Bo Slyapich

Trademark Trial and Appeal BoardDec 6, 2012

No. 77713665 (T.T.A.B. Dec. 6, 2012)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: December 6, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Bo Slyapich _____ Serial No. 77713665 _____ William H. Haefliger of Pasadena, California for Bo Slyapich. Aisha Y. Salem, Trademark Examining Attorney, Law Office 113 (Odette Bonnet, Managing Attorney). _____ Before Kuhlke, Kuczma and Masiello, Administrative Trademark Judges. Opinion by Kuczma, Administrative Trademark Judge: Bo Slyapich, (“applicant”), filed an application under § 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), seeking registration of the mark: in standard character form for the following goods and services, as amended: Photographs; photographic albums; photographic prints in Class 16, and Entertainment services in the nature of dramatic theater productions, production of sound recordings in Class 41.1 1 Application Serial No. 77713665 was filed on April 14, 2009. Applicant claims ownership of Registration No. 3600639 issued on the Supplemental Register on March 31, 2009, for Serial No. 77713665 2 The application published for opposition on February 9, 2010, and on May 4, 2010, the USPTO issued a Notice of Allowance. Applicant timely filed his Statement of Use with supporting specimens of use for Classes 16 and 41 consisting respectively of copies of a magazine cover and a promotional flyer. In the Office Action of December 19, 2010, both specimens were found to be unacceptable because they did not show the applied-for mark used in connection with any of the goods or services specified in the Statement of Use. Applicant subsequently submitted a substitute specimen comprising a photograph of a t-shirt. A final Office Action was issued on June 21, 2011, based on the failure to provide a specimen that shows the mark in use in commerce as a trademark and/or service mark. On August 8, 2011, applicant filed a request for reconsideration accompanied by a substitute specimen which comprised copies of webpages from applicant’s website.2 Applicant’s request for reconsideration was denied. Applicant appealed to the Board and applicant and the examining attorney have filed briefs. We affirm the refusal to register. The examining attorney has refused registration under §§ 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051 and 1127, on the ground that applicant’s specimens “do not show the applied-for mark used in commerce in connection with any of the goods and services specified in the statement of use.” the mark THE RATTLESNAKE WRANGLER for t-shirts. See October 9, 2009 Response to Office Action. The application also contains a statement that “THE RATTLESNAKE WRANGLER” identifies the stage name or nickname of applicant, a living individual whose consent is of record. See December 22, 2009 Response to Office Action. 2 Because applicant’s August 8, 2011 “Amendment” was filed after the issuance of a final Office Action, his Amendment is treated as a request for reconsideration. TMEP § 715.03 (October 2012). Serial No. 77713665 3 Under the Trademark Act, an application must include, “such number of specimens or facsimiles of the mark as used as may be required by the Director.” 15 U.S.C. § 1051(a)(1). See also 37 C.F.R. § 2.56(a). Specimens serve to evidence an applicant’s “use [of the mark] in commerce” which is defined, in pertinent part, as follows: ... For purposes of this chapter, a mark shall be deemed to be in use in commerce— (1) on goods when— (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and (B) the goods are sold or transported in commerce, and (2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce . . . Trademark Act § 45, 15 U.S.C. § 1127. The rule implementing the statute provides: (b)(1) A trademark specimen is a label, tag, or container for the goods, or a display associated with the goods. The Office may accept another document related to the goods or the sale of the goods when it is impracticable to place the mark on the goods, packaging for the goods, or displays associated with the goods. (2) A service mark specimen must show the mark as actually used in the sale or advertising of the services. Trademark Rule 2.56(b)(1) and (2), 37 C.F.R. § 2.56(b)(1) and (2). Serial No. 77713665 4 Because the application identifies goods in Class 16 and services in Class 41, applicant must submit an acceptable specimen showing use of the mark for at least one of the identified goods and services in each Class. The rejected specimens in this case consist of copies of a magazine cover, a promotional flyer, a t-shirt and pages from applicant’s website.3 We now turn to consider the specimens mindful of the foregoing requirements. Applicant submitted a copy of the cover of CALABASAS LIFE AT ITS BEST magazine featuring an image of actress Janel Moloney that is arguably a photograph.4 The term THE RATTLESNAKE WRANGLER is used on the magazine cover to identify a story contained in the magazine and does not show use of the mark in commerce for photographs, photo albums, prints or any other type of product. Similarly, the use of RATTLESNAKE WRANGLER on the t-shirt and the promotional flyer submitted by applicant do not reference the foregoing photographic goods. Because these specimens make no reference whatsoever to “photographs; photographic albums; photographic prints,” and do not constitute a label, tag or container for the goods, or a display associated with the goods, they do not show use of the mark in commerce for such goods. Trademark Act §§ 1 and 45, 15 U.S.C §§ 1051 and 1127, 37 CFR §§ 2.56(a) and (b), and 37 CFR § 2.88(b)(2). 3 The examining attorney’s objection to the pages from applicant’s website attached to Applicant’s Brief on Appeal on the ground that the webpages contain material that does not appear on the original website specimen submitted by applicant is sustained. Materials not previously made of record during prosecution of the application are untimely if submitted for the first time at briefing. See TBMP § 1203.02(e) (3d ed. rev. 2012) and authorities cited therein. 4 It is noted that the magazine cover submitted as a specimen on November 4, 2010, bears a December 2004 date. Serial No. 77713665 5 Applicant also submitted copies of pages from his website which contain the following statements: “Live Action (made safe) Rattlesnake Photo Shoots Available for Print, TV and Movies” “Bo can provide ‘action shots’ safely for movie, television, print or online media. This footage is for a 3-D movie.” “Big James, Bo’s Field Photographer and assistant.” Inasmuch as a website does not constitute a label, tag or container for the goods, we consider whether the website constitutes a display associated with the goods. The foregoing statements from applicant’s website specimen refer to “photo shoots,” “action shots” and a “field photographer.” In support of the sufficiency of the website as a specimen, applicant argues that “dramatic photos, for TV or providable for prints, and/or movies, i.e., many sample illustrations of entertainment ‘shoots’” appear throughout its website specimen (emphasis original).5 Despite the references to photos and prints, and applicant’s argument that photos are providable as prints, there is nothing on the website offering photographic products for sale. In view of the absence of a textual description of the goods, any ordering information or a link to enable one to place an order, the webpages do not have a “point of sale nature” and do not constitute a display associated with the sale of the photographic goods. See In re Sones, 590 F.3d 1282, 93 USPQ2d 1118, 1124 (Fed. Cir. 2009) and In re Anpath Group Inc., 95 USPQ2d 1377, 1382 (TTAB 2010) (webpages have been found to be acceptable as displays associated with the goods where the webpages submitted as specimens of use 5 Applicant’s Brief on Appeal p. 5. Serial No. 77713665 6 contain adequate information for routinely and easily placing online orders for the goods). Thus, applicant has failed to provide sufficient specimens showing use of his mark for the goods identified in his application. For service mark specimens, there must be a direct association between the mark sought to be registered and the services specified in the application. In re Advertising & Marketing Development Inc., 821 F.2d 614, 2 USPQ2d 2010, 2014 (Fed. Cir. 1987), quoting Trademark Act Section 45, 15 U.S.C. § 1127 (implicit in the statutory definition of a service mark is a requirement that there be a direct association between the mark and the services). This direct association may be achieved when the specimen of use shows the mark used in the rendering of the services, or in the sale or advertising of the services. In re Metriplex Inc., 23 USPQ2d 1315, 1316-17 (TTAB 1992). The magazine cover submitted by applicant uses THE RATTELSNAKE WRANGLER to identify a story in a magazine published by a third party. The t- shirt merely displays the mark on the front of the shirt. Neither the magazine cover nor the t-shirt refer to, offer or advertise any services, or are supported by evidence showing how they are utilized in rendering the services. Accordingly, these specimens are not acceptable to show use of RATTLESNAKE WRANGLER as a service mark for entertainment services. The promotional flyer shown below bears the mark; underneath the mark is wording that appears to identify inter alia various locations: Serial N The flye sound r flyers ar applican mark u specime B flyer wo services conditio “snake encomp includin same,” t event th Rule 2.7 6 See Ap o. 777136 r makes n ecordings, e typically t’s flyer d sed in the n. See TM ased on t uld be an , applicant ned on the removal assed in t g dramati he applica at the for 1(a), 37 C plicant’s Re 65 o referenc or to any o acceptabl oes not re sale or a EP §§ 130 he examin acceptable belatedly approval services.”6 he recitat c product tion could egoing am .F.R. § 2.71 ply to Exam e to dram ther type e specimen fer to app dvertising 1.04 and 1 ing attorn specimen urges tha of an ame Inasmu ion of ser ions, repro not be am endment (a). iner’s App 7 atic theate of entertai s when th licant’s en of such 304(a) (Oc ey’s state to show u t the refus ndment of ch as “sn vices as f ductions, ended to had been eal Brief p. r producti nment serv ey refer to tertainme services a tober 2012 ment that se of the al to regis its applic ake remo iled, i.e., recordings include th timely req 3. ons, or the ices. Whi the desig nt service nd is not ). applicant mark for ter should ation, app val servic “entertain and adv ese servic uested. S productio le promoti nated serv s or show an accept ’s promoti snake rem be withdr arently to es” were ment serv ertisement es, even in ee Tradem n of onal ices, the able onal oval awn add not ices, s of the ark Serial No. 77713665 8 Turning to the portions of applicant’s website submitted by applicant, we observe the use of the mark to advertise applicant’s services, described on the website as: #1 expert in Southern California for Rattlesnake Removal, Relocation and Prevention Specializing in Family and Pet Education/Safety Snake Fencing Evaluation and installation Pre-Clearing & Supervision for Outdoor Events and Parties Landscaping Recommendation Construction Site Clearing Filming Location Clearing and Supervision Live Action (made safe) Rattlesnake Photo Shoots Available for Print, TV, and Movies. He . . . built a business in the entertainment industry by clearing locations prior to the arrival of the crew, and securing locations while filming.” Bo can provide “action shots” safely for movie, television, print or online media. This footage is for a 3-D movie. Big James, Bo’s Field Photographer and assistant. The website also features various images of applicant engaged in catching and removing rattlesnakes in various locations. Applicant argues that the mentioned activities and accompanying images are “clearly in the nature of entertainment services . . . used in advertising” and therefore acceptable as specimens for applicant’s entertainment services.7 The fact that applicant removes 7 See Applicant’s Brief on Appeal p. 5. Serial No. 77713665 9 snakes for those involved in the entertainment industry and for events and parties held by others does not convert applicant’s snake removal services into entertainment services. While providing “action shots” and doing “photo shoots” might constitute entertainment services under certain circumstances, they are not the type of entertainment services identified in the application. Applicant further argues that his “services clearly fall within the Webster dictionary definition of ‘entertainment’ as follows: ‘something that entertains, a performance or show,’”8 and that snake wrangling “is a performance, is entertaining and constitutes a show.”9 Even if applicant’s website can be considered to refer to “entertainment” services in the nature of snake wrangling events for others’ use in movies, television, print or online, such activities do not constitute “entertainment services in the nature of dramatic theater productions, production of sound recordings.” It is not enough for applicant to be a provider of services; applicant also must have used the mark to identify the named services for which registration is sought. Advertising & Marketing Development, 2 USPQ2d at 2014. When a service mark is used in advertising materials, the specimen must show a reference to the services in order to comply with the statutory requirement that the mark “identify and distinguish the services.” A specimen that shows only the mark, with no reference 8 See Applicant’s Brief on Appeal p. 6. Although the dictionary definition offered in applicant’s Brief on Appeal was not in the record, the examining attorney commented on the definition without objection, and the Board may take judicial notice of dictionary definitions. Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). 9 See Applicant’s Reply to Examiner’s Appeal Brief p. 2. Serial No. 77713665 10 to the services, does not show service mark usage. In re wTe Corp., 87 USPQ2d 1536, 1541 (TTAB 2008); In re Duratech Industries Inc., 13 USPQ2d 2052, 2054 (TTAB 1989). The materials submitted by applicant do not mention or refer to the recited services. In view of the foregoing, the specimens of record do not demonstrate a sufficient nexus between the applied-for mark and the identified services in Class 41 and hence do not show use of the mark in connection with the identified services. For the reasons stated above, we find that the specimens do not serve to show use of the mark RATTLESNAKE WRANGLER as a trademark or a service mark in connection with the goods and services identified in the application. Decision: The refusals to register the mark in Classes 16 and 41 under Sections 1 and 45 of the Trademark Act are affirmed.