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 In re Phoenix Intangibles Holding Company, Serial No. 85355964 (August 26, 2014) [not precedential].
"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.
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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.