840, Inc.

Trademark Trial and Appeal BoardFeb 16, 2021

87326511 (T.T.A.B. Feb. 16, 2021)

This Opinion is not a Precedent of the TTAB Mailed: February 16, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re 840, Inc. _____ Serial No. 87326511 _____ Kevin Merillat, President of 840, Inc. Dannean J. Hetzel, Trademark Examining Attorney, Law Office 106, Mary I. Sparrow, Managing Attorney. _____ Before Zervas, Kuczma and Heasley, Administrative Trademark Judges. Opinion by Kuczma, Administrative Trademark Judge: 840, Inc. (“Applicant”) seeks registration on the Principal Register of the mark 840 (in standard characters) for: Advertising, marketing and promotion services; event planning and management for marketing, branding, promoting or advertising the goods and services of others; retail store services featuring a wide variety of consumer goods of others; on-line retail store services featuring a wide variety of consumer goods of others; on-line retail store services featuring clothing, footwear, hats, keychains, jewelry, pre-packaged foods, beverages, consumer electronics, posters, and general consumer merchandise; organisation of exhibitions and events for commercial or advertising purposes; organizing exhibitions for commercial or advertising purposes; organizing, promoting Serial No. 87326511 - 2 - and conducting exhibitions, tradeshows and events for business purposes; promoting the parties and special events of others; special event planning for business purposes, in International Class 35.1 After issuance of a Notice of Allowance, Applicant timely filed a Statement of Use with specimens, which were initially refused. In response to the Office Action refusing the specimens, Applicant submitted substitute specimens. After considering the substitute specimens, the Trademark Examining Attorney issued a Final Office Action refusing registration of Applicant’s mark under Sections 1 and 45 of the Trademark Act on two grounds: 1) the specimens do not show the mark for the services identified in the Statement of Use; and 2) the mark shown on the specimens does not match the mark shown in the drawing. When the refusals were made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal resumed and Applicant and the Examining Attorney filed briefs. We affirm the refusals to register. I. Do the Specimens Show the Mark for the Services Identified in the Statement of Use? A statement of use filed in support of an application based on § 1(b) of the Trademark Act must include a specimen showing the applied-for mark as actually used in commerce for each International Class of goods and/or services identified in the statement of use. 15 U.S.C. §§ 1051(b) and 1127; Trademark Rule 2.56(a); 37 1 Application Serial No. 87326511 was filed on February 7, 2017, based upon Applicant’s assertion of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). Serial No. 87326511 - 3 - C.F.R. 2.56(a); see also In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013). If a specimen does not show the mark used for the identified goods and/or services as identified in the statement of use, registration must be refused for failing to show the goods and/or services actually used in commerce. Trademark Act Sections 1 and 45, 15 U.S.C. §§ 1051, 1127; 37 C.F.R. § 2.56(a). Section 45 of the Trademark Act, 15 U.S.C. § 1127, specifies that “a mark shall be deemed to be in use in commerce — . . . (2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce . . . .” In order to show service mark use, the specimen must show a direct association between the services identified in the application and the mark sought to be registered. See In re Advert. & Mktg. Dev. Inc., 821 F.2d 614, 2 USPQ2d 2010, 2014 (Fed. Cir. 1987); In re Universal Oil Prods. Co., 476 F.2d 653, 177 USPQ 456, 457 (CCPA 1973); see also In re Osmotica Holdings Corp., 95 USPQ2d 1666, 1668 (TTAB 2010); In re DSM Pharms. Inc., 87 USPQ2d 1623, 1626 (TTAB 2008). To create the required “direct association,” the specimen must contain a reference to the service, and the mark must be used on the specimen to identify the service and its source. In re Osmotica Holdings, 95 USPQ2d at 1668; see also In re Aerospace Optics Inc., 78 USPQ2d 1861, 1862 (TTAB 2006). Applicant’s Statement of Use2 identifies its International Class 35 services as: Advertising, marketing and promotion services; Event planning and management for marketing, branding, promoting or advertising the goods and services of others; 2 February 20, 2019 Statement of Use. Serial No. 87326511 - 4 - Retail store services featuring a wide variety of consumer goods of others; On-line retail store services featuring a wide variety of consumer goods of others; On-line retail store services featuring clothing, footwear, hats, keychains, jewelry, pre-packaged foods, beverages, consumer electronics, posters, and general consumer merchandise; Organisation of exhibitions and events for commercial or advertising purposes; Organizing exhibitions for commercial or advertising purposes; Organizing, promoting and conducting exhibitions, tradeshows and events for business purposes; Promoting the parties and special events of others; and Special event planning for business purposes. Applicant submitted six different specimens with its Statement of Use: 1) an image of a package of goods3: 3 February 20, 2019 Specimen at TSDR 1. Page references to the application record refer to the downloadable .pdf version of the USPTO’s Trademark Status & Document Retrieval (TSDR) system. References to the briefs on appeal refer to the Board’s TTABVUE docket system. Serial No. 87326511 - 5 - 2) and 3) images of outdoor signs4: 4) an image of the inside of a café5: 4 Id. at TSDR 2-3. 5 Id. at TSDR 4. Serial No. 87326511 - 6 - 5) and 6) images of disposable cups6: 6 Id. at TSDR 5-6. Serial No. 87326511 - 7 - Inasmuch as the application covers only services, the first, fifth and sixth specimens set forth above are not pertinent because they feature images of goods, not services. The fourth image shows a café, which is not a service identified in the Statement of Use. The second and third images show outdoor signage with no reference to the business or type of service provided. As such, the signage fails to identify the services in any meaningful way that would allow consumers to understand the nature of the services. “For specimens showing the mark in advertising the services, ‘[i]n order to create the required ‘direct association,’ the specimen must not only contain a reference to the service, but also the mark must be used on the specimen to identify the service and its source.’” In re Way Media, Inc., 118 USPQ2d 1697, 1698 (TTAB 2016) (quoting In re Osmotica Holdings, 95 USPQ2d at 1668). An acceptable specimen must show “some direct association between the offer of services and the mark sought to be registered therefor.” In re Universal Oil Prods., 177 USPQ at 457; see also In re Advert. & Mktg. Dev., 2 USPQ2d at 2014. Thus, specimens like Applicant’s signage that show the mark without reference to, or association with, the services does not show service mark usage. In re Way Media, 118 USPQ2d at 1698; In re Adair, 45 USPQ2d 1211, 1214-15 (TTAB 1997); In re Duratech Indus. Inc., 13 USPQ2d 2052, 2054 (TTAB 1989). The March 20, 2019 Office Action thus properly refused registration because the foregoing specimens did not show: 1) the mark in the drawing in use in commerce; and 2) the applied-for mark in use in commerce in connection with any of the services Serial No. 87326511 - 8 - identified in the Statement of Use. Six months later, Applicant submitted three substitute specimens with its September 20, 2019 Response to Office Action: 1) Image of farmer’s market stand7: 2) Image of bag of Virgin Islands Coffee Roasters coffee with two disposable coffee cups8: 7 September 20, 2019 Specimen at TSDR 1. 8 Id. at TSDR 2. Serial No. 87326511 - 9 - 3) Image of inside of retail store9: None of the substitute specimens submitted by Applicant show use of Applicant’s mark in connection with the services identified in the Statement of Use. The first image is a photo of a farmer’s market stand showing Applicant’s promotion and offering for sale of its own goods (which the background sign identifies as “tinctures, salve and roll on”). Those goods are not identified in the Statement of Use. Moreover, even if the farmer’s market stand supports retail store services, it does not refer to or identify “retail store services featuring a wide variety of consumer goods of others,” or any of the other services identified in the Statement of Use. The second and third specimens are images of what Applicant describes as “showing that its retail establishment not only provides café services, but also retail 9 Id. at TSDR 3. Serial No. 87326511 - 10 - goods.”10 The second specimen does not show or display a retail store or retail store services; rather, it displays a bag of coffee with disposable coffee cups. The third specimen is an image of a room having a counter with shelves underneath that are stocked with products in boxes and bottles. Inasmuch as there are no visible signs bearing Applicant’s mark on display, this specimen does not advertise or show any services being offered in connection with the subject mark. Thus, neither the second or third specimens show use of Applicant’s mark in connection with the retail store services, or any of the other services, set forth in the Statement of Use. None of the uses shown in any of the submitted specimens meets the required “direct association” between Applicant’s mark and the services identified in its application. Without a direct association between the identified services and the proposed mark, we cannot conclude that the service mark is in use to identify and distinguish the services themselves. See In re DSM Pharms., 87 USPQ2d at 1624 (finding the submitted specimen unacceptable evidence of use of the mark in connection with custom manufacturing services because it did not show an association between the mark and the services, but instead the mark was used only to refer to computer software); In re Adair, 45 USPQ2d at 1214 (there must be a direct association between the mark and the services, i.e., that the mark be used in such a manner that it would readily be perceived as identifying the source of the services); In re Johnson Controls, Inc., 33 USPQ2d 1318, 1320 (TTAB 1994) (there must be 10 September 20, 2019 Response to Office Action at TSDR 5. Serial No. 87326511 - 11 - something which creates in the mind of the purchaser an association between the mark and the service activity). II. Do the Specimens Show the Proposed Mark Shown in the Drawing? Turning to the second issue involved in this appeal, a mark shown in a drawing “must be a substantially exact representation of the mark” on the specimen. Trademark Rule 2.51(a)-(b), 37 C.F.R. § 2.51(a)-(b); TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 807.12(a) (Oct. 2018). In an application filed under §1(b) of the Trademark Act, such as Applicant’s application, the drawing of the mark must be a substantially exact representation of the mark as intended to be used on or in connection with the goods/services specified in the application, and once a statement of use has been filed, the drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods and/or services. 37 C.F.R. § 2.51(b). Applicant’s drawing shows its mark to be 840 (a standard character mark). Only one of the specimens shows use of 840 “where the number 840 appears on signage behind the counter, which is located directly across from the retail counter only 10 feet away.”11 The specimen is reproduced below: 11 May 29, 2020 Request for Reconsideration at TSDR 1, 7. This “substitute specimen” submitted with Applicant’s Request for Reconsideration was not supported by the required verified statement of use. An applicant who files a substitute specimen after a statement of use under §1(d) of the Act must verify that the substitute or additional specimen was in use in commerce before the expiration of the deadline for filing the statement of use (i.e., within six months of the issuance date of the notice of allowance or before the expiration of an extension of time for filing a statement of use). 37 C.F.R. § 2.59(b)(2); see also TMEP § 904.05. Serial No. 87326511 - 12 - This substitute specimen displays the mark 840 shown on two wall signs listing coffee and other posted menus items. Inasmuch as Applicant’s application does not include goods such as coffee or other menu items, this specimen does not show use of Applicant’s mark 840 in connection with any of the identified services. Serial No. 87326511 - 13 - None of the remaining specimens show use of Applicant’s applied-for mark 840. Rather, what is shown in the remaining specimens is: , i.e., an infinity symbol with the letters STX superimposed in the middle of the two lobes of the infinity symbol, and the number 40 superimposed in the lower right corner.12 Applicant argues that “consumers would perceive applicant’s use of the infinity as a number 8 laying on its side.”13 In support, Applicant submits evidence consisting of several definitions and descriptions of the infinity symbol, noting that each description identifies the infinity symbol as the number 8 on its side or a “lazy eight,” “lazy eight curve;” “figure 8 on its side;” “horizontal version of the number 8;” “sideways figure eight.”14 Applicant also submits a definition of the number 8, which includes a reference to the infinity symbol, indicating that while the infinity symbol is described as a “sideways figure eight,” they are unrelated in origin. Based on this evidence, Applicant “believes that no other conclusion can be made other than the fact that consumers would recognize applicant’s mark as used in the specimens, as 12 Additionally, in each of the specimens submitted by Applicant showing the design, there is also a small design depicted on the left loop of the infinity symbol, i.e., . 13 Applicant’s Appeal Brief (6 TTABVUE 2). 14 See evidence attached to September 20, 2019 Response to Office Action at TSDR 9 (Infinity and the Mind, The Science and Philosophy of the Infinity, https://math.dartmouth.edu /~matc/Readers/HowManyAngels/InfinityMind/IM.html), 43 (https://www/dictionary.com/e/ pop-culture/infinity-symbol); 49 (https://www.infinitysymbol.net/); 53 (https://en.wikipedia .org/wiki/8); 59 (https://en.wikipedia.org/wiki/Infinity_symbol). Serial No. 87326511 - 14 - both the number 8 as well as an infinity symbol, rendering the mark and the specimen substantially exact.”15 Although the appearance of the infinity symbol, i.e., ∞, resembles a figure 8 lying on its side, the definition or meaning of the symbol ∞ is that it “is a mathematical symbol representing the concept of infinity.”16 Thus, the infinity symbol is an established design having its own meaning. Applicant has not submitted any evidence to support its argument that “consumers would recognize applicant’s mark as used in the specimens, as both the number 8 as well as an infinity symbol, rendering the mark and the specimen substantially exact.” Applicant’s conclusion that “there is really no other way to describe an infinity symbol, other than through the use of the number 8 description” misses the point.17 The description of the infinity symbol as a “sideways figure 8” recognizes that the symbol is not a figure 8. The inclusion of the infinity symbol would change the meaning of the number 840 in the applied-for mark. Therefore, the presence of the infinity symbol in the mark shown in the specimens renders it different from the applied-for 840 mark. Accordingly, the specimens do not show “a substantially exact representation” of the applied-for mark 840. 15 Applicant’s Appeal Brief (6 TTABVUE 3). 16 See https://en.wikipedia.org/wiki/Infinity_symbol attached to September 20, 2019 Response to Office Action at TSDR 59. 17 Applicant’s Appeal Brief (6 TTABVUE 3). Serial No. 87326511 - 15 - Last, Applicant submits evidence that the zip code for its place of business located in Frederiksted, VI is 00840.18 Applicant argues that consumers, particularly those that live locally, could easily make a correlation between Applicant’s town’s zip code ending in “840,” and its stylized version of the number 840 when seeing Applicant’s mark on its storefront or its advertising materials.19 However, as noted by the Examining Attorney, the meaning and commercial impression of Applicant’s mark 840 are completely altered in the “infinity symbol” used by Applicant, i.e., , such that they are not the same mark. The digits 8, 4 and 0 have a distinct numeric meaning and recognition when presented as they are in Applicant’s drawing as 840. The “infinity symbol” that Applicant uses replaces the digit “8” with an infinity symbol which represents the concept of infinity. Additionally, the appearance of the “infinity symbol” is different from the 840 mark as the infinity symbol is larger than the other elements, and is not in the same location as the digit “8” is in the 840 mark shown in Applicant’s drawing, with “40” presented in the lower right-hand corner and the letters “STX” appearing in the middle of the infinity symbol. Thus, the “infinity symbol” mark is different in appearance and does not convey the same meaning as Applicant’s mark 840 because it is a different mark. 18 May 29, 2020 Request for Reconsideration at TSDR 5-6. 19 Applicant’s Appeal Brief (6 TTABVUE 4). Serial No. 87326511 - 16 - III. Conclusion A specimen must show the applied-for mark 840 serving as a source indicator for the services set forth in the Statement of Use. As set forth above, none of the specimens show use of 840 as a service mark in connection with the identified services. Additionally, the specimens must show Applicant’s 840 mark as it is shown in the drawing. The mark shown in the drawing must be a substantially exact representation of the mark as used on or in connection with Applicant’s services. Although one specimen showed use of Applicant’s mark 840, it was not shown in use for any of the services identified in the application. Moreover, none of the other specimens show use of Applicant’s mark 840 as it is shown in the drawing. Thus, registration must be refused. Decision: The refusals to register Applicant’s applied-for mark 840 under §§ 1 and 45 of the Trademark Act on the grounds that the specimens do not show the services identified in the Statement of Use, and that the mark shown on the specimens does not match the mark shown in the drawing, are affirmed.