Bear Omnimedia LLC

Trademark Trial and Appeal Board

Mar 27, 2018

No. 87009944 (T.T.A.B. Mar. 27, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 27, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Bear Omnimedia LLC
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Serial No. 87009944
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S. Wolfe Thompson of Wolfe Thompson PS,
for Bear Omnimedia LLC.

Eugenia K. Martin, Trademark Examining Attorney, Law Office 114,
K. Margaret Le, Managing Attorney.
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Before Taylor, Masiello, and Larkin,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
Bear Omnimedia LLC (“Applicant”) seeks registration on the Principal Register
of the mark BEARPLAY in standard characters for services identified in the
application, as amended, as “magazine publishing; publication of entertainment
magazines for gay men,” in International Class 41.1

1 Application Serial No. 87009944 was filed on April 21, 2016, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), on the basis of Applicant’s claim of first use of the mark
and first use in commerce at least as early as May 27, 2011.
Serial No. 87009944
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The Trademark Examining Attorney has refused registration of the mark under
Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1127, on the ground that
Applicant’s specimen of use does not show use of the mark in commerce in connection
with the identified services. After the Examining Attorney made the refusal final,
Applicant requested reconsideration, which was denied. The case is fully briefed. We
affirm the refusal to register.
I. Prosecution History and Record on Appeal
Much of the prosecution of this application involved the issues of whether
Applicant’s claimed mark was “merely descriptive” of the identified services within
the meaning of Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), and
whether Applicant’s claimed mark had acquired distinctiveness under Section 2(f) of
the Trademark Act, 15 U.S.C. § 1052(f). Those issues are not before us on appeal. In
the office action making final the refusal to register, the Examining Attorney stated
that the mere descriptiveness refusal had been obviated because Applicant had made
a sufficient showing of acquired distinctiveness.2
With respect to the issue on appeal, Applicant described the original specimen
submitted with its application as the “[c]over of [a] magazine showing the mark.” In
the first Office Action, the Examining Attorney refused registration on the ground
that the identified services were “magazine publishing,” but that on the submitted

2 July 18, 2017 Office Action at 1. Applicant nevertheless devoted virtually all of its main
appeal brief to a discussion of these issues. 4 TTABVUE 6-20. Applicant’s only substantive
discussion of the sufficiency of its specimens is in its reply brief. 6 TTABVUE 5-8.
Serial No. 87009944
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specimen, “the mark is only shown in use as the title of a publication.”3 Applicant
purported “to meet [the] Specimen Required Refusal” by seeking to amend its
application to identify its services as follows:
Entertainment in the nature of visual and audio
performances, namely, theatrical performances;
entertainment, namely a continuing musical, variety,
news, and dramatic shows broadcast; providing
entertainment information in the field of adult
entertainment at the specific request of end-users by
means of telephone or global communications networks;
entertainment services, namely, providing on-line adult
entertainment information for adults; organizing
community cultural events; electronic publication of text
and graphic works recorded on electronic media, including,
CD, DVD and online featuring adult entertainment;
organizing exhibitions of erotic entertainment of interest to
adults; and publication of entertainment magazines for
men.4
In a second Office Action, the Examining Attorney rejected the proposed
amendment to the identification of services because it exceeded the scope of the
services identified in the application, and maintained and continued the specimen
refusal.5 Applicant responded by again seeking to amend the identification, this time
to “Magazine publishing, namely, providing on-line adult entertainment information
for gay adults including online featuring of adult entertainment,” and by submitting
a substitute specimen consisting of another magazine cover.6

3 August 10, 2016 Office Action at 1.
4 September 22, 2016 Response to Office Action at 5.
5 February 18, 2017 Office Action at 1.
6 April 27, 2017 Response to Office Action at 15-16.
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In the Office Action making final the specimen refusal, the Examining Attorney
again rejected the proposed amendment because it exceeded the scope of the services
identified in the application, and suggested that Applicant amend its identification
to “magazine publishing; publication of entertainment magazines for gay men,” if
accurate.7 She rejected Applicant’s specimen because “the services are identified as
magazine publishing, but the mark is not shown in use for these services” but rather
“as the title of the applicant’s magazine, [which] does not identify the publisher of the
magazine.”8
Applicant filed a Request for Reconsideration in which Applicant adopted the
Examining Attorney’s suggested identification of services,9 and submitted additional
claimed specimens consisting of magazine covers, internal magazine pages, and
photographs.10 Applicant argued that its “[i]dentification of ‘services’ . . . should
actually be ‘products’” and that its “goods are specifically identified by the mark which
the examining attorney calls a ‘title.’”11 Applicant stated that “[i]n fact, applicant
publishes products, namely a ‘Presentation of works of visual art or literature to the
public for cultural or education purposes.’”12 The Examining Attorney accepted the

7 July 18, 2017 Office Action at 1.
8 Id.
9 July18, 2017 Request for Reconsideration at 1.
10 Id. at 2-34.
11 Id. at 1.
12 Id.
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amendment to the identification of services, but denied the request for
reconsideration regarding the specimen refusal.13
II. Specimen Refusal
A use-based application under Section 1(a) of the Trademark Act, 15 U.S.C. §
1051(a), must be supported by a “specimen showing how the applicant uses the mark
in commerce. . .” 37 C.F.R. § 2.34(a)(1)(iv).
Applicant seeks registration of BEARPLAY for the services of “magazine
publishing; publication of entertainment magazines for gay men.” A service mark is
deemed to be in use in commerce “when it is used or displayed in the sale or
advertising of the services” and “the services are rendered in commerce, or the
services are rendered in more than one State or in the United States and a foreign
country and the person rendering the services is engaged in commerce in connection
with the services.” 15 U.S.C. § 1127. The specimens of use of a service mark “must
show an association between the mark and the services.” In re Keep A Breast Found.,
123 USPQ2d 1869, 1876 (TTAB 2017). An acceptable service mark specimen “‘must
show the mark sought to be registered used in a manner that demonstrates a direct
association between the mark and the services. Essentially, the mark must be shown
in a manner that would be perceived by potential purchasers as identifying the
applicant’s services and indicating their source.’” Id. (quoting TRADEMARK MANUAL
OF EXAMINING PROCEDURE (“TMEP”) Section 1301.04(f)). A service mark “must be
‘used in such a manner that it would readily be perceived as identifying’ the services,

13 September 11, 2017 Denial of Request for Reconsideration at 1.
Serial No. 87009944
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which is ‘determined by examining the specimens of record in the application.’” Id.
(quoting In re Moody’s Investors Serv. Inc., 13 USPQ2d 2043, 2047 (TTAB 1989)).
As discussed above, during prosecution Applicant submitted multiple purported
specimens consisting of covers of, and pages from, volumes of an adult magazine
directed to gay men entitled BEARPLAY. The applied-for mark appears on the cover of
the magazine and at the bottom of pages next to the page number.
The Examining Attorney notes that Applicant claimed during prosecution that it
produces products, not services, and that Applicant “has not applied for a trademark
for goods such as magazines or online publications.” 7 TTABVUE 4. She argues that
Applicant “has applied for a service mark for magazine publishing services” and that
the “resulting products are the publications, but use of the mark as the title of the
publications does not show the mark in use with the services listed in the application.”
Id. She further argues that it “is well established that a term that is used only to
identify a product, device, or instrument sold or used in the performance of a service
rather than to identify the service itself does not function as a service mark,” and
concludes that “the mark BEARPLAY is used only to identify the title of the product
produced by the applicant” and that “[b]ecause the mark only identifies the products
produced, the specimens do not show use of the mark in commerce.” Id.
Applicant makes several arguments in response in its reply brief, but none of them
squarely addresses the relevant amended identification of services: “magazine
publishing; publication of entertainment magazines for gay men.” First, Applicant
argues that its magazine covers “clearly show applicant’s Proposed description of
Serial No. 87009944
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goods and services, namely: Magazine publishing, namely, providing on-line adult
entertainment information for gay adults including online featuring of adult
entertainment; and publication of entertainment magazines for gay men.” 6
TTABVUE 5. As noted above, the Examining Attorney declined to permit amendment
to the referenced “Proposed description of goods and services” during prosecution
because that description exceeded the scope of the original identification of services.14
Second, Applicant argues that none of the 45 International Classes “specifically
mention ‘magazine’ or ‘publication’ or ‘publishing,’” and that the class description for
Class 41 comes closest to what Applicant claims it does, which is to “publish[]
BEARPLAY ‘to entertain or to engage the attention of others’ particularly ‘on-line
adult entertainment information for gay adults including online featuring of adult
entertainment.’” Id. at 5-6.15 Applicant’s identification of services does not cover
providing on-line adult information for gay adults.
Third, Applicant correctly states that to “be registrable as a service mark, the
asserted mark must function both to identify the services recited in the application
and distinguish them from the services of others, and to indicate the source of the
recited services, even if that source is unknown.” Id. at 6. Applicant argues that “the
specimens for service [sic] show use of the mark ‘in a manner that would be perceived
by potential purchasers as identifying the applicant’s services and indicating their

14 July 18, 2017 Office Action at 1.
15 This description of the services that fall within International Class 41 appears in TMEP
Section 1401.02(a).
Serial No. 87009944
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source,’” id. (quoting In re DSM Pharm., Inc., 87 USPQ2d 1623, 1624 (TTAB 2008)),16
because the “specimens submitted here correctly shows [sic] the mark BEARPLAY
used specifically for ‘on-line adult entertainment information for gay adults including
online featuring of adult entertainment.’” Id. at 7. These arguments again do not
address Applicant’s actual identification of services.
Finally, Applicant argues that the magazine “BEARPLAY also includes
informational services ancillary and important to gay men, like HIV awareness” and
that the “mark is also used for publication of advertisements of interest to gay men.”
Id. The record is devoid of evidence to support either claim, but the identification of
services does not cover either purported service in any event.
The services identified in the application are “magazine publishing” and
“publication of entertainment magazines for gay men,” while the specimens of use are
covers and pages from Applicant’s own magazine. As explained in the TMEP, the
“publication of one’s own periodical is not a service, because it is done primarily for
applicant’s own benefit and not for the benefit of others.” TMEP Section
1301.01(b)(iii) (Oct. 2017) (citing In re Billfish Int’l Corp., 229 USPQ 152 (TTAB
1986); In re Alaska Nw. Publ’g Co., 212 USPQ 316 (TTAB 1981); In re Landmark
Commc’ns, Inc., 204 USPQ 692 (TTAB 1979), and In re Television Digest, Inc., 169
USPQ 505 (TTAB 1971)). Magazine publishing services must be rendered for the
benefit of someone other than the publisher of the magazine. Alaska Nw. Publ’g Co.,

16 None of the cases cited by Applicant in support of any its arguments involved publishing
services.
Serial No. 87009944
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212 USPQ at 317. The magazine cover specimens submitted by Applicant may
support registration of BEARPLAY in Class 16 as a trademark for magazines (which
Applicant described during prosecution as its “goods [that] are specifically identified
by the mark which the examining attorney calls a ‘title’”),17 but they do not show an
association between the mark and the services of “magazine publishing” or the
“publication of entertainment magazines for gay men” for others. Keep A Breast
Found., 123 USPQ2d at 1876; see also Alaska Nw. Publ’g Co., 212 USPQ at 317
(affirming refusal to register the title of a section of a magazine published by
applicant as a service mark for magazine publishing services). They thus do not show
use of the claimed mark in commerce in connection with the services identified in the
application.
Decision: The refusal to register is affirmed.

17 July18, 2017 Request for Reconsideration at 1.