Drury Marketing, Inc.

Trademark Trial and Appeal BoardMay 9, 2014

No. 77939274 (T.T.A.B. May. 9, 2014)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: May 9, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board ________ In re Drury Marketing, Inc. ________ Serial No. 77939274 _______ Laila S. Wolfgram of Stinson Leonard Street for Drury Marketing, Inc. Julie Watson, Trademark Examining Attorney, Law Office 109 (Dan Vavonese, Managing Attorney). _______ Before Quinn, Taylor and Mermelstein, Administrative Trademark Judges. Opinion by Quinn, Administrative Trademark Judge: Drury Marketing, Inc. filed, on February 18, 2010, an application under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), to register the mark BOONETOWN (in standard characters) for “production of DVDs, videotapes and television programs featuring information on and hunting of whitetail deer” in International Class 41. The application is based an allegation of first use anywhere and first use in commerce on February 15, 2010. Serial No. 77939274 2 The trademark examining attorney refused registration under Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1127, on the ground that the specimens fail to show use of the mark in commerce with the services recited in the application. Applicant appealed the final refusal. Applicant and the examining attorney filed briefs. The examining attorney maintains that each of the specimens fails to show use of the applied-for mark in commerce with the services recited in the application. Rather, according to the examining attorney, the mark is shown as the title of a DVD series; no use is shown in connection with the provision, sale or advertising of DVD, videotape or television program production services. The examining attorney concludes that “although the DVDs submitted by the applicant and the website advertising the retail sale of the DVDs may show use of the mark BOONETOWN on the by-product of applicant’s production services, these specimens fail to show use of the mark [in connection with] the provision of the actual underlying production services done for the benefit of others.” (Brief, unnumbered p. 5). Applicant argues that the screen shots from its website and the DVD labels and packaging show use of the mark BOONETOWN in connection with the services recited in its application. Applicant further contends that the specimens show an association between the mark and the services for which Serial No. 77939274 3 registration is sought: “The end result of the production of DVDs, videotapes and television programs are items such as a DVD and the television shows themselves. The DVD label and the availability and advertising of the television shows on [applicant’s] website are direct [sic] correlated to [applicant’s] services.” (Brief, pp. 1-2). Applicant further argues as follows: Here, the Applicant has submitted not only an image of DVD packaging but Applicant’s website which shows not only the DVDs produced under the subject mark but provides a sample of the programming produced in conjunction with the subject mark. In this day and age, any reasonable person will be able to associate the uniquely shaped DVD label with Applicant’s DVD production services. The supporting evidence from Applicant’s website provides additional context and demonstrates that the BOONETOWN mark is being used in connection with the programming rather than just the DVDs themselves. There is no question that when a reasonable, average consumer encounters the uniquely shaped DVD label affixed to the DVD, he or she will recognize it as a DVD, creating an even greater association between Applicant’s services. Finally, the examples on Applicant’s website showing the BOONETOWN programming makes it very difficult to separate the production of the programming and the finished product which is what the Examining Attorney is trying to do...the distinctive qualities of a television program allows the DVDs and advertising display on Applicant’s website to create the association necessary for the public to Serial No. 77939274 4 immediately connect Applicant’s production services with the subject mark. (Reply Brief, pp. 1-3) To show service mark usage, the specimen must show use of the mark in a manner that would be perceived by potential purchasers as identifying the applicant's services and indicating their source via a “direct association.” In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456, 457 (CCPA 1973) (term that identified only a process held not registrable as service mark, even though applicant was rendering services and the proposed mark appeared in the same brochure in which the services were advertised); In re DSM Pharmaceuticals, Inc., 87 USPQ2d 1623 (TTAB 2008) (term that merely identifies computer software used in rendering services does not function as a mark to identify custom manufacturing of pharmaceuticals) In re Moody's Investors Service Inc., 13 USPQ2d 2043 (TTAB 1989) (“Aaa,” as used on the specimen, identified the applicant's ratings rather than its rating services and therefore did not function as a mark); Intermed Communications, Inc. v. Chaney, 197 USPQ 501 (TTAB 1977) (business progress reports directed to potential investors did not show service mark use for medical services); In re Restonic Corp., 189 USPQ 248 (TTAB 1975) (phrase used merely to advertise goods manufactured and sold by applicant's franchisees did not serve as mark to identify franchising services); In re Reichhold Chemicals, Inc., 167 USPQ Serial No. 77939274 5 376 (TTAB 1970) (technical bulletins and data sheets on which mark was used merely to advertise chemicals did not show use as service mark for consulting services). Where the mark is used in advertising the services, the specimen must show a direct association between the proposed mark and the services for which registration is sought. A specimen that shows only the mark with no reference to, or association with, the services does not show service mark usage. In re wTe Corp., 87 USPQ2d 1536 (TTAB 2008) (specimen comprising a packaging label affixed to boxes being mailed to customers, on which the proposed mark was used as part of a return address, held unacceptable because it did not show a connection between the mark and the services); In re Adair, 45 USPQ2d 1211 (TTAB 1997) (tags affixed to decorated Christmas tree that bear the mark “TREE ARTS CO. and design” and the applicant's location, but make no reference to services, failed to show use for “design services in the nature of designing handcrafted, permanently decorated Christmas and designer trees”); In re Duratech Industries Inc., 13 USPQ2d 2052 (TTAB 1989) (bumper stickers showing only the mark did not show use to identify “association services, namely promoting the interests of individuals who censor the practice of drinking and driving”); In re Riddle, 225 USPQ 630 (TTAB 1985) (cutouts showing mark with no reference to the services held unacceptable for automotive service center); In re Whataburger Systems, Inc., Serial 209 US the fo promot insuff A instan on the in con videot huntin the or T it did below. This s more t A of pag No. 779 PQ 429 ( rm and s ional it icient t pplicant ce, the basis t nection apes and g of whi der in w he origi not sho pecimen han the pplicant es from 39274 TTAB 198 hape of ems to r o identi has fil examinin hat it f with the televis tetail d hich it nal spec w the ma clearly mark pri then fi applican 0) (iron a cartoo estauran fy resta ed a ser g attorn ailed to recited ion prog eer.” W was subm imen tha rk in ac is unacc nted on led, on t’s webs 6 -on tran n animal t custom urant se ies of s ey refus show us service rams fea e shall itted. t was de tual use eptable plain pa October ite, as sfer clo mark, d ers at c rvices). pecimens ed to ac e of the s of “pr turing i consider emed una in comm inasmuch per. 28, 2010 shown be thing pa istribut ounters, and, in cept the applied oduction nformati each sp cceptabl erce is as it i , two sc low. tches in ed as fr held each specime -for mar of DVDs on on an ecimen i e becaus shown s nothin reen sho ee n k , d n e g ts Serial No. 77939274 7 Serial No. 77939274 8 The first screen shot is nothing more than an advertisement for a DVD titled “Boonetown.” The second screen shot likewise advertises various DVDs sold by applicant (e.g., “Whitetail Madness” and “The Big Game”), including the one titled “Boonetown” that is highlighted in the first screen shot. There is absolutely no reference to any of the services recited in the application. Applicant filed, on October 3, 2012, a DVD label and the back cover jacket for the DVD, as shown below. Again, the DVD label and jacket cover show use of “Boonetown” only as the title of the DVD. These specimens are devoid of any reference to the services recited in the application. Serial No. 77939274 9 In a final attempt to submit an acceptable specimen, applicant filed, on April 3, 2013, another screen shot from its website, as shown below. As is the case with the other specimens, this screen shot shows nothing more than “Boonetown” as the title of a series of DVDs. On the left side of the website, under the heading “PRODUCTS,” applicant identifies various DVDs for sale, including one titled “Boonetown”; the middle of the webpage highlights the “Boonetown” series, volumes 1, 2 and 3. Again, the webpage is silent as to any services offered under the applied-for mark. We agree with the examining attorney’s assessment that the mark sought to be registered, as shown by the labels and webpages submitted as specimens, clearly refers to a series of DVDs sold by applicant. Although applicant is identified as the distributor of the DVDs, the applied-for mark is not used in Serial No. 77939274 10 connection with any of the services recited in the application whatsoever. That is, none of the specimens shows a direct association between use of the proposed mark and “production of DVDs, videotapes and television programs featuring information on and hunting of whitetail deer.” In each instance, BOONETOWN is used only as the title of a DVD, without even a single reference to production services, let alone to any services offered under the applied-for mark. Contrary to applicant’s position, there is no “direct association” between the applied- for mark BOONETOWN and production services. Simply put, here we have no evidence of the rendering of any production services by applicant.1 See In re Monograms America Inc., 51 USPQ2d 1317, 1319 (TTAB 1999) (Board found specimen unacceptable because there was no reference whatsoever to any type of the recited services); In re Niagara Frontier Services, Inc., 221 USPQ 284, 285-286 (TTAB 1983) (WE MAKE IT, YOU BAKE IT only identifies pizza, and not grocery store services); In re Information Builders Inc., 213 USPQ 593 (TTAB 1982) (Board affirmed refusal to register where mark was used in specimen to refer only to 1 The specimens give no indication that applicant is producing anything, but even if it did, production is not a service if applicant only produces its own DVDs (or videotapes or television programs). That is to say, even if applicant does provide production services, there is no indication in the record that applicant provides those services for others. To be a service, an activity must be primarily for the benefit of someone other than the applicant. See In re Canadian Pacific Ltd., 754 F.2d 992, 224 USPQ 971, 973 (Fed. Cir. 1985). See also TMEP § 1301.01(a)(ii) (April 2014). Serial No. 77939274 11 software and not to service for which applicant sought registration). See generally TMEP §§ 1301.04 (a), 1301.04(b). Because the specimens fail to show use of the applied-for mark to identify and distinguish the services recited in the application, applicant is not entitled to registration of BOONETOWN as a service mark. Decision: The refusal to register on the ground that the specimens do not show actual service mark use is affirmed.