Thursday, August 28, 2014

Test Your TTAB Judge-Ability on this Service Mark Specimen of Use

This applicant tried to register the mark ANOTHER GIANT EAGLE ADVANTAGE for "supermarket services," relying on the specimen of use displayed immediately below. The examining attorney refused registration, maintaining that the specimen did not show use of the mark in connection with the recited services. Applicant appealed. How would you rule? In re Phoenix Intangibles Holding Company, Serial No. 85355964 (August 26, 2014) [not precedential].

(click on photo for larger picture)

"A service mark specimen must show an association between the mark and the services for which registration is sought, although the services need not be expressly referenced." The question was this: how would consumers perceive applicant' use of the mark on this specimen? Does it identify supermarket services?

The examining attorney contended that the advertisement is limited to beer, not supermarket services. Applicant, on the other hand, argued that beer is a product often sold in supermarkets and that "many, if not all, supermarkets have advertisements featuring only a portion of the products they sell ...." The Board agreed with applicant: "it is common knowledge that beer and wine may be sold in supermarkets and that supermarkets often advertise a few of the products they sell." [Apparently, the Board took judicial notice of that "fact"]. It noted that the case law does not require that the specimen include a statement as to the nature of the services.

The Board concluded that the specimen, considered in context, shows "direct use of the mark" in connection with supermarket services.

The advertisement submitted as a specimen promotes the sale of beer at a store such as the GIANT EAGLE MARKET DISTRICT shown in the logo at the bottom of the advertisement. A market includes a supermarket. Thus, we have a connection between the mark and a store that offers a variety of goods. *** [A] purchaser or prospective purchaser of Applicant's supermarket services would view the mark ... as promoting the sale of a wide selection of beers at Applicant's supermarket.

And so the Board deemed the specimen of use acceptable and it reversed the refusal.

Read comments and post your comment here.

TTABlog comment:  A strange decision, I think. Why wouldn't consumers think this was an advertisement for just a liquor store?

Text Copyright John L. Welch 2014.


At 9:58 AM, Anonymous Roberto said...

Another GIANT EAGLE trademark?
Why even file for this mark? They've already got GIANT EAGLE and GIANT EAGLE ADVANTAGE registered for these services. When I first saw the specimen I thought it was a failure to function refusal.

At 10:22 AM, Anonymous Carole Barrett said...

Agreed re whether there is a Failure to Function...but if does function, then it appears that applicant admitted only using mark with beer, therefore, services should have been narrowed to retail sale of beer. Alternatively, prior to grant of broad category and based results of pilot study conducted by PTO, I think this would have been appropriate time to ask for additional specimens.

At 12:40 PM, Anonymous Anonymous said...

I think the specimen is fine and I think the trademark is fine (why failure to function?).

The PTO is generally too strict when it comes to specimens, I think. They are signing a declaration stating that they are using the mark in connection with the services specified in the application, and they provided a flyer bearing the mark used in connection with those services. I don't see why the flyer has to specifically spell out that they are a supermarket. The fact that they are a supermarket should be obvious to their consumers. People shouldn't have to change their specimens just to satisfy the requirements of the USPTO.

At 1:40 PM, Anonymous Anonymous said...

I couldn't agree more with Anonymous 12:40! The mark is solid and suggests that applicant uses it with a variety of ads like this one for various products and sales. It refers directly to the market and, frankly, it is completely irrelevant in my mind what products are promoted. I buy toys, candles, even sports goods and garden decor at my supermarket. Must the specimen refer to every item? Of course not.

At 1:53 PM, Blogger John L. Welch said...

Of course the specimen need not refer to every item sold in the store. But at least it should refer to grocery store services. The question is what the consumer would perceive. How does this convey the idea that grocery store services, rather than liquor store services, are being offered?


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