Christine Schiefer

Trademark Trial and Appeal BoardJun 21, 2019

87737157 (T.T.A.B. Jun. 21, 2019)

This Opinion is Not a Precedent of the TTAB Hearing: June 4, 2019 Mailed: June 21, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Christine Schiefer _____ Serial No. 87737157 _____ Roger A. Gilcrest of Ice Miller LLP, for Christine Schiefer. Ira Goodsaid, Trademark Examining Attorney, Law Office 101, Ronald R. Sussman, Managing Attorney. _____ Before Mermelstein, Heasley and Hudis, Administrative Trademark Judges. Opinion by Hudis, Administrative Trademark Judge: Christine Schiefer (“Applicant”) seeks registration on the Principal Register of the mark AND THAT'S WHY WE DRINK A PARANORMAL AND TRUE CRIME PODCAST BY CHRISTINE SCHIEFER, EM SCHULZ, & BOXED WINE & Design, in the following form: Serial No. 87737157 - 2 - for “on-line retail store featuring apparel, glassware, stoneware and accessory items for the consumption of alcoholic beverages” in International Class 35.1 The mark is described in the Application as follows: The mark consists of the stylized wording “AND THAT'S WHY WE DRINK A PARANORMAL AND TRUE CRIME PODCAST BY CHRISTINE SCHIEFER, EM SCHULZ, & BOXED WINE” in black, with an eye in a pyramid forming the “A” in “THAT’S”. The rectangular, tan background features faint, gray lines radiating from the pyramid and red blood splatters. In the upper left corner is a black and tan sun with a face. The upper right corner features a black and tan five-point star and quarter moon with a face. The lower right corner has a black and tan milk shake with cherry, whipped cream and a straw. The lower left corner has a black and tan, partially filled wine glass. The Trademark Examining Attorney (“Examining Attorney”) refused registration under Trademark Act Sections 1 and 45, 15 U.S.C. §§ 1051, 1127, on the ground that Applicant’s mark, as shown on the specimens Applicant made of record, does not show a direct association between the applied-for mark and the identified services; thus the specimens fail to show the applied-for mark in use in commerce. When the refusal was made final, Applicant requested reconsideration. After the Examining Attorney denied the request for reconsideration, Applicant appealed to the Board. We affirm the refusal to register. 1 Application Serial No. 87737157, filed on December 28, 2017 under Trademark Act Section 1(a), 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and use in commerce since at least as early as May 2, 2018. Pursuant to Trademark Act Section 2(c), 15 U.S.C. § 1052(c), the consent to registration of Christine Schiefer and Emily (“Em”) Schulz are of record. As discussed below, Applicant’s date of first use is after Applicant’s filing date because the original application was filed based on use, then converted to intent-to-use, and then converted back to use with the later filing of an Amendment to Allege Use. Serial No. 87737157 - 3 - I. Background With the Application, Applicant submitted numerous pages from the mercantile portion of the website at http://andthatswhywedrink.bigcartel.com/.2 The following page is representative:3 In the first Office Action, the Examining Attorney refused registration because “the specimen does not show a direct association between the applied-for mark and the identified services; thus the specimen fails to show the applied-for mark in use in 2 Application, TSDR 12-64. Page references to the application record refer to the online database of the USPTO’s Trademark Status & Document Retrieval (“TSDR”) system. References to the briefs on appeal refer to the Board’s TTABVUE docket system. Coming before the designation TTABVUE is the docket entry number; and coming after this designation are the page references, if applicable. 3 Application, TSDR 18. Serial No. 87737157 - 4 - commerce.” The Examining Attorney also required that Applicant provide a revised description of the mark and a verified substitute specimen of use.4 In response, Applicant provided a revised description of the mark and converted the filing basis of the Application from use (Trademark Act Section 1(a), 15 U.S.C. § 1051(a)) to intent-to-use (Trademark Act Section 1(b), 15 U.S.C. § 1051(b)).5 In a second Office Action, the Examining Attorney accepted Applicant’s description of the applied-for mark, but continued and made final the refusal to register and the requirement that Applicant provide a verified substitute specimen of use.6 On the same day the Examining Attorney issued the second Office Action, Applicant submitted an Amendment to Allege Use (“AAU”) with a new specimen of use7 appearing as follows: 4 Office Action of April 9, 2018, TSDR 2-3. 5 Office Action Response of June 12, 2018, TSDR 2. 6 Office Action of June 28, 2018, TSDR 2. 7 Amendment to Allege Use of June 28, 2018, TSDR 5-7. Serial No. 87737157 - 5 - In a third Office Action, the Examining Attorney withdrew the finality of the second Office Action, noting that it was superseded because Applicant’s conversion of the filing basis for the Application from use to intent-to-use was overlooked. The Examining Attorney thereupon issued the following new refusal: “registration is refused because none of the specimens of record show the applied-for mark used as a service mark to identify the applied-for on-line retail store services.” The Examining Attorney once more required that Applicant provide a verified substitute specimen of use.8 In response to the second and third Office Actions, Applicant argued that the specimen of use provided with the AAU was acceptable, because the mark appeared in proximity to a “merch” link appearing on the top of the website home page submitted as the specimen. Included with Applicant’s response was an example of an acceptable web page specimen (example number 14) provided in Section 1301.04(i) of the TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP). Applicant also submitted an online definition of “merch” (defined as a shortened form of “merchandise”) and two examples of how affinity merchandise is sold on the same websites promoting the entertainment services of podcast artists such as Applicant.9 In a fourth Office Action, the Examining Attorney continued and made final his refusal and the requirement that Applicant provide a verified substitute specimen of use. The Examining Attorney also made of record a copy of the first page of 8 Office Action of July 2, 2018, TSDR 2. 9 Office Action Response of July 12, 2018, TSDR 6, 11-15. Serial No. 87737157 - 6 - Applicant’s website, since what Applicant submitted as a specimen with the AAU only showed a partial view of the page.10 The version of Applicant’s website that the Examining Attorney made of record appears as follows: In a Request for Reconsideration, Applicant again argued that the specimen of use provided with the AAU was acceptable, and made of record several examples of third- 10 Office Action of July 15, 2018, TSDR 5-7. Serial No. 87737157 - 7 - party marks that the USPTO has approved for registration or has registered in connection with entertainment services and online retail store services, accompanied by examples of the online uses of these third-party marks.11 As noted, Applicant’s Request for Reconsideration was denied.12 II. Applicable Law It has often been said that “[b]efore there can be registration, there must be a [service ] … mark.” In re Aerospace Optics Inc., 78 USPQ2d 1861, 1862 (TTAB 2006) (quoting In re Bose Corp., 546 F.2d 893, 192 USPQ 213, 215 (CCPA 1978)). The starting point for our analysis is the Trademark Act, wherein a service mark is defined as a mark used in the sale or advertising of services “to identify and distinguish the services of one person ... from the services of others and to indicate the source of the services.” Trademark Act Section 45, 15 U.S.C. § 1127. From this premise it directly follows that subject matter presented for registration as a service mark must function as such; that is, if potential purchasers do not perceive a proposed mark as identifying the source of origin of the services (whether or not the identity of that source is known), the mark may not be registered. The key question, then, is whether the asserted mark would be perceived as a source indicator for Applicant’s services. See In re Brass-Craft Mfg. Co., 49 USPQ2d 1849, 1852 (TTAB 1998), aff’d mem., 217 F.3d 855 (Fed. Cir. 1999); In re Volvo Cars of N. Am. Inc., 46 USPQ2d 1455, 1459 (TTAB 1998). “The critical inquiry in 11 Request for Reconsideration of July 19, 2018, TSDR 28-197. 12 Denial of Request for Reconsideration of July 21, 2018. Serial No. 87737157 - 8 - determining whether a designation functions as a mark is how the designation would be perceived by the relevant public. To make this determination we look to the specimens and other evidence of record showing how the designation is actually used in the marketplace.” In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010). Certainly, webpages from an applicant’s website may be submitted as advertising. This type of specimen is acceptable as a service mark if it shows the mark used in advertising the identified services and creates the required direct association by referring to the services and by showing the mark being used to identify and distinguish the services and their source. In re Florists’ Transworld Delivery, Inc., 119 USPQ2d 1056, 1062 (TTAB 2016). III. Analysis We now review Applicant’s specimens of use made of record in view of Applicant’s arguments, the Examining Attorney’s arguments, and applicable law. A. Applicant’s Arguments Applicant argues that: (1) the positioning of the applied-for mark prominently on the website’s home page, and directly associated with the “merch” link on the home page from which the on-line retail store services are accessed and rendered, is sufficient to qualify the specimens of record as evidence of use of the mark in commerce;13 (2) the applied-for mark serves to identify Applicant’s podcast as well as an on-line store for affinity merchandise directly, and that association is not in some way disrupted or diluted by the co-appearance of a variant of Applicant’s mark on the 13 4 TTABVUE 10. Serial No. 87737157 - 9 - same home page;14 (3) inclusion of the word “PODCAST” in Applicant’s applied-for mark does not disable or somehow disqualify the mark from acting as a trademark for anything other than a podcast (i.e., for online retail store services);15 (4) the third- party marks Applicant made of record have been registered or allowed for registration notwithstanding clear reference in the marks themselves to a form of entertainment, including that offered online through the spoken word, as in a podcast, and such marks are not legally disabled from serving as service marks for parallel online shopping through web sites;16 and (5) the specimens Applicant made of record evidence a direct (or contextually inferred or perceived) association with online retail services through a demonstrated common commercial practice in the parallel fields or entertainment and affinity merchandise offered through associated on-line shopping linked through entertainment web sites, and using the same mark for both the entertainment services and online retail services.17 B. The Examining Attorney’s Arguments The Examining Attorney argues that: (1) the refusal to register turns on how Applicant’s mark is used on the specimens of use, noting that on its face the wording in the mark identifies a “podcast”;18 (2) as shown by the specimens made of record with the Application as originally filed, the entirety of the applied-for mark is used 14 4 TTABVUE 12. 15 4 TTABVUE 12-13. 16 4 TTABVUE 17. 17 4 TTABVUE 23. 18 6 TTABVUE 4. Serial No. 87737157 - 10 - only on a bumper sticker, a poster, possibly a mouse pad, possibly as a pillow, and as an advertisement for a podcast, but not for the applied-for services, namely, on-line retail store services;19 (3) in the substitute specimens made of record with Applicant’s AAU, the applied-for mark is too far removed from anything that references the applied-for services to be seen as a service mark for those services;20 (4) the mere fact that the mark is displayed and the services are explicitly referenced or can be inferred from the context of the specimen does not automatically result in direct association between the applied-for mark and the applied-for services;21 and (5) the short-form iterations of Applicant’s applied for mark, AND THAT’S WHY WE DRINK, whether on the home page of Applicant’s web site or on the mercantile portion of Applicant’s site, are the only marks that can be said to have a direct association with the on-line retail store services.22 The Examining Attorney emphasizes that the refusal to register, in this case, is not a question of the capability of Applicant’s mark to function as a mark.23 We agree. It is the use of Applicant’s mark on the submitted specimens that is at issue. C. Whether the Specimens of Record Show Service Mark Use of the Applied-For Mark An applicant’s intent that a designation function as a service mark does not make it so. In re Vertex Grp. LLC, 89 USPQ2d 1694, 1701 (TTAB 2009) (“[M]ere intent that 19 6 TTABVUE 6, 10. 20 6 TTABVUE 9. 21 6 TTABVUE 10. 22 6 TTABVUE 11-13. 23 6 TTABVUE 14. Serial No. 87737157 - 11 - a word, name, symbol or device function as a trademark or service mark is not enough in and of itself.”); In re Morganroth, 208 USPQ 284, 287 (TTAB 1980) (“Wishing does not make a trademark or service mark be.”). What we consider here is whether Applicant has made of record evidence that it has used Applicant’s mark as a service mark in commerce. On the specimens Applicant made of record with the original Application and with the AAU, a shortened form of Applicant’s applied-for mark, AND THAT’S WHY WE DRINK (without any stylization or design elements), is clearly shown in connection with online retail store services.24 However, that is not the mark that Applicant seeks to register. Another shortened form variant of Applicant’s applied-for mark, AND THAT’S WHY WE DRINK (accompanied by the designs of a milk shake with cherry, whipped cream and a straw, a partially filled wine glass, and an eye in a pyramid forming the “A” in “THAT’S”), as submitted with Applicant’s AAU, appears at the top- center of the home page of Applicant’s website and immediately underneath the “merch” link to the mercantile portion of Applicant’s website where Applicant’s affinity merchandise is sold.25 Again, this variant is not the mark shown on the drawing page of the Application. Applicant’s applied-for mark, AND THAT'S WHY WE DRINK A PARANORMAL AND TRUE CRIME PODCAST BY CHRISTINE SCHIEFER, EM SCHULZ, & BOXED WINE & Design, is shown off to the right on the home page of Applicant’s 24 Application, TSDR 12-64; Amendment to Allege Use of June 28, 2018, TSDR 5-7. 25 Amendment to Allege Use of June 28, 2018, TSDR 5-6. Serial No. 87737157 - 12 - website, within a collage of two of photographs of two people (presumably Christine Schiefer and Em Schulz). This specimen does not show a direct association between the applied-for mark and the services for which registration is sought, In re WAY Media, Inc., 118 USPQ2d 1697, 1698 (TTAB 2016), “in a manner that would be perceived by potential purchasers as identifying the [A]pplicant’s services and indicating their source via a ‘direct association.’” In re DSM Pharm., Inc., 87 USPQ2d 1623, 1624 (TTAB 2008). From our review of this specimen, the mark as applied for is too far away from the “merch” link, the shortened form of the mark is much closer and is immediately underneath the “merch” link, and the applied-for mark is set lower down within a collage of other images on the page. Therefore, it is not immediately clear that any (or which) of these designations immediately identifies Applicant’s online retail store services. The third-party marks Applicant made of record that have been registered or allowed for registration, or the example of an acceptable web page specimen from the TMEP, and which Applicant asserts are analogous to the applied-for mark, are of no assistance to Applicant. Notably, “[i]t has been said many times that each case must be decided on its own facts.” In re Eagle Crest, 96 USPQ2d at 1229 (citation omitted). The Board must make its own findings of fact, and that duty may not be delegated by adopting the conclusions reached by an examining attorney in another application. In re Sunmarks, Inc., 32 USPQ2d 1470, 1472 (TTAB 1994); In re BankAmerica Corp., 231 USPQ 873, 876 (TTAB 1986). The Board must assess each mark on its own facts and record. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. Serial No. 87737157 - 13 - 2001) (“Even if some prior registrations had some characteristics similar to [applicant’s] application, the PTO’s allowance of such prior registrations does not bind the Board or this court.”). As to the third-party approved applications and registrations Applicant submitted, they demonstrate a different proposition from the issue before us: that those marks for entertainment services were capable of serving as marks for the sale of ancillary goods. The capability of Applicant’s mark for online retail store services is not the question we resolve on this appeal. The issue is the insufficiency of the specimens of use. The example (number 14) of an acceptable web page specimen from TMEP § 1301.04(i) that Applicant provided is inapposite. The web page example given notes it is acceptable for entertainment services, namely, providing video games. Those are not the services currently at issue. Moreover, in the example given, unlike Applicant’s AAU specimen, the mark OUTERNAUTS is shown at the very top of the web page, and immediately above the links used to launch that applicant’s entertainment service or to purchase and receive items from the applicant’s Facebook page. This is not true of Applicant’s AAU specimen. Simply, the specimens of use that Applicant made of record do not show a direct association between the applied-for mark and the services for which registration is sought, in a manner that would be perceived by potential purchasers as identifying Applicant’s services and indicating their source via a direct association. Serial No. 87737157 - 14 - IV. Decision Based upon the specimens made of record, the refusal to register Applicant’s mark AND THAT'S WHY WE DRINK A PARANORMAL AND TRUE CRIME PODCAST BY CHRISTINE SCHIEFER, EM SCHULZ, & BOXED WINE & Design for failing to show the applied-for mark in use in commerce is affirmed.