Use of Mark for Menu Item Insufficient for Restaurant Services Application, Says TTAB
The Board affirmed a refusal to register the mark CHA CHA for restaurant services on the ground that Applicant failed to submit an acceptable specimen of use. The Board ruled that the applied-for mark served only to identify a menu item and did not function as a service mark for restaurant services. In re The Restaurant Company, Serial No. 77508734 (January 17, 2012) [not precedential].
The definition of "service mark" in the Trademark Statute requires that the mark "identify and distinguish" the services from those of others, and indicate the source of the services. A mark will be deemed to function as a service mark "only if purchasers will directly associate the asserted mark with the services in question."
Applicant's specimens of use (shown above) consisted of various promotional pieces [table tents? - ed.]. But, the Board noted, "a proposed mark that serves only to identify an item on a menu does not function as a service mark for restaurant services."
The Board agreed with Examining Attorney Jeffrey C. Coward that the mark CHA CHA, as it appear on the specimens, identifies only a particular food items (wings) and not restaurant services.
[P]urchasers would not directly understand and perceive the mark as it appears on the displays as a source-indicator for the restaurant services. This is so, even though purchasers obviously are aware that applicant is rendering restaurant services because they are in the restaurant when they encounter the mark and can purchase wings while eating in the restaurant. Such a generalized association in the purchaser's mind between the product mark and the restaurant services does not suffice as the requisite “direct association” between the mark and the services which would make the asserted mark a service mark for the restaurant services themselves.
And so the Board affirmed the refusal to register.
Text Copyright John L. Welch 2012.
posted by John L. Welch @ 2/02/2012
9 comments
9 Comments:
I think this decision is wrong and I hope they appeal it. Customers will associate any mark used in a restaurant with the services. The TTAB is taking too crabbed a view of what it means to function as a trademark and they need the courts to tell them they are off course.
Suppose the recitation of services read: restaurant services featuring chicken wings. Would that be a better case for acceptance of this specimen of use?
I think this is a close call. My initial reaction was that it's use of the mark on a point-of-purchase display for goods, in this case chicken wings. But it doesn't take much of logical leap to see the menu item as an advertisement for the identified services, e.g., "if you order these CHA CHA wings we will prepare the wings, in our kitchen, and serve them to you." Sounds like restaurant services to me, and I do think John's ID revision might change the outcome here.
Your comment is exactly what I was going to comment about and I agree with it. I believe it follows from our offline e-mail exchange about a similar case that if the ID were changed to what you suggest or "restaurant services, namely a menu item consisting of chicken wings...," the specimen should have been considered acceptable?
Why would they spend money appealing it when they could have simply and easily created proper specimens (for less cost then the legal fees) that would clearly show restaurant services for the mark instead of a "good." If they had specimen timing issues they should have also filed a new application.
I just do not understand why good attorneys waste their client's money writing briefs about clearly improper specimens.
They should have refiled a new application to back this one up if they could not provide a proper specimen. Now they have at least one third party who filed a new application for "restaurant services" on a CHA CHA mark.
Ah, can we say more fees!!!!
Check out:
In re Mariott Corporation (TEEN TWIST):
164 USPQ 49 (TTAB 1969);
164 USPQ 50 (TTAB 1969); and
173 USPQ 799 (CCPA 1972).
The Marriott case says that a menu is a proper specimen of use for a trademark for a sandwich, not for a service mark for restaurant services
In re Marriott, 164 USPQ 50 (TTAB 1969)-- TEEN TWIST for services-- Board reversed Examiner's refusal.
Cocurring/dissenting judge agreed use on a menu could constitute use for restuarant services.
So that's a divided three judge panel, two-thirds of which says use of mark for a menu item serves as a service mark specimen of use. The Brown & Portillo case cited by the Board says otherwise.
In the past I have relied on the McDonald's case for the proposition that use of a mark for a menu item can satisfy the specimen requirement for restaurant services. But recently my attempt to do that was rejected by the PTO Examining Attorney.
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