Anabec, Inc.

Trademark Trial and Appeal BoardApr 28, 2004

No. 76397303 (T.T.A.B. Apr. 28, 2004)

Mailed: April 28, 2004 Paper No. 13 Bucher UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Anabec, Inc. ________ Serial No. 76397303 _______ Howard M. Ellis of Simpson & Simpson, PLLC for Anabec, Inc. Michael H. Kazazian, Trademark Examining Attorney, Law Office 113 (Odette Bonnet, Managing Attorney). _______ Before Hohein, Bucher and Drost, Administrative Trademark Judges. Opinion by Bucher, Administrative Trademark Judge: Anabec, Inc. seeks registration on the Principal Register of the design shown below: THIS DISPOSITION IS NOT CITABLE AS PRECEDENT OF THE TTAB Serial No. 76397303 - 2 - for services recited as “environmental services, namely architectural decontamination, indoor air quality improvement and surface remediation,”1 in International Class 40. The Trademark Examining Attorney has refused registration of applicant’s mark based upon the ground that it does not function as a service mark for applicant’s recited services under Sections 1, 2, 3 and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1053 and 1127, and that despite applicant’s submission of substitute specimens, applicant has still failed to submit acceptable specimens demonstrating this matter being used as a service mark. Applicant argues that the refusal is based on mere “conjecture and speculation” on the part of the Trademark Examining Attorney. Applicant alleges that the Trademark Examining Attorney has failed to analyze this matter fairly in the context of its advertising brochures and post card. Applicant and the Trademark Examining Attorney have fully briefed this case, but applicant did not request an oral hearing before the Board. We affirm the refusal of registration. 1 Application Serial No. 76397303 was filed on April 18, 2002 based upon applicant’s allegation of use in commerce at least as early as May 1998. Serial No. 76397303 - 3 - Based upon this entire record, it is clear that applicant is involved in cleaning and treating air quality and building surfaces in buildings suffering from poor indoor air quality. Buildings contaminated in this way are sometimes referred to as having “Sick Building Syndrome.” The refusal to register herein is grounded in the basic statutory definition of a “service mark.” The function of a service mark includes a device used by a person “to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services … .” 15 U.S.C. §1127. A mark is deemed to be in use on services “when it is used or displayed in the sale or advertising of services.” Id. As argued by the Trademark Examining Attorney, the manner of use on the specimens must be such that potential purchasers would readily perceive the subject matter as identifying and distinguishing the applicant’s services and indicating their source, even if that source is unknown. See Section 45 of the Trademark Act, 15 U.S.C. §1127. In support of his refusal to register under Sections 1, 2, 3 and 45 of the Act, the Trademark Examining Attorney argues as follows: … [P]otential consumers are not likely to regard the mark as a source indicator because the mark as used on those specimens does not show proper service mark use. Not all words, designs, symbols or slogans used in the Serial No. 76397303 - 4 - sale or advertising of goods or services function as marks, even though they have been adopted with the intent to do so. A designation cannot be registered unless ordinary purchasers would readily perceive the mark as an indicator or origin for the services identified in the application. … For instance, in the pamphlet entitled “The Anabec System,” the design appears directly above some text labeled “Resulting symptoms for each of us” which explains that “eventually we all inhale these contaminants … Small wonder that we are plagued by nasal congestion, sore throat, wheezing, asthma … and rashes.” The sick building design directly above the text is thus likely to be viewed as nothing more than a funny, cartoon illustration of the symptoms described. Thus, purchasers are likely to conclude that the sick-building logo2 is merely a fanciful depiction of “unhealthy buildings and not as a source indicator.” (Trademark Examining Attorney’s appeal brief, unnumbered pages 5 - 6) By contrast, applicant states its case as follows: Applicant submits, the sick building logo3 is much more than merely a decorative cartoon character, as asserted by the Examining Attorney, because the specimen establishes a direct relationship between the copy and the mark itself… (Applicant’s brief, p. 10, emphasis in original) In each of the three specimens of record, applicant’s design is depicted as a color cartoon. In the two brochures, it is column width and preceded and followed by text. This first brochure was submitted as the original specimen of record: 2 Throughout the prosecution of this application, applicant has characterized the cartoon as being a “logo,” which characterizations was subsequently adopted by the Trademark Examining Attorney. However, since the word “logo” suggests an identifying symbol, we find such a description of this matter, in the context of this decision, to be inaccurate. 3 Id. Serial No. 76397303 - 5 - In an attempt to meet the objections of the Trademark Examining Attorney to the registration of applicant’s design, based upon the usage shown on the original specimen of record, applicant submitted two more substitute specimens – a second brochure and a promotional post card. Serial No. 76397303 - 6 - In the post card promotional piece, the sick building image covers the entire picture side of the card. The lower half of the following image is the reverse side of the post card, containing promotional text, applicant’s mailing address, Serial No. 76397303 - 7 - the postage information, and a space for the addressee’s mailing address: Perhaps applicant did expect that its color cartoon image would distinguish its services from similar services advertised by others. On the other hand, having chosen a cartoon image of “sick buildings,” and then having employed it within the text of brochures advertising services dealing with improving indoor air quality, applicant accepted the risk that the color cartoon may not function as a source indicator for its services. See In re The Standard Oil Company, 275 F.2d Serial No. 76397303 - 8 - 945, 125 USPQ 227 (CCPA 1960) [GUARANTEED STARTING for winterizing automobile engines]. The Trademark Examining Attorney’s refusal to register herein is clearly premised on the statutory language “to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services … .” If the involved cartoon image does not identify and distinguish applicant’s services, then it is simply not functioning herein as a service mark. We begin our analysis of the imagery applied for herein by agreeing with applicant that cartoon images may be registered as service marks. However, a determination in any given case depends upon the manner in which the imagery is used in advertising the services. Caricatures and cartoon- like images can be inherently distinctive source indicators provided that they are presented in a technical service mark manner and employed in close association with a clear reference to the services to be performed. In making a determination as to whether or not the imagery involved herein serves as an indication of origin, we are faced with an inquiry not unlike that of ornamental matter on goods. That is, to the extent that the matter is clearly educational, illustrative, entertaining or ornamental, we must look to the size, location, dominance, and significance of the Serial No. 76397303 - 9 - alleged mark as applied to the services. Cf. In re Astro-Gods Inc., 223 USPQ 621 (TTAB 1984) [“ASTRO GODS design” would not be perceived as anything other than part of the thematic whole of the ornamentation of applicant’s T-shirts]. As to the inherent nature of the applied-for matter, we note a contrast between applicant’s imagery and a third-party service mark – a “Homer” character – placed into the record by applicant.4 The image on this registration, described by applicant herein as a “building design having embedded facial caricature features” (applicant’s appeal brief, p. 8), is that of a separable character: However, applicant’s imagery is a tableau of three adjacent building with human-like facial features. The first building has a fever, the second is sneezing and reaching for 4 Reg. No. 2422650 issued on January 23, 2001 to Peoria Siding and Window Company, Inc. of Peoria, IL. for the installation of siding and windows and for retail store services featuring siding and windows. Serial No. 76397303 - 10 - a tissue, while the third suffers from watering eyes. The scene is set out in a rectangular panel reminiscent of the newspaper comic pages. The look and feel is more of a story or a set piece rather than that of a single cartoon character. Of the two, Peoria Siding’s single “Homer” character is more likely to be perceived as a service mark. An even more critical component of the determination as to “size, location, dominance, and significance” of the alleged mark has to do with exactly how the imagery is used on the specimens of record, i.e., do the specimens of use filed with the application demonstrate that the matter is being used as a service mark?5 Does the matter appear in such a manner that its function as an indication of origin may be readily perceived by persons encountering the goods or services in connection with which it is used? See In re Whataburger Systems, Inc., 209 USPQ 429, 430 (TTAB 1980). As noted by the Trademark Examining Attorney, in order to be recognized as a valid service mark, a designation must create a separate and distinct commercial impression. A design does not function as a service mark unless it is used 5 For example, continuing our comparisons with the Peoria Siding registration, while applicant has not made the specimens supporting that registration a part of this record, how the registered mark was shown on the specimens (e.g., shown in a prominent manner, close to registrant’s trade name, or as a separable, distinct feature removed from other textual materials) would have played a critical role in the decision to register that mark. Serial No. 76397303 - 11 - in a manner that projects to purchasers a single source of the services to the customers. In this context, we note that applicant’s brochures and other promotional matter incorporate other cartoon-like images. Similar to the involved matter, they also serve an instructional purpose. Those images (e.g., of ventilation driven air flows in hospitals, air handling units and the spread of microorganisms from the carpet of school classrooms, etc.) are drawn and colored in a style quite similar to the applied-for mark. As used in all three specimens of record, applicant’s imagery fails to create a separate and distinct commercial impression. The various cartoons are not qualitatively different from each other, and the involved image is totally blended in with the other informational and promotional matter on the brochures, as was the case in the APPLE PIE TREE decision: There is nothing in either [specimen] which separates the matter sought to be registered [APPLE PIE TREE] from the other elements shown on the specimens and informs the viewer that this term identifies a service. It is not that the subject matter must be more prominent than everything else on the specimens. We agree with applicant on that point. On the other hand, it must not blend so well with other matter on the specimens that it is difficult or impossible to discern which element is supposed to be the service mark. A commercial impression of a service mark must be readily Serial No. 76397303 - 12 - apparent from the use of the term. If purchasers are put in the position of having to choose between a number of elements to decide which is intended to be the service mark, it is clear that there is no service mark use. Mere intent that a name or character be a service mark is insufficient if there is no acceptable use as such. In re McDonald’s Corp., 229 USPQ 555, 556 (TTAB 1985) Given the similarity to the specimens herein (i.e., the brochures and the picture post card), the language in an earlier Board decision is particularly appropriate to the facts of this case: In the instant case, it is clear beyond peradventure that the particular representation in applicant’s drawing … is neither used as nor functions as a service mark for applicant’s services. That is to say, this representation is not used any differently than the many other pictures or illustrations which are contained in applicant’s brochures, form the subject matter of applicant’s picture postcards, or are exhibited in vitrines at the Spanish Riding School. Under such circumstances, purchasers or potential purchasers of applicant’s services would have no reason to perceive this particular representation (as distinguished from the many others in applicant's brochure, postcards, etc.) as an indication of origin for such services. That is, said representation, as presently used by applicant, has no readily apparent and recognizable nature and function as a service mark. Serial No. 76397303 - 13 - In re Republic of Austria Spanische Reitschule, 197 USPQ 494, 499 (TTAB 1977) Accordingly, whether designed to help in the education process or even to entertain, we find that applicant’s visual imagery is not going to be perceived as a source indicator for applicant’s services. Applicant argues repeatedly that there is a direct association between the applied-for imagery and the recited services. Applicant’s arguments notwithstanding, we fail to see a direct association. The cartoon appears in proximity to a discussion of applicant’s services, but given the nature of the image and the way it blends into the informational portions of the brochures, and functions as the picture on a picture post card, it will not readily be perceived as a service mark. In support of its registration, applicant cites to In re Hechinger Investment Co. of Delaware Inc., 24 USPQ2d 1053 (TTAB 1991). There, applicant’s retail hardware and household services were rendered under the primary mark HECHINGER, but the Board found that “no verbal or visual connotation or physical connection, exist[ed] between the surname and the fanciful dog character.” Hechinger, supra at 1057. In drawing on the teachings of the Hechinger case, much as was argued by the Trademark Examining Attorney herein, the issue Serial No. 76397303 - 14 - is whether the appearance of the alleged mark in advertisements and other promotional materials creates a direct association between the alleged mark and the services offered. All of the specimens of record show ANABEC as the “primary mark” for the recited services. However, as in the Hechinger case, we find such an association between the design and the recited services is not created herein. In conclusion, we find that the applied-for matter, in the context of applicant’s brochures and other advertising materials, does not function as a source indicator for the recited services. Decision: The refusal to register is hereby affirmed.