Tee and Ell Weight-lifting and Exercise Enterprises, Inc.

Trademark Trial and Appeal Board

Sep 22, 2004

No. 76447366 (T.T.A.B. Sep. 22, 2004)

Mailed:
Sept. 22, 2004
Paper No. 11
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Tee and Ell Weightlifting and Exercise Enterprises,
Inc., dba Westside Barbell
________
Serial No. 76447366
_______
John A. Thomas of Glast, Phillips & Murray, P.C. for Tee
and Ell Weightlifting and Exercise Enterprises, Inc., dba
Westside Barbell.
Tracy Cross, Trademark Examining Attorney, Law Office 103
(Michael Hamilton, Managing Attorney).
_______
Before Simms, Bucher and Bottorff, Administrative Trademark
Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the mark WESTSIDE BARBELL (in typed form; BARBELL
disclaimed) for goods and services identified in the
application as “prerecorded video tapes featuring
instruction and training in the field of weightlifting,” in
Class 9, and “educational services, namely, training
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76447366
2
services in the field of strength and conditioning
training,” in Class 41.1
At issue in this ex parte appeal are the Trademark
Examining Attorney’s final refusals to register applicant’s
mark on two grounds. The first ground for refusal is that
the mark depicted in the application drawing is not a
substantially exact representation of (i.e., it is a
mutilation of) the mark as it appears on the specimens of
record. See Trademark Rule 2.51(a)(1), 37 C.F.R.
§2.51(a)(1). The second ground for refusal is that the
specimens of record do not evidence use of the mark as a
service mark for the recited Class 41 services.
The specimens of record applicant has submitted for
its Class 9 videotapes are the labels applied to the
packaging of the videotapes, a representative sample of
which is reproduced below:
1 Application Serial No. 76447366, filed on September 6, 2002.
The application was filed on the basis of use in commerce under
Trademark Act Section 1(a), 15 U.S.C. §1051(a). November 16,
1992 is alleged in the application as the date of first use
anywhere and the date of first use of the mark in commerce on the
Class 9 goods, and May 20, 1987 is alleged in the application as
the date of first use anywhere and the date of first use in
commerce of the mark in connection with the Class 41 services.
Ser. No. 76447366
3
Ser. No. 76447366
4
The specimen applicant originally submitted for the Class
41 services is an advertisement appearing in Powerlifting
USA magazine, reproduced below (and enlarged):
In its request for reconsideration of the final refusal,
applicant requested that the videotape labels submitted as
Ser. No. 76447366
5
specimens for the Class 9 goods also be considered as
specimens for the Class 41 services.
Trademark Rule 2.51(a)(1) provides, in relevant part,
that “the drawing of the trademark shall be a substantially
exact representation of the mark as used on or in
connection with the goods [or services].” It is settled
that an applicant may apply to register any element of a
composite mark if that element, as shown in the record,
presents a separate and distinct commercial impression
which indicates the source of applicant’s goods or services
and distinguishes applicant’s goods or services from those
of others. See, e.g., In re Chemical Dymanics Inc., 839
F.2d 1569, 5 USPQ2d 1828 (Fed. Cir. 1988); In re Servel,
Inc., 181 F.2d 192, 85 USPQ 257 (CCPA 1950); and In re
Miller Sports Inc., 51 USPQ2d 1059 (TTAB 1999).
In this case, the Trademark Examining Attorney
contends that applicant’s mark, as it appears on the
specimens, is the phrase TRAINING SECRETS OF WESTSIDE
BARBELL, and that the matter depicted in the application
drawing, i.e., WESTSIDE BARBELL, is an incomplete
representation of that mark. We disagree. Rather, we find
that WESTSIDE BARBELL, as it appears on the front panel of
the videotape cover specimen, is sufficiently spatially
separated from the wording TRAINING SECRETS OF that it
Ser. No. 76447366
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creates its own separate and distinct commercial
impression, and that it therefore may be registered as a
mark. We have carefully considered the Trademark Examining
Attorney’s arguments to the contrary but are not persuaded.
Accordingly, we reverse the refusal which is based on
Trademark Rule 2.51(a)(1).
We turn next to the refusal to register the mark in
Class 41 on the ground that the specimens of record do not
show use of WESTSIDE BARBELL as a service mark for the
recited services, i.e., “educational services, namely,
training services in the field of strength and conditioning
training.” Our primary reviewing court has held that a
“service” is “the performance of labor for the benefit of
another.” In re Canadian Pacific Ltd., 754 F.2d 992, 994,
224 USPQ 971, 973 (Fed. Cir. 1985). The recited services
clearly are a “service” under this definition, and we will
presume that applicant in fact renders such services.
However, the issue in this case is not whether the recited
services constitute “services,” or whether applicant in
fact provides those services. Rather, the issue is whether
the specimens of record demonstrate use of the mark as a
service mark for those services.
Trademark Rule 2.56(b)(2), 37 C.F.R. §2.56(b)(2),
provides that “[a] service mark specimen must show the mark
Ser. No. 76447366
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as actually used in the sale or advertising of the
services.” In this case, applicant’s specimens clearly are
not advertisements for the recited services because they do
not show the requisite direct association between the mark
and the recited services. See In re Adair, 45 USPQ2d 1211
(TTAB 1997); In re Johnson Controls, Inc., 33 USPQ2d 1318
(TTAB 1994). The original Class 41 specimen (the
advertisement from Powerlifting USA magazine) is an
advertisement for applicant’s videotape series, not an
advertisement for the recited services; indeed, the
advertisement contains no reference to the recited
services. Likewise, the videotape covers themselves are
not advertisements for the recited services, because they
make no reference to the services per se. The text on the
back panel of the videotape cover includes references to
the “exercises and techniques that have produced some of
the strongest men and women in the world of powerlifting,”
but those references are to the content of the videotapes
themselves; they are not advertisements for the recited
educational services.
However, applicant contends that even if the videotape
cover specimens do not show use of the mark in the
advertising of the services (because they make no direct
reference to the services), they nonetheless are adequate
Ser. No. 76447366
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service mark specimens because they show the mark as it is
used in the course of the actual performance or rendering
of the services. Applicant notes, correctly, that where
the specimens show use of the mark in the rendering (as
opposed to the advertising) of the services, a reference to
the services on the specimen itself may not be necessary.
In re Metriplex Inc., 23 USPQ2d 1315 (TTAB 1992); In re
Eagle Fence Rentals, Inc., 231 USPQ 228 (TTAB 1986); and In
re Red Robin Enterprises, Inc., 222 USPQ 911 (TTAB 1984).
Applicant has submitted the declaration of its president,
who states, inter alia, that “our educational services are
delivered through the content of the video series that we
publish.”
We are not persuaded by this argument. The Board
rejected a very similar argument in the case of In re
Landmark Communications, Inc., 204 USPQ 692 (TTAB 1979).
In that case, the applicant sought to register the mark THE
DAILY BREAK as a service mark for “educational and
entertainment services comprising the collection, printing,
presentation and distribution of a newspaper section of
cultural and leisure information” on various topics. The
specimen of use submitted by the applicant was a copy of
the newspaper section which bore the mark as its title, as
published in the applicant’s newspaper. The Board rejected
Ser. No. 76447366
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the applicant’s contention that, in publishing the
newspaper section, it was performing or rendering the
recited services, or any service. “Applicant sells goods,
not services for every individual reader.” 204 USPQ at
696.
Similarly in this case, in publishing its videotape
series, applicant is manufacturing and selling finished
goods, not performing or rendering a service to the order
of or for the benefit of individual purchasers. The
purchaser is not receiving educational or training services
from applicant, but rather is purchasing an educational
videotape produced by applicant, i.e., a product. Just as
a newspaper publisher is not rendering educational or
informational services merely by publishing a newspaper
section with educational content, applicant herein is not
rendering educational services merely by publishing its
educational videotapes.
In the above-cited cases of In re Metriplex, In re
Eagle Fence, and In re Red Robin, the specimens were deemed
acceptable because they showed how the respective marks
were being used in connection with the recited services as
the services were being performed, i.e., during the
transmission of data via computer in Metriplex, during the
rental of fencing in Eagle Fence, and during the
Ser. No. 76447366
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performance of entertainment services in Red Robin. In the
present case, by contrast, any activity or labor performed
by applicant in producing and publishing its videotape
series had already concluded by the time the purchaser buys
the videotapes; the purchaser is not paying for an ongoing
provision of services by applicant, but rather is paying
for a finished product, i.e., the videotape.
Again, the issue here is not whether applicant is in
fact rendering the educational and training services
recited in the application, but rather whether the
specimens of record demonstrate service mark use of the
mark in connection with such services. For the reasons
discussed above, we find that they do not. We note that in
the application, applicant stated in its “method of use
clause” that it uses the WESTSIDE BARBELL mark as a service
mark in advertisements for the services, and in brochures
which describe the services. Such advertisements or
brochures (for example, a yellow pages advertisement for
applicant’s Columbus, Ohio gym, or a brochure advertising
or describing the training services conducted there, or an
advertisement or brochure for a seminar or other event at
which the recited services are actually rendered) would be
acceptable service mark specimens (assuming that they
display the mark at issue). However, no such
Ser. No. 76447366
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advertisements or brochures are of record, and the
specimens which are of record simply do not evidence use of
the mark in connection with the recited services. We
therefore affirm the refusal to register the mark as to the
Class 41 services.
Decision: The refusal to register the mark under
Trademark Rule 2.51(a)(1) is reversed. The refusal to
register the mark under Trademark Rule 2.56(b)(2) as to the
Class 41 services is affirmed. The application shall
proceed to publication for opposition as to the Class 9
goods identified in the application only (and not as to the
Class 41 services).