Ames Department Stores, Inc.

Trademark Trial and Appeal Board

Nov 2, 2000

No. 75176745 (T.T.A.B. Nov. 2, 2000)

Hearing: 11/2/00 Paper No.
19
June 20, 2000 BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Ames Department Stores, Inc.
________
Serial No. 75/176,745
_______
Deborah M. Lodge of Patton Boggs LLP for Ames Department
Stores, Inc.
Amos T. Matthews, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______
Before Cissel, Hanak and Chapman, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
On October 3, 1996, Ames Department Stores, Inc.
filed an application to register on the Principal Register
the mark shown below
for “retail department store services featuring girls’
apparel and accessories.” The claimed date of first use
and first use in commerce is July 31, 1996.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/176,745
2
The Examining Attorney required that applicant submit
substitute specimens, supported by an affidavit or
declaration, showing use of the mark for the identified
services. Applicant submitted additional specimens
(properly supported by a declaration), as well as
supplemental materials showing how the mark is used to
identify a section (girls’ large sizes of clothing and
accessories) within applicant’s department stores.
Registration was finally refused on the ground that
none of the specimens submitted by applicant shows use of
the mark for services, but rather they evidence only
trademark use for goods (i.e., girls’ clothing items). See
Section 45 of the Trademark Act, and Trademark Rule
2.56(a)(1).
Applicant appealed, and briefs have been filed. Both
applicant’s attorney and the Examining Attorney attended
the oral hearing before this Board.
The Examining Attorney, citing TMEP §1301.04, contends
that the specimens and other materials submitted by
applicant show use of the mark on goods (i.e., girls’
apparel), but are not acceptable specimens demonstrating
use of the mark as a source indicator for the recited
retail department store services as required by Section 45
of the Trademark Act and Trademark Rule 2.56; and, citing
Ser. No. 75/176,745
3
TMEP §1301.02, that the specimens do not show the mark in
reference to the particular involved services.
Applicant contends that its mark (PERFECT PLUS and
design) is used to designate and distinguish for customers
a particular location or section of the Ames retail stores
where customers can find large girls’ sizes of clothing and
accessories; and that this mark is not used as a trademark
for the girls’ clothing items, which bear independent
trademarks designating the source(s) of the goods.
Applicant also argues that it owns several other service
mark registrations for which similar specimens designating
specific areas of applicant’s stores were accepted, e.g.,
Registration No. 1,765,091 for PARTY PLAZA; Registration
No. 1,897,136 for THE DIAMOND DISTRICT; and Registration
Nos. 1,808,209 and 1,830,730 for PAWSITIVELY PETS.1
Applicant submitted the following examples of the use
of its mark: (i) the original specimens2, which are tags

1 Applicant did not submit photocopies of said registrations, but
rather merely a typed listing. See In re Duofold, Inc., 184 USPQ
638 (TTAB 1974). Although the Examining Attorney did not object
to the list, nonetheless, he did not treat the registrations as
if they were of record. Accordingly, the Board has not
considered this information in our decision herein. We note
that, in any event, the specimens for the instant case must stand
or fall on their own merits without regard to third-party
registrations.
2 Applicant’s method-of-use clause reads “The mark is used on
signs and tags and in advertising and promotional material for
the subject department store services....”
Ser. No. 75/176,745
4
showing the mark with the additional words “Girls 10½-18½”;
(ii) additional specimens, properly supported by
applicant’s declaration, which are advertising circulars,
showing the following use of the mark3:
;
(iii) “topper” signs showing the mark as shown below
; and
(iv) photographs showing the folded “topper” sign appearing
on a rack of girls’ clothing, which can be seen from a
distance within applicant’s store.

3 The flower portion of the mark did not reproduce properly.
Ser. No. 75/176,745
5
In this case, we agree with applicant that the specimens
are acceptable evidence of service mark use. It has long
been recognized that by its very nature, a service mark can
be used in a variety of ways. In fact TMEP §1301.04
states, in part: “Generally, the applicant is able to
submit more varied types of specimens in a service mark
application; however, the specimens must evidence use of
the mark in the sale or advertising of the recited
services.” There is no requirement that a specimen must
make explicit reference thereon to the services involved in
order to create the required direct association with the
identified services. See In re Ralph Mantia Inc., 54
USPQ2d 1284 (TTAB 2000); and In Re Metriplex Inc., 23
USPQ2d 1315 (TTAB 1992).
We can ascertain no reason why a department within a
retail store could not itself be identified by a service
mark. And in this case, applicant’s specimens, in fact,
evidence use of applicant’s service mark, PERFECT PLUS and
design, to identify its “retail department store services,
featuring girls’ apparel and accessories.”4 Consumers would
readily recognize the mark, as used by applicant, as

4 To whatever extent there may be a question about the use shown
on applicant’s original specimens of record, that is alleviated
by applicant’s substitute specimens, and the other materials
showing how applicant uses its mark in connection with its
identified services.
Ser. No. 75/176,745
6
identifying the source of applicant’s retail store services
featuring a girls’ large-sizes section located within
applicant’s retail department store. They would not
perceive the mark as identifying the source of the
particular clothing items on the rack.
Decision: The refusal of registration accordingly is
reversed.
R. F. Cissel
E. W. Hanak
B. A. Chapman
Administrative Trademark Judges,
Trademark Trial and Appeal Board