A.D. 1619 Company

Trademark Trial and Appeal Board

Jul 28, 2003

No. 75660891 (T.T.A.B. Jul. 28, 2003)

Mailed: July 28, 2003
Paper No. 15
cl

UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re A.D. 1619 Company
________
Serial No. 75/660,891
_______
William S. Frommer and Marilyn Matthes Brogan 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 “Entryway of building”
design 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
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75/660,891
2
visual settings for motion pictures, television broadcasts,
and video and sound recordings, in Class 41.1

Pursuant to request of the Examining Attorney, applicant
submitted a description of the mark as follows:
The mark consists of a representation of The
Brill Building's Broadway street front entryway,
which entryway consists of an ornate bronze and
glass transom configuration that is described as
resembling a raised curtain and proscenium with a
bust of Mr. Alan E. Lefcourt in a niche center
stage. Under the transom are three bronze and
glass doors which lead to the vestibule and
lobby.
The Examining Attorney refused registration on the
ground that applicant’s building entryway does not function

1 Application Serial No. 75/660,891, filed March 15, 1999, based upon
allegations of use and use in commerce since March 1931.
Serial No. 75/660,891
3
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.
The Examining Attorney has refused registration
because applicant’s building entryway design does not
function as a service mark for applicant’s real estate and
entertainment services inasmuch as 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 or entryway 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
identifying those services. The original specimens of
record (a copy of which is reproduced below) are
photographs of the building entryway which, according to
the Examining Attorney, show no more than a part of the
facade of the building.
Serial No. 75/660,891
4

This photograph of the front of applicant’s building is not
sufficient, the Examining Attorney contends, to show use of
the building entryway 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 photographs do not indicate that applicant
provides real estate and entertainment services, according
to the Examining Attorney.
The Examining Attorney also maintains that the record
contains no evidence showing the promotion of the building
entryway as a service mark. Accordingly, consumers are not
likely to associate applicant’s building entryway with
Serial No. 75/660,891
5
applicant’s services, the Examining Attorney argues. The
Examining Attorney has also made of record photographs of
allegedly similar ornate building facades in support of her
argument that such facades (including applicant’s) are not
commonly perceived as service marks but are simply
photographs of buildings.
With respect to the specimens, the Examining Attorney
contends that they must show a direct association between
the mark (building entryway) 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
entryway 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 specified real estate
and entertainment services. Accordingly, the Examining
Attorney requested that applicant submit specimens showing
use of the asserted mark in connection with the sale or
advertising of applicant’s real estate and entertainment
services. The Examining Attorney advised that specimens
such as signs, brochures, letterhead or stationery used in
Serial No. 75/660,891
6
the sale or advertising of applicant’s services should be
submitted to show use of the asserted mark as a service
mark.
Applicant then submitted stationery showing the
asserted mark next to the wording “THE BRILL BUILDING
REALTY GROUP LTD MANAGING AGENT.” At the bottom of the
stationery, in addition to applicant’s address, is the
additional wording “PROPERTY MANAGEMENT DEVELOPMENT AND
SALES.” The Examining Attorney advised that this
letterhead would be an acceptable specimen of use of the
mark for applicant’s Class 36 real estate services, because
it shows that applicant is providing real estate services
under the mark, but required a verification that such
specimen was in use in commerce at least as early as the
filing date of the application. See Trademark Rule
2.59(a). Applicant did not submit such a verified
statement supporting these substitute specimens.2
Accordingly, we must evaluate this case on the basis of the
original specimens and the other material, described above,
which were supported by a verification of use as of the
filing date. The Examining Attorney contends that the
supported specimens of record do not show that consumers

2 Applicant’s attorney acknowledged in his reply brief, footnote 1, that
no verified statement was submitted in support of the otherwise
acceptable letterhead specimens.
Serial No. 75/660,891
7
are likely to associate the building entryway with
applicant’s real estate and entertainment services.
Applicant, on the other hand, maintains that
applicant’s building entryway is used in the promotion of
applicant’s real estate and entertainment services.
Applicant argues that it has 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 entryway) along with
the additional advertising and promotional materials
distributed to prospective tenants and potential customers
of applicant’s services show use and promotion of
applicant’s building entryway as a service mark in the sale
or advertising of applicant’s services, including the
offering to tenants of various real estate and
entertainment support services, such as a screening room
providing customers with state-of-the-art film and video
technology.3
In addition, applicant submitted a declaration from
its manager stating that applicant has promoted and used

3 We note that such screening room services are not within the amended
description of the entertainment services listed in the application--
Serial No. 75/660,891
8
its entryway design in connection with the offering of its
real estate and entertainment services, and attesting to
the fact that applicant has “developed recognition by third
parties” (i.e., New York City Transit) of its building
design as identifying the source of applicant’s services in
that the building entryway has become, in the opinion of
applicant’s manager, a distinctive indicator of the source
of applicant’s services. In sum, applicant argues that the
specimens demonstrate in the mind of tenants and other
customers an association between the building entryway and
applicant’s services.
Applicant has made of record a copy of a letter from
New York City Transit, seeking permission to use the image
of the façade of applicant’s building on MetroCard fare
cards, 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

the provision of background, backdrops, and visual settings for motion
pictures, television broadcasts, and video and sound recordings.
Serial No. 75/660,891
9
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
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
Serial No. 75/660,891
10
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. 2002). 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
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 register 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
Serial No. 75/660,891
11
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
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 readily
perceived as a mark identifying the source of the services.
In re Adair, 45 USPQ2d 1211, 1214 (TTAB 1997). See also
TMEP Section 1301.02(c). The mark must be used on the
specimens in such a way as to show that there is a direct
association between the asserted mark and the services.
Evidence of such use might include letterhead stationery
and the like which show promotion of the building's design
Serial No. 75/660,891
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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 entryway
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.
Here, applicant’s building entryway 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 specified real estate
and entertainment services. The entryway 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 MetroCard fare cards, it stated that
applicant’s building was a prominent building in New York
music publishing history. This does not show recognition
by the relevant purchasers and potential purchasers that
Serial No. 75/660,891
13
the entryway itself 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, pp. 6-7:
…Nowhere in the package of specimens
submitted by the applicant is the
applicant’s building entryway or
representation of the building entryway
used in a manner that would be
perceived as a service mark in
conjunction with [the] real estate and
entertainment services provided. In
fact, the only depictions of the
exterior of the applicant’s building
entryway are pictures of the building
similar to the applicant’s original
specimen, but taken from different
angles, most of which do not even
remotely resemble the mark as it
appears on the drawing page. These
specimens consisting of photographs of
the exterior of the applicant’s
building entryway fail to show use of
the mark in the sale and advertising of
the applicant’s services for the same
reasons as the specimens originally
submitted.
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]
Serial No. 75/660,891
14
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 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 indicating that the building had
“developed recognition” by a “third party,” applicant did
not mention this declaration in its main brief, or
Serial No. 75/660,891
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otherwise claim that its entryway has acquired
distinctiveness or secondary meaning. Therefore, even if
we were to consider the issue of acquired distinctiveness
as having been raised by applicant (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
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 review and 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
entryway design itself has become distinctive among the
Serial No. 75/660,891
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relevant purchasers and users of applicant’s specified real
estate services and entertainment services.
Decision: The refusals of registration (that
applicant’s building entryway 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 in both
classes.