Wednesday, October 12, 2011

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 In re R & B Receivables Management, Inc., Serial No. 77855168 (September 23, 2011) [not precedential].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.


At 10:32 AM, Anonymous Anonymous said...

This case is surprising to me, and in my view, it is wrongly decided.

The Board's statement that the sign is not used in the rendering of financial services is an overly restrictive approach. The building on which the sign appears is used in the rendering of services, and under the Metriplex case, that should suffice.

At 11:36 AM, Anonymous Gary Tannenbaum said...

I suppose that if the sign read "R&B Financial" or "R&B Advisory" the result woud be different?

At 1:31 PM, Anonymous Anonymous said...

This is an example of servicemarks being treated as inferior to trademarks.

When a trademark is involved, there is no requirement that the specimen indicate what the goods are. Services should be no different.

At 2:16 PM, Anonymous Anonymous said...

I always make sure if I am using a sign, which I try to avoid, that the goods/services appear in a window or something nearby to avoid just this problem.

Better yet, rather than spend thousands of dollars in legal fees, I would tell the client to take the money which would be spent on fees and use it for some marketing advertising brochures that are a perfect specimen. I find it really absurd that a firm would go to this effort when it is sooooo much easier to comply with the examiner.

So now they refile and start over?

At 7:19 PM, Anonymous Erik Pelton said...

It also appears that they could easily have submitted a screenshot of their website, assuming they had one at the time of the application filing.

At 8:23 AM, Anonymous Orrin A. Falby said...

This was an easy case to decide. Anonymous, I don't understand your comment that service marks are being treated inferior to trademarks. In my opinion, a service mark specimen is easier to obtain than a trademark specimen because mere advertisement is sufficient to show use of a service mark since a service is intangible and not a specific product. A sign does not per se function as advertisement, if it does not present information about what is being advertisd and offered or if it cannot be gleaned from the business the sign is attached to -- like a restaurant for example. This was a waste of the client's money. I am certain I could have found a substitute specimen that was acceptable. Use of the mark on letter sending a finacial statement would have been good enough.

At 9:53 AM, Anonymous Anonymous said...

Orrin said: "A sign does not per se function as advertisement, if it does not present information about what is being advertisd and offered"

But a label for Acme peanut butter that merely says Acme suffices as a specimen for an application to register Acme as a trademark for peanut butter. That trademark specimen does not present information about what is being advertisd and offered, either, but the PTO accepts it.

At 5:59 PM, Anonymous Anonymous said...

The sign could merely signal the name of the building, not its occupants. For example, consumers often encounter such naming practices where the services within are often distinct from the name on the building: think of Boston's Prudential building, The Mets at Citi Field, etc. Furthermore, the sign certainly doesn't reveal the services provided within.

At 8:59 AM, Anonymous Anonymous said...

other anon said: "The sign could merely signal the name of the building, not its occupants."

And a submitted label saying ACME may not be taken from a peanut butter jar, either, but the PTO accepts the applicant's word that that is how the specimen is used. When the applicant seeks a servicemark and says that the sign is being used to promote the services recited in the application, however, the applicant is assumed not to be telling the truth.

At 9:30 AM, Blogger Robert said...

I think I understand what Anonymous is trying to say. A product label with just the mark and affixed to the goods can be an acceptable specimen. If an applicant submits just the label as a specimen, the PTO will likely accept it even though the label lacks an explicit reference to the goods. So even though both the sign and the label lack an explicit reference, the label is an acceptable specimen but the sign is not.

While I understand the argument, I do not think the sign at issue here is a parallel comparison with a trademark label.

First, the nature of the specimens are different. The sign photograph is intended to convey a specific real-world example of the mark in use. A label is a more general statement that the mark is affixed to the goods or their packaging. To be truly parallel, a trademark applicant would need to submit a photograph of the label in use.

This brings us to the second point. A label has a generally understood implied reference. Trademark owners will affix labels to goods to identify their source. Based on common practice, people assume that the label is affixed to the goods or their packaging. As this practice is widely done, the public and the PTO can reasonably envision the otherwise implied context.

By contrast, signs often have uses other than identifying the source of the goods or services. They can identify a location, function as a trade name, etc. So there is no commonly understood source-identifying function for signs.

Moreover, a sign does not show use in the course of rendering the service. The sign communicates a message on the street while the service is rendered inside the building. I think we can agree that commonly an exterior sign is not visible inside a building.

A true parallel example would be an applicant who submitted a trademark specimen comprising picture of a factory building with a sign that says ACME Manufacturing. I have no doubt that the PTO would not consider the picture as a valid trademark specimen.

At 12:12 PM, Anonymous Anonymous said...

Robert, thanks for understanding my point, but the issue is not limited to service marks where the specimen is a sign in front of a building. Same is true for all specimens when the application is for a service mark instead of a trademark. If the specimen doesn't also state the service in generic terms, the PTO assumes the applicant is lying when he says the specimen is being used in connection with the service.

At 9:45 AM, Blogger Robert said...

@ Anonymous: The PTO assumes you're lying about your specimen? If that's true, I'm sorry to hear that.

The PTO will accept two types of specimens for service marks. The first and probably most common are brochures and other advertisements that show the mark and describe the service. Most businesses produce brochures, flyers, pamphlets, etc. or have a website that display their mark and refer to their service. But there is a second acceptable type of service mark specimen, namely, one that shows the mark while the service is being rendered. Think cocktail napkins or bar ware for restaurant and bar services.

The latter specimens are not required to describe the service to be acceptable, but sometimes service mark use is not obvious from just the specimen. In those cases an examiner may reject the specimen or request more information. Personally I find that a response with an explanation of how the mark is used will usually resolve the matter. In fact I try avoid the objection by including a brief explanation of the specimen and its use in the Specimen Description box on the PTO's electronic forms. A cocktail napkin could be described as such or even more explicitly as "a cocktail napkin provided to customers ordering a drink."

Of course, none of this would help the applicant in the instant case. Signs alone are not an obvious identifier of source. This particular sign fails both types of specimens. It does not describe the nature of the service and is not present when the service is rendered.

Finally I'm rather surprised that the applicant had nothing else that could have served as a suitable specimen. No brochures, flyers, pamphlets, or a website showing the mark and describing the services? Even a conference room with the mark on the wall might have served as a valid specimen ("this is where we meet with customers to discuss our financial services"). At least in the latter case, the applicant has an argument that the specimen is shown when the services are rendered. If such specimens were not available, then one must question if the mark was really in use.


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