Wednesday, November 16, 2005

TTAB Okays Specimen Showing Use of Mark in Rendering of Advertising Services

The Board overturned the PTO's refusal to register the design mark shown below for various advertising services "for others," finding acceptable Applicant's specimen of use comprising a shopping center brochure produced for its tenants (rather than specimens offering the services). In re Caruso Property Management, Inc., Serial No. 78241396 (November 2, 2005) [not citable].

Applicant Caruso operates a shopping center in Los Angeles, called "The Grove." Its specimen brochure included "some pictorial and word games directed at children and three detachable coupons for three businesses located in the mall." [See picture below]. The Examining Attorney contended that the brochure failed to show use of the mark for the identified services:

"These brochures are clearly targeted to the shopping mall patrons, not to the business owners within the shopping mall. They do not offer advertising services to the business owners. They do not offer promotional services. They do not offer any of the services listed in the International Class 35 recitation."

The Board, however, found that this argument failed to consider the possibility that "an acceptable specimen may show use of a mark only in the rendering of the services rather than in the advertisement of the services."

"The Board has observed that use in the 'rendition' of services should be viewed as an element of the 'sale' of the services under Section 45 of the Act. In re Red Robin Enterprises, Inc., 222 USPQ 911, 913 (TTAB 1984). See also In re Metriplex, Inc., 23 USPQ2d 1315 (TTAB 1992); In re Eagle Fence Rentals, Inc., 231 USPQ 228, 230 (TTAB 1986)."

Moreover, when the brochure is distributed or when the coupons therein are presented to the tenant business for redemption, "the tenant businesses will encounter the mark in the rendering of the applicant's services for their benefit."

Coupons from Applicant's specimen brochure

The Examining Attorney also argued that a specimen of use "must explicitly refer to the services," but the Board found that view too narrow. When a mark is used in the rendering of a service, "the specimen need not and often will not include a an explicit reference to the service."

Distinguishing several cases cited by the PTO, the Board concluded that:

"the totality of the record here establishes that the mark applicant seeks to register is one applicant uses to identify its own services, in particular, its advertising services rendered on behalf of the tenant businesses. The record indicates that the mark, as used on the specimen, would be associated with applicant, the shopping center operator, by the tenant businesses, and with the advertising service rendered by applicant for the benefit of those tenant businesses."

The Board therefore reversed the refusal to register.

TTABlog comment: This case does seem a bit strange, but it falls in line with the precedent cited by the Board, in which the specimen at issue was used in the rendering of the services rather than in the offering of the services for sale.

Red Robin concerned a design of a bird costume used as a mark for entertainment services in the nature of personal appearances by a clown. The Board found acceptable as a specimen, a photograph of a person wearing the costume.

In Eagle Fence, a photograph of a fence was deemed an acceptable specimen for a mark consisting of "alternately colored strands of wire" for the service of "renting chain-link fences."

And in Metriplex, the Board accepted a computer screenshot of a display appearing on a computer terminal, as a proper specimen for the word mark GLOBAL GATEWAY for data transmission services provided to subscribers.

I just have a difficult time with the idea that the shopping center tenants would view the design mark appearing in the brochure as a source indicator for advertising services, rather than merely as a source indicator for the shopping mall's services.

Text Copyright John L. Welch 2005.


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