Frank E. Loomis, III

Trademark Trial and Appeal Board

Nov 20, 2002

No. 75930476 (T.T.A.B. Nov. 20, 2002)

Mailed:
November 20, 2002
Papers Nos. 21 & 18
DEB
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Frank F. Loomis, III, DBA Glenn Publishing
________
Serial Nos. 75/930,465 & 75/930,476
_______
Frank F. Loomis, III, Esq., pro se.
William T. Verhosek, Trademark Examining Attorney, Law
Office 114 (Margaret K. Le, Managing Attorney).
_______
Before Hanak, Quinn and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Frank F. Loomis, III, seeks registration on the
Principal Register for two designations, MAKEFEELGOOD1 and
MAKEFEELBAD,2 as service marks allegedly used in connection
1 Application Serial No. 75/930,465, filed on February 14,
2000, is based upon applicant’s claim of a bona fide intention to
use the mark in commerce. In applicant’s statement of use filed
on January 25, 2001, applicant claimed first use anywhere and
first use in commerce as of November 15, 1999.
2 Application Serial No. 75/930,476, filed on February 14,
2000, is based upon applicant’s claim of a bona fide intention to
use the mark in commerce. In applicant’s statement of use filed
on January 25, 2001, applicant claimed first use anywhere and
first use in commerce as of November 15, 1999.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial Nos. 75/930,465 & 75/930,476
- 2 -
with “counseling, namely, offering advice regarding
interpersonal skills,” in International Class 42.
These cases are now before the Board on appeal from
separate final refusals to register the marks in each
application. Because the marks, the legal issues, the
procedural histories and overall records are closely
related in these two appeals, these cases have been
consolidated for purposes of this appeal, and the Board has
chosen to issue a single opinion.
The Trademark Examining Attorney has refused
registration of applicant’s marks based upon the ground
that this matter does not function as a service mark for
applicant’s recited counseling services under Sections 1,
2, 3 and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052,
1053 and 1127, and that applicant has failed to submit
acceptable specimens demonstrating good service mark usage.
By contrast, applicant states his case as follows:
[MAKEFEELGOOD and MAKEFEELBAD] illustrate
and identify Applicant’s technique of
counseling. They distinguish and separate
his services from those of others. Each
mark is a non-word: two verbs and an
adjective combined and used as a noun. As
such the marks form the basis of Applicant’s
unusual and incredibly simple technique of
counseling.
Simply put, throughout the counseling this
question is posed: “Is the particular thing
you are doing or saying in a relationship, a
MakeFeelGood or a MakeFeelBad?” The point
Serial Nos. 75/930,465 & 75/930,476
- 3 -
is: Whether we render people close to us
MakeFeelGoods or MakeFeelBads determines how
we make them feel about themselves, good or
bad. The result can affect a relationship
positively or negatively. Thus, we need to
ingrain practices that deal MakeFeelGoods
and purge those that deal MakeFeelBads.
That is the core of Applicant’s counseling.
And it pivots on the use of the two marks.
They pinpoint, identify, and distinguish
Applicant’s counseling.
(Applicant’s appeal brief, pp. 1 - 2).
Given the critical role of various specimens submitted
by applicant during the course of prosecuting these
applications, our determination of registrability herein is
based upon a complete review of the ways in which applicant
has used these alleged service marks.
Attached to the statements of use, both filed on
January 25, 2001, were photocopies of two separate pages of
applicant’s book, entitled How to Improve Your
Relationships, Dramatically: Methods that Really Work!
The statements of use for MAKEFEELGOOD and MAKEFEELBAD
were accompanied by page 39 and page 61, respectively,
wherein the alleged service marks are used in the subtitles
of Chapter 2 and Chapter 4, respectively, as follows:
Serial Nos. 75/930,465 & 75/930,476
- 4 -
During his examination of the Statements of Use, the
Trademark Examining Attorney found these uses unacceptable
for a variety of reasons. In response to the Office’s
refusal to register, applicant then submitted nine
additional substitute specimens – copies of the same nine
documents for both applications. In addition to a complete
copy of applicant’s paperback book, applicant also
submitted catalogs having brief book reviews of applicant’s
book with order forms, an email exchange between applicant
and a correspondent named “Jason,” and a photocopy of a
portion of what applicant claims to be his webpage.
However, despite applicant’s continuing objections, the
Trademark Examining Attorney continued and made final his
Serial Nos. 75/930,465 & 75/930,476
- 5 -
earlier refusals based upon the fact that MAKEFEELGOOD and
MAKEFEELBAD do not function as service marks for
counseling services, and that none of the ten specimens in
either file is acceptable to demonstrate service mark
usage.
Applicant and the Trademark Examining Attorney have
fully briefed these cases, but applicant did not request an
oral hearing before the Board.
We affirm the refusals of registration.
Based upon this entire record, applicant is definitely
involved in promoting a book that has been available in the
marketplace since November 1999. Based upon a thorough
reading of applicant’s entire book, it is clear from
applicant’s own words that through this book, he is
offering “theories,” “methods,” “concepts,” “approaches,”
“measures,” “practices,” “techniques” (even “special
techniques”), “tactics,” “skills,” “down-to-earth-practical
suggestions,” “counsel, “behaviors,” “categories of
actions,” and “‘do’s,’ ‘don’ts,’ and ‘how-tos’ of improving
your relationships.” According to the book, “yes” or
positive action is identified as a “MakeFeelGood” (or
“MakeFeelGoods,” plural). A “no-no” or negative action is
a “turnoff”, or a “MakeFeelBad” (or “MakeFeelBads,”
plural). [For example, see discussion of “MakeFeelBad,”
Serial Nos. 75/930,465 & 75/930,476
- 6 -
pp. 55 – 56 of How to Improve Your Relationships,
Dramatically: Methods that Really Work!,].
Furthermore, in explaining the derivation of these two
“inartful” “non-words,” (applicant’s description),3
applicant includes in the introductory matter the following
paragraphs:
… That’s the ball game. To help you win it,
as mentioned, I cite many “dos,” don’ts,”
and “how-tos.” I put them in categories of:
“make-feel-goods” and “make-feel-bads.” And
from a good-English perspective, these terms
are anything but correct or artful.
Despite that, I use them prominently in
headings of most sections. They serve a
critical purpose. They tell you instantly
why you should or should not do something.
This instant comprehension justifies
their use. So, in pages that follow is a
bundle of these “make-feel-goods” and “make-
feel-bads.”
And looking down from above, I hope
Daniel Webster overlooks an even more
grievous breach. From here on, I use these
terms as one word without hyphens and
quotation marks. Each will have a capital
letter at the beginning of “make,” “feel,”
and “good,” or “bad.” They will appear like
this: MakeFeelBad or MakeFeelGood.
So please ignore the awkwardness and
impropriety of these non-words. But learn
their messages by heart. Then, implement
them religiously in your relations with
those important-to-you people. (pp. 22-23).
3 We agree with applicant that to the extent these run-
together terms are not ordinary designations in the vernacular,
they are certainly candidates for becoming valid source
indicators. However, this case turns on exactly how these terms
are actually used in advertising applicant’s recited services.
Serial Nos. 75/930,465 & 75/930,476
- 7 -
[How to Improve Your Relationships, Dramatically: Methods
that Really Work!, pp. 22 – 23].
Framework for our analysis
The function of a service mark is “to identify and
distinguish the services of one person … from the services
of others and to indicate the source of the services … .”
A mark is deemed to be in use on services “… when it is
used or displayed in the sale or advertising of services
and the services are rendered in commerce… .” As argued
consistently 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, TMEP
§ 1301.04. Moreover, Section 1(d) of the Trademark Act, 15
U.S.C. §1051(d), requires that the owner of an intent-to-
use application who has received a notice of allowance
(e.g., as the instant applicant did in each of these
applications) must then furnish the Office, within set
timeframes, an actual specimen showing the mark as actually
used.
Serial Nos. 75/930,465 & 75/930,476
- 8 -
Because service marks can be used in a great number of
ways, the types of specimens that demonstrate the use of a
service mark are numerous. However, there must be some
direct association or nexus between the offer of services
and the mark sought to be registered. In analyzing
factually the acceptability of specimens of use, we have
held that “while the nature of the services does not need
to be specified in the specimens, there must be something
which creates in the mind of the purchaser an association
between the mark and the service activity.” See In re
Johnson Controls, Inc., 33 USPQ2d 1318 (TTAB 1994), citing
to Intermed Communications Inc. v. Chaney, 191 USPQ 501
(TTAB 1977) and In re Metriplex, Inc. 23 USPQ2d 1315 (TTAB
1992). Hence, applicant must furnish specimens or
facsimiles showing use of the mark in connection with the
offering of the recited services. See also Trademark Rule
2.58, 37 C.F.R. §2.58.
Whether a mark has been used for a particular service
is a question of fact to be determined primarily on the
basis of the specimens. In re Advertising and Marketing
Development Inc., 821 F.2d 614, 2 USPQ2d 2010 (Fed. Cir.
1987) [sets out “direct association test” between the mark
sought to be registered and the services specified in the
application; cases involving advertising services may
Serial Nos. 75/930,465 & 75/930,476
- 9 -
present factual considerations including whether the
services are “sufficiently separate” from the subject of
the advertising, and whether the mark has been used to
identify the advertising services themselves]; In re
Duratech Industries Inc., 13 USPQ2d 2052 (TTAB 1989) [the
mere fact that the bumper stickers are distributed by
organizations which perform the services did not persuade
the Board that members of the general public who encounter
the services would perceive the design on the bumper
stickers as a mark identifying the services]; In re Moody's
Investors Service Inc., 13 USPQ2d 2043 (TTAB 1989) [“Aaa”
as used on the specimens, found to identify the applicant’s
ratings instead of its rating services]; In re El Torito
Restaurant Inc., 9 USPQ2d 2002 (TTAB 1988) [no evidence of
use of MACHO COMBOS for restaurant services where specimens
showed use only to identify food items]; Peopleware
Systems, Inc. v. Peopleware, Inc., 226 USPQ 320, 323 (TTAB
1985) [it is insufficient that a term alleged to constitute
the mark be used in advertising, there must also be a
direct association between the term and the services with
respect to the advertising; use of the term PEOPLEWARE
merely within a byline on calling card specimen did not
constitute service mark usage of term, even though
specimens elsewhere evidenced that applicant provided the
Serial Nos. 75/930,465 & 75/930,476
- 10 -
recited services]; see also Ready Communications v.
Environmental Action Foundation, 477 F. Supp. 936, 203 USPQ
144 (D.D.C. 1979) [the mere advertising of one’s goods does
not constitute service mark use; use of the mark in
technical bulletins and data sheets merely identified and
advertised chemicals and not services].
We find that applicant’s instant attempts to get
federal trademark registrations for two designations used
in connection with alleged services is reminiscent of
reported decisions of this Board and our principal
reviewing Court, dealing, for example, with terms for a
concept, method or process where earlier applicants also
thought their designations functioned as service marks. A
concept, method or process, however, is only a way of doing
something, and by itself is not an activity for the benefit
of others:
While a designation used merely to identify
a process does not perform the function of a
service mark, a designation used to identify
both a process and the services rendered in
connection therewith constitutes a service
mark within the meaning of the Trademark Act
of 1946. See: In re Produits Chimiques
Ugine Kuhlmann Societe Anonyme, 190 USPQ 305
(TTAB 1976), and cases cited therein. The
question of whether or not a term used as
the name of a process also functions as a
service mark must necessarily be resolved in
a proceeding such as this by examining the
specimens of record in the involved
application, together with any other
Serial Nos. 75/930,465 & 75/930,476
- 11 -
literature submitted by the applicant during
the prosecution of the application, to
determine the nature of the commercial
impression which is created by the term as
it is used by applicant. Cf. In re Produits
Chimiques Ugine Kuhlmann Societe Anonyme,
supra. Apropos thereto, the Court of
Customs and Patent Appeals, in the case of
In re Universal Oil Products Company, 177
USPQ 456 (CCPA 1973), has set forth the
following guidelines to be considered in
determining whether a term used as the name
of a process also functions as a service
mark:
“... The requirement [of the Statute] that a
mark must be 'used in the sale or
advertising of services' to be registered as
a service mark is clear and specific. We
think it is not met by evidence which only
shows use of the mark as the name of a
process and that the company is in the
business of rendering services generally,
even though the advertising of the services
appears in the same brochure in which the
name of the process is used. The minimum
requirement is some direct association
between the offer of services and the mark
sought to be registered therefore ... .”
[emphasis supplied].”
In re J.F. Pritchard & Co., 201 USPQ 951, 952 (TTAB 1979)
[proposed mark used only to identify liquefaction process,
and not used in association with design and construction
services]. Accordingly, terms that merely identify a
concept, method or process are not registrable as service
marks. As noted by our reviewing court in Universal Oil
Products, the requirement is that there be a direct
association between the applicant’s offer of services and
the proposed marks. See also In re Griffin Pollution
Control Corp., 517 F.2d 1356, 186 USPQ 166 (CCPA 1975)
Serial Nos. 75/930,465 & 75/930,476
- 12 -
[alleged mark identifies a water treatment process but is
not used as a mark]; and In re Hughes Aircraft Co., 222
USPQ 263 (TTAB 1984) [specimens and other material offered
by the applicant showed mark used only in connection with a
photochemical process or method, with no association
between the applicant's offer of services and the mark].
Applicant argues strenuously that his targeted
customers would perceive the terms MAKEFEELGOOD and
MAKEFEELBAD, as shown in the pages of his book, to be
source indicators for the recited services. We disagree.
Nowhere do the uses of these terms in the book show the
terms MAKEFEELGOOD and MAKEFEELBAD being used as service
marks. There is no language that makes either a direct or
an indirect association between the terms MAKEFEELGOOD and
MAKEFEELBAD and applicant’s counseling services. The
Trademark Examining Attorney has made the argument most
forcefully that these files reflect a total absence of any
association or nexus between the marks and the alleged
services.
As to applicant’s book itself, this record does not
show how popular this book has been. For our purposes
herein, it seems irrelevant whether this is a vanity book
without any substantial readership, or contrariwise, is
Serial Nos. 75/930,465 & 75/930,476
- 13 -
poised to eclipse Dale Carnegie’s famous 1936 book on
relationships, How to Win Friends and Influence People, as
applicant’s publisher suggests. However, even if we were
to hypothesize that the concepts MAKEFEELGOOD and
MAKEFEELBAD are universally and unquestionably identified
in some way with Mr. Loomis, that does not mean the terms
function as service marks for the services that applicant
has recited herein. Applicant’s wishes or intentions will
not magically turn these terms into source identifiers.
Cf. In re Port-A-Hut, Inc., 183 USPQ 680, 682 (TTAB 1974).
Does the file reflect applicant offering any services?
It is abundantly clear from this record that applicant
is attempting to promote his book. It is clear from the
contents of the entire book that MAKEFEELGOOD and
MAKEFEELBAD are recurring concepts in the pages of this
book. However, we agree with the Trademark Examining
Attorney that the dozens of repetitions of both of these
designations throughout the book do not show use of the
mark for applicant’s recited counseling services.
On the other hand, the Trademark Examining Attorney
seems to acknowledge from the recital of services alone
that applicant is actually providing counseling services.
(Trademark Examining Attorney’s appeal brief, p. 4).
Serial Nos. 75/930,465 & 75/930,476
- 14 -
Hence, he does not tackle directly the question of ‘whether
all the activities of promoting a self-help book can
actually be seen as providing “counseling” services?’4 As a
result, it appears that many of the seemingly hyper-
technical objections raised by the Trademark Examining
Attorney (and derided by applicant in his brief) grow out
of a reality that the majority of the specimens of record
have absolutely nothing to do with rendering professional
“counseling” as that activity is traditionally understood –
within the U.S. Trademark Office or without.5
In fact, applicant (the book’s author) makes this
point most dramatically in the frontispiece of the book:
This book is designed to educate and inform
based on the author’s experiences. It is
sold with the understanding that the
publisher and author are not rendering
professional services or counsel. If
professional guidance is needed, a competent
professional should be engaged.
Specimens unacceptable
In issuing his final refusal, the Trademark Examining
Attorney continued to charge that none of the specimens of
4 Although the Trademark Examining Attorney does say rather
clearly in his appeal brief: “Books don’t give counsel; people
do. Applicant is merely a salesman… .” (Trademark Examining
Attorney’s appeal brief, p. 9).
5 The only possible exception is an email exchange discussed
below.
Serial Nos. 75/930,465 & 75/930,476
- 15 -
record shows use of the mark in connection with applicant’s
offering the claimed counseling services to potential
customers.
Accordingly, to determine whether applicant’s alleged
service mark has been used in connection with the recited
services, we take a comprehensive look at all of the
specimens of record.6
As noted by the Trademark Examining Attorney,
applicant’s two invoices (Exhibits 1A and 1C), a third
party’s purchase order (Exhibits 1B) and an order form from
Amazon.com (Exhibits 1D) refer to the title of applicant’s
book. However, the involved designations applicant claims
as service marks are nowhere displayed on these documents.
Furthermore, Exhibits 3 through 9 are nothing more
than Publishers Marketing Association brochures directed to
book buyers, book reviewers and librarians. In addition to
the fact that these potential readers are getting
applicant’s book free-of-charge for the asking, such
catalogs cannot logically show use of a designation as a
service mark for counseling services – even if the target
audience were paying list price for the book. These seven
nearly-identical entries that applicant has highlighted
6 Substitute specimen #1 is the copy of applicant’s entire
book, which has been discussed at length above.
Serial Nos. 75/930,465 & 75/930,476
- 16 -
from each review contain the terms MAKEFEELGOOD(S) and
MAKEFEELBAD(S). However, viewed for what they are, they
represent tertiary sources, at best, making non-service
mark references to applicant’s methodology.
That leaves us with Exhibits 2A, 2B and 10.7 Given
what they purport to show, this exchange represents the
closest activity to counseling found within these records.
However, as noted by the Trademark Examining Attorney, they
also present a myriad of problems for applicant. First,
Exhibit 10 is nothing more than two sentences printed
across the middle of a single 8½” x 11” piece of plain,
white bond paper. Inasmuch as it is not a screen print of
applicant’s Internet homepage (e.g., lacking URL’s, dates
of printing, etc.), it stands as evidence of nothing.
Exhibit 2A is a photocopy of an email sent to applicant
from one “Jason” responding to applicant’s webpage
instructions to “Ask the Author.” In outlining his severe
interpersonal problems, Jason dutifully complies with the
letter of applicant’s request that any query for the author
7 In his response of November 1, 2001, applicant refers to
the following edited portion of his homepage as “Exhibit 8.”
However, it seems to have been marked by applicant as
“Exhibit 10” and has been so nominated by the Trademark Examining
Attorney throughout the prosecution of these applications:
MakeFeelGoods: What are they?: They are things that you do or say that make others feel good
about themselves. A MakeFeelGood buoys self esteem.
MakeFeelBads: What are they?: They are things that you do or say that make others feel bad about
themselves. A MakeFeelBad decimates self esteem.
Serial Nos. 75/930,465 & 75/930,476
- 17 -
“must relate to MakeFeelGoods and MakeFeelBads.” However,
it is quite clear from our earlier, extensive review of the
minimum requirements for service mark specimens that an
email note drafted by a troubled teen does not constitute
service mark usage by applicant. Furthermore, applicant’s
reply to Jason (Exhibit 2B) is an email response plugging
the book while reciting by-now familiar references to
applicant’s two distinct bundles of behaviors.
We should note in closing that the Trademark Examining
Attorney, in these two applications, also raises other
problems with the specimens of record. While he is correct
with regard to these other informalities, in light of our
disposition of these two applications based upon a review
of the most serious failures of the uses in the records, we
have chosen not to discuss at length these other weaknesses
of applicant’s proffered service mark specimens.8
8 As to “Issue 2” in the Trademark Examining Attorney’s
appeal brief, we agree that these terms are presented in a
narrative context as part of a larger thought. Within a book of
160 pages, even the chapter subtitles are overshadowed by the
book title, etc. See In re European-American Bank & Trust
Company, 201 USPQ 788 (TTAB 1979) [banking slogan THINK ABOUT IT
not registrable]; In re Wakefern Food Corp., 222 USPQ 76 (TTAB
1984) [WHY PAY MORE! does not function as a service mark]; In re
Melville Corporation, 228 USPQ 970 (TTAB 1986) [BRAND NAMES FOR
LESS unregistrable for retail clothing store services]; In re
Mautz Paint & Varnish Company, 157 USPQ 637 (TTAB 1968)
[“PAINTING … ask the EXPERT the man in the ORANGE JACKET!” found
to be unregistrable for paints and similar coverings]; and In re
Gilbert Eiseman, P.C., 220 USPQ 89 (TTAB 1983) [Designation IN
ONE DAY not registrable as a service mark for plastic surgery
services].
Serial Nos. 75/930,465 & 75/930,476
- 18 -
In summary, given the absence in these records of any
nexus between the terms MAKEFEELGOOD and MAKEFEELBAD and
the recited services, we affirm the refusal of the
Trademark Examining Attorney as to registration of these
marks for applicant’s recited counseling services.
Furthermore, the refusal to register is affirmed on the
ground that the specimens of record are not acceptable
evidence of actual service mark usage of the terms
MAKEFEELGOOD and MAKEFEELBAD.
Decision: The refusals to register are affirmed.
As to “Issue 5” in the Trademark Examining Attorney’s
appeal brief, we agree that if these designations truly
functioned as service marks, applicant should decide whether the
marks are MAKEFEELGOOD and MAKEFEELBAD (singular) or
MAKEFEELGOODS and MAKEFEELBADS (plural). Given the importance of
consistent “brand identity,” a trademark owner risks the
diminution of a valid source-indicator (an adjective) with
careless uses of the pluralized or possessive forms of the chosen
designation(s).
Finally, we feel compelled to volunteer the following in
response to a related point discussed several times by applicant.
Specifically, in the event that applicant believes the commercial
impression of his marks would be protected best by using a
telescoped format while retaining a presentation having a mix of
upper- and lower-case letters, he certainly retains the option
(whether filing applications electronically or via the
traditional paper route) of preparing for the Office “special
form drawings” of these designations [e.g., depicting the marks
as MakeFeelGood (rather than the typed drawing of MAKEFEELGOOD)
and MakeFeelBad (rather than the typed drawing of MAKEFEELBAD)].