A.D. 1619 Co.

Trademark Trial and Appeal Board

Jan 16, 2002

No. 75628267 (T.T.A.B. Jan. 16, 2002)

1/16/02
Paper No. 18
BAC

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re A.D. 1619 Company
________

Serial No. 75/628,267
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William S. Frommer of Frommer Lawrence & Haug LLP for A.D.
1619 Company.

Stacy B. Wahlberg, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Acting Managing Attorney).
_______

Before Simms, Hohein and Chapman, Administrative Trademark
Judges.

Opinion by Chapman, Administrative Trademark Judge:
A.D. 1619 Company (a New York partnership) has filed
an application to register the mark BRILL BUILDING on the
Principal Register for services identified as amended as
“entertainment services, namely, provision of background,
backdrops and visual settings for motion pictures,
television broadcasts, and video and sound recordings” in
International Class 41.1 The application is based on
Section 1(a) of the Trademark Act, with applicant claiming

1 Application Serial No. 75/628,267, filed January 26, 1999.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/628267
2
a date of first use and first use in commerce of March
1931.
In response to the Examining Attorney’s refusal to
register the mark as primarily merely a surname under
Section 2(e)(4) of the Trademark Act, and in response to
certain procedural requirements, applicant disclaimed the
term “building,” and included a claim that the mark has
acquired distinctiveness under Section 2(f) of the
Trademark Act.
The Examining Attorney then withdrew the refusal to
register under Section 2(e)(4), but made final the
requirement for new specimens of use. Along with
applicant’s request for reconsideration, it submitted
substitute specimens, as well as a declaration that the
substitute specimens were in use prior to the filing date
of the application. Thus, the only issue before the Board
is whether applicant’s specimens of use show use of the
mark BRILL BUILDING for the identified entertainment
services in International Class 41.
The original specimen submitted by applicant is a
photograph of applicant’s building showing the words BRILL
BUILDING appearing above the entrance doors, and the
substitute specimens consist of a compilation of
Ser. No. 75/628267
3
promotional and advertising materials, distributed
individually or as a package.
When the refusal to register was made final on the
ground that the specimens submitted by applicant do not
show use of the mark for the entertainment services
identified in the application, applicant appealed. Briefs
have been filed, but applicant did not request an oral
hearing.
The Examining Attorney’s position is essentially that
the specimens merely show that tenants in applicant’s
building engage in entertainment services, but fail to
demonstrate use of the mark in association with the
identified services, “entertainment services, namely,
provision of background, backdrops and visual settings for
motion pictures, television broadcasts, and video and
sound recordings”; and that consumers would not perceive
applicant as the source of the involved entertainment
services. See Section 45 of the Trademark Act and
Trademark Rule 2.56.
Applicant essentially contends that both the original
specimens and the substitute specimens support use of the
mark in association with the identified entertainment
services, involving the provision of background, backdrops
and visual settings; and that the specimens for service
Ser. No. 75/628267
4
marks need not contain a statement as to the nature of the
services.
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 or displays associated
therewith, 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 such
services. See In re Advertising & Marketing Development,
Inc., 821 F.2d 614, 2 USPQ2d 2010 (Fed. Cir. 1987); and In
re Adair, 45 USPQ2d 1211 (TTAB 1997).
In this situation, we agree with the Examining
Attorney that the specimens submitted by applicant do not
show that applicant is engaged in the identified
International Class 41 services or that applicant uses the
mark in the sale or promotion of these services. Thus,
consumers would not associate the mark with the
entertainment services listed in the application.
Ser. No. 75/628267
5
The original specimen is merely a photograph of the
front entrance of a building (located at 1619 Broadway in
New York City) with the words BRILL BUILDING appearing
over the doors, and is not sufficient to demonstrate that
applicant engages in entertainment services, namely, the
provision of background, backdrops and visual settings.
The packet of promotional and advertising material
included items such as photographs of the entire building
(with no visible reference to the mark BRILL BUILDING);
typed pages of information on the building itself
(including statements that the building is mentioned in
literature and has appeared in television broadcasts such
as local news shows, Access Hollywood, Saturday Night
Live; that a mock-up of the building served as a backdrop
in Broadway and off-Broadway productions of the show
“Leader of the Pack”; and that the building (opened in
1931) has historically housed tenants linked to the
entertainment industry. The packet of advertising
material also includes information that there is a
screening room in the building called The Broadway
Screening Room. However, in applicant’s brochure about
the screening room, the only use of the words “The Brill
Building” is as a trade name use or as part of applicant’s
address. See In re Diamond Hill Farms, 32 USPQ2d 1383
Ser. No. 75/628267
6
(TTAB 1994). In any event, screening room services are
not included in applicant’s identification of services.
Although the record is not clear as to precisely what
is meant by applicant’s “entertainment services, namely,
provision of background, backdrops and visual settings for
motion pictures, television broadcasts, and video and
sound recordings,” it appears from this record that
applicant simply allows production companies to film or
tape scenes in front of or around the building, and we
fail to see how that rises to the level of an
entertainment service. There is no evidence or even
argument in the record that applicant provides movie or
television settings to the order and specification of
others. The mere fact that the words BRILL BUILDING
appear over the entrance doors to the building and that
said entrance and/or other parts of the building (such as
the lobby or the elevator cab) have been shown in
recorded/filmed scenes does not establish that the words
perform the function of identifying applicant’s
entertainment services with applicant recognized as the
source thereof. That is, consumers, including industry
professionals, seeing applicant’s building in a scene will
not perceive such use of the mark BRILL BUILDING as
identifying applicant as the provider of entertainment
Ser. No. 75/628267
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services, namely, the provision of backgrounds, backdrops
and other visual settings for movies, television and
recordings. Rather, purchasers or users of applicant’s
services would see it only as the name of applicant’s
building. See In re MediaShare Corp., 43 USPQ2d 1304
(TTAB 1997). Cf. In re Eagle Fence Rentals, Inc., 231
USPQ 228 (TTAB 1986).
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.