Peter Webb Public Relations, Inc.

Trademark Trial and Appeal Board

Sep 12, 2014

No. 77969360 (T.T.A.B. Sep. 12, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 12, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Peter Webb Public Relations, Inc.
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Serial No. 77969360
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Misha Gregory Macaw of Santangelo Law Offices
for Peter Webb Public Relations, Inc.
Bernice Middleton, Trademark Examining Attorney, Law Office 106,
Mary I. Sparrow, Managing Attorney.
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Before Seeherman, Cataldo and Lykos,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
On March 26, 2010, Peter Webb Public Relations, Inc. (“Applicant”) filed an
application under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b) to register
the mark MEDIARICH in standard character format1 for services ultimately
identified as, “[p]ublic relations services for others through all public

1 Although Applicant’s mark appears on the drawing page in stylized form as mediaRich,
Applicant correctly entered the mark in TEAS (the Trademark Electronic Application
System) as asserting a claim of standard characters. See Trademark Manual of Examining
Procedure (“TMEP”) § 807.03(h) (April 2014).
Serial No. 77969360
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communication means” in International Class 35.2 Following issuance of a notice of
allowance, Applicant submitted with its statement of use a specimen consisting of a
screenshot from Applicant’s web site. The specimen is reprinted below:

2 During ex parte prosecution of the application, Applicant amended the identification to
also include goods identified as “computer software platform for distribution of news
releases and supporting information to news outlets in the field of public relations” in
International Class 9. The Examining Attorney then issued a refusal under Section 2(d) of
the Trademark Act but only as to those goods. Following Applicant’s failure to timely
respond to the Examining Attorney’s substantive refusal to register as to the goods in Class
9, the Examining Attorney issued an Examiner’s Amendment which deleted the Class 9
goods from the application. The application then proceeded to publication for only the
services in Class 35.
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identified services. See 15 U.S.C. §§ 1051, 1052, 1053 and 1127; 37 CFR §§ 2.56 and
2.88(b)(2).
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the Request for
Reconsideration, the appeal was resumed. For the reasons set forth below, we
affirm the refusal to register.
Section 45 of the Trademark Act, 15 U.S.C. § 1127, defines “service mark” as
follows:
The term “service mark” means any word, name, symbol, or device, or any
combination thereof--

(1) used by a person, or

(2) which a person has a bona fide intention to use in commerce and
applies to register on the principal register established by this [Act], to
identify and distinguish the services of one person, including a unique
service, from the services of others and to indicate the source of the
services, even if that source is unknown….

Section 1(d)(1) of the Trademark Act, 15 U.S.C. § 1051(d)(1), requires that the
applicant file a “specimen” or facsimile “of the mark as used in commerce.”
Trademark Rule 2.56(a), 37 CFR § 2.56(a), adds that an applicant filing an intent-
to-use application file “one specimen . . . showing the mark as used in commerce on
or in connection with the goods or services.” (emphasis added). A service mark
specimen consisting of advertising or promotional materials generally must show a
direct association between the mark and the services for which registration is
sought. Trademark Rule 2.56(b)(2). See In re Universal Oil Prods. Co., 476 F.2d 653,
655, 177 USPQ 456, 457 (CCPA 1973) (term that identified only a process held not
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registrable as service mark, even though applicant was rendering services and the
name of the process 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). A
specimen that shows only the mark with no reference to, or association with, the
services does not show service mark usage. See, e.g., In re Adair, 45 USPQ2d 1211
(TTAB 1997) (tags affixed to decorated Christmas trees 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”). While the
exact nature of the services does not need to be specified in the specimen, there
must be something which creates in the mind of the purchaser an association
between the mark and the services that have been recited in the application. In re
Adair, 45 USPQ2d at 1215, quoting In re Johnson Controls Inc., 33 USPQ2d 1318,
1320 (TTAB 1994). See also In re Osmotica Holdings, Corp., 95 USPQ2d 1666, 1668
(TTAB 2010). 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, along with any other available evidence in the record that
shows how the mark is actually used. See In re International Environmental Corp.,
230 USPQ 688 (TTAB 1986).
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The Examining Attorney maintains that Applicant has conceded that the mark
is used for computer software or a software-based platform service, albeit in the
field of public relations or marketing. The Examining Attorney argues that
“Applicant did not seek registration for its mark for software for public relations or
the design and development of public relations software for others” (Examining
Attorney’s Brief, unnumbered p. 4)), but rather for the services identified in the
application – “[p]ublic relations services for others through all public
communication means.”
Applicant, in traversing the refusal, relies primarily on In re Ancor Holdings, 79
USPQ2d 1218 (TTAB 2006), in which the Board reversed the Sections 1, 2 and 45
refusal to register the mark INFOMINDER for “reminder services in the area of
upcoming important dates and events; personal scheduling services provided via the
Internet” in International Class 42. In that case, the examining attorney took the
position that the specimen showed use of the mark for goods, not services, by
pointing to use of the mark INFOMINDER in connection with the word “tool,” in
applicant's specimen. The examining attorney contended that the words “product,”
and “suite” in applicant's brochure and website created the perception in the minds
of consumers that the mark as it appeared on the specimen identified computer
software used in connection with the performance of the services, but not as a
source indicator for the services themselves. Id. at 1220. The Board rejected the
examining attorney’s argument, finding instead that applicant’s services and
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specimens were not in the field of computer science. The underlying rationale of the
Board’s decision was set forth as follows:
Applicant's services are identified as “reminder services in the area of
upcoming important dates and events; personal scheduling services
provided via the Internet,” and applicant's prospective customers
presumably would be seeking a business tool for scheduling purposes. The
fact that the word “tool” appears on the specimen does not automatically
associate the mark with computer software. Although it may well be
software that is generating the reminders and scheduling, in today's
commercial context if a customer goes to a company's website and accesses
the company's software to conduct some type of business, the company
may be rendering a service, even though the service utilizes software.
Because of the ambiguity of the term “tool,” and the blurring between
services and products that has occurred with the development and growth
of web-based products and services, it is important to review all the
information in the record to understand both how the mark is used and
how it will be perceived by potential customers.

Id. at 1221 (emphasis added).
Applicant maintains that this is the precise situation presented here. In support
thereof, Applicant submitted with its request for reconsideration the affidavit of
Peter J. Webb (“Webb Affidavit”), founder and president of Applicant, averring that
consumers of Applicant’s public relations services cannot purchase, view, or utilize
Applicant’s computer software described in the specimen; rather, Applicant’s public
relations professionals use the software in order to provide public relations services
to Applicant’s clients. Webb Affidavit ¶¶ 7-9. As more fully explained in the Webb
Affidavit:
4. As part of continuing innovation and improvement of public
relations services at Webb PR, I conceived, developed, and
implemented a model of providing public relations services using
computer-assisted media distribution.

…
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6. In operation, this model of providing public relations serves
consumers desiring a wide distribution of information for a public
relations need, such as [a] news conference or a product launch.
Consumers, in consultation with public relations professionals at Webb
PR, provide content such as text, video, graphics, and photos to Webb
PR. The professionals at Webb PR then edit the content and ensure
that it is in a format appropriate for the public relations need, such as
in a form for newsroom use. The content is then entered by public
relations professionals into the computer-assisted media distribution
software, and the same professionals develop a list of targeted
recipients – either from a client’s list of contacts or a list developed by
Webb PR – for distribution to appropriate outlets, such as newsrooms,
news editors, bloggers, free-lance writers and so forth.

7. …In this service model, the software may be thought of as a
“delivery device” but the more distinctive hallmark of the service model
is that of [a] public relations professional, working with the client,
[who] exercises important judgments in how the software can be used
to achieve a public relations objective.

Applicant further avers that its clients are sophisticated consumers who “generally
understand that software is not the product they are purchasing but rather
recognize that the software merely supports the public relations services” provided
by Applicant. Id. at ¶10. Applicant also disagrees with the Examining Attorney’s
contention that the specimens make no reference to public relations services,
arguing that the term “PR,” a well-known abbreviation for “public relations,”
appears prominently in the upper left corner of the specimen.
The Examining Attorney counters that Applicant’s reliance on Ancor, supra, is
misplaced because “the software is not ancillary or used to access the needs of a
client to perform an underlying service. Rather, it is the actual service provided for
and delivered under the mark. Consumers know they are purchasing a template to
distribute information about them and/or their company to the media. Applicant is
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providing a technological platform or as applicant’s specimen states a chance to
build a media ‘library’ loaded with documents for distribution.” Examining
Attorney’s Brief, unnumbered pp. 6-7.
After careful consideration of the Examining Attorney’s and Applicant’s
arguments, and the specimen and explanation of the services provided by Applicant
in the Webb Affidavit, we agree with the Examining Attorney that MEDIARICH
fails to function as a service mark. Rather than Ancor, we find more applicable In re
Walker Research, Inc., 228 USPQ 691 (TTAB 1986), and In re DSM
Pharmaceuticals, Inc., 87 USPQ2d 1623 (TTAB 2008). In both of those cases, the
Board affirmed the refusal to register where the proposed mark was used as a
source indicator for a computer software product rather than the identified services.
As explained in DSM Pharmaceuticals, 87 USPQ2d at 1626-27:
…the term LIQUIDADVANTAGE in this specimen clearly refers to
proprietary software by that name. Nowhere does the specimen show a
direct association between use of the proposed LIQUIDADVANTAGE mark
and “custom manufacturing of pharmaceuticals featuring liquid fill and
finish technology.” We note that if a mark is used to identify both the
system or process and the services rendered by means of the system or
process, the designation may be registrable as a service mark. See
Liqwacon Corp. v. Browning-Ferris Industries, Inc., 203 USPQ 305 (TTAB
1979) (mark registrable where it identified both a waste treatment and
disposal service and a chemical solidification process). However, that is not
the case here, where every description and explanation of
LIQUIDADVANTAGE on the specimen refers to the capabilities and the
purported advantages of the LiquidAdvantage software alone. (internal
citations omitted).

Similarly, in In re Walker Research, supra, the Board affirmed the
Examining Attorney’s refusal on the basis that the proposed mark
“SegMentor” as used on the applicant’s specimen did not identify the
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applicant’s marketing analysis services but rather a computer software
program used in the performance of said services. The specimen, which
consisted of an advertising sheet, presented the mark in the following manner:
With the SegMentor software, you can profile individual consumer
values, examine the relative differential advantages of competing
products and explore market responses to changes in your
marketing mix and to new products.

SegMentor is friendly and flexible. You can segment the market and
examine product positioning with the ease of your bankcard money-
mover. . . .

The SegMentor tools address the key issues facing marketing
managers . . . .

With its integrated software, SegMentor provides marketing
research and product managers with unique hands-on capability to
address fundamental marketing issues and to maximize the impact
of their research data.

The SegMentor software has been developed over the past three
years by David C. Cavander. . . .

For further information on custom research studies utilizing
the SegMentor software, contact your Walker account representative
….”

Id. at 692.

Likewise, in this instance, we agree with the Examining Attorney’s
assessment that Applicant’s proposed mark MEDIARICH identifies solely an
internally used software program designed to assist in the rendering of
Applicant’s “[p]ublic relations services for others through all public
communication means,” as opposed to the services themselves. Indeed,
Applicant’s specimen touts the unique capabilities of its computer software:
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mediaRich™ is the newest form of media distribution platform that
provides all types of media outlets with the resource tools they need to do
your story without leaving the newsroom. The template provides access to
supporting documents, recent news releases, photos and videos of the
event, as well as related links to the company or story topic. Webb PR has
trademarked the template and can tailor it to your company’s individual
marketing needs.

We disagree with Applicant’s assertion that the term “PR” as it appears in
the left corner of the specimen provides the necessary nexus between
Applicant’s services and the applied-for mark. Simply because the additional
term “PR” as part of the mark “Webb PR” appears on the specimen, it does not
necessarily follow that consumers will infer that Applicant is providing public
relations services under the applied-for mark MEDIARICH. As we have
explained above, Applicant’s mark as shown on the specimen only identifies
Applicant’s software platform.
Suffice to say, the submitted specimen does not show the required
correspondence between the proposed mark and the identified services. In the
absence thereof, Applicant’s specimen on its face fails to show use of its mark
in commerce for the identified services.
Decision: The refusal to register is affirmed.