Stout Industries, Inc.

Trademark Trial and Appeal Board

Aug 8, 2003

No. 75713242 (T.T.A.B. Aug. 8, 2003)

Mailed: August 8, 2003
Paper No. 26
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Stout Industries, Inc.
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Serial No. 75/713,192
Serial No. 75/713,242
_______
Paul M. Denk, Esq. for Stout Industries, Inc.
John Dwyer, Trademark Examining Attorney, Law Office 116
(Meryl Hershkowitz, Managing Attorney).
_______
Before Simms, Chapman and Holtzman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
The two applications involved herein were filed on May
24, 1999 by Stout Industries, Inc. (a Delaware corporation)
to register on the Principal Register the mark STOUT.COM,
application Serial No. 75/713,192 for “custom design of
signs and sign bearing fascia for advertising for others”
in International Class 42, and application Serial No.
75/713,242 for “manufacture of general product line in the
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. Nos. 75/713192 & 75/713242
2
field of signs and sign bearing fascia for advertising to
the order and specification of others” in International
Class 40.1
Application Serial No. 75/713,192 was based on Section
1(b) of the Trademark Act, 15 U.S.C. §1051(b). It was
published for opposition on December 21, 1999; and a notice
of allowance issued on March 14, 2000. On September 11,
2000 (via certificate of mailing), applicant filed a
statement of use, alleging use since September 8, 2000, and
including a specimen in the form of a printout of a web
page from applicant’s web site.
Application Serial No. 75/713,242 was based on Section
1(b) of the Trademark Act, 15 U.S.C. §1051(b). It was
published for opposition on December 28, 1999; and a notice
of allowance issued on March 21, 2000. On September 11,
2000 (via certificate of mailing), applicant filed a
statement of use, alleging use since September 8, 2000, and
including a specimen in the form of a printout of a web
page from applicant’s web site.
1 Stout Industries, Inc. filed a third application (Serial No.
75/712,594) for different services for the mark STOUT.COM on May
24, 1999. That application is also on appeal to the Board. A
decision on that application will issue separately. (In
addition, applicant filed on that date a fourth application,
Serial No. 75/712,606, for the mark STOUT.COM for “non-luminous
and non-mechanical metal signs; metal sign bearing fascia” in
International Class 6, and it issued as Registration No.
2,474,220 on July 31, 2001.)
Ser. Nos. 75/713192 & 75/713242
3
In view of the common questions of law and fact which
are involved in these two applications, and in the
interests of judicial economy, we have consolidated the
applications for purposes of final decision. Thus, we have
issued this single opinion.
In the first Office action in each application, the
Examining Attorney found the web site printout specimen
(which shows “www.stout.com”) failed to show service mark
usage, and being merely a component of a web site address,
failed to function as a service mark.
In response, applicant filed another statement of use,
including as a specimen a promotional card given out to
customers and potential customers.
The Examining Attorney again rejected the specimens,
explaining that the new specimen is unacceptable because it
does not show use of the mark for the respective services
identified in each application; and the Examining Attorney
required that applicant submit substitute specimens,
supported by an affidavit or declaration, showing use of
the mark for the identified services.
Applicant then filed a third statement of use, and
including as specimens (1) a duplicate of the promotional
card previously submitted, and (2) a photograph of a
portion of a sign bearing the mark STOUT.COM.
Ser. Nos. 75/713192 & 75/713242
4
The Examining Attorney again rejected the specimens in
each application, and made final the refusal on the ground
that the specimens submitted by applicant do not show use
of the mark for the services identified in the application.
Applicant filed a notice of appeal and a request for
reconsideration in each application. Applicant argued in
its requests for reconsideration that it has submitted a
printout of a web page, a promotional card, and a
photograph, and applicant simply does not understand what
more it could do to “verify and prove its usage, through
specimen submission, to the Trademark Office of its usage
of this mark....” (request for reconsideration filed August
5, 2002, p. 2).
The Board remanded the applications (on January 8,
2003 and September 19, 2002, respectively) to the Examining
Attorney for consideration of applicant’s arguments. The
Examining Attorney denied the request for reconsideration
in each application (on October 18, 2002 and January 23,
2003, respectively), specifically addressing each of the
three specimens. The first specimen showed “www.stout.com”
which, as used on the printout of a web page, was,
according to the Examining Attorney, not used in the manner
of a service mark but rather was simply a web address, with
the term “stout.com” being only a portion thereof. The
Ser. Nos. 75/713192 & 75/713242
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Examining Attorney argued the second specimen (the
promotional card) does not reference or discuss in any way
the specific services in the two applications; and the
third specimen (a photograph of a portion of a sign) may
identify the source of the sign but does not relate to the
identified services.
Briefs have been filed, but applicant did not request
an oral hearing in either application.
The Examining Attorney’s position is essentially that
the specimens do not show the mark used in the sale or
advertising of the identified services, “custom design of
signs and sign bearing fascia for advertising for others”
and “manufacture of general product line in the field of
signs and sign bearing fascia for advertising to the order
and specification of others.” With specific regard to each
specimen, the Examining Attorney contends that the first
specimen (printout of a page from applicant’s web site)
does not support use of the term STOUT.COM as a mark and is
used only as a portion of the web address “www.stout.com”;2
2 The Examining Attorney argued in his brief on appeal that
applicant withdrew its first specimen (the printout of a web
page) by not responding on the merits, but instead submitting a
substitute statement of use. Based thereon, the Examining
Attorney refused to consider the web page printout as a specimen
in these two applications. Aside from the fact that the
Examining Attorney had treated the printout page on the merits in
his denial of applicant’s requests for reconsideration without
asserting that applicant had withdrawn these specimens, the
Ser. Nos. 75/713192 & 75/713242
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that the photographs show the mark STOUT.COM but they are
clearly photographs of portions of signs (appearing on a
vending machine for “7UP”) and would not be perceived as
supporting use of applicant’s mark for the identified
services; and that the card given out to potential
customers also shows the mark STOUT.COM but does not
reference even indirectly the identified services in either
application, and based on the other wording on the specimen
would be perceived as relating to marketing and sales and
brand building services, but not to custom design of and
manufacturing of signs and sign bearing fascia.
The Examining Attorney concludes that each of the
specimens submitted by applicant fails to demonstrate use
of the mark in association with the respective identified
services (set forth above), as required by Trademark Rules
2.56(a) and (b)(2) and 2.88(b).
Applicant essentially contends that its extensive
usage of STOUT.COM in applicant’s various materials such as
Examining Attorney also cited no authority to support such a
position. His citation to TMEP §718.03 (3d ed. 2002) “Incomplete
Response” deals with incomplete responses to Office actions and
the Examining Attorney then holding the application abandoned as
a result thereof. While it is true that applicant did not argue
on the merits as to its use of “www.stout.com,” the Examining
Attorney never held the applications abandoned because of
incomplete responses. It would be unfair to applicant to remove
the first specimen from the record in this manner. Accordingly,
we have considered all of applicant’s specimens in each
application in reaching our decision herein.
Ser. Nos. 75/713192 & 75/713242
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on its web page or on cards given out to potential
customers “is adequate proof of substantial and continuous
usage of applicant’s mark in this business of providing a
custom design of signs and sign bearing fascia for others”
(brief, p. 5); that applicant has used the mark in a
variety of displays to indicate source of origin, each of
which supports applicant as the source of the respective
identified services; and that the web page clearly shows
that applicant builds point-of-purchase signage, and if the
customer “is looking for stronger ideas to bolster sales
and build brands, they have come to the right place,
namely, applicant’s sign manufacturing business,” and that
this usage “should be quite indicative of the nature of
applicant’s business.” (Brief, p. 5.)
The requirements for specimens of use of a mark in
connection with services differ from the requirements for
specimens of use of a mark in connection with goods.
Although trademarks appear directly on the goods or on the
containers or labels for the goods, service marks are used
in connection with the services. Implicit in the statutory
definitions of a “service mark” is the requirement that
there be some direct association between the mark and the
services, i.e., that the mark be used in such a manner that
it would readily be perceived as identifying the source of
Ser. Nos. 75/713192 & 75/713242
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such services. See In re Advertising & Marketing
Development, Inc., 821 F.2d 614, 2 USPQ2d 2010, 2014 (Fed.
Cir. 1987); and In re Adair, 45 USPQ2d 1211, 1215 (TTAB
1997).
That is, specimens must show an association between
the mark and the services for which registration is sought;
and specimens which show the mark, but with “nothing
directed to prospective customers of the stated services
which could have created an association, direct or
otherwise, between the mark and the services set forth in
the application” are insufficient. In re Johnson Controls
Inc., 33 USPQ2d 1318, 1319 (TTAB 1994). See also, In re
Duratech Industries Inc., 13 USPQ2d 2052 (TTAB 1989).
In this case, we agree with the Examining Attorney
that two of the specimens (the promotional card and the
photographs of portions of a sign) submitted by applicant
do not show use of the mark in connection with the specific
services identified in the respective applications. The
specimens which are portions of a sign (appearing on a
vending machine for “7 UP”) include the following wording:
Manufactured by Stout Sign Co.
St. Louis Mo. Made in U.S.A.-9716127
Authorized by Cadbury Beverages Inc.
Total Production 925
stout.com
Ser. Nos. 75/713192 & 75/713242
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This use does not indicate anything which would create in
the mind of the relevant consumers an association between
the mark and the service activity (custom design of signs
and manufacturing of signs to the specifications of
others). At best, this may support trademark use for
signs, but it does not support service mark use for
applicant’s respective identified services.
The promotional card is reproduced below:
The wording thereon, such as:
“STOUTMARKETING
Building Stronger Brands Worldwide”;
and
“Looking to boost sales and build stronger brands?”
does not create an association in purchasers’ minds with
applicant’s identified services of “custom design of signs
and sign bearing fascia for advertising for others” and
Ser. Nos. 75/713192 & 75/713242
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“manufacture of general product line in the field of signs
and sign bearing fascia for advertising to the order and
specification of others.” These promotional cards may
identify or support a marketing or advertising service, but
not those set forth above.
We find these specimens of record do not support use
of the mark STOUT.COM in connection with the identified
services because they do not show applicant’s use of the
mark in association with the sale or advertising of the
services specified in the application.
With regard to the first specimen, the printout of a
web page, we find there is an association with the
respective identified services, as shown by the following
statement thereon: “Just like good brands and good business
relationships, Stout builds P-O-P [point-of-purchase]
signage and imaging systems to last. We build most of our
signs out of metal, a practice we’ll keep until the day we
find something better.” However, there is no use of
STOUT.COM, rather, the usage is “www.stout.com” appearing
below the copyright notice “© 2000 Stout Marketing  .”
That is, while the printout specimens show a sufficient
association with the identified services, they do not show
use of the mark STOUT.COM. Rather, the use is that of a
web address, which is not functioning as a service mark for
Ser. Nos. 75/713192 & 75/713242
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the identified goods. See In re Eilberg, 49 USPQ2d 1955
(TTAB 1998). See also, Lockheed Martin Corp. v. Network
Solutions Inc., 985 F. Supp. 949, 44 USPQ2d 1865, 1871
(CDCA 1997), aff’d 194 F.3d 980, 52 USPQ2d 1481 (9th Cir.
1999); Data Concepts Inc. v. Digital Consulting Inc., 150
F.3d 620, 47 USPQ2d 1672, concurring opinion, Merritt (6th
Cir. 1998); and 1 J. Thomas McCarthy, Trademarks and Unfair
Competition, §7:17.1 (4th ed. 2000).
Decision: The refusal to register on the basis that
none of the specimens show use of the mark in connection
with the identified services is affirmed in each
application.