Innovative Marble & Tile Inc.

Trademark Trial and Appeal Board

Mar 7, 2001

No. 75460970 (T.T.A.B. Mar. 7, 2001)

03/07/01
Paper No. 14
JQ
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Innovative Marble & Tile Inc.
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Serial No. 75/460,970
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Myron Amer for applicant.
Stacey Johnson, Trademark Examining Attorney, Law Office
113 (Meryl Hershkowitz, Managing Attorney).
_______
Before Quinn, Hairston and Bottorff, Administrative
Trademark Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Innovative Marble &
Tile, Inc. to register the mark IMT ITALIA (“ITALIA”
disclaimed) for “providing product information services for
others in the name of [sic] printed materials concerning
the source of ceramic and porcelain tile, marble, granite,
limestone and agglomerates.”1
1 Application Serial No. 75/460,970, filed April 2, 1998,
alleging first use anywhere and first use in interstate commerce
on January 5, 1998.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/460,970
2
The Trademark Examining Attorney has refused
registration on the ground that the specimens do not show
use of the applied-for mark in connection with the services
recited in the application.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney filed briefs.2 An oral
hearing was not requested.
Applicant, in its brief, begins its arguments by
stating that the recitation of services is “not totally
accurate of applicant’s services or more satisfactory to
the applicant than the recitation of services as filed with
the application.”3 Applicant goes on to state that it has
“expertise in the characteristics of ‘ceramic and porcelain
tile, and marble, granite, limestone and agglomerates’ and
using this expertise counsels clients on the appropriate
use of these materials, and also is knowledgeable
2 Attached to applicant’s brief is a glossy folder captioned
“Innovative Marble & Tile Press Release, New Products,
Information...And More”, inside of which are the referenced
materials. The Examining Attorney, in her brief, objected to the
evidence as untimely, and also pointed out that, in any event,
none of the materials showed use of the mark sought to be
registered. The objection is well taken and the materials do not
form part of the appeal record. Trademark Rule 2.142(d). Even
if considered, this evidence is of no value to the issue herein
given that the materials do not show any use of the involved
mark.
3 The original recitation of services read “providing information
to third parties of sources of ceramic and porcelain tile, and
marble, granite, limestone and agglomerates.”
Ser No. 75/460,970
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concerning the foreign sources from which it is advisable
to purchase these materials, it being a marketplace fact
that these materials are best imported, than purchased
domestically.” Although the remainder of applicant’s
arguments are not entirely clear to us, applicant contends,
as best we understand it, that it provides information to
others about the goods listed in the recitation of
services, and that the materials submitted during
prosecution are acceptable specimens showing use of the
mark in connection with such services.
The Examining Attorney maintains that the various
specimens submitted by applicant do not show use of the
mark in connection with the specific services recited in
the application. The Examining Attorney also argues: “The
Examining Attorney does not dispute the fact that applicant
may be providing information to its customers while in the
showroom. What is unclear from the specimens is whether
the applicant is rendering information services, which by
definition, must include the provision of information for
the benefit of others rather than information which is
merely information about the goods sold and is not a
service.” (brief, pp. 5-6)
Whether a specimen is acceptable to evidence use of
the subject matter as a service mark depends upon whether
Ser No. 75/460,970
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it shows use of the mark in association with the recited
services (i.e., in their sale or advertising). The manner
of use on the specimens must be such that potential
purchasers would readily perceive the subject matter as
identifying and distinguishing applicant’s services and
indicating their source. Section 45 of the Trademark Act,
Trademark Rule 2.58 and Trademark Manual of Examining
Procedure, §1301.04.
The original specimens of record consist of an invoice
and an accompanying cover letter. We acknowledge that
invoices may be acceptable service mark specimens provided
that they show the mark and refer to the relevant services,
and that letterhead stationery bearing the mark may be
accepted if the services are clearly indicated thereon.
The problem with these specimens is that, while the mark
appears thereon, there is no reference or any indication to
the services for which applicant seeks registration, namely
“providing product information services for others in the
name of printed materials concerning the source of ceramic
and porcelain tile, marble, granite, limestone and
agglomerates.” Rather, the specimens show use of IMT
ITALIA in connection with the sale of tile by applicant.
The substitute specimens submitted by applicant are in
the nature of an advertisement it placed in
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ClipperMagazine. The advertisement is for applicant’s
“warehouse showroom” which, the advertisement indicates, is
“now open the public...now buy below retail and save.”
Although this advertisement indicates “buy direct from
importer” and shows the mark used in connection with
applicant’s sale of imported marble, porcelain granite and
ceramic, there is no reference whatsoever to the services
of providing information for others about these products.
The other material submitted by applicant consists of
a product brochure captioned “RETRO 2000.” Again, although
applicant insists that it has expertise in flooring
materials and that it provides information to purchasers to
aid them in selecting products from third parties, these
services are not referenced in what seems to be an ordinary
product brochure bearing applicant’s trade name and
applied-for mark. To the extent that the brochure contains
information about marble products, it is nothing more than
a brochure about products sold by applicant (see the back
of the brochure indicating “a product of IMT ITALIA”), as
opposed to any third party.
In sum, the materials are devoid of any indication
that applicant is a provider of information about sources,
other than itself, of tile, marble, etc. Thus, to the
extent that applicant is providing a service separate and
Ser No. 75/460,970
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apart from the sale of its own imported products, there are
no specimens showing use of the mark in connection with
such services. None of the materials convinces us that
purchasers encountering them would make an association
between applicant’s mark and the recited services; rather,
the association more likely would be between the mark and
the sale of ceramic and porcelain tile, marble, granite,
limestone and agglomerates for applicant’s own benefit.
Cf: In re Ralph Mantia Inc., 54 USPQ2d 1284 (TTAB 2000).
Decision: The refusal to register is affirmed.
Ser No. 75/460,970
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