A.D. 1619 Company

Trademark Trial and Appeal Board

Mar 22, 2002

No. 75626354 (T.T.A.B. Mar. 22, 2002)

3/22/02 Paper No. 12
cl

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re A.D. 1619 Company
________

Serial No. 75/626,354
_______

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 Simms, Administrative Trademark Judge:

A.D. 1619 Company (applicant), a New York partnership,
has appealed from the final refusal of the Trademark
Examining Attorney to register the design mark shown below
for the following services: real estate agency services,
leasing office space to tenants, management of real estate,
real estate investment, and real estate brokerage services,
in Class 36; and entertainment services, namely, provision
of background, backdrops, and visual settings for motion
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial No. 75/626,354
2
pictures, television broadcasts, and video and sound
recordings, in Class 41.1

Applicant has described its mark as follows: “The mark
consists of a ten story plus penthouse building façade,
which at the penthouse parapet exterior, incorporates a
bust of Mr. Abraham E. Lefcourt surrounded by
ornamentation, and which, at the ground floor bronze

1 Application Ser. No. 75/626,354, filed January 26, 1999, based upon
allegations of use in commerce since March 1931.
Serial No. 75/626,354
3
doorway transom, at the Broadway entrance, incorporates a
bust of Mr. Alan E. Lefcourt surrounded by ornamentation.”
The Examining Attorney has refused registration on the
grounds that applicant’s building façade does not function
as a service mark (Sections 1, 2, 3 and 45 of the Trademark
Act, 15 USC §§1051, 1052, 1053 and 1127) and because
applicant’s specimens do not show use in commerce of the
asserted mark for applicant’s services. Applicant and the
Examining Attorney have submitted briefs but no oral
hearing was requested.
We affirm on both grounds.
It is the Examining Attorney’s position that
applicant’s building façade does not function as a service
mark for applicant’s real estate and entertainment services
because it does not identify and distinguish applicant’s
services from those of others. The Examining Attorney
contends that, in order to function as a mark, applicant’s
building façade must be used in a manner that clearly
projects to purchasers the source of applicant’s services
so as to be perceived as a mark. The original specimens of
record (a copy of which is reproduced below), are
photographs of the building façade which, according to the
Examining Attorney, show no more than the facade of the
building.
Serial No. 75/626,354
4

This photograph is not sufficient, the Examining Attorney
contends, to show use of the building façade as a service
mark for applicant’s real estate and entertainment services
because it shows no more than the building in which
applicant’s services may be performed. The Examining
Attorney also maintains that the record contains no
promotion of the building façade as a service mark.
Serial No. 75/626,354
5
Accordingly, consumers are not likely to associate
applicant’s building façade with applicant’s services, the
Examining Attorney argues. The Examining Attorney has also
made of record photographs of allegedly similar building
facades in support of her argument that applicant’s façade
would not be perceived as a service mark.
With respect to the specimens, the Examining Attorney
contends that they must show a direct association between
the mark (building façade) and applicant’s services, but
that in this case they do not show use of the asserted mark
in connection with the sale or advertising of applicant’s
services. Neither the original nor the additional
specimens (promotional and informational flyers and
brochures about applicant’s building) show use of building
façade in a manner that would be perceived as identifying
applicant as the source of its services. In other words,
the Examining Attorney contends that the specimens do not
show use of the mark to identify the various real estate
and entertainment services. Accordingly, the Examining
Attorney has requested that applicant submit specimens
showing use of the asserted mark in connection with
applicant’s real estate and entertainment services.
Applicant, on the other hand, maintains that the
building façade functions as a service mark for applicant’s
Serial No. 75/626,354
6
services. Applicant argues that it has extensively
promoted the building design in connection with its
services such that applicant has developed recognition by
third parties of applicant’s building design as identifying
the source of applicant’s services. It is applicant’s
position that the original specimens (photographs of the
building façade) along with the additional specimens
distributed to prospective tenants and customers show
promotion of applicant’s building façade as a service mark
for applicant’s services, including the offering of various
real estate and entertainment support services, such as a
screening room providing state-of-the-art film and video
technology.2 With its request for reconsideration,
applicant has submitted a declaration from its manager
attesting to the fact that applicant has “developed
recognition by third parties” (New York City Transit) of
its building design as identifying the source of
applicant’s services and that the building façade has
become, in the opinion of applicant’s manager, a
distinctive indicator of source of applicant’s services.
In sum, applicant argues that the specimens demonstrate in

2 We note that such screening room services are not within the amended
description of the entertainment services listed in the application--
the provision of background, backdrops, and visual settings for motion
pictures, television broadcasts, and video and sound recordings.
Serial No. 75/626,354
7
the buyer’s mind an association between the building façade
and applicant’s services.
Applicant has made of record a copy of a letter from
New York City Transit, the pertinent portions of which are
quoted below:
…NYC Transit is planning a series of
special, commemorative MetroCards that will
focus on the musical landmarks of New York—-
a dozen or so still-existing places within
the city that have been important to the
development of music in this country.

Because it is regarded [as] the center for
music publishing in New York City, we hope
to include the Brill Building in this
series.

Other musical landmarks that we expect to
include are Trinity Church, the Brooklyn
Academy of Music, Carnegie Hall, the
Juilliard School, Steinway & Sons and
Lincoln Center.

The additional specimens of record also contain
information concerning applicant’s building and its
tenants. For example, on a sheet entitled “THE BRILL
BUILDING PROPERTY DESCRIPTION,” the following information
is given about applicant’s building:
The façade is divided into three sections—-a
typical ground-floor aluminum and glass
storefronts [sic], a two-story mid-section
in which terra-cotta pilasters frame large
plate glass picture & double-hung metal
windows with metal surrounds, and a [sic]
eight-story brick-faced upper section with
central base having terra-cotta panels. The
Serial No. 75/626,354
8
exterior walls of the building are brick
veneer on masonry-backup. On the Broadway
side of the building is an ornate bronze and
marble main entry. Above the entrée, on the
penthouse parapet is a limestone bust…

…The building front entrance way is ornate
bronze & glass configuration that has been
said to resemble a raised curtain and
proscenium with a bust in a niche.

A service mark is “any word, name, symbol, or device,
or any combination thereof,” which serves “to identify and
distinguish the services of one person…from the services of
others and to indicate the source of the services, even if
that source is unknown.” Section 45 of the Trademark Act,
15 USC §1127. It is well settled, however, that not all
words, designs, or symbols used in the sale or advertising
of goods or services function as trademarks or service
marks, regardless of an applicant’s intent. 1 J. McCarthy,
McCarthy on Trademarks and Unfair Competition, Section 3:3
(4th ed. 1997). Rather, in order to be protected as a
valid mark, a designation must create "a separate and
distinct commercial impression, which … performs the
trademark function of identifying the source of
the [services] to the customers." In re Chemical Dynamics,
Inc., 839 F.2d 1569, 5 USPQ2d 1828 (Fed. Cir. 1988). A
term or design does not function as a trademark or service
mark unless it is used in a manner which projects to
Serial No. 75/626,354
9
purchasers a single source of the goods or services. In re
Morganroth, 208 USPQ 284 (TTAB 1980).
Even if it is clear that the activities recited are
services in connection with which a mark may be registered
(and we have doubt about whether applicant’s provision of
its building as a backdrop or background for movies and
broadcasts is a service in connection with which applicant
may use a mark) and that the applicant provides the recited
services, the record must show that the asserted mark
actually identifies and distinguishes the recited services
and indicates their source. See In re Universal Oil
Products Co., 476 F.2d 653, 177 USPQ 456 (CCPA 1973), aff'g
167 USPQ 245 (TTAB 1970). In this regard, it is the
perception of the ordinary customer which determines
whether the asserted mark functions as a service mark, not
the applicant's intent, hope or expectation that it do so.
See In re Standard Oil Co., 275 F.2d 945, 125 USPQ 227
(CCPA 1960).
Whether a mark is being used to identify a particular
service is a question of fact to be determined on the basis
of the specimens as well as other evidence of record. In
re Advertising and Marketing Development Inc., 821 F.2d
614, 2 USPQ2d 2010 (Fed. Cir. 1987); In re Signal
Serial No. 75/626,354
10
Companies, Inc., 228 USPQ 956 (TTAB 1986); and In re
Admark, Inc., 214 USPQ 302 (TTAB 1982).
Subject matter presented for registration as a service
mark may be unregistrable because it does not in fact
function as a service mark. For example, the three-
dimensional configuration of a building is registrable only
if it is used in such a way that it is or could be
perceived as a mark. See TMEP Section 1301.02(c).
Evidence of such use might include letterhead stationery
and the like which show promotion of the building's design
as a mark. See In re Lean-To Barbecue, Inc., 172 USPQ 151
(TTAB 1971); and In re Master Kleens of America, Inc., 171
USPQ 438 (TTAB 1971).
While photographs may be appropriate specimens of use
for a three-dimensional mark, we agree with the Examining
Attorney that photographs of applicant’s building alone are
not sufficient to demonstrate use of the building façade as
a mark for the services performed near or in the building,
if they show no more than the building near or in which the
services are performed. See TMEP Section 1301.02(c).
Here, applicant’s building façade on the original specimens
of record as well as on the additional specimens is not
directly associated with the sale or advertising of any
services, let alone applicant’s various real estate and
Serial No. 75/626,354
11
entertainment services. The facade is not being used in
the manner of a service mark to identify applicant’s
services and would not be recognized or perceived by
potential purchasers of applicant’s real estate and
entertainment services as a service mark. Also, when NYC
Transit asked permission to use an image of applicant’s
building on MetroCards, it stated that applicant’s building
was a prominent building in New York music publishing
history. This is not recognition by the relevant
purchasers and potential purchasers that the façade
functions as a mark to identify applicant’s various real
estate services or its entertainment services in the nature
of the provision of the building as a background, backdrop
or visual setting for motion pictures, television
broadcasts and video and sound recordings. We cannot find
fault with what the Examining Attorney stated in her brief,
p. 6:
Nowhere in the package of specimens
submitted by the applicant is the
applicant’s building façade used in a
manner that would be perceived as a
service mark in connection with [the]
real estate and entertainment services
provided. In fact, the only depictions
of the exterior of the applicant’s
building are pictures of the building
similar to the applicant’s original
specimen, but taken from a different
angle, and a floor plan of the
applicant’s building indicating where
Serial No. 75/626,354
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each of the applicant’s tenants are
[sic] housed. The specimens consisting
of photographs of the exterior of
applicant’s building fail to show use
of the mark in the sale and advertising
of the applicant’s services for the
same reasons as the specimen originally
submitted. The floor plan is
unacceptable to show service mark usage
of the applicant’s building façade
because it is merely informational
matter about the applicant’s building
and the tenants housed there. The
building layout is merely informational
matter and does not function as a
source identifier for the listed
services.

See also Rock and Roll Hall of Fame and Museum Inc. v.
Gentile Productions, 134 F.2d 749, 45 USPQ2d 1412, 1416-18
(6th Cir. 1998)(Despite court’s finding that plaintiff’s
building design was unique and distinctive, “…[W]hen we
view the photograph [of the museum] in [defendant’s]
poster, we do not readily recognize the design of the
Museum's building as an indicator of source or sponsorship.
What we see, rather, is a photograph of an accessible,
well-known, public landmark. Stated somewhat differently,
in [defendant’s] poster, the Museum's building strikes us
not as a separate and distinct mark on the good, but,
rather, as the good itself… [W]e are not persuaded that the
Museum uses its building design as a trademark. Even if we
accept that consumers recognize the various drawings and
Serial No. 75/626,354
13
pictures of the Museum's building design as being drawings
and pictures of the Museum, the Museum's argument would
still fall short. Such recognition is not the equivalent
of the recognition that these various drawings or
photographs indicate a single source of the goods on which
they appear.”)
Finally, we note that it is not clear from this record
and applicant’s arguments whether applicant is seeking
registration under the provisions of Section 2(f) of the
Trademark Act, 15 USC §1052(f), on the basis that the
asserted mark has acquired distinctiveness, and even if it
were clear, that claim must be rejected. While applicant
submitted a declaration with its request for
reconsideration indicating that the building had “developed
recognition” by a “third party,” applicant did not mention
this declaration in its main brief, or otherwise claim that
its façade had acquired distinctiveness or secondary
meaning. Therefore, even if one were to consider the issue
of acquired distinctiveness as having been raised in
applicant’s request for reconsideration (and that is by no
means clear), the failure to raise this issue in its brief
is considered a waiver of any claim of acquired
distinctiveness or request for registration under the
provisions of Section 2(f). Also, in applicant’s reply
Serial No. 75/626,354
14
brief, applicant indicated that it agreed with the
statement of issues set forth in the Examining Attorney’s
brief (which did not mention the issue of acquired
distinctiveness) but applicant did refer to the declaration
of its manager. However, even if this mention is
considered sufficient to again raise the issue, mentioning
it in a reply brief comes too late in this proceeding for
us to consider the issue, because the Examining Attorney
did not have an opportunity to discuss it. In any event,
even if the issue of acquired distinctiveness were squarely
before us, we would find that applicant’s evidence that a
“third party” (New York City Transit) regards the building
as a prominent one in New York City music publishing
history is insufficient to show that the façade design
itself has become distinctive among the relevant purchasers
and users of applicant’s various real estate services and
its entertainment services.
Decision: The refusals of registration (that
applicant’s building façade does not function as a service
mark and that the specimens do not show use of the asserted
mark as a service mark) are affirmed.