Areway, Inc.

Trademark Trial and Appeal Board

Jun 1, 1999

EX (T.T.A.B. Jun. 1, 1999)

Paper No. 15
HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JUNE 3, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Areway, Inc.
________
Serial Nos. 74/612,637; 74/612,683;
and 74/612,639
_______
Donald L. Otto of Renner, Otto, Boisselle & Sklar
for Areway. Inc.
Won T. Oh, Trademark Examining Attorney, Law Office 104
(Sidney Moskowitz, Managing Attorney).
_______
Before Cissel, Wendel and Bucher, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Areway, Inc. has filed applications to register AMI,1
AREWAY MIRROR IMAGE,2 and CLUSTER LUSTER3 for “metal

1 Serial No. 74/612,637, filed Dec. 19, 1994, claiming first use
dates of Sept. 1, 1994.
2 Serial No. 74/612,638, filed Dec. 19, 1994, claiming first use
dates of Sept. 1, 1994.
3 Serial No. 74/612,639, filed Dec. 19, 1994, claiming first use
dates of Sept. 1, 1994.
Ser Nos. 74/612,637; 74/612,638 and 74/612,639
2
finishing services, namely, buffing and polishing of
metals.”
Registration has been finally refused in each
application on the ground that the specimens of record fail
to show use of the designation involved as a mark for the
specified services. Applicant and the Examining Attorney
have filed briefs in each case, but no oral hearing was
requested. In view of the common questions of law and fact
which are involved herein, we find it in the interest of
judicial economy to consolidate the cases for purposes of
final decision. Thus, we have issued this single opinion.
In the specimens of record (which consist of the
identical brochure in all three applications), applicant’s
wheel finishing division is described as “Specialists in
Polishing, Buffing and Clearcoating for the Automotive and
Track Wheel Industry.” The only reference in the brochure
to the designations at issue is the following:
Polishing and buffing is offered in the following
finishes: AMI ™ (AREWAY Mirror Image), Satin finish,
color buff, and “Cluster Luster™.” Any of these
polishes can be clearcoated with acrylic according to
your customer requirements.
The Examining Attorney takes the position that the
specimens show use of AMI, AREWAY MIRROR IMAGE and CLUSTER
LUSTER as the names of types of finishes or polishes, and
not as marks for the service of buffing and polishing
Ser Nos. 74/612,637; 74/612,638 and 74/612,639
3
metals. He maintains that the specimens show use of the
term “finishes” as a noun, not as a verb, and, thus, that
the designations sought to be registered identify a
product, not a service. He points to the second sentence,
in which the single word “polishes” is used to refer to all
of the previously offered “finishes.”4
Applicant argues that the word “finishes,” as used in
its specimens, does not mean a product or coating, but
rather refers to the method or process used to produce a
desired result. Applicant contends that the specimens make
it clear that applicant offers the services of polishing,
buffing and clearcoating for the automotive and truck wheel
industry, and not any products per se. Applicant argues
that neither the word “finishes” nor the word “polishes”
can be limited to a single meaning, and that there are
meanings for both which support applicant’s argument that
the words refer to applicant’s services. For example,
applicant points to two dictionary definitions for the noun
“finish,” as “the way in which the surface, as of

4 The Examining Attorney also notes applicant’s use of the “TM”
symbol, which he contends is suggestive of trademark, rather than
service mark, use. We agree with applicant, however, that the
use of a “TM” symbol for service marks, as well as trademarks, is
widespread and not likely to be interpreted as distinguishing one
from the other.
Ser Nos. 74/612,637; 74/612,638 and 74/612,639
4
furniture, is smoothed, polished, etc.”5 and as “the manner
in which an object is perfected or finished in its
preparation, or an effect imparted in finishing.”6 The
Examining Attorney, on the other hand, notes other
definitions in the same dictionaries for the noun “finish”
as “anything used to finish something else, as polish, wax,
etc.” and as “a material used for application in
finishing.”
To be registrable as a service mark, there must be a
direct association between the mark and the services named
in the application. In re Universal Oil Products Co., 476
F.2d 653, 177 USPQ 456 (CCPA 1973). Although the Trademark
Act does not specifically set forth a definition for a
“service,” our principal reviewing court has adopted “the
performance of labor for the benefit of another” as an
appropriate definition. In re Advertising & Marketing
Development Inc., 821 F.2d 614, 2 USPQ2d 2010 (Fed. Cir.
1987); In re Canadian Pacific Limited, 754 F.2d 992, 224
USPQ 971 (Fed. Cir. 1985).7 The fact that the applicant is
a provider of services is not enough, however. The

5 Webster’s New Twentieth Century Dictionary (1977).
6 Random House Dictionary (1967).
7 TMEP § 1301.01(a)(i)states that for a service to be real, there
must be the performance of some activity, either physical or
mental action.
Ser Nos. 74/612,637; 74/612,638 and 74/612,639
5
applicant must show that it has used the mark to identify
the named services for which registration is sought. In re
Advertising & Marketing Development Inc., supra; In re
Forbes, 31 USPQ2d 1315 (TTAB 1994).
Here, the only issue is whether the specimens show use
of the designations sought to be registered as marks
identifying the metal finishing services recited in the
applications. From the brochures it is most evident that
applicant is in the business of polishing, buffing and
clearcoating services to the automotive and track wheel
industry. The sole appearance of the designations AMI,
AREWAY MIRROR IMAGE and CLUSTER LUSTER in the brochure,
however, is in the description of the particular “finishes”
which can be obtained as the result of applicant’s
“polishing and buffing” services.
While applicant and the Examining Attorney have argued
over the appropriate meaning of the word “finishes” as used
in this context, it is immaterial whether we construe
“finishes” as referring to materials used in the process of
finishing or to the end results achieved by the process.
In either event, the designations sought to be registered
are not used in direct association with, or to identify,
applicant’s metal finishing services. See In re Turbine
Metal Technology, Inc., 219 USPQ 1132 (TTAB 1983)[specimens
Ser Nos. 74/612,637; 74/612,638 and 74/612,639
6
fail to show use of the term TMT-5 as a mark for the
services recited in the application]. There is no activity
or labor which the designations identify, only the
particular appearance which will be obtained as a result of
the finishing services. Contrary to applicant’s arguments,
we cannot equate this result with the services involved in
producing the result, just as, for example, we could not
equate a “SINISTER BLACK” wall coating with “house painting
services.”
Accordingly, we find that the specimens of record fail
to show use of AMI, AREWAY MIRROR IMAGE or CLUSTER LUSTER
as a mark for the metal finishing services specified in the
applications.
Decision: The refusal to register is affirmed.
R. F. Cissel
H. R. Wendel
D. E. Bucher
Trademark Administrative Judges,
Trademark Trial and Appeal Board
Ser Nos. 74/612,637; 74/612,638 and 74/612,639
7