Tuesday, April 10, 2012

Test Your TTAB Judge-Ability on this Service Mark Specimen of Use

Applicant sought to register the mark HEROES UNDER GOD & Design, shown to the right, for "retail store services featuring novelty items, namely, hats, magnets and key chains." Its specimen of use is found below; the mark is shown in a clear plastic picture frame on a shelf with various items. The Examining Attorney refused registration, maintaining that, although the applied-for-mark functions as a mark, it does not appear as a source indicator for the recited services. The Board rendered a split decision.How would you rule on Applicant's appeal? In re International Christian Broadcasting, Inc., Serial No. 85058128 (March 29, 2012) [not precedential].

Click on photo for larger specimen.

The Examining Attorney contended that the specimen shows the mark being used on point-of-sale materials - i.e., as a trademark for the adjacent goods. She asserted that "the specimens all seem to show that some third party is providing such space, and that applicant is merely using that space to offer its goods." The panel majority, however, found no proof for the assertion regarding ownership of the space, and Applicant denied the assertion in its brief.

In any case, the majority noted, there was no legal support for the position that "if the owner of the mark does not itself own the space in which it sells goods, it cannot per se be owner of a mark for retail store services." Moreover, a term can function as a mark for retail store services even if it identifies only a section of a store.

Just because the framed display would be an appropriate trademark specimen does not mean that it cannot be an appropriate service mark specimen. The question is how the mark would be perceived by consumers. Here, the panel majority found that consumers viewing the mark as show in the specimen "could well understand it to identify the section of a retail store dedicated to U.S. troops." In fact, some of the goods shown in the specimen of use bear their own trademarks.

To the extent there was any uncertainty as to the acceptability of the specimen, the Board gave applicant the benefit of the doubt.

Judge Kuczma dissented. She observed that the framed images of the mark "could appear to be actual products that are available for sale, or they could appear as displays that advertise the sale of adjacent products."

Judge Kuczma noted that the framed image of the mark does not include any reference to retail store services. "[W]e are clearly missing the 'link' between the mark as used in the specimens and retail store services."

To create an association between a mark and retail store services requires something more than the mere presence of a framed image of a mark just sitting on a retail store shelf. This is particularly so when the framed image of the mark is juxtaposed to products bearing the same mark.

TTABlog comment: Well, what do you think? I side with the dissent.

Text Copyright John L. Welch 2012.


At 8:33 AM, Anonymous Jessica said...

I agree with the dissent as well. At best that could qualify as a trademark specimen, but I would never have advised my client that such use would be the basis of a class 35 application.

At 9:04 AM, Anonymous Anonymous said...

Based upon the standards that I find the PTO applying in my cases, I side with the dissent, too.

Based upon what common sense dictates and what policy should be, I side with the majority.

At 12:08 PM, Anonymous engineer said...

Right or wrong, Applicant got away with protecting an infinite number of goods under a single registration requiring a single fee. Clever.

At 6:55 PM, Anonymous Rob said...

Had this been designated as precedential, I would have sided with the majority on what the new standard should be. But if it's not precedent-setting, I can't see how or why it disregards prior case law.

At 2:09 PM, Anonymous Anonymous said...

This is madness. Did they not read In re G.A. Modefine S.A.? That was the whole point of the case.


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