Aero Design and Mfg. Co., Inc.

Trademark Trial and Appeal Board

Nov 19, 2004

No. 78188620 (T.T.A.B. Nov. 19, 2004)

11/19/2004
THIS OPINION IS NOT CITABLE
AS PRECENDENT OF
THE TTAB
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Aero Design and Manufacturing Company, Inc.
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Serial No. 78188620
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Martha M. Markusen of Fryberger, Buchanan, Smith &
Frederick for Aero Design and Manufacturing Company, Inc.
Cynthia Sloan, Trademark Examining Attorney, Law Office 116
(Meryl Hershkowitz, Managing Attorney).
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Before Simms, Hanak and Chapman, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Aero Design and Manufacturing Company, Inc.
(applicant) seeks to register in typed drawing form
AUTHENTIKRUD for “mail order catalog services featuring
clothing and accessories for motorcycle riders.” The
application was filed on November 25, 2002 with a claimed
first use date of May 2002.
The Examining Attorney refused registration “because
the specimens [original and substitute] do not show use of
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the mark for the services identified in the application.”
(Examining Attorney’s brief page 1). When the refusal to
register was made final, applicant appealed to this Board.
Applicant and the Examining Attorney filed briefs.
Applicant did not request an oral hearing.
Applicant’s original specimen is a page from its mail
order catalog. Applicant’s substitute specimen is a
printout from its website. Both specimens feature a bottle
bearing the mark AUTHENTIKRUD. The mail order catalog
features the AUTHENTIKRUD bottle along with five of
applicant’s other products. The website features the
AUTHENTIKRUD bottle by itself. Next to the bottle bearing
the mark AUTHENTIKRUD there appears again the mark
AUTHENTIKRUD above text which reads, in part, as follows:
“A stained stitch is a badge of honor. Your personal 3-D
signpost of rides, experiences, and events past. A piece
of gear that says seasoned, serious rider. Like
stonewashed jeans. Each Aero Authentikrud stain kit is
scientifically formulated to put legitimate looking stains,
dirt and assorted other ‘road wear’ on your suit. Say
goodbye to the embarrassing newby look …” Thereafter there
appears the order code (RTWD) and the price ($10.00).
Obviously, it is clear that as used in both
applicant’s mail order catalog and on applicant’s website,
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the mark AUTHENTIKRUD functions as a trademark to identify
a product that is called a “stain kit.” As so used, the
mark AUTHENTIKRUD functions as a trademark, and not as a
service mark.
However, at page 4 of its brief, applicant argues that
AUTHENTIKRUD functions as a service mark for its mail order
catalog services in the following manner: “Applicant freely
admits that it does not sell a stain kit or any other
product under the designation AUTHENTIKRUD. It simply uses
AUTHENTIKRUD in jest to promote its catalog services. The
service mark and corresponding copy in the catalog and on
applicant’s website are written to amuse the reader, the
potential purchasers of applicant’s high-end motorcycle
clothing. As applicant has previously argued, use of jokes
and items offered in jest are part of applicant’s
promotional style.”
During the course of the application process,
applicant submitted the affidavit of Kim Brody, its General
Manager. In paragraph 2 of her affidavit, Ms. Brody stated
as follows: “Applicant frequently uses an irreverent style
in marketing its goods and services. As part of this
style, on occasion its catalog and website offer certain
products in jest. For example, the trademark AUTHENTIKRUD
is used adjacent to a drawing of three bottles and language
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4
referring to a stain kit formulated to put legitimate
looking stains, dirt and other associated ‘road wear’ on
your suit. No product is sold under the AUTHENTIKRUD
trademark, but the mark is used as part of the way
applicant markets its goods and services.” (emphasis
added).
We have two problems with applicant’s position.
First, applicant has offered no direct proof that its
customers would perceive its AUTHENTIKRUD stain kit as a
non-existent, “joke” product. In paragraph 3 of her
affidavit, Ms. Brody merely states that our “customers are
amused by our use of AUTHENTIKRUD and have told us they
find it creative and funny.” Applicant presented no
affidavits from customers.
As noted, in applicant’s mail order catalog
applicant’s AUTHENTIKRUD stain kit is offered on the same
page with five of applicant’s other, presumably
“legitimate” products. Moreover, like applicant’s
“legitimate” products, applicant’s AUTHENTIKRUD stain kit
has an order code and a price. Thus, consumers could
easily perceive AUTHENTIKRUD stain kit to be a legitimate
product, and thus perceive AUTHENTIKRUD to be a trademark.
Indeed, in paragraph 2 of her affidavit, Ms. Brody even
notes that AUTHENTIKRUD is a trademark that is used to
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5
promote applicant’s goods, as well as purportedly
applicant’s services.
Second, even if we assume purely for the sake of
argument that consumers would understand that applicant’s
AUTHENTIKRUD stain kit is a “joke” product, this does not
mean that they would understand that AUTHENTIKRUD functions
as a service mark for applicant’s “mail order catalog
services featuring clothing and accessories for motorcycle
riders.” In order to obtain a service mark registration,
applicant must not only “be a provider of services,” but in
addition “applicant also must have used the mark to
identify the named services for which registration is
sought.” In re Advertising & Marketing, 821 F.2d 614, 2
USPQ2d 2010, 2014 (Fed. Cir. 1987). Applicant has failed
to demonstrate how customers would perceive AUTHENTIKRUD as
identifying “mail order catalog services featuring clothing
and accessories for motorcycle riders.” Accordingly, while
applicant’s “joke” AUTHENTIKRUD stain kit product may
“amuse” applicant’s customers, this does not mean that
AUTHENTIKRUD functions as a service mark identifying
applicant’s mail order catalog services featuring clothing
and accessories for motorcycle riders.
Decision: The refusal to register is affirmed.