Office Door Sign Not Adequate Specimen of Use for Real Estate Services, Says TTAB
The Board affirmed a refusal to register the mark REPUBLIC NATIONAL for various real estate services, because applicant's specimens of use failed to show the mark in use with the identified services. Applicant had submitted two photographs of the front door of the facility at which it provides the services. In re Republic National LLC, Serial No. 86513101 (February 23, 2017) [not precedential].
The Board pointed out that a specimen of use must show "some direct association between the offer of services and the mark sought to be registered therefor." If the mark is "used in rendering the identified services," the specimen "need not explicitly refer to those services in order to establish the requisite direct association between the mark and the services."
Here applicant's front door did not reference the services. Displaying the mark on the front door does not constitute use of the mark in the rendering of the services.
The front door embossed with Applicant’s REPUBLIC NATIONAL mark is not providing real estate investment and acquisition services, banking and financing services or real estate development services; rather, the front office door of Applicant’s business establishment that is imprinted with the REPUBLIC NATIONAL mark, beyond merely directing an existing client to Applicant’s location, is more similar to advertising and without some reference to the services.
The Board distinguished In re Metriplex, 23 USPQ2d 1315 (TTAB 1992), wherein the Board deemed acceptable a computer screen display that appeared in the course of Metriplex's rendering of its data transmission services. The Board found that those services were provided "through a tangible item, namely, a computer terminal, so that the mark can appear on the computer screen, and the specimens show such use."
Here, applicant's office front door is more similar to an advertisement for applicant's services, and so the specimen must make some reference to the services. As displayed, applicant's mark could refer to any number of possible services.
And so the Board affirmed the refusal under Section 1 and 45.
Read comments and post your comment here.
TTABlog comment: One suspects that applicant has other specimens of use that would satisfy the USPTO.
Text Copyright John L. Welch 2017.
posted by John L. Welch @ 3/06/2017
10 comments
10 Comments:
To me this seems analogous to use at the point of sale for goods. If coupons quality as use at the point of sale, this wouldn't be much of a stretch.
I think this use should be acceptable. Wouldn't MACY'S used atop a store be good service mark use for "retail department store services", where of course the services are performed inside the building? How is this different in any material respect?
A sign on the door for a service is equivalent to a label (or tag) attached to any number of goods (think apparel, cosmetics, sporting goods, etc.) in order to show use of the mark. If the PTO will accept the label (or tag) without seeing the actual goods, then why wouldn't they accept the sign on the door without seeing reference to the service? Isn't this inconsistent?
Another instance of bureaucrats having fun abusing the power to say NO!
How is this any different than a restaurant sign for restaurant services?
But a picture of a sign in front of a restaurant works even if no reference to any services? The USPTO is inconsistent on these issues. The rule should just be that if there is no reference to services it is not acceptable.
And when you file a renewal pretty much anything is accepted.
The rule that service mark specimens must indicate the service as well as the mark is just plain wrong, and not required by statute. It stems from In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456, 457 (CCPA 1973)where the CCPA affirmed a denial of a registration on the ground that the service mark applicant never used the mark. In addition to the usual elements of the application there was evidence that the mark was not really in use in connection with the services recited in the application but rather in connection with something different. In the course of that affirmance they said that the specimen did not show use of the mark in connection with the recited services, since it showed the mark related to something different -- an industrial process.
The Trademark examiners and TTAB took that observation and bootstrapped it into a requirement that service mark applicants must indicate the service on the specimen, taking the CCPA's dictum out of context.
Notice that if you are submitting a specimen for a trademark, all you need it the item showing the mark, not anything that indicates that the goods associated with the mark have ever been sold or transported or that the goods are the ones recited in the goods id.
The end result is that the standard for service mark specimens is unnecessarily more stringent than for trademark specimens, but for no good reason. This case is a prime example. There was no dispute that the people in the office behind the door were not offering the services identified in the application, so the specimen should have been accepted.
This is a bad decision. I've been doing restaurant trademark work for years and have repeatedly submitted photos of buildings that didn't explicitly say "restaurant" or "tacos" or whatever. The PTO's recent questioning of specimens in general has gotten out of hand - what happened to giving the benefit of any doubt to an applicant that swears under penalty of perjury that this is a door to an office where the services are rendered? The Board's classification of door signage as advertising is just wrong - at worse it's both advertising and an identification of where the services are offered. It's no different than a home page on a web site where you have to open up more pages to see what's "inside" the site. And the Board's emphasis on potential customers is misplaced. Where is the word "potential" in the Lanham Act?
On the other hand, John, if the applicant had other specimens why would they have wasted the money on this appeal?
I have successfully used as service mark specimens dozens of door and building signs, even truck signs, that do not mention the services for going on four decades now. The specimen is not the letters of the sign, it is the building. The building contains the services just like a package contains the goods. It is absurd to say that someone entering a real estate office through a door with the service mark of the office on it does not associate that mark with the services.
From the decision, it feels like the actual rejection was that use of a business name on a door just means that it's a trade name, and you need to show more of a connection to the services to prove that it's a trademark and not solely a trade name.
I'm honestly not sure how you'd meet that standard in the ordinary course of business, however. A brochure for real estate brokerage services with the company name on the front doesn't strike me as showing more of that kind of connection than an office in which real estate brokerage services are provided with the company name on the door.
A bit baffled as to the appeal, however. The date of first use is a good year before the statement of use filing, so I'd have to think there was some brochure/advertisement/something the examiner would have accepted, making "Yes, the examiner's wrong, but it's cheaper to just give him what he wants instead of fighting it out" the seemingly obvious course.
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