Christine Schiefer

Trademark Trial and Appeal Board

Jun 21, 2019

87737157 (T.T.A.B. Jun. 21, 2019)

This Opinion is Not a
Precedent of the TTAB

Hearing: June 4, 2019 Mailed: June 21, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Christine Schiefer
_____

Serial No. 87737157
_____

Roger A. Gilcrest of Ice Miller LLP,
for Christine Schiefer.
Ira Goodsaid, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
_____

Before Mermelstein, Heasley and Hudis,
Administrative Trademark Judges.

Opinion by Hudis, Administrative Trademark Judge:
Christine Schiefer (“Applicant”) seeks registration on the Principal Register of the
mark AND THAT'S WHY WE DRINK A PARANORMAL AND TRUE CRIME
PODCAST BY CHRISTINE SCHIEFER, EM SCHULZ, & BOXED WINE & Design,
in the following form:

Serial No. 87737157
- 2 -
for “on-line retail store featuring apparel, glassware, stoneware and accessory items
for the consumption of alcoholic beverages” in International Class 35.1
The mark is described in the Application as follows:
The mark consists of the stylized wording “AND THAT'S WHY WE
DRINK A PARANORMAL AND TRUE CRIME PODCAST BY
CHRISTINE SCHIEFER, EM SCHULZ, & BOXED WINE” in black,
with an eye in a pyramid forming the “A” in “THAT’S”. The rectangular,
tan background features faint, gray lines radiating from the pyramid
and red blood splatters. In the upper left corner is a black and tan sun
with a face. The upper right corner features a black and tan five-point
star and quarter moon with a face. The lower right corner has a black
and tan milk shake with cherry, whipped cream and a straw. The lower
left corner has a black and tan, partially filled wine glass.
The Trademark Examining Attorney (“Examining Attorney”) refused registration
under Trademark Act Sections 1 and 45, 15 U.S.C. §§ 1051, 1127, on the ground that
Applicant’s mark, as shown on the specimens Applicant made of record, does not show
a direct association between the applied-for mark and the identified services; thus
the specimens fail to show the applied-for mark in use in commerce.
When the refusal was made final, Applicant requested reconsideration. After the
Examining Attorney denied the request for reconsideration, Applicant appealed to
the Board. We affirm the refusal to register.

1 Application Serial No. 87737157, filed on December 28, 2017 under Trademark Act Section
1(a), 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and use in
commerce since at least as early as May 2, 2018. Pursuant to Trademark Act Section 2(c), 15
U.S.C. § 1052(c), the consent to registration of Christine Schiefer and Emily (“Em”) Schulz
are of record. As discussed below, Applicant’s date of first use is after Applicant’s filing date
because the original application was filed based on use, then converted to intent-to-use, and
then converted back to use with the later filing of an Amendment to Allege Use.
Serial No. 87737157
- 3 -
I. Background
With the Application, Applicant submitted numerous pages from the mercantile
portion of the website at http://andthatswhywedrink.bigcartel.com/.2 The following
page is representative:3

In the first Office Action, the Examining Attorney refused registration because
“the specimen does not show a direct association between the applied-for mark and
the identified services; thus the specimen fails to show the applied-for mark in use in

2 Application, TSDR 12-64. Page references to the application record refer to the online
database of the USPTO’s Trademark Status & Document Retrieval (“TSDR”) system.
References to the briefs on appeal refer to the Board’s TTABVUE docket system. Coming
before the designation TTABVUE is the docket entry number; and coming after this
designation are the page references, if applicable.
3 Application, TSDR 18.
Serial No. 87737157
- 4 -
commerce.” The Examining Attorney also required that Applicant provide a revised
description of the mark and a verified substitute specimen of use.4
In response, Applicant provided a revised description of the mark and converted
the filing basis of the Application from use (Trademark Act Section 1(a), 15 U.S.C.
§ 1051(a)) to intent-to-use (Trademark Act Section 1(b), 15 U.S.C. § 1051(b)).5
In a second Office Action, the Examining Attorney accepted Applicant’s
description of the applied-for mark, but continued and made final the refusal to
register and the requirement that Applicant provide a verified substitute specimen
of use.6 On the same day the Examining Attorney issued the second Office Action,
Applicant submitted an Amendment to Allege Use (“AAU”) with a new specimen of
use7 appearing as follows:

4 Office Action of April 9, 2018, TSDR 2-3.
5 Office Action Response of June 12, 2018, TSDR 2.
6 Office Action of June 28, 2018, TSDR 2.
7 Amendment to Allege Use of June 28, 2018, TSDR 5-7.
Serial No. 87737157
- 5 -
In a third Office Action, the Examining Attorney withdrew the finality of the
second Office Action, noting that it was superseded because Applicant’s conversion of
the filing basis for the Application from use to intent-to-use was overlooked. The
Examining Attorney thereupon issued the following new refusal: “registration is
refused because none of the specimens of record show the applied-for mark used as a
service mark to identify the applied-for on-line retail store services.” The Examining
Attorney once more required that Applicant provide a verified substitute specimen of
use.8
In response to the second and third Office Actions, Applicant argued that the
specimen of use provided with the AAU was acceptable, because the mark appeared
in proximity to a “merch” link appearing on the top of the website home page
submitted as the specimen. Included with Applicant’s response was an example of an
acceptable web page specimen (example number 14) provided in Section 1301.04(i) of
the TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP). Applicant also
submitted an online definition of “merch” (defined as a shortened form of
“merchandise”) and two examples of how affinity merchandise is sold on the same
websites promoting the entertainment services of podcast artists such as Applicant.9
In a fourth Office Action, the Examining Attorney continued and made final his
refusal and the requirement that Applicant provide a verified substitute specimen of
use. The Examining Attorney also made of record a copy of the first page of

8 Office Action of July 2, 2018, TSDR 2.
9 Office Action Response of July 12, 2018, TSDR 6, 11-15.
Serial No. 87737157
- 6 -
Applicant’s website, since what Applicant submitted as a specimen with the AAU
only showed a partial view of the page.10 The version of Applicant’s website that the
Examining Attorney made of record appears as follows:

In a Request for Reconsideration, Applicant again argued that the specimen of use
provided with the AAU was acceptable, and made of record several examples of third-

10 Office Action of July 15, 2018, TSDR 5-7.
Serial No. 87737157
- 7 -
party marks that the USPTO has approved for registration or has registered in
connection with entertainment services and online retail store services, accompanied
by examples of the online uses of these third-party marks.11 As noted, Applicant’s
Request for Reconsideration was denied.12
II. Applicable Law
It has often been said that “[b]efore there can be registration, there must be a
[service ] … mark.” In re Aerospace Optics Inc., 78 USPQ2d 1861, 1862 (TTAB 2006)
(quoting In re Bose Corp., 546 F.2d 893, 192 USPQ 213, 215 (CCPA 1978)). The
starting point for our analysis is the Trademark Act, wherein a service mark is
defined as a mark used in the sale or advertising of services “to identify and
distinguish the services of one person ... from the services of others and to indicate
the source of the services.” Trademark Act Section 45, 15 U.S.C. § 1127. From this
premise it directly follows that subject matter presented for registration as a service
mark must function as such; that is, if potential purchasers do not perceive a proposed
mark as identifying the source of origin of the services (whether or not the identity of
that source is known), the mark may not be registered.
The key question, then, is whether the asserted mark would be perceived as a
source indicator for Applicant’s services. See In re Brass-Craft Mfg. Co., 49 USPQ2d
1849, 1852 (TTAB 1998), aff’d mem., 217 F.3d 855 (Fed. Cir. 1999); In re Volvo Cars
of N. Am. Inc., 46 USPQ2d 1455, 1459 (TTAB 1998). “The critical inquiry in

11 Request for Reconsideration of July 19, 2018, TSDR 28-197.
12 Denial of Request for Reconsideration of July 21, 2018.
Serial No. 87737157
- 8 -
determining whether a designation functions as a mark is how the designation would
be perceived by the relevant public. To make this determination we look to the
specimens and other evidence of record showing how the designation is actually used
in the marketplace.” In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010).
Certainly, webpages from an applicant’s website may be submitted as advertising.
This type of specimen is acceptable as a service mark if it shows the mark used in
advertising the identified services and creates the required direct association by
referring to the services and by showing the mark being used to identify and
distinguish the services and their source. In re Florists’ Transworld Delivery, Inc.,
119 USPQ2d 1056, 1062 (TTAB 2016).
III. Analysis
We now review Applicant’s specimens of use made of record in view of Applicant’s
arguments, the Examining Attorney’s arguments, and applicable law.
A. Applicant’s Arguments
Applicant argues that: (1) the positioning of the applied-for mark prominently on
the website’s home page, and directly associated with the “merch” link on the home
page from which the on-line retail store services are accessed and rendered, is
sufficient to qualify the specimens of record as evidence of use of the mark in
commerce;13 (2) the applied-for mark serves to identify Applicant’s podcast as well as
an on-line store for affinity merchandise directly, and that association is not in some
way disrupted or diluted by the co-appearance of a variant of Applicant’s mark on the

13 4 TTABVUE 10.
Serial No. 87737157
- 9 -
same home page;14 (3) inclusion of the word “PODCAST” in Applicant’s applied-for
mark does not disable or somehow disqualify the mark from acting as a trademark
for anything other than a podcast (i.e., for online retail store services);15 (4) the third-
party marks Applicant made of record have been registered or allowed for registration
notwithstanding clear reference in the marks themselves to a form of entertainment,
including that offered online through the spoken word, as in a podcast, and such
marks are not legally disabled from serving as service marks for parallel online
shopping through web sites;16 and (5) the specimens Applicant made of record
evidence a direct (or contextually inferred or perceived) association with online retail
services through a demonstrated common commercial practice in the parallel fields
or entertainment and affinity merchandise offered through associated on-line
shopping linked through entertainment web sites, and using the same mark for both
the entertainment services and online retail services.17
B. The Examining Attorney’s Arguments
The Examining Attorney argues that: (1) the refusal to register turns on how
Applicant’s mark is used on the specimens of use, noting that on its face the wording
in the mark identifies a “podcast”;18 (2) as shown by the specimens made of record
with the Application as originally filed, the entirety of the applied-for mark is used

14 4 TTABVUE 12.
15 4 TTABVUE 12-13.
16 4 TTABVUE 17.
17 4 TTABVUE 23.
18 6 TTABVUE 4.
Serial No. 87737157
- 10 -
only on a bumper sticker, a poster, possibly a mouse pad, possibly as a pillow, and as
an advertisement for a podcast, but not for the applied-for services, namely, on-line
retail store services;19 (3) in the substitute specimens made of record with Applicant’s
AAU, the applied-for mark is too far removed from anything that references the
applied-for services to be seen as a service mark for those services;20 (4) the mere fact
that the mark is displayed and the services are explicitly referenced or can be inferred
from the context of the specimen does not automatically result in direct association
between the applied-for mark and the applied-for services;21 and (5) the short-form
iterations of Applicant’s applied for mark, AND THAT’S WHY WE DRINK, whether
on the home page of Applicant’s web site or on the mercantile portion of Applicant’s
site, are the only marks that can be said to have a direct association with the on-line
retail store services.22
The Examining Attorney emphasizes that the refusal to register, in this case, is
not a question of the capability of Applicant’s mark to function as a mark.23 We agree.
It is the use of Applicant’s mark on the submitted specimens that is at issue.
C. Whether the Specimens of Record Show
Service Mark Use of the Applied-For Mark
An applicant’s intent that a designation function as a service mark does not make
it so. In re Vertex Grp. LLC, 89 USPQ2d 1694, 1701 (TTAB 2009) (“[M]ere intent that

19 6 TTABVUE 6, 10.
20 6 TTABVUE 9.
21 6 TTABVUE 10.
22 6 TTABVUE 11-13.
23 6 TTABVUE 14.
Serial No. 87737157
- 11 -
a word, name, symbol or device function as a trademark or service mark is not enough
in and of itself.”); In re Morganroth, 208 USPQ 284, 287 (TTAB 1980) (“Wishing does
not make a trademark or service mark be.”). What we consider here is whether
Applicant has made of record evidence that it has used Applicant’s mark as a service
mark in commerce.
On the specimens Applicant made of record with the original Application and with
the AAU, a shortened form of Applicant’s applied-for mark, AND THAT’S WHY WE
DRINK (without any stylization or design elements), is clearly shown in connection
with online retail store services.24 However, that is not the mark that Applicant seeks
to register. Another shortened form variant of Applicant’s applied-for mark, AND
THAT’S WHY WE DRINK (accompanied by the designs of a milk shake with cherry,
whipped cream and a straw, a partially filled wine glass, and an eye in a pyramid
forming the “A” in “THAT’S”), as submitted with Applicant’s AAU, appears at the top-
center of the home page of Applicant’s website and immediately underneath the
“merch” link to the mercantile portion of Applicant’s website where Applicant’s
affinity merchandise is sold.25 Again, this variant is not the mark shown on the
drawing page of the Application.
Applicant’s applied-for mark, AND THAT'S WHY WE DRINK A PARANORMAL
AND TRUE CRIME PODCAST BY CHRISTINE SCHIEFER, EM SCHULZ, &
BOXED WINE & Design, is shown off to the right on the home page of Applicant’s

24 Application, TSDR 12-64; Amendment to Allege Use of June 28, 2018, TSDR 5-7.
25 Amendment to Allege Use of June 28, 2018, TSDR 5-6.
Serial No. 87737157
- 12 -
website, within a collage of two of photographs of two people (presumably Christine
Schiefer and Em Schulz). This specimen does not show a direct association between
the applied-for mark and the services for which registration is sought, In re WAY
Media, Inc., 118 USPQ2d 1697, 1698 (TTAB 2016), “in a manner that would be
perceived by potential purchasers as identifying the [A]pplicant’s services and
indicating their source via a ‘direct association.’” In re DSM Pharm., Inc., 87 USPQ2d
1623, 1624 (TTAB 2008). From our review of this specimen, the mark as applied for
is too far away from the “merch” link, the shortened form of the mark is much closer
and is immediately underneath the “merch” link, and the applied-for mark is set
lower down within a collage of other images on the page. Therefore, it is not
immediately clear that any (or which) of these designations immediately identifies
Applicant’s online retail store services.
The third-party marks Applicant made of record that have been registered or
allowed for registration, or the example of an acceptable web page specimen from the
TMEP, and which Applicant asserts are analogous to the applied-for mark, are of no
assistance to Applicant. Notably, “[i]t has been said many times that each case must
be decided on its own facts.” In re Eagle Crest, 96 USPQ2d at 1229 (citation omitted).
The Board must make its own findings of fact, and that duty may not be delegated by
adopting the conclusions reached by an examining attorney in another application.
In re Sunmarks, Inc., 32 USPQ2d 1470, 1472 (TTAB 1994); In re BankAmerica Corp.,
231 USPQ 873, 876 (TTAB 1986). The Board must assess each mark on its own facts
and record. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
Serial No. 87737157
- 13 -
2001) (“Even if some prior registrations had some characteristics similar to
[applicant’s] application, the PTO’s allowance of such prior registrations does not bind
the Board or this court.”).
As to the third-party approved applications and registrations Applicant
submitted, they demonstrate a different proposition from the issue before us: that
those marks for entertainment services were capable of serving as marks for the sale
of ancillary goods. The capability of Applicant’s mark for online retail store services
is not the question we resolve on this appeal. The issue is the insufficiency of the
specimens of use.
The example (number 14) of an acceptable web page specimen from TMEP
§ 1301.04(i) that Applicant provided is inapposite. The web page example given notes
it is acceptable for entertainment services, namely, providing video games. Those are
not the services currently at issue. Moreover, in the example given, unlike Applicant’s
AAU specimen, the mark OUTERNAUTS is shown at the very top of the web page,
and immediately above the links used to launch that applicant’s entertainment
service or to purchase and receive items from the applicant’s Facebook page. This is
not true of Applicant’s AAU specimen.
Simply, the specimens of use that Applicant made of record do not show a direct
association between the applied-for mark and the services for which registration is
sought, in a manner that would be perceived by potential purchasers as identifying
Applicant’s services and indicating their source via a direct association.
Serial No. 87737157
- 14 -
IV. Decision
Based upon the specimens made of record, the refusal to register Applicant’s mark
AND THAT'S WHY WE DRINK A PARANORMAL AND TRUE CRIME PODCAST
BY CHRISTINE SCHIEFER, EM SCHULZ, & BOXED WINE & Design for failing to
show the applied-for mark in use in commerce is affirmed.