Friday, November 12, 2021

TTAB Affirms Refusal of "MADE FOR MORE" for Employee Recruitment: Not Rendered for the Benefit of Others

The California Highway Patrol applied to register the mark MADE FOR MORE for the services of advertisement and recruitment for law enforcement purposes. The Board upheld the USPTO's refusal to register on the ground that Applicant is not rendering a service within the meaning of Sections 1, 2, 3 and 45 of the Trademark Act. In re California Highway Patrol, Application Serial No. 88796327 (November 4, 2021) [not precedential] (Opinion by Judge Marc A. Bergsman).

Specimen of Use

The Trademark Act does not define "service." Although case law indicates that the term should be construed broadly, "not every activity constitutes a service within the meaning of the Trademark Act."

The following criteria have evolved for determining what constitutes a service:

  • (1) A service must be a real activity;
  • (2) A service must be performed to the order of, or for the benefit of, someone other than the applicant; and
  • (3) The activity performed must be qualitatively different from anything necessarily done in connection with the sale of the applicant’s goods or the performance of another service. 

The Board observed that "the controlling question is who primarily benefits from the activity for which Applicant is seeking registration." "[I]f the activity primarily benefits Applicant, it is not a registrable service even if others derive an incidental benefit."

Examining Attorney Mary E. Coombe did not contest the first element of the test.. As to the second element, she pointed to the Applicant CHIP's specimen of use, arguing that the activities listed in the subject application "are for Applicant to recruit personnel to perform law enforcement activities for Applicant and, therefore, they are not primarily for the benefit of others." Thus, Applicant is the primary beneficiary of these activities.

CHIP maintained that the public is the primary beneficiary of the activities. "The entire purpose behind the Mark is to enable Applicant to provide for the betterment of the people of California, not Applicant itself." Furthermore, it maintained that it would still exist even without these services because these services are not necessary to the performance of CHIP's functions.

The Board found that Applicant performs the recited activities primarily for its own benefit, rather than the benefit of others. 

Applicant’s description of services is essentially employee recruiting services for itself. This is clearly an activity that Applicant is rendering for itself to fill positions in its ranks. Applicant, in its arguments, leaves out the key fact that the recruitment activities at issue are for hiring Applicant’s own employees as opposed to rendering recruiting services for other employers or some other activity that primarily benefits employees or potential employees.

As to the third prong of the test, the Board pointed out that "[r]ecruiting and hiring one’s own employees is not in any material way a different kind of economic activity done in connection with that which any business or organization normally performs." Thus, the recited activities "are not qualitatively different from anything necessarily done in connection with Applicant’s core law enforcement activities."

Applicant having failed to meet the second and third elements of the test, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Services rendered for the benefit of employees may be registrable, but not recruiting employees in the first place.

Text Copyright John L. Welch 2021.


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