RDS America, L.L.C.

Trademark Trial and Appeal Board

Jun 28, 2007

No. 76525800 (T.T.A.B. Jun. 28, 2007)

Mailed: June 28, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re RDS America, L.L.C
________

Serial No. 76525800
_______

Eric T. Jones of Reising, Ethington, Barnes, Kisselle, P.C. for
RDS America, L.L.C.

Sanjeev Vohra, Trademark Examining Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).1
_______

Before Holtzman, Drost and Wellington, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

An application has been filed by RDS America, L.L.C. to
register the mark ROUTE DISTRIBUTION SOLUTIONS (typed form) for
services ultimately identified as:2
Business marketing services in the field of hand
trucks, delivery trucks, pallet trucks, and delivery
and material handling products, rendered at the
customer's site (in Class 35).

1 The application was assigned to Sanjeev Vohra to write the appeal
brief. A different examining attorney handled the case during
prosecution.

2 Application Serial No. 76525800, filed June 27, 2003, alleging a date
of first use and first use in commerce of October 1, 2002. "ROUTE
DISTRIBUTION" is disclaimed.
THIS OPINION IS
NOT A PRECEDENT OF
THE TTAB
Serial No. 76525800
2
Maintenance, installation, and repair of hand
trucks, delivery trucks, pallet trucks, delivery and
material handling equipment, and consultation
related thereto (in Class 37).

This case is on appeal from the examining attorney's final
refusal to register the mark on the ground that the specimens do
not show use of the mark for the identified services in Class 35
and, in effect, on the ground that the identification of services
in Class 35 does not accurately describe the services.3 Section
1(a)(1) and (2) of the Trademark Act. The appeal has been fully
briefed.
As background for this matter, the application was
originally filed with the following recitation of services:
Marketing, specifying, installing, reconditioning,
servicing, consulting concerning and delivering
material handling equipment and systems
incorporating hand trucks, delivery trucks, pallet
trucks and associated material handling products.

In her first Office action, the examining attorney properly
rejected the recitation of services on the ground that it was
indefinite and included services classified in more than one
class. The examining attorney suggested that the recitation be
amended to the following "if accurate":

3 The refusal pertains only to Class 35. Other refusals and/or
requirements in the case, including an initial refusal to register
based on Section 2(e)(1) of the Trademark Act, have been resolved or
withdrawn.

Serial No. 76525800
3
Business marketing consulting services in the field
of hand trucks, delivery trucks, pallet trucks and
associated material handling products (in Class 35).

Maintenance, installation, and repair of hand
trucks, delivery trucks, pallet trucks, delivery and
material handling equipment, and consultation
related thereto (in Class 37).

The specimen of use accompanying the original application is
reproduced below.

Serial No. 76525800
4
In addition, the examining attorney rejected the specimen
as evidence of service mark use on the ground that the specimen
did not specifically refer to any of the services provided by
applicant. She stated that the specimen shows "the mark used in
and [sic] advertisement for the sale of delivery hand trucks" but
that "the applicant is not selling goods on a retail basis and
therefore the specimens do not reference the services listed."
In response to the refusal, applicant adopted the suggested
recitation for the Class 37 services, submitted the fee for the
additional class, submitted a second specimen, and amended the
services in Class 35 to:
Business marketing services in the field of hand
trucks, delivery trucks, pallet trucks, delivery and
material handling products, and consultation related
to the field.

The second specimen, a brochure, is shown below.

Serial No. 76525800
5
This brochure shows the mark and the statement "We Bring the
Store to your Door!" followed by the wording "Service" "Sales"
and "Quality Products."
The examining attorney accepted the recitation for the Class
37 services as well as the new specimen for that class. The
examining attorney also accepted the proposed recitation for
Class 35 but issued a final refusal on the basis that the
specimens "do not specifically refer to the business marketing
services provided by the applicant."
Applicant then amended the Class 35 recitation to read:
Marketing services in the field of hand trucks,
delivery trucks, pallet trucks, delivery and
material handling products.

The examining attorney continued the final refusal as to the
specimens and rejected the proposed recitation because "the
wording 'Marketing services...' is too vague as listed." She
stated that the type of marketing must [be] indicated" and she
suggested the following language "if accurate":
Business marketing services in the field of hand
trucks, delivery trucks, pallet trucks, delivery and
material handling products.

Applicant then adopted verbatim the recitation suggested by
the examining attorney.
In the next Office action, the examining attorney continued
the refusal as to the specimens maintaining her earlier position
Serial No. 76525800
6
that the specimens "do not specifically refer to the business
marketing services provided by the applicant" and adding that "In
fact, the specimens appear to be advertising for the applicant's
own services which are not separate services."
The case continued in this manner with a series of
proffered and rejected amendments, one of which incorporated
language taken from TMEP §1301.01(a)(1) and the Acceptable
Identification of Goods and Services Manual (ID Manual):
Business marketing services comprising gathering
together various products of others in the field of
hand trucks, pallet trucks, and delivery and material
handling products, and transporting them to the
customer's site for customer inspection, selection
and purchase consummation.

The examining attorney rejected this recitation first as
outside the scope of the identification as originally filed, and
in a subsequent action as outside the scope of the identification
as amended. She also noted that "transporting" of the goods is
in a different class.
Over the course of its next few responses, applicant
expressed its concern that the examining attorney was
misinterpreting what applicant is actually doing; indicated that
it did not understand the examining attorney's repeated
contention that "the specimens appear to be advertising for the
applicant's own services which are not separate services"; argued
based on a dictionary definition that "marketing" means "to
Serial No. 76525800
7
sell"; and pointed out that the term "sales" is explicitly
mentioned on the specimen as well as the statement "We Bring the
Store to your Door!" Applicant explained as follows:
The products, which applicant sells or markets, are
not manufactured by applicant, but rather are the
new goods of others.

The examining attorney dismissed these arguments, and
applicant eventually settled on the following recitation which is
the one currently before us:
Business marketing services in the field of hand
trucks, delivery trucks, pallet trucks, and delivery
and material handling products, rendered at the
customer's site.

For the first time in the appeal brief, the examining
attorney explains that "The USPTO considers [business marketing
services] to be promoting the sale of goods and services of
others through the rendering of advertising services," although
the examining attorney cites no authority for that statement.
While noting that the specimens indicate that applicant is
selling beer delivery equipment, the examining attorney states
that "neither specimen makes any reference, either direct or
indirect, to conducting advertising services on behalf of others
(i.e. business marketing, which is what the identification of
services in Class 35 contemplates)." The examining attorney
rejects applicant's contention that "marketing" is "selling" and
Serial No. 76525800
8
that "selling" is a service arguing that "selling" is not a
"business marketing service" and that, in any event, "simply
selling goods is not considered to be a service at all." The
examining attorney contends that although TMEP §1301.01(a)(1) "is
the basis for holding that retail store[] services and similar
services are considered to be" registrable services and that
although, according to the examining attorney, applicant may be
rendering a type of retail service, such service is outside the
scope of applicant's current identification.
It is clear that the original recitation of services was
unacceptable. Beyond that, the issues regarding the nature of
the services and an appropriate description of the services
became confused, and the case ran off track with the first
suggested recitation. The first problem is that the examining
attorney did not follow the procedure set forth in TMEP §1402.05
("Accuracy of Identification") which states:
An identification is unacceptable if it is
inconsistent with the goods or services indicated by
the specimens, or if the ordinary meaning of the
identification language is at variance with the
goods or services evidenced by the specimens or any
other part of the record.

Assuming "business marketing" means "advertising services,"
the examining attorney suggested an unacceptable recitation, one
that was not supported by, and was inconsistent with, the
specimen in the original application. The original specimen,
Serial No. 76525800
9
shown above, is an advertisement, an acceptable specimen for a
service. The mark is prominently displayed on the advertisement.
The featured product on the advertisement is a "GEMINI® The
original convertible hand truck" and the ad states that the
product is "In stock for immediate shipment." Applicant also
provides "Quality equipment from MAGLINER®" as noted on the
bottom of the advertisement.
There is no requirement that specimens spell out the
specific nature or type of services rendered. See In re Johnson
Controls Inc., 33 USPQ2d 1318 (TTAB 1994); In re Southwest Petro-
Chem, Inc., 183 USPQ 371, 372 (TTAB 1974); and TMEP § 1301.04(c)
(4th ed. April 2005). A general reference in the specimen to the
industry or the activity performed may be acceptable. See
generally TMEP § 1301.04(c), supra. A review of the specimen as
a whole, including the reference to GEMINI hand trucks that are
"In stock for immediate shipment," suggests that applicant is
selling goods, or perhaps delivering goods. But there is nothing
whatsoever in the specimen to suggest that applicant is in the
business of advertising goods. In fact, the examining attorney
acknowledged in the first Office action that the specimen showed
sales, stating "The specimens show the mark used in and [sic]
advertisement for the sale of delivery hand trucks." It is
unclear why, then, the examining attorney did not suggest a
Serial No. 76525800
10
recitation that reflected a sales-related service,4 or at least
some other activity supported by the specimen, rather than a
service applicant was clearly not performing based on this
specimen.
From the examining attorney's statement that "The applicant
is not selling goods on a retail basis and therefore the
specimens do not reference the services listed," the examining
attorney might have thought that applicant was only selling its
own goods, which is not a service. The trademarks, GEMINI and
MAGLINER, displayed on the specimen, appear to identify other
companies' products. But if the examining attorney was unsure if
that was the case, she still could have suggested an appropriate
"sales" recitation and then required additional specimens or
inquired about the matter.
In fact, applicant made it clear in its response that these
are other companies' products, expressly stating that the
products which applicant sells "are not manufactured by
applicant, but rather are the new goods of others." See, e.g.,
In re International Environmental Corporation, 230 USPQ 688, 691
(TTAB 1986) ("The fact that the specimens of use do not
specifically mention 'distributorship services' or contain an

4 Based on the wording "Professional Equipment for Beer Delivery,"
these are goods that are sold to commercial purchasers. Thus, for
example, the examining attorney might have suggested retail
distributorship services in the field of hand trucks, etc.
Serial No. 76525800
11
offer to sell specific brands of goods made available by
applicant through its distributorship services is not fatal.
Applicant has stated for the record that these surveys are used
in conjunction with its distributorship services."). If there
was any doubt as to the nature of the service or how it was
performed based on the first specimen, the second specimen,
listing "Sales" and stating, "We Bring the Store to your Door!"
made it clear that applicant was engaged in a registrable sales
activity.
The situation was further complicated by the fact that the
suggested wording "business marketing" was interpreted
differently by applicant and the examining attorney. Applicant
adopted the recitation construing the term to mean "sales," and
this was entirely reasonable. We note that "business marketing"
is defined in Encyclopædia Britannica (2007) as follows:5
Business marketing, sometimes called business-to-
business marketing or industrial marketing, involves
those marketing activities and functions that are
targeted toward organizational customers. This type
of marketing involves selling goods (and services)
to organizations (public and private) to be used
directly or indirectly in their own production or
service-delivery operations. ...

Applicant's services fall squarely within this

5 Encyclopædia Britannica Online; eb.com. The Board may take judicial
notice of entries in standard reference works. See, e.g., University
of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ
594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983);
and In re Hartop & Brandes, 311 F.2d 249, 135 USPQ 419 (CCPA 1962).
Serial No. 76525800
12
definition of "business marketing" and we can understand why
applicant believed that description was appropriate.
The Office, however, apparently construes "business
marketing" as an "advertising service." The problem is that the
examining attorney did not explain this to the applicant at the
time the recitation was suggested, or for that matter at any time
prior to appeal. The examining attorney simply stated all along
that "the specimens appear to be advertising for the applicant's
own services which are [sic] not separate services." Absent any
context, applicant was understandably confused by the examining
attorney's statement having no idea what the statement meant or
why it was made.
This confusion was never resolved, and at one point the
applicant attempted to amend the recitation to more clearly
reflect the type of "sales" service shown in the specimens as
follows:
Business marketing services comprising gathering
together various products of others in the field of
hand trucks, pallet trucks, and delivery and
material handling products, and transporting them to
the customer's site for customer inspection
selection and purchase consummation.6

6 It is true, as the examining attorney pointed out in rejecting this
amendment, that "transporting" goods is in a different class than
selling goods. However, an amendment to delete that term and to
slightly change the phrasing to perhaps "making them available at the
customer's site," would have resolved that particular problem. A
slight variation of this wording appears as an "acceptable"
identification in the ID Manual.
Serial No. 76525800
13
However, at that point, applicant had already adopted the
confusing "business marketing" service suggested by the examining
attorney and applicant's amendment to indicate "sales" was
rejected as outside the scope of the original and/or amended
recitation.7
Considering the circumstances of this case, we
find that the recitation of services currently of record,
namely "business marketing services in the field of hand
trucks, delivery trucks, pallet trucks, and delivery and
material handling products, rendered at the customer's
site," while not ideal, is minimally accurate.
Furthermore, we find that the specimens are acceptable to
show use of the mark for the services so identified.8

7 The only issue before us regarding the recitation is whether the
recitation currently of record is accurate, and not whether any earlier
amendment such as the proposed amendment above is acceptable. However,
we feel compelled to comment on the position taken by the examining
attorney with respect to this earlier amendment. First, the amendment,
in fact, does not exceed the scope of the original recitation of
services. The original recitation specifically listed the term
"marketing" which was clearly broad enough to encompass, among other
things, a sales-related service. Furthermore, it would be unfair to
deny applicant an opportunity to amend an equivocal recitation, which
reasonably appeared to describe its services.

8 However, to clarify the nature of applicant's services, applicant may
wish to voluntarily amend its recitation of services to delete the
reference to "business marketing" and to use wording that more clearly
reflects the services actually performed; for example, retail
distributorship services in the field of hand trucks, etc. In order to
do this, applicant would need to file a petition to the Director in
accordance with Trademark Rule 2.142(g) to reopen prosecution of the
Serial No. 76525800
14
Decision: The refusal to register is reversed.

application for entry of the amendment. See Trademark Rule 2.142(g)
and TMEP § 1501.06.