Wednesday, December 07, 2005

TTAB Deems Service Mark Specimens for "LIBERTY BILLIARDS" Unacceptable

Douglas K. Kelly got stuck behind the 8-ball in his attempt to register the mark LIBERTY BILLIARDS & Design (shown immediately below) for "manufacture of billiard tables to the order and/or specification of others" (BILLIARDS disclaimed). The Board ruled that Kelly failed to provide a proper specimen for these class 40 services. In re Kelly, Serial No. 76498256 (November 23, 2005) [not citable].

Examining Attorney Tracy Cross issued the refusal to register, maintaining that Kelly's specimens of use were unacceptable, taking her cue from Rules 2.51(a)(1), 2.51(b)(1), and 2.56(b)(2).

Kelly's first specimens, comprising black-and-white and color versions of the letterhead shown below, were embarrassingly improper: they contained the term LIBERTY GROUP, not LIBERTY BILLIARDS.

Mr. Kelly then submitted the specimen shown below, stating that the "name plate ... is affixed to all Liberty Billiards pool tables."

The Examining Attorney found this name plate specimen to be likewise unacceptable because "there must be a direct association between the mark sought to be registered and the services specified in the application, with sufficient reference to the services in the specimen to create this association."

The Board noted that "there is a line of cases that supports the acceptability of specimens that do not themselves set out what the services are when the specimens are used during the performance of the services." In particular, the Board pointed to In re Red Robin Enterprises, Inc., 222 USPQ 911 (TTAB 1984) and In re Eagle Fence Rentals, Inc., 231 USPQ 228 (TTAB 1986). In the former, a photograph of applicant's costume mark on a garbed performer was an adequate specimen for entertainment services; in the latter, a photograph of a two-color fence was an acceptable specimen for fence rental services.

The Board, however, found those cases distinguishable from the instant case. In Red Robin, the applicant owned a prior registration for collateral goods. In Eagle Fence, the applicant promoted the color scheme as a source indicator. Moreover, in those two cases each mark was used "in the rendering of the services." Here there is no evidence of a prior registration or of promotion of the mark, nor any evidence that Kelly uses the mark in the rendering of the services. "Instead, the mark is apparently applied after the services have been rendered."

The Board found more relevant its case law regarding custom manufacturing services: In re Johnson Controls Inc., 33 USPQ2d 1318 (TTAB 1994) and In re Adair, 45 USPQ2d 1211 (TTAB 1997). In those cases, the marks involved were applied to the finished products: iron valves and custom-designed Christmas trees, respectively. In each case, the specimen of use (adhesive packaging labels and tags tied to the trees) was rejected because it did not include a reference to any services.

As to Kelly's specimen, the Board noted that it had "no basis to conclude that these name plates are actually used as a service mark," and it therefore agreed with the Examining Attorney that the specimen does not show valid use of Kelly's mark as a service mark.

TTABlog note: Compare this case with the recent Board decision involving advertising services provided by "The Grove" shopping center in Los Angeles, discussed here at the TTABlog.

Text Copyright John L. Welch 2005.


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