Bahram Bahramian

Trademark Trial and Appeal Board

Sep 24, 2019

87444322 (T.T.A.B. Sep. 24, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 24, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Bahramian
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Serial No. 87444322
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Bahram Bahramian, pro se.1

Elizabeth Shen, Trademark Examining Attorney, Law Office 121,
Richard F. White, Acting Managing Attorney.
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Before Lykos, Heasley and Larkin,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
Bahram Bahramian (“Applicant”) seeks to register on the Principal Register the
mark displayed below

for “Advertising and marketing; advertising and promotional services; on-line

1 During prosecution, Applicant was advised to hire a private attorney specializing in
trademark matters. See July 11, 2018 Office Action.
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advertising and marketing services” in International Class 35.2
The Trademark Examining Attorney has refused registration of Applicant’s mark
on the following grounds: (1) Applicant’s original specimen and substitute specimens
each fail to show the applied-for mark used in connection with the identified services
under Trademark Act Sections 1 and 45, 15 U.S.C. §§ 1051 and 1127, and (2) the
activities recited in the identification of services, when viewed in conjunction with
the specimens, are not registrable services within the meaning of Trademark Act
Sections 1, 2, 3, and 45, 15 U.S.C. §§ 1051-1053, 1127. For the reasons set forth below,
we affirm.
I. Evidentiary Issue
The Examining Attorney objects to Applicant’s inclusion of a hyperlink to his
website in his appeal brief3 and the submission of an attachment. While technically
not “filed” with the Board, the hyperlink constitutes an improper attempt to augment
the record. “Because the information displayed at a hyperlink’s Internet address can
be changed or deleted, merely providing a hyperlink to a website is insufficient to
make information from that site of record.” In re Olin Corp., 124 USPQ2d 1327, 1331
n.15 (TTAB 2017) (citing In re Powermat Inc., 105 USPQ2d 1789, 1791 (TTAB 2013)
and In re HSB Solomon Assocs. LLC, 102 USPQ2d 1269, 1274 (TTAB 2012)). If

2 Application Serial No. 87444322, filed May 10, 2017, under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b). The non-Latin characters in the mark transliterate to “AVA-YE
MILLAT-E-IRAN” and this means “VOICE OF IRANIAN NATION” in English. Color is not
claimed as a feature of the mark.
3 Applicant’s brief filed June 5, 2019, 8 TTABVUE, was rejected by the Board for failing with
conform with the Trademark Rules of Practice. 9 TTABVUE. Applicant filed a substitute
brief on June 19, 2019. 10 TTABVUE.
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Applicant wished to submit pages from his own website, or for that matter any other
Internet materials, he should have filed with the Board a separately captioned
request to suspend the appeal and to remand the application for the purpose of
submitting additional evidence to rebut the refusal. See Trademark Rule 2.142(d),
37 C.F.R. § 2.142(d) (“If the appellant or the examining attorney desires to introduce
additional evidence after an appeal is filed, the appellant or the examining attorney
should submit a request to the Board to suspend the appeal and to remand the
application for further examination.”). See, e.g., In re Juleigh Jeans Sportswear Inc.,
24 USPQ2d 1694, 1696 (TTAB 1992).
In view thereof, the Examining Attorney’s objection is sustained and the objected-
to evidence with Applicant’s appeal brief has been given no consideration. See
Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d) (“The record in the application should
be complete prior to the filing of an appeal. Evidence should not be filed with the
Board after the filing of a notice of appeal.”).
II. Prosecution History
Before discussing the merits of the appeal, a summary of the prosecution history
is in order. The involved application was originally filed under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b). After publication in the Official Gazette and
issuance of a notice of allowance, on March 13, 2018, Applicant submitted a
Statement of Use accompanied by the following specimen reprinted below:4

4 Applicant provided no description of the specimen in the May 8, 2018 Statement of Use.
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The Examining Attorney refused registration on the grounds that (1) the specimen
appears to be a digitally altered image or a mock-up of the intended depiction of the
mark for future use in commerce, and (2) the specimen fails to show the applied-for
mark used in connection with the identified International Class 35 services. June 4,
2018 Office Action. As the Examining Attorney explained,
An application based on Trademark Act Section 1(a) must
include a specimen showing the applied-for mark in use in
commerce for each international class of services identified
in the statement of use. 15 U.S.C. §1051(a)(1); 37 C.F.R.
§§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). “Use in
commerce” means (1) a bona fide use of the applied-for
mark in the ordinary course of trade (and not merely to
reserve a right in the mark), (2) the mark is used in the
sale, advertising, or rendering of the services, and (3) the
services are actually rendered in commerce. See 15 U.S.C.
§1127.
Examples of specimens for services include advertising and
marketing materials that show the mark used in the actual
sale, rendering, or advertising of the services, as well as
show a direct association between the mark and the
services. See TMEP §1301.04(a), (f)(ii), (h)(iv)(C).
Id. The Examining Attorney advised Applicant that he could submit a substitute
specimen showing the mark in actual use in commerce for the services identified in
the Statement of Use.
On that same day, Applicant responded to the refusal by submitting a substitute
specimen:
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On the next day, June 5, 2018, Applicant submitted a second purported substitute
specimen:

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The Examining Attorney issued a non-final Office action on June 14, 2018 (1)
withdrawing the refusal on the basis that the substitute specimens appear to be
digitally altered images or mock-ups;5 (2) maintaining the refusal that the substitute
specimens fail to show the applied-for mark used in connection with the identified
services under Trademark Act Sections 1 and 45; and (3) issuing a new refusal the
activities recited in the identification of services, when viewed in conjunction with
the substitute specimens, are not registrable services as contemplated by Trademark
Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127. Elaborating on this new
ground for refusal, the Examining Attorney advised Applicant that the substitute
specimens show that he is only advertising, marketing, or promoting his own services
and not providing such services to others.
In an effort to traverse the refusal, on June 16, 2018, Applicant filed a third
substitute specimen, which Applicant described as “a typical promotional advertising
of an event for ‘Voice of Iranian Nation’, held at GW University, together with a 3-
fold brochure for this entity”:

5 We do not construe this as a withdrawal of the basis for rejecting the original specimen.
Serial No. 87444322
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Serial No. 87444322
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This prompted the Examining Attorney to issue a final refusal on July 11, 2018.
With regard to the refusal that the substitute specimens do not show the applied-for
mark in use in commerce in connection with any of the services specified in
International Class 35 in the Statement of Use, the Examining Attorney observed:
[T]he substitute specimen appears to show the applied-for
mark used on a flyer for a concert at George Washington
University. However, nothing in the flyer demonstrates
that applicant is using the applied-for mark in connection
with advertising services. Nothing mentions that applicant
is providing any kind of advertising or promotional service.
Further, the flyer itself is not a rendering of applicant’s
advertising or promotional services because those services
must be for the benefit of others. Rather, the flyer appears
to show that applicant is using [his] mark in connection
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with other types of charitable or organizational services not
in this current application. Similarly, the second and third
pages of the substitute specimen also show that applicant
is using the applied-for mark in connection with services
other than advertising and promotion of the goods and
services of others. Accordingly, applicant has not yet
demonstrated that it provides any advertising or
promotional services for the goods and services of others.
July 11, 2018 Office Action. As to the failure-to-function refusal, the Examining
Attorney reiterated that the services identified in the substitute specimens were
being performed for Applicant’s benefit and not the benefit of a third party.
Following Applicant’s inadvertent abandonment and reinstatement of the
application, Applicant timely filed a notice of appeal.6 The appeal is now briefed.
III. Whether the specimens submitted show Applicant’s applied-for mark in use
in commerce in connection with any of the services specified in International
Class 35?
Section 45 of the Trademark Act, 15 U.S.C. § 1127, defines “service mark” as
follows:
The term “service mark” means any word, name, symbol,
or device, or any combination thereof--
(1) used by a person, or
(2) which a person has a bona fide intention to use in
commerce and applies to register on the principal register
established by this [Act], to identify and distinguish the
services of one person, including a unique service, from the
services of others and to indicate the source of the services,
even if that source is unknown….

6 On March 20, 2019, the Examining Attorney denied Applicant’s February 21, 2019 Request
for Reconsideration for the same reasons noted in the final refusal.
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Section 1(d)(1) of the Trademark Act, 15 U.S.C. § 1051(d)(1), requires that the
applicant file a “specimen” or facsimile “of the mark as used in commerce.”
Trademark Rule 2.56(a), 37 C.F.R. § 2.56(a), adds that an applicant filing an intent-
to-use application file “one specimen . . . showing the mark as used in commerce on
or in connection with the goods or services.” (emphasis added).
A service mark specimen must show a direct association between the mark and
the services for which registration is sought. Trademark Rule 2.56(b)(2); 37 C.F.R. §
2.56(b)(2). See In re Universal Oil Prods. Co., 476 F.2d 653, 177 USPQ 456, 457 (CCPA
1973). A direct association is the minimum the specimen must show, and it may be
established textually, contextually, or logically. Id. A specimen that shows only the
mark with no reference to, or association with, the services does not show service
mark usage. See, e.g., In re Adair, 45 USPQ2d 1211 (TTAB 1997) (tags affixed to
decorated Christmas trees that bear the mark “TREE ARTS CO. and design” and the
applicant’s location, but make no reference to services, failed to show use for “design
services in the nature of designing handcrafted, permanently decorated Christmas
and designer trees”). While the exact nature of the services does not need to be
specified in the specimen, there must be something that creates in the mind of the
purchaser an association between the mark and the services that have been recited
in the application. In re JobDiva, Inc., 843 F.3d 936, 121 USPQ2d 1122, 1126 (Fed.
Cir. 2016); In re Way Media, 118 USPQ2d 1697, 1698 (TTAB 2016). In determining
whether a specimen is acceptable evidence of service mark use, the examining
attorney may consider applicant’s explanations as to how the specimen is used, along
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with any other available evidence in the record that shows how the mark is actually
used. See In re The Cardio Grp., LLC, 2019 USPQ2d 227, 232 (TTAB 2019) (“Both
precedent and examination guidance make clear that in assessing the specimens,
consideration must be given not only to the information provided by the specimen
itself, but also to any explanations offered by Applicant clarifying the nature, content,
or context of use of the specimen that are consistent with what the specimen itself
shows.”); In re Int’l Envtl. Corp., 230 USPQ 688 (TTAB 1986).
None of Applicant’s specimens show the applied-for mark in connection with
Applicant’s identified services, “Advertising and marketing; advertising and
promotional services; on-line advertising and marketing services.” According to
Applicant, he uses his mark as an “independent NGO to promote democracy in Iran
…” Appeal Brief, 10 TTABVUE 2. This in fact is borne out by the substitute specimens
of record. The letters to the U.S. President, and to the Secretary-General of the United
Nations, discussing the domestic situation in Iran and seeking to enlist their
assistance, do not in any way refer to or create in the mind of the purchasing public
an association between Applicant’s applied-for mark and “Advertising and
marketing; advertising and promotional services; on-line advertising and marketing
services.”
The same holds true for the brochure advertising a concert to promote Applicant’s
political cause. Again, nothing in the brochure suggests that Applicant is providing
the type of advertising and marketing services identified in the application. Rather
Applicant is sponsoring a concert to raise awareness regarding the human rights and
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political situation in Iran.
Last, we agree with the Examining Attorney’s assessment that the original
specimen is a mock-up of the intended depiction of the mark and fails to show the
applied-for mark used in connection with the services.
In sum, none of the specimens of record demonstrate the use of the applied-for
mark in commerce for the applied-for services under Trademark Act Sections 1 and
45.
IV. Whether the activities recited in the identification of services, when viewed in
conjunction with the specimens, are registrable services?
Turning now to the second ground for refusal, a service mark can only be
registered for activities that constitute services as contemplated by the Trademark
Act. Trademark Act Sections 1, 2, 3, and 45; 15 U.S.C. §§ 1051, 1052, 1053, and 1127.
The activities set forth as services in an application are reviewed using the following
criteria to determine whether they constitute registrable services:
(1) A service is a real activity.
(2) A service is performed primarily for the benefit of
someone other than the applicant.
(3) A service is an activity that is sufficiently separate
and qualitatively different from an applicant’s principal
activity, i.e., it cannot be an activity that is merely
incidental or necessary to an applicant’s larger business.
TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 1301.01(a) (Oct. 2018); see
In re Dr Pepper Co., 836 F.2d 508, 5 USPQ2d 1207, 1208-09 (Fed. Cir. 1987); In re
Canadian Pac. Ltd., 754 F.2d 992, 224 USPQ 971, 973 (Fed. Cir. 1985).
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This appeal centers on the second and third criteria. While an advertising agency
provides a service when it promotes the goods or services of its clients, a company
that promotes the sale of its own goods or services is doing so for its own benefit rather
than rendering a service for others. In re Reichhold Chems., Inc., 167 USPQ 376
(TTAB 1970). Applicant admits that his applied-for mark “is essential for our service
being promoted for the cause, and this is the reason for applying for [the registration]
to protect our offering.” 10 TTABVUE 2. Applicant’s statement makes clear that his
identified services are not performed primarily for the benefit of someone other than
Applicant, and that any advertising or marketing efforts are part of his lobbying
efforts. Consistent therewith and as reflected in each substitute specimen, Applicant
is not advertising, marketing, or promoting the goods and services of others, but
rather is performing his own services as an independent non-governmental
organization promoting the cause of democratic reform in Iran. Hence, Applicant’s
mark fails to function as a service mark when considered in connection with the
specimens of record under Trademark Act Sections 1, 2, 3, and 45.
In closing, proper identification of services is critical when seeking to register a
service mark. It is an applicant’s duty to accurately identify the nature of services it
provides or intends to provide when filing a trademark or service mark application.
Applicant did not discharge that duty in this case.
Decision: The refusal to register is affirmed on both grounds.