TTAB Test: Is This Specimen Acceptable for "ELLE SCHNEIDER" for Video Production and Script Writing Services?
Opposer Hachette claimed that the applied-for mark ELLE SCHNEIDER fails to function as a service mark for video production and script writing services. Applicant Lauren R. Schneider's specimen of use is shown below. Hachette contended that applicant is using the name “Elle Schneider” as her personal name and/or pseudonym, and not as a service mark in connection with the advertisement, promotion or provision of the identified services. How do you think this came out? Hachette Filipacchi Presse v. Lauren R. Schneider, Opposition No. 91202984 (November 4, 2016) [not precedential].
The specimen business card depicts the term ELLE SCHNEIDER next to the wording “DIRECTOR/WRITER” and Applicant’s email address. Opposer Hachette maintained that the business card displays applicant's name, Elle Schneider, but does not include any use of "Elle Schneider" as a service mark.
The Board observed that a personal name mark (not a surname) is deemed to be inherently distinctive "if the record shows that it is used in a manner that would be perceived by purchasers as identifying the services in addition to the person." E.g., In re Carson, 197 USPQ 554 (TTAB 1977) (JOHNNY CARSON registrable as a service mark where name featured in advertisements for services).
The Board found the specimen here to be similar to that in Ex parte TOAL, 111 USPQ 450 (Comm’r Pat. 1956) wherein the applicant sought to register “Marguerite Charlene” as a service mark for script writing and song composition services. Her business card displayed “Marguerite Charlene,” “Scripts and Songs for Radio and Television Performances” and her street address. The Commissioner affirmed the refusal to accept the business card as a specimen because the alleged mark was used to identify an individual rendering a personal service and not a name adopted and used by applicant to identify and distinguish her services from those of others.
Here, applicant used “Elle Schneider” as an assumed name and she provided direction (of videos and film) and is a writer. "The depiction of her assumed name, along with 'DIRECTOR/WRITER' and her email address, on the business card also demonstrates the rendering of a personal service and not a name adopted and used by Applicant to identify and distinguish her services from those of others."
The Board therefore found that Applicant’s specimen does not function as a mark for the services identified in Applicant’s application.
The Board also sustained Hachette's likelihood of confusion claimed based on the registered mark ELLE for overlapping services. But the Board dismissed opposer's dilution claim because, although applicant conceded that ELLE is famous in the fashion industry, that concession was not enough to establish that Applicant’s mark is a famous mark for purposes of Section 43(c)(1).
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TTABlog comment: I disagree with the Board ruling on the specimen of use. How about you?
Text Copyright John L. Welch 2016.
posted by John L. Welch @ 11/14/2016
5 comments
5 Comments:
I don't have a problem with the outcome of this case, but I'm not impressed with the Board's approach to analyzing names.
Here, the Board compared opposer's mark ELLE with applicant's mark ELLE SCHNEIDER and found that "ELLE is the dominant, or at the least, prominent, term in ELLE SCHNEIDER, and is easily recognizable as the first word in the mark. [citing the usual cases about the firm term in a mark] Opposer’s single-word mark is thus identical to the first, and dominant, term in Applicant’s two-term mark."
Now, compare that with the Board's analysis of DUFFY vs. PETER DUFFY (stylized) in In re DZ Trading Ltd., Serial No. 85759557 (8/26/2016), in which the Board stated, "we find the given name 'Peter' in Registrant's mark ancillary to the commercial impression created by the surname 'Duffy.' Because 'Duffy' is the dominant portion of the cited mark, it is the term most likely to be remembered. . . . [W]hat matters is that the cited mark consists of only two terms, and that the dominant term forms the entirety of Applicant's mark."
In the Toal case the Board cites, the rational for the refusal to accept the business card as a specimen was
the alleged mark was used to identify an individual rendering a personal service
and not
a name adopted and used by applicant to identify and distinguish her services from those of others.
This makes no sense. The mark does both, they are not mutually exclusive.
If they want to come up with a new refusal based upon some desire not to be swamped by applications from every service provider registering his/her personal name, then go to Congress and get them to add that as a legitimate basis for refusal.
If our esteemed Bloghost wants to register "John Welch" for "legal services in the field of trademark law," what is wrong with that?
A pro se against a big company that spent a lot of money on this case, but The Board blew it even though Applicant filed no brief and did not submit any testimony or other evidence.
So many mistakes in this - it looks like it was written by a robot.
ELLE is the dominant, or at the least, prominent, term in ELLE SCHNEIDER. Really?
1301.04(h)(i) Letterhead
Letterhead stationery, business cards, or invoices bearing the mark may be accepted if they create an association between the mark and the services.
So if she put up a website that had her name in upper left corner and the words "video production and script writing services" in the center of the website that would suffice?
I think the Board got hung up on an old case that is out of date and inconsistent with the acceptance by the USPTO of business cards for such services.
TMEP 1301.04(f)(ii)
For specimens showing the mark used in advertising the identified services, in order to establish the requisite direct association the specimen must contain a reference to the services and the mark must be used on the specimen to identify the services and their source. See In re WAY Media, Inc., 118 USPQ2d at 1698; In re Monograms Am., Inc., 51 USPQ2d 1317, 1318 (TTAB 1999) . While the services need not be stated word for word, a "sufficient reference" to the services themselves or a general reference to the trade, industry, or field of use is required. See id.; In re Ralph Mantia Inc., 54 USPQ2d 1284, 1286 (TTAB 2000) (reversing the specimen refusal since the term "design" appeared on applicant’s letterhead stationery, envelope, and business cards and stating "[i]t is not necessary that the specific field of design, i.e., commercial art, also appear [on the specimen]. Here, the word ‘design’ alone is sufficient to create in the minds of purchasers an association between the mark and applicant's commercial art services.")
I completely agree with the TTAB's decision in this case. From a public policy stand point, allowing the party to register his/her name as it is found on a business card would open the door for anybody, attorneys and consultants, to claim their name as a trademark as nearly every business person has a business card with their name displayed and the services they provide. It is one small step then for the telephone numbers and addresses to also be claimed as trademarks.
Agree with the board. The business card by itself does not provide evidence that Elle Schneider is a source of the stated services rather than, say, an employee of MegaDesign Corp who performs said services. A few minor changes to the card presentation could fix this (say, appending "LLC" to the name), although the card itself still does fails to prove a use in commerce vs an intent to use.
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