International Christian Broadcasting, Inc.

Trademark Trial and Appeal Board

Mar 29, 2012

No. 85058128 (T.T.A.B. Mar. 29, 2012)

Mailed:
March 29, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re International Christian Broadcasting, Inc.
________

Serial No. 85058128
_______

Jennifer L. Whitelaw of Whitelaw Legal Group for Christian
Broadcasting, Inc.

Janet H. Lee, Trademark Examining Attorney, Law Office 102
(Karen M. Strzyz, Managing Attorney).
_______

Before Seeherman, Quinn and Kuczma, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

This is an appeal by International Christian
Broadcasting, Inc. (hereafter “applicant”) of a refusal to
register its mark in Class 35 for “retail store services
featuring novelty items, namely, hats, magnets and key
chains.”1 The mark, HEROES UNDER GOD and design, appears
below, and is described as follows:

1 Application Serial No. 85058128 also includes services in
Classes 38, 41 and 45, but there has been no refusal of
registration for these classes.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 85058128
2
The mark consists of a free form outline in the
shape of a stylized "H" with star-shaped cutouts,
within it portions of white stars with a blue
background with white stars in the upper left
corner, and red and white stripes throughout. The
outline is in the color black. The wording
"HEROES UNDER GOD" is in the color black and
under the stylized "H" with black stars between
the words, and a red line above and below "HEROES
UNDER GOD.

The colors blue, red, white and black are claimed as a
feature of the mark.

The application was filed June 9, 2010 under Section 1(a)
of the Trademark Act, asserting January 31, 2009 as the
date of first use and first use in commerce.
Registration has been refused with respect to the
services in Class 35 pursuant to Sections 1 and 45 of the
Trademark Act, §§ 1051 and 1127, and Trademark Rules
2.34(a)(1)(iv) and 2.56, 37 C.F.R. §§ 2.34(a)(1)(iv) and
2.56. It is the examining attorney’s position that the
specimens submitted by applicant fail to show use of the
mark in commerce in connection with the identified
services.
Ser No. 85058128
3
Trademark Rule 2.34(a)(1)(iv) lists, as a requirement
for an application filed under Section 1(a) of the
Trademark Act, “one specimen showing how the applicant
actually uses the mark in commerce.” Rule 2.56(a) requires
a specimen showing the mark as used “in the sale or
advertising of the services in commerce,” and Rule
2.56(b)(2) provides that “a service mark specimen must show
the mark as actually used in the sale or advertising of the
services.”
Applicant has provided three substitute specimens that
we reproduce below:2
Specimens submitted with Oct 18, 2010, Request for
Reconsideration:

2 Applicant has not argued the acceptability of its original
specimen or its first substitute specimen, so we need not discuss
them.
Ser No. 85058128
4

Specimen submitted with March 7, 2011, Request for
Reconsideration:

Ser No. 85058128
5
These specimens are photographs showing a framed
representation of applicant’s mark on shelves. The
March 7, 2011 submission obviously is of the same subject
shown in the October 18, 2010 submission, but includes the
surrounding objects as well. It is clear, from the
specimen submitted on March 7, 2011, that the mark is shown
in clear plastic picture frames placed on shelves which
feature various items, including caps and key chains and
what appear to be magnets.
The examining attorney is not contending that HEROES
UNDER GOD and design does not function as a mark or would
not be regarded as a mark, only that the specimen does not
show use of the mark as a source-indicator for the
identified services in Class 35. “Instead, they [the
specimens] show the mark being used only to indicate the
source of other, non-retail store services and to indicate
the source of goods being displayed on store shelves.”
Brief, unnumbered p. 4.3 Thus, she accepts that the framed
material would be viewed as a mark for the goods. “A
consumer would be inclined to view such a card as
identifying the source of the goods on the shelf: in other

3 The reference to non-retail store services concerns the first
substitute specimen submitted by applicant, which appears to
refer to fundraising services: “Clothing Donated Personally By
Dr. Paul Crouch All Proceeds Go To ‘Heroes Under God.’”
Ser No. 85058128
6
words, applicant’s specimens show the mark being used on
point-of-sale materials.” Brief, unnumbered p. 5.
Accordingly, this is not a situation in which the
applied-for mark is displayed in such a way that it would
not be perceived as a mark. Compare, In re A La Vieille
Russie, Inc., 60 USPQ2d 1895 (TTAB 2001) (specimen does not
show applied-for term as a mark because it appears in same
size and font as and as part of other informational
matter).
In her appeal brief the examining attorney has raised
the claim that “the specimens all seem to show that some
third party is providing such space, and that applicant is
merely using that space to offer its goods.” Brief,
unnumbered p. 6. We have two comments about this argument.
First, as applicant points out, there is no support for
this assertion in the record, and applicant unequivocally
denies the examining attorney’s contention, stating that
the specimen is “from its own retail location … and shows
the mark being used right in the retail setting itself.”
Reply brief, p. 2 (emphasis in original). Certainly if the
examining attorney believed that information about the
premises on which the retail store services were offered,
or about other signage for the store, was relevant, she
could have required, as part of an Office action, that
Ser No. 85058128
7
applicant supply such information. See Trademark Rule
2.61(b).
Second, the examining attorney has provided no support
for her position that if the owner of the mark does not
itself own the space in which it sells goods, it cannot per
se be the owner of a mark for retail store services. There
does not appear to us to be any per se reason why an entity
cannot offer retail services in a portion of another
entity’s space, such as the section of a lobby of an office
building or a business, and have the mark for the retail
services offered within that other business constitute
service mark use. The key question, as discussed below, is
whether consumers will perceive the mark as indicating
source of the retail store services in the applicant, or as
the mark of the owner of the building or business providing
the space in which the retail services are offered.
The examining attorney appears to take the position
that in order to qualify as a service mark for retail store
services, the mark must be used as the name of a store.
The examining attorney has not provided any support for
this position, and we are not aware of any case law that
requires this conclusion. We find that a mark can function
as a mark for retail store services if it identifies a
section of a store even if a different name is used for the
Ser No. 85058128
8
store as a whole; retail store services can be rendered in
a portion of a larger store and still constitute retail
store services. Therefore, a mark that indicates origin in
a portion of a store is still a mark used in rendering
retail store services, and a specimen showing use of a mark
for a section of a store can be an acceptable specimen.
Thus, the fact that applicant’s specimen does not show
signage for an entire store does not mean that the specimen
is unacceptable.
There are, of course, various ways in which to show
use of a mark for retail store services. Perhaps most
common is a photograph of the store showing the mark on
exterior signage, or a newspaper or magazine advertisement
for the store. See TMEP § 1301.04 (8th ed. 2011) for
examples of types of acceptable specimens.
It is also true that point-of-sale displays, such as
shelf-talkers, can be used as specimens for the sale of
goods, as displays associated with the goods. Trademark
Rule 2.56, TMEP § 904.03(g). However, the fact that a
framed image of the mark is shown on a shelf next to goods,
even if that use would qualify as a display associated with
the goods and would be an appropriate specimen for those
goods, does not in and of itself disqualify the framed
image from also being an acceptable specimen for retail
Ser No. 85058128
9
store services. For example, a mark for a store placed in
an exterior display window featuring a display of the goods
sold within the store might very well qualify both as a
display associated with those goods showing trademark use
for those goods, as well as exterior signage serving as a
service mark for the store. There is no compelling reason
why this would not also be true for signage within a store.
The question, as with most cases involving specimens,
is how the mark as shown in the specimens would be
perceived by consumers. In this connection, TMEP
§ 1301.04(b) provides that, “in determining whether a
specimen is acceptable evidence of service mark use, the
examining attorney may consider applicant’s explanations as
to how the specimen is used… .” Apparently there was a
telephone conversation between applicant and the examining
attorney in which applicant did provide such an
explanation.
The Trademark Rules and the TMEP provide that all
relevant communications must be made part of the written
record. Trademark Rule 2.191; TMEP §§ 709.04, 709.03.
Unfortunately, the written record in this case contains no
indication of what was said in this conversation.
Nevertheless, the examining attorney states that she
considered the substance of the conversation in making her
Ser No. 85058128
10
decision: “The examining attorney has carefully considered
applicant’s explanations, both in writing and in telephone
conversation, as to how the mark is being used.” Examining
attorney’s brief, unnumbered p. 5. Although TMEP § 709.04
encourages examining attorneys to initiate telephone or
e-mail communications “whenever possible to expedite
prosecution of an application,” and provides that
applicants may telephone or e-mail examining attorneys if
they feel that a telephone call or e-mail will advance
prosecution of an application, the rule and TMEP require
relevant communications to become part of the written
record. As explained in TBMP § 709.05, “relevant e-mail
and phone communications must be made part of the record,
because the USPTO uses them in decision making, and
anything used in decision making must be made of record.”
In the circumstances of this case, where applicant’s
explanation presumably had some effect, we would have
expected the examining attorney to memorialize the
substance of the conversation in a follow-up Office action,
or to have advised applicant to put this information into a
written response.4 Obviously, we can consider only

4 We note that TMEP § 709.04 provides that “Notes to the File,”
i.e., a memorandum of a telephone conversation written by the
examining attorney, must not summarize arguments or legal
conclusions, but must merely list the issues discussed and
Ser No. 85058128
11
information that is in the record, and thus the explanation
provided by applicant in the telephone conversation plays
no role in our decision herein.
Thus, we turn to the specimens themselves. The
specimen submitted by applicant on March 7, 2011 shows two
framed images of the applied-for mark, on two different
shelves, on which goods are also displayed, presumably for
sale. Although it is somewhat difficult to make out all
the details of the items in the photograph, they all seem
to have a military or patriotic theme. For example, there
are framed copies of the Air Force and Army anthems,
replicas of military vehicles, a yellow ribbon magnet or
decal with “Pray For Our Troops” written on it, and
numerous items decorated with American flags or flag
motifs. Consumers viewing the mark HEROES UNDER GOD and
design, as shown in the specimen, could well understand it
to identify the section of a retail store offering items
dedicated to U.S. troops. See In re Sones, 590 F.3d 1282,
93 USPQ2d 1118, 1122 (Fed. Cir. 2009), quoting 2 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition
§ 3.3 (4th ed. 2008): “The prime question is whether the
designation in question, as actually used, will be

indicate any agreement that may have been reached, or indicate
that no agreement was reached.
Ser No. 85058128
12
recognized in and of itself as an indication of origin for
this particular product or service.” Further supporting
the conclusion that consumers would view the mark as
identifying retail store services instead of goods is the
fact that at least some of the items shown in the specimen
bear their own trademarks, specifically, the mark FRAMOLOGY
is on the double photograph frame, OLD WORLD CHRISTMAS is
on another item, THE SOLDIER’S BIBLE is on the box for a
third, and although we cannot clearly make it out, we can
see that a trademark different from applicant’s applied-for
mark is on the box for the military vehicle.
The dissent suggests that the manner in which the
framed image of the mark is displayed creates the
commercial impression that the framed image itself is a
good offered for sale, rather than a mark for the retail
store services. We point out that the examining attorney
has never suggested this; as noted, the examining attorney
has accepted that the image would be perceived as a mark,
although as a mark for goods rather than retail store
services. Further, the specimen includes, immediately
behind one of the framed images of the mark, what appears
to be an 8½” x 11” paper in which HEROES UNDER GOD appears
in large white letters on a red background at the top of
Ser No. 85058128
13
the paper, with “Our Mission” below it.5 Given the
juxtaposition of this material with the framed image, it
does not appear to us that consumers would view the framed
image as merely a good for sale.
We also note that, in contrast to some service mark
specimens that were found unacceptable because the nature
of the service was not apparent from the specimen, here the
specimen shows the mark actually being used as part of the
rendering of the service, i.e., next to the goods being
offered for sale. Compare In re wTE Corp., 87 USPQ2d 1536
(TTAB 2008) (mark used as part of a return address label
affixed to boxes mailed to customers does not show a
connection between the mark and the service of contract
processing of metals). Thus, the mark shown in the
substitute specimens in this application is seen in the
context of the rendering of the retail store services. See
TBMP § 1301.04(b) and cases cited therein: “Where the
record shows that the mark is used in performing (as
opposed to advertising) the services, a reference to the
services on the specimen itself may not be necessary.”
Accordingly, we find that the substitute specimens
submitted by applicant on October 18, 2010 and March 7,

5 Unfortunately, because of the size of the specimen, we cannot
make out the rest of the text in this paper.
Ser No. 85058128
14
2011 are acceptable to show use of the applied-for mark in
connection with the rendering of “retail store services
featuring novelty items, namely, hats, magnets and key
chains.” To the extent that there is any doubt about
whether purchasers would perceive the mark as shown in the
specimens as a display associated with the goods rather
than as a service mark identifying the source of the retail
store services, as with many other grounds of refusal, we
think that such doubt should be resolved in favor of
applicant. Cf. In re In Over Our Heads Inc., 16 USPQ2d
1653 (TTAB 1990) (Section 2(a) scandalous and disparaging);
In re MC MC S.r.l., 88 USPQ2d 1378 (TTAB 2008) (Section
2(a) falsely suggests a connection); In re DNI Holdings
Ltd., 77 USPQ2d 1435 (TTAB 2005) (Section 2 generic); In re
Aid Laboratories, Inc., 221 USPQ 1215 (TTAB 1983)(Section
2(e)(1) merely descriptive); In re International Taste
Inc., 53 USPQ2d 1604 (TTAB 2000) (Section 2(e)(2) primarily
geographically descriptive); In re Benthin Management GmbH,
37 USPQ2d 1332 (TTAB 1995) (Section 2(e)(4) primarily
merely a surname).
Decision: The refusal of registration is reversed.
The application will be forwarded for publication in
Classes 35, 38, 41 and 45, i.e., the class for which
Ser No. 85058128
15
registration had been refused, and the three classes for
which there was no refusal of registration.

Kuczma, Administrative Trademark Judge,
dissenting:

I join the majority’s opinion that a mark can function
as a mark for retail store services if it identifies a
section of a store, but I respectfully dissent from my
colleagues’ ruling on the sufficiency of the applicant’s
specimens. Rather than evidencing service mark use, the
specimens simply show framed images of the mark sitting on
a shelf. As such, the framed images of the mark could
appear to be actual products that are available for sale,
or they could appear as displays that advertise the sale of
adjacent products. In any event, the specimens do not show
use of the mark in association with retail store services
featuring novelty items.6
It is well settled that a particular designation can,
under certain circumstances, function both as a trademark
and a service mark. The only restriction on the
registration of the same term both as a trademark and as a
service mark is that the specimens filed in the service
mark application must show the mark “used or displayed in

6 While it is not apparent from the specimen that the shelves
pictured are located in a retail store, the record contains
Ser No. 85058128
16
the sale or advertising of the service” as distinguished
from use on goods or in the sale or advertising of goods of
the applicant. In re Restonic Corporation, 189 USPQ 248,
249 (TTAB 1975); In re Heavenly Creations, Inc., 168 USPQ
317, 318 (TTAB 1971).
The fundamental question is what is being offered for
sale under the mark. The mere advertising of one’s own
products is not a separate service from the sale of the
goods. The critical inquiry then is whether the specimens
show that applicant is using the mark as a service mark in
contradistinction to use on goods or to advertise or
promote the purchase of goods. In re Landmark
Communications, Inc., 204 USPQ 692, 695-96 (TTAB 1979). It
is thus necessary to “look to the specimens of record in
order to ascertain the manner in which the mark is used and
the commercial impact created thereby to determine what
function the mark performs under the particular
circumstances.” Restonic Corp., 189 USPQ at 249.
No language or any other reference to retail store
services is included in the framed images of the mark.
Indeed, based on the manner in which the mark is used, in
picture frames on store shelves without reference to any

applicant’s statement that the specimens are “from [applicant’s]
own retail location.”
Ser No. 85058128
17
services, the two framed images themselves appear as
products available for purchase. Alternatively, the framed
images serve to advertise the sale of the adjacent products
which bear the same mark as shown in the framed images.
The manner in which the mark is used in the specimens does
not serve to advertise or otherwise indicate retail store
services; to the contrary, it promotes the sale of the
proximate products.
The test for a specimen continues to be that it “. . .
must in some way evince that the mark is ‘associated’ with
the goods and serves as an indicator of source.” In re
Sones, 590 F.3d 1282, 93 USPQ2d 1118, 1123 (Fed. Cir.
2009); In re Osmotica Holdings Corp., 95 USPQ2d 1666, 1668
(TTAB 2010) (at a minimum, specimen must show a direct
association between the services and the mark sought to be
registered) and In re wTe Corp., 87 USPQ2d 1536, 1541 (TTAB
2008) (CCPA has made it clear that there must be “some
direct association between the offer of services and the
mark sought to be registered.”).
Generally, in order to create a “direct association,”
the specimen must not only contain a reference to the
service, but also the mark must be used on the specimen to
identify the service and its source. Osmotica Holdings,
Ser No. 85058128
18
95 USPQ2d at 1668, citing In re Aerospace Optics Inc.,
78 USPQ2d 1861, 1862 (TTAB 2006).
Applicant’s reply brief indicates that the specimens
are “from [applicant’s] own retail location.” However, it
is not enough for applicant to be a provider of retail
store services; applicant must also use the mark to
identify the retail store services for which registration
is sought. In re Advertising & Marketing Development Inc.,
821 F.2d 614, 2 USPQ2d 2010, 2014 (Fed. Cir. 1987). The
record is also silent as to the actual name of applicant’s
“retail location.” Under these circumstances, it cannot be
assumed that the framed images of the mark have any
relationship to the name of the retail store. As
recognized in Sones, there must be a “link” between a
trademark and the products [services] for which it is used.
93 USPQ2d at 1123. Here, we are clearly missing the “link”
between the mark as used in the specimens and retail store
services.
The majority finds that although the specimens do not
reference any services, the nature of the services is
apparent from the specimens because the specimens show the
mark actually being used as part of the rendering of the
service, i.e., next to the goods being offered for sale.
Because retail stores, by their very nature, display a
Ser No. 85058128
19
variety of products for sale, simple placement of a framed
image of a mark next to goods offered for sale does not
transform the image of the mark into a service mark for
retail store services. Unlike signage on the front of a
retail store which provides an immediate and direct
association between the name of the store and the retail
store services provided therein, the framed images of the
mark shown in the specimens make no association with retail
store services.
While there is no requirement that specimens
themselves contain an association with the specified
services, the specimens must create an association with the
services. In those limited situations where specimens were
found to be acceptable despite the fact that they did not
reference the services, the specimens showed direct use of
the mark in connection with the rendering of the services.
In In re Duratech Industries Inc., 13 USPQ2d 2052, 2054
(TTAB 1989), the Board distinguished cases such as Red
Robin7 and Eagle Fence Rentals8 because they essentially
involved the “wearing” of a design mark during the
performance, or personification, of the services for which
registration was sought. In Eagle Fence Rentals, the

7 In re Red Robin Enterprises, Inc., 222 USPQ 911 (TTAB 1984).
8 In re Eagle Fence Rentals, Inc., 231 USPQ 228 (TTAB 1986).
Ser No. 85058128
20
applicant did not sell any type of product, it only
rendered services. 231 USPQ at 229. Thus, it was clear
that the specimens showed use of the mark in connection
with applicant’s services.
To create an association between a mark and retail
store services requires something more than the mere
presence of a framed image of a mark just sitting on a
retail store shelf. This is particularly so when the
framed image of the mark is juxtaposed to products bearing
the same mark. Accordingly, I would hold that the
specimens do not show use of the mark as a service mark for
retail store services and would affirm the refusal to
register.