Board. Once an application has been considered and decided on appeal, it will not be reopened except for the entry of a disclaimer or upon order of the Director.
Turning to the specimen issue, the Board first noted that under Trademark Rule 2.56(b)(2), a service mark specimen of use must show the mark as actually used in the sale or advertising of the services.
When the specimen of use shows the mark in the rendering of the services, it need not disclose the nature of the services. For example, in In re Metriplex Inc., 23 UPSQ2d 1315 (TTAB 1992) the computer printouts displaying the mark without disclosing the services was acceptable because it shows use of the mark as it appears on the computer terminal while in the course of rendering the services to the actual consumer.
However, when a service mark is used in advertising, the specimen must show an association between the mark and the services. "A specimen that shows only the mark, with no reference to the services, does not show service mark usage."
Here the specimen of use does not contain any reference to Applicant's financial advisory services. Applicant contended that the statement in the application that the sign appears at and on the building where the services are rendered is enough. Not so, said the Board.
Here, the signage is not used in the rendering of the service. The sign is not providing financial advisory services as the computer was providing data transmission services at the time that mark was displayed.
In other words, while [the sign] may indicate a source, it is a source in a vacuum unconnected to any service, at least without prior knowledge of an existing client. *** Upon seeing this sign, it could be literally for anything that one might find in an office park.
And so the Board affirmed the refusal.
TTABlog comment: Well that was easy, wasn't it? What if the services were sign manufacturing? Would this specimen of use be adequate? Not very likely.
Text Copyright John L. Welch 2011.