Clearwater Marine Aquarium

Trademark Trial and Appeal Board

Apr 24, 2015

No. 85865851 (T.T.A.B. Apr. 24, 2015)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
April 24, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Clearwater Marine Aquarium
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Serial No. 85865851
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Frank R. Jakes of Johnson, Pope, Bokor Ruppel & Burns, LLP for Clearwater
Marine Aquarium.

Katherine S. Chang, Trademark Examining Attorney, Law Office 115 (John
Lincoski, Managing Attorney).
_____

Before Kuhlke, Ritchie, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Clearwater Marine Aquarium (“Applicant”) filed an application to register on the
Principal Register the mark HOPE in standard character form for the following
services:
Conducting entertainment exhibitions in the nature of
marine aquarium and marine exhibitions, educational
demonstrations, live performances by aquatic mammals,
and shows involving dolphins, trainers, music and/or
audience participation, in International Class 41.1

1 Application Serial No. 85865851 was filed on March 4, 2013 under Trademark Act § 1(a),
15 U.S.C. § 1051(a), with a claim of first use and first use in commerce as of April, 2011.
Serial No. 85865851

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The Examining Attorney refused registration under Sections 1, 2, 3, and 45 of the
Trademark Act, 15 U.S.C. §§ 1051-1053 and 1127, on the ground that the proposed
mark, as shown on the specimens of record, fails to function as a service mark.
When the refusal was made final, Applicant filed a notice of appeal and a request
for reconsideration. The Examining Attorney denied the request for reconsideration
and this appeal proceeded. Applicant and the Examining Attorney filed briefs, and
Applicant filed a reply brief.
As explained in Applicant’s brief, Applicant is “a not-for-profit organization
dedicated to the rescue, rehabilitation and release of marine life. Applicant’s
mission is supported, in part, through admission fees paid by the visiting public
when visiting the aquarium.”2 As part of its activities, Applicant rescued a baby
Atlantic bottle nosed dolphin which “survived the rescue and has been named
‘Hope.’”3
The specimens of use submitted with the application as originally filed are
excerpts of websites of Applicant. (As filed in electronic format, they consist of two
.pdf pages from one website and one .pdf page from another.) Although the
Examining Attorney advised Applicant that it could file substitute specimens,
Applicant did not do so.
The first page of the specimens of use includes the most prominent display of the
proposed mark and is shown below:

2 Applicant’s brief at 3, 9 TTABVUE 4.
3 Id. at 4, 9 TTABVUE 5.
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The circular logo near the upper-left corner includes, around its circumference, the
words CLEARWATER MARINE AQUARIUM. Each of the other pages of the
specimens includes a prominent display of the words CLEARWATER MARINE
AQUARIUM. Other wording of note includes the following:
The new baby dolphin remained nameless until today!
Come meet HOPE, Clearwater Marine Aquarium’s
newest resident baby dolphin!
…
The calf has been under 24/7 care at CMA since [her
rescue], receiving rehabilitation. … She is visible to the
public at this time.

Serial No. 85865851

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The third page of the original specimen of use includes, among other matter, the
following image:
Section 45 of the Trademark Act provides, in relevant part, that a service mark is
a mark that is used “to identify and distinguish the services of one person … from
the services of others and to indicate the source of the services”; and that “a mark
shall be deemed to be in use in commerce … on services when it is used or displayed
in the sale or advertising of services and the services are rendered in commerce.”4 In
order to demonstrate use of a service mark by means of an advertisement, the
advertisement must display the mark “in a manner that would be perceived by
potential purchasers as identifying the applicant's services and indicating their
source via a ‘direct association.’” In re DSM Pharmaceuticals Inc., 87 USPQ2d 1623,
1624 (TTAB 2008). “The minimum requirement is some direct association between

415 U.S.C. § 1127, definitions of “service mark” and “use in commerce.”
Serial No. 85865851

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the offer of services and the mark sought to be registered therefor.” In re Universal
Oil Products Co., 476 F.2d 653, 177 USPQ 456, 457 (C.C.P.A. 1973). The matter
presented for registration must be of such a nature that purchasers would be likely
to consider that it indicates the origin of the services. In re Whataburger Systems,
Inc., 209 USPQ 429, 430 (TTAB 1980).
The examining attorney argues as follows with respect to the designation HOPE
as it appears on the specimens of use submitted by Applicant:
The applied-for mark … is used simply as the name of the
dolphin; it is not used in connection with the identified
services and therefore does not serve as an indicator of
source.
…
The advertising, promotion and marketing … shown in
the specimens relates to the dolphin, not to the services
identified in the application. The first specimen (the first
two pages) discusses Hope’s birth and then-current
status. … [I]t does not show that any services are offered
in connection with the proposed mark. The specimens
show that applicant uses the proposed mark simply to
refer to the dolphin …

Examining Attorney’s brief, 11 TTABVUE 3-4.
Although the specimens display the term HOPE on the same page with references
to “Clearwater Marine Aquarium,” which is a suitable reference to the services
identified in the application as “exhibitions in the nature of marine aquarium and
marine exhibitions,” the question is whether the term HOPE, as displayed in the
specimens, functions as a service mark for the applied-for services.
There is no reason why the name of a dolphin that appears in Applicant’s
aquarium exhibits cannot also function as a service mark for those exhibition
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services. See In re Mancino, 219 USPQ 1047, 1048 (TTAB 1983) (“The Board has
held on more than one occasion that an individual’s name may function to identify
both the individual and the … services rendered by that individual.”). In cases
where an applicant seeks to register the name of a person or character as a service
mark for performance services, the Board has required “that the specimens filed
with the application demonstrate use of the name in question to identify … services
rendered by the applicant corporation as distinguished from use merely to identify
the particular individual who endorses the goods or performs the services set forth
in the application.” In re Lee Trevino Enterprises, Inc., 182 USPQ 253, 253 (TTAB
1974); In re Carson, 197 USPQ 554, 555 (TTAB 1977) (“[S]uch a name may be
registered provided that the specimens filed with the application evidence use of the
name not just to identify the individual but rather to identify goods sold or services
rendered by the applicant in commerce.”) These references to “identify[ing] goods
sold or services rendered” cannot be properly understood without consideration of
the additional statutory requirement of every service mark, namely, that it not
solely “identify” the services but must also “indicate the source of the services.” 15
U.S.C. § 1127.
Applicant admits that HOPE is “the name of one of the rescued Atlantic nose
bottle [sic] dolphins being cared for at Applicant’s facility”; but argues, “How else to
advertise, promote and market to prospective visitors without using the name of one
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of the more popular and known dolphins in Applicant’s care? Indeed, it is impossible
to sever the connection.”5 Applicant’s argument continues:
It is undisputed that the specimen constitutes advertising
seeking to draw visitors to view the facilities and
exhibitions including the dolphin, Hope.
…
Here, the specimen clearly refers to the Applicant’s
aquarium, mentions tickets and invites viewers to “visit”
– all in conjunction with HOPE. Thus, the direct
connection between the mark and the services is
unquestionably demonstrated in the specimen.6

Applicant uses the HOPE brand prominently and
throughout its website in a manner to attract attention to
the very services … which are the subject of the
application. It is chimerical for the Examiner to suggest
that there is a bright demarcation line between use of the
Hope name as an identifier for the dolphin and use of the
HOPE brand as a mark promoting the subject services of
the applicant. As is clearly reflected by the supporting
specimen, Applicant prominently uses the HOPE brand to
attract visitors, donors and others interested in its
entertainment exhibits …

… [T]he specimen clearly invites visitors to view video
directly related to Hope’s arrival at Applicant’s rescue and
rehabilitation facility. … This “exhibition” is repeated [at
p. 3 of the specimen] where visitors are invited to visit
Applicant’s facility, meet Hope as well as watch other
videos related to Hope.7

Upon careful review of Applicant’s specimens, we find that the designation HOPE
is used in the submitted specimens only as the name of the baby dolphin. We agree
that Applicant’s specimens are advertisements seeking to draw visitors to

5 Applicant’s brief at 5, 9 TTABVUE 6.
6 Id. at 6-7, 9 TTABVUE 7-8.
7 Applicant’s reply brief at 2-3, 12 TTABVUE 3-4.
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Applicant’s exhibition services, and that references to Hope the baby dolphin are
used as an attraction to customers. However, we do not agree that “Applicant uses
the HOPE brand … to attract attention” to its services. All uses of HOPE in the
specimens refer to the name of an animal that is included in Applicant’s exhibits,
and not to an entertainment service provided thereby. These references include the
two phrases “Her new name announced … Hope” and “Come meet HOPE,
Clearwater Marine Aquarium’s newest resident baby dolphin!”; and the photograph
of the dolphin with the name “Hope” next to her head, alongside three other
animals, all with their names displayed near their heads. Promoting the exhibition
of an animal named Hope as a feature of Applicant’s services does not automatically
cause the name of that exhibited animal to function as an indicator of the source of
Applicant’s services. Given the manner of its use, relevant customers would
perceive HOPE, as displayed in the specimens, only as the name of the exhibited
dolphin. They would not perceive it as a symbol of the source of Applicant’s services,
which is the function of a service mark as defined in the Trademark Act. See In re
Whataburger Systems, Inc., supra (one of a series of named animal characters
displayed on promotional gifts does not function as a service mark).
Applicant suggests that the Examining Attorney’s refusal is based upon a “bias
against an animal’s name as serving as a trademark.”8 This argument is off-point,
because the Examining Attorney, in her Office Actions, indicated that her refusal
might be overcome by the submission of substitute specimens. If Applicant had

8 Applicant’s brief at 7, 9 TTABVUE 8.
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submitted substitute specimens that showed HOPE functioning as a service mark,
the mark would be registrable even though the original specimens show that
Applicant also uses HOPE as the name of a dolphin. Applicant did not submit any
additional specimens of use. Accordingly, this record shows use of the designation
HOPE only as the name of a dolphin.
We have considered the phrase “CMA’s Newest Baby Dolphin Brings Hope!,”
which appears in the first specimen of use. The word “Hope” in this phrase appears
to be a punning reference to the new name of the baby dolphin and the abstract
concept of “hope” in the sense of a favorable expectation. This phrase is, of course,
not the mark that Applicant seeks to register. Moreover, this use of the word “hope”
does not constitute a display of the mark HOPE because the word is inextricably
embedded within a complex phrase and would not be perceived as a separate
symbol of the source of Applicant’s services.
Applicant argues that “In U.S. Reg. No. 1,798,255, the Office granted SeaWorld a
service mark registration for SHAMU in Class 41 for “… live performances by
aquatic mammals; … shows involving killer whales …”9 Applicant did not make the
registration of record,10 but it did submit what Applicant contends is the specimen
of use on which the USPTO based its decision to register the mark.11 (We note that
the specimen bears a date of “7/22/2013,” which is many years later than the likely

9 Applicant ‘s brief at 5, 9 TTABVUE 6.
10 The Board does not take judicial notice of registrations residing in the USPTO. Edom
Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012); See also In re Sela Products
LLC, 107 USPQ2d 1580, 1583 (TTAB 2013).
11 Applicant’s request for reconsideration filed July 7, 2014 at 7-8.
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issue date of a registration bearing this number. It is more likely that the specimen
submitted was filed after registration with a declaration of use or with a request for
renewal.) In any event, we must decide each case on its own merits, and the
decisions of examining attorneys to allow the registration of other marks are not
binding on the Board. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001). The same must be said of the issuance to Applicant of Reg. No.
3383302 for the service mark WINTER,12 which is the name of another of
Applicant’s dolphins.
After careful consideration, we find that the designation HOPE, as used on the
specimens of use, does not function as a service mark, as it would not be perceived
by potential customers as indicating the source of Applicant’s services.
Decision: The refusal to register is affirmed.

12 See Applicant’s brief at 6, 9 TTABVUE 7. That registration and its file history are also
not of record.