Walters

Trademark Trial and Appeal BoardMay 28, 2009

No. 77120372 (T.T.A.B. May. 28, 2009)

Mailed: May 28, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Walters ________ Serial No. 77120372 _______ Jerry K. Mueller, Jr. of Mueller Smith & Okuley, LLC, for Stacy L. Walters. Bernice Middleton, Trademark Examining Attorney, Law Office 106 (Mary I. Sparrow, Managing Attorney). _______ Before Walters, Holtzman and Bergsman, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: This appeal from the final refusal of the Trademark Examining Attorney involves the issue of whether the specimens of use show the mark at issue used in connection with the services described in the application. Stacy L. Walters (“applicant”) filed an intent-to-use application for the mark FIT TO GARDEN, in standard character form, for “providing information via the Internet in the field of exercise training for gardeners,” in Class 41. After the notice of allowance was issued, applicant filed a statement THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77120372 2 of use including an excerpt from the GardenAdvice.com website shown below. The website includes additional information, including instructions regarding aerobic activity, warming-up and stretching. At the bottom of the webpage, applicant offers printable versions of the exercises in PDF format. The Examining Attorney refused registration on the ground that the specimen “does not show the applied-for mark used in connection with” “providing information via Serial No. 77120372 3 the Internet in the field of exercise training for gardeners.”1 Specifically, the Examining Attorney contends that the heading “Gardening Warm-Up Practical Guide” identifies the informational text, but FIT TO GARDEN merely identifies the video.2 Subsequently, during the prosecution of the application, applicant submitted an excerpt from the OutdoorLivingWithStacy.com website, shown below, as a substitute specimen. 1 May 12, 2008 Office Action. 2 Examining Attorney’s Brief, unnumbered pages 3-4. Serial No. 77120372 4 The Examining Attorney continued the refusal to register the mark because “the [substitute] specimen shows the mark in reference to an online non-downloadable instructional video and a program guide. The specimen states that the services and goods are ‘instructional videos and download[able] […] practical guides.”3 The Examining Attorney points specifically to the text that tells viewers to “watch the videos” and also references the downloadable guides that are identified by the mark FIT TO GARDEN. “The information about exercise is provided in the downloadable guide and not via the Internet for the mark, as advertised.”4 An applicant for registration must submit a specimen showing the mark as used in commerce. Section 1(a) of the Trademark Act of 1946, 15 U.S.C. 1052(a); Trademark Rule 2.34(a)(1)(iv), 37 CFR §2.34(a)(1)(iv). A service mark specimen “must show the mark as actually used in the sale or advertising of the services.” Trademark Rule 2.56(b)(2), 37 CFR §2.56(b)(2). “A specimen that shows the mark as used in the course of performing the services is generally acceptable.” TMEP §1301.04(b)(5th ed. 2007). See also In re Metriplex Inc., 23 USPQ2d 1315, 1316 (TTAB 3 October 28, 2008 Office Action. 4 Examining Attorney’s Brief, unnumbered page 5. Serial No. 77120372 5 1992). A service mark specimen must show an association between the mark and the services for which registration is sought. In re Adair, 45 USPQ2d 1211, 1214 (TTAB 1997) (the mark must be used in such a manner that it would be readily perceived as identifying the source of the services); TMEP §1301.04(b). The issue before us is whether the term FIT TO GARDEN, as displayed on the webpages is used as a service mark to identify “providing information via the Internet in the field of exercise training for gardeners.” In determining whether FIT TO GARDEN is used as a service mark to identify providing information services, we must review the specimens (webpages) to determine whether consumers will associate FIT TO GARDEN with the information services. In re Moody’s Investors Service Inc., 13 USPQ2d 2043 (TTAB 1989) (“Aaa,” as used on the specimen, found to identify the applicant’s ratings instead of its rating services); In re McDonald’s Corp., 229 USPQ 555 (TTAB 1985) (APPLE PIE TREE did not function as mark for restaurant services, where the specimen showed use of mark only to identify one character in a procession of characters, and the proposed mark was no more prominent than anything else on specimen); Intermed Communications, Inc. v. Chaney, 197 USPQ 501 (TTAB 1977) (business progress reports directed to potential Serial No. 77120372 6 investors do not show service mark use for medical services); In re Reichhold Chemicals, Inc., 167 USPQ 376 (TTAB 1970) (technical bulletins and data sheets on which mark was used merely to advertise chemicals do not show use as a service mark for consulting services). Because there is no evidence bearing on the reaction of the purchasing public to applicant’s use of FIT TO GARDEN, we must rely on our own analysis of the web pages to determine whether consumers would perceive FIT TO GARDEN as a service mark identifying applicant’s information services. In re The Signal Companies, Inc., 228 USPQ 956, 957 (TTAB 1986); In re Wakefern Food Corp, 222 USPQ 76, 77 (TTAB 1984). It appears to us that the specimens show use of FIT TO GARDEN in connection with providing information regarding physical fitness for gardeners. The original specimen displays the mark in a logo format on a webpage that provides information regarding physical fitness specifically designed for gardeners. In fact, the mark appears under the introductory phrase “Gardening Warm-Up Practical Guide,” which essentially tells the reader that the following information tells you how to warm-up before you begin gardening. Underneath the mark, there is an introduction to fitness for gardeners followed by Serial No. 77120372 7 information regarding specific instructions for how to warm-up through aerobic activity and how to stretch. The basis for the Examining Attorney’s refusal is the link “To view video, click here” appearing immediately under the mark. The Examining Attorney mistakenly concludes the mark identifies the referenced video to the exclusion of the information set forth on the remainder of the webpage. The mark identifies both the information in the video and the information set forth in the webpage. Moreover, even if the only information on the webpage was the mark and the link to the video, the content of the video is accessed through the internet in connection with the mark. Likewise, the mark in the substitute specimen is also used to identify information provided through the internet in video form and the practical guidelines. In view of the foregoing, the term FIT TO GARDEN, as used by applicant, is a service mark that identifies applicant’s information services. Decision: The refusal to register is reversed.