Continental Illinois Holding Corp.

Trademark Trial and Appeal Board

Dec 21, 2018

EX (T.T.A.B. Dec. 21, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: December 21, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Continental Illinois Holding Corp.
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Serial No. 86370278
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Continental Illinois Holding Corp., pro se.

Laurie Mayes, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
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Before Shaw, Heasley and Larkin,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
Continental Illinois Holding Corp. (“Applicant”) seeks registration on the
Principal Register of the mark WINDOWS ON THE WORLD (in standard characters)
for
Packaged meals consisting primarily of meat, fish, poultry
or vegetables, in International Class 29;
Packaged meals consisting primarily of pasta or rice, in
International Class 30;
Spirits; wine, in International Class 33;
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Providing social meeting, banquet and social function facilities;
restaurant and bar services, in International Class 43.1

Applicant’s intent-to-use application was approved for publication, and a Notice
of Allowance issued. Applicant requested and received three extensions of time to file
a Statement of Use. During this time, Applicant discharged its attorney of record,
who withdrew from its representation in September 2016. Six months later,
Applicant, now represented by its president, Matthew Lechner, filed its Statement of
Use, with specimens.2 The Examining Attorney accepted Applicant’s specimens of use
for Classes 29 and 30, but issued an Office Action refusing registration as to Classes
33 and 43 under Trademark Act Sections 1 and 45 because the specimens failed to
show use of the mark in commerce in connection with any of the goods and services
listed in those classes. The Office Action invited Applicant to submit verified
substitute specimens that showed the mark “in actual use in commerce for the goods
and/or services identified in the statement of use.”3 Applicant, however, did not
submit substitute specimens, and instead argued that the specimens it had already
submitted sufficed to show use of the mark in commerce.4 The Examining Attorney
made the refusal final on the ground that the specimens failed to show the mark used

1 Application Serial No. 86370278 was filed on August 19, 2014, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act. 15 U.S.C. § 1051(b).

2 Statement of Use and specimens, March 8, 2017. Page references to the application record
are to the .pdf version of the USPTO’s Trademark Status & Document Retrieval (TSDR)
system. References to the briefs, motions and orders on appeal are to the Board’s TTABVUE
docket system.
3 March 23, 2017 Office Action.
4 Sept. 22, 2017 Response to Office Action.
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in commerce in those two classes. Applicant appealed to this Board. We affirm the
refusal to register.
As the ensuing analysis will demonstrate, Applicant’s arguments reflect a
fundamental misperception of trademark law―a misperception that might have been
avoided had it maintained its representation by an attorney familiar with trademark
law. Although Applicant was represented by counsel for a time, it has largely filed
and prosecuted its application without representation; and the appeal has also been
pursued without representation by an attorney.5
Before considering the merits of Applicant’s appeal, we must address the subject
of communications made by Applicant’s president during prosecution of the
application as well as during this appeal. Applicant’s president has expressed
frustration, often in vituperative, intemperate terms, at what he perceives as the
USPTO’s unreasonable refusal to register Applicant’s mark in Classes 33 and 43.
Approximately five months prior to filing the notice of appeal, Applicant forwarded
three emails to the Examining Attorney. Repeated in each was the epithet “fucking
asshole(s),” and an expression of Applicant’s hope that “if there is ever another 9/11”
the planes should be aimed at the United States Patent and Trademark Office. A

5 The USPTO’s manual of procedure explains that some trademark matters may become
“detailed and technical” and an applicant may “find it desirable to employ an attorney who
is familiar with trademark matters.” TRADEMARK MANUAL OF EXAMINING PROCEDURE
(“TMEP”) § 601.01 (Oct. 2018). The Board’s Manual of Procedure makes the point in stronger
terms: “[B]ecause the governing practices and procedures in proceedings before the Board
are quite technical and highly specialized, it is strongly recommended that an attorney
familiar with trademark law represent a party.” TRADEMARK TRIAL AND APPEAL BOARD
MANUAL OF PROCEDURE (“TBMP”) § 114.01 (2018). Parties appearing before the USPTO and
the Board are well-advised to heed these admonitions.
Serial No. 86370278
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promise was made to “spit on the pile of rubble” should Applicant’s hope be realized.6
Applicant’s appeal brief and reply brief were not as crude, but did accuse the USPTO
of having “sided with the terrorists,” having “stole[n] from the people of New York
City and the Tri-State region” and having “cheated America.”7
We note that Trademark Rule 2.192 provides that “Trademark applicants,
registrants, and parties to proceedings before the Trademark Trial and Appeal Board
and their attorneys or agents are required to conduct their business with decorum
and courtesy.” 37 C.F.R. § 2.192. While Applicant failed to follow this rule, we assure
Applicant that this failure has had no influence on the disposition of this appeal,
which, like any other, has been considered on the merits of the technical and highly
specialized law applicable to the examination of the application and the consideration
of this appeal.
I. Applicable Law
Although the Trademark Act permits intent-to-use applicants to begin the
registration process having “only a sincere intent,” it ultimately requires them “to
show that the mark is being used in commerce before obtaining a registration on the
mark.” M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 114 USPQ2d 1892, 1897 (Fed.
Cir. 2015) (citing 15 U.S.C. § 1051(b)(3), (c), (d)); see also Aycock Eng’g v. Airflite, Inc.,
560 F.3d 1350, 90 USPQ2d 1301, 1306 (Fed. Cir. 2009).

6 See Nov. 3, 2017 TSDR Note to the File, containing three emails.
7 Applicant’s reply brief, 8 TTABVUE 5.
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An applicant’s statement of use must be accompanied by one specimen per class
showing the mark as used on or in connection with its identified goods and/or services.
15 U.S.C. § 1051(d)(1); 37 C.F.R. §§ 2.56, 2.88(b)(2); TMEP § 902.
The specimens in a trademark application provide the
USPTO with support for the applicant’s verified
statements regarding trademark use. In this regard, the
manner in which an applicant has employed its asserted
mark, as evidenced by the specimens of record, must be
carefully considered in determining whether the asserted
mark has been used as a trademark with respect to the
goods identified in the application.
In re Minerva Assocs., Inc., 125 USPQ2d 1634, 1636 (TTAB 2018) (citing In re Bose
Corp., 546 F.2d 893, 192 USPQ 213, 216 (CCPA 1976)). If the specimens fail to
indicate use in commerce, as defined in 15 U.S.C. § 1127, registration may be refused
on that basis. TMEP § 904.
II. Whether Applicant’s Specimens Show Use in Commerce

Applicant relies on the following specimens in support of its Statement of Use of
its WINDOWS ON THE WORLD mark in commerce in Classes 33 and 43:
• An American Poultry Association membership card for Applicant’s president
and chairman of the board, Matthew Lechner:
8

8 March 8, 2017 Specimens, TSDR pp. 5, 12, 19, 25.
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• A Florida Farm Bureau membership card for Mr. Lechner:
9
• A business card:
10

9 Id. at TSDR pp. 7, 14, 21, 27.
10 Id. at TSDR pp. 6, 13, 20, 26.
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• Packaging-price stickers with the words “use for WINE” and “use for
SPIRITS”:
11

11 Id. at TSDR p. 15.
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• A real estate brokerage contract:
12

12 Id. at TSDR pp. 3, 10, 17, 23 (emphasis supplied by Applicant).
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• And a web page:
13

The issue is whether these specimens evidence use in commerce, as opposed to
evidencing Applicant’s mere intention and preparation to use the mark in commerce.
Applicant insists that its “early-stage” business activities, as evidenced by its
specimens, suffice to constitute use in commerce, arguing:
[T]he fact we were in the early stages of the business cycle in Classes 33
and 43 DOES NOT negate the plain fact that we were in fact using the
trademark name in interstate trade and commerce….14

[T]hey wanted to see middle-business-cycle activity, and were not middle-
cycle yet.15

In regard to the restaurant class, … we even showed actual contracts such
as an (interstate) real estate brokerage contract involving the trade name

13 Id. at pp. 2, 9, 16, 22, www.WindowsOnTheWorld.online.
14 Applicant’s brief, 5 TTABVUE 2.
15 Id.
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enterprise (“Windows On the World”) and extensive lease negotiations.
USPTO came back saying it is not “trade and commerce” until you are
bringing hot food to the table in a restaurant unit, and that’s openly at odds
with the accepted definition of what “trade and commerce” means in the
United States, because it INCLUDES the early development stage(s) of the
effort….16

Likewise, with regard to the Wine & Spirits class, we similarly documented
EXTENSIVE interstate business activity, early stage but clearly part of a
bona fide business process: joint ventures being negotiated, branding
ventures actively being sought, labels having been designed ---- and all of
this was amply documented to USPTO.17

The key litmus test, in American law broadly, as to whether activity
constitutes business activity or “trade and commerce” is whether the
activity was done with a profit motive. And, USPTO did not even question
this. Clearly, the business activity took place (with respect to BOTH classes
at issue) and it took place with a profit motive.18

Another key litmus test that determines if an activity is considered a
business activity or “trade and commerce” is how it is taxed, in other words,
were any expenses incurred and if so, would such expenses meet the IRS
requirements for deductibility as business expenses – and the Applicant
clearly demonstrated the answer to that was YES.19

Yet [the USPTO] ignored the facts, and imposed the fiction of their
homegrown definitions – saying in effect, “your restaurant initiative is not
engaged in business activity until food is brought to a diners table” and
“your wine and spirits initiative is not engaged in business activity until
your brand is on the shelf in a store.” Well, that is not how it is in American
law, including U.S. tax law.20

Applicant’s arguments reflect a fundamental misunderstanding of trademark law,
including the difference between intent to use and use in commerce, and the meaning

16 Id.
17 Id.
18 Applicant’s Reply brief, 8 TTABVUE 2.
19 Applicant’s reply brief, 8 TTABVUE 3.
20 Applicant’s reply brief, 8 TTABVUE 4.
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of use in commerce for purposes of trademark registration. Its specimens indicate, at
most, a bona fide intent to use the mark in connection with the goods and services
identified in Classes 33 and 43, not use of the mark in commerce in connection with
those goods and services within the meaning of 15 U.S.C. § 1127.
An applicant’s ongoing efforts to make use of a mark in commerce, including “early
stage” efforts such as product or service research or development, manufacturing
activities, promotional activities, steps to acquire distributors, or other similar
activities, can constitute “good cause” for an extension of time to file a statement of
use, and may also evidence the applicant’s bona fide intent to use the mark in
commerce. M.Z. Berger v. Swatch, 114 USPQ2d at 1898 n. 5 (citing 37 C.F.R. §
2.89(d)). But those “early stage” efforts fall short of constituting use in commerce,
which is required for registration of a mark. This “use in commerce” pre-registration
requirement is an essential part of the Trademark Act. Christian Faith Fellowship
Church v. adidas AG, 841 F.3d 986, 120 USPQ2d 1640, 1645 (Fed. Cir. 2016) (citing
United States v. Lopez, 514 U.S. 549, 561 (1995)).
“Use in commerce” for purposes of trademark registration is defined not in the tax
code, but in the Trademark Act:
The term “use in commerce” means the bona fide use of a mark in the
ordinary course of trade, and not made merely to reserve a right in a mark.
For purposes of this chapter, a mark shall be deemed to be in use in
commerce--
(1) on goods when--
(A) it is placed in any manner on the goods or their containers or
the displays associated therewith or on the tags or labels affixed
thereto, or if the nature of the goods makes such placement
Serial No. 86370278
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impracticable, then on documents associated with the goods or
their sale, and
(B) the goods are sold or transported in commerce, and
(2) on services when it is used or displayed in the sale or advertising of
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.

In keeping with this definition, an applicant must show more than “early stage”
plans and preparations; it must show that it has made the goods and/or services
under the mark available to the relevant purchasing public. “To acquire trademark
rights there has to be an open use, that is to say, a use has to be made to the relevant
class of purchasers….” Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d
1043, 1054 (TTAB 2017) (quoting Sterling Drug Inc. v. Knoll A.G. Chemische
Fabriken, 159 USPQ 628, 631 (TTAB 1968)). Activities in preparation for offering
goods or services for sale do not make them available to potential consumers, and are
not use in commerce. Tao, 125 USPQ2d at 1055. Our primary reviewing court, the
U.S. Court of Appeals for the Federal Circuit, has repeatedly emphasized this
requirement: “[W]e have held that mere preparation and publication of future plans
do not constitute use in commerce.” Lyons v. Am. Coll. of Veterinary Sports Med. &
Rehab., 859 F.3d 1023, 123 USPQ2d 1024, 1029 (Fed. Cir. 2017).
In Aycock Eng’g, for example, Mr. Aycock planned to arrange flights for
passengers via air taxi operators. “Despite his efforts, Mr. Aycock’s operation never
got off the ground. … Mr. Aycock never arranged for a single passenger to fly on a
Serial No. 86370278
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chartered flight.” 90 USPQ2d at 1308. The Federal Circuit held: “The question
presented herein is whether the use in commerce requirement is met when an
applicant uses a service mark in the preparatory stages of a service’s development,
but never offers the service to the public. We hold that it is not.” Id. at 1302. The
Court made clear:
Without question, advertising or publicizing a service that the applicant
intends to perform in the future will not support registration. … Instead,
the advertising or publicizing must relate to an existing service which has
already been offered to the public. Furthermore, [m]ere adoption (selection)
of a mark accompanied by preparations to begin its use are insufficient …
for claiming ownership of and applying to register the mark. … At the very
least, in order for an applicant to meet the use requirement, there must be
an open and notorious public offering of the services to those for whom the
services are intended.

Id. at 1306-7 (internal citations and punctuation omitted) (quoting Intermed
Commc’ns, Inc. v. Chaney, 197 USPQ 501, 507-08 (TTAB 1977)).
Similarly, in Avakoff v. Southern Pac. Co., 765 F.2d 1097, 226 USPQ 435 (Fed.
Cir. 1985), a shipment of goods from the manufacturer to the trademark applicant,
Avakoff, was merely a “shipment of the goods in preparation for offering the goods for
sale. It did not make the goods available to the purchasing public,” and thus did not
satisfy the use in commerce requirement, even though Avakoff sent letter
solicitations to various retailers regarding the goods. Id. at 436 (quoting Board
decision being affirmed), cited in Tao, 125 USPQ2d at 1055.
In Couture v. Playdom, Inc., 778 F.3d 1379, 113 USPQ2d 2042 (Fed. Cir. 2015),
the applicant filed an application to register the service mark PLAYDOM under 15
U.S.C. § 1051(a), and submitted as a specimen of use a screen capture of its website,
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consisting of a single page that stated: “[w]elcome to PlaydomInc.com. We are proud
to offer writing and production services for motion picture film, television, and new
media. Please feel free to contact us if you are interested: playdominc@gmail.com.”
The webpage included the notice: “Website Under Construction.” No services under
the mark were provided until well after the application was filed. The Board found
that the applicant “had not rendered his services as of the filing date of his
application” because he had “merely posted a website advertising his readiness,
willingness and ability to render said services,” and the Federal Circuit affirmed,
declaring that “[A]n applicant’s preparations to use a mark in commerce are
insufficient to constitute use in commerce. Rather, the mark must be actually used
in conjunction with the services described in the application for the mark.” Id. at
2042-43.
These decisions illustrate the fundamental principle that for a trademark to exist,
there must be trade under the mark. “There is no such thing as property in a
trademark except as a right appurtenant to an established business or trade in
connection with which the mark is employed…. [T]he right to a particular mark grows
out of its use, not its mere adoption ….” Couture v. Playdom, 113 USPQ2d at 2043-44
(quoting United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97 (1918)).
As these decisions demonstrate, preparations to use a mark, even preparations driven
by a profit motive, do not constitute use of a mark in commerce. See, e.g., Richardson-
Vicks, Inc. v. Franklin Mint Corp., 216 USPQ 989, 992 (TTAB 1982) (“[I]t is clear …
that applicant’s skin care products are drawing board items and that at the time the
Serial No. 86370278
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application was filed, there was not trade under the mark….”); see generally TMEP §
904 (collecting decisions). Having “the food on the tables,” and “the bottles on the
shelves,” available to the relevant consumers under the applied-for mark, is required
to constitute use in commerce under 15 U.S.C. § 1127.
As the Examining Attorney correctly observes, Applicant’s specimens fall short of
this standard. The membership cards in the American Poultry Association and the
Florida Farm Bureau could help indicate Applicant’s ability to render food services
at some point in the future, see M.Z. Berger v. Swatch, 114 USPQ2d at 1898 n.5, but
that is not the same as offering the services to the public. Business cards bearing a
mark do not generally evidence use of the mark in commerce. See TMEP § 904.04(b).
Applicant’s business card describes, on its back, its subject application to register its
mark for its listed goods and services,21 but a pending application is evidence only
that the application was filed on a certain date; it is not evidence of use of the applied-
for mark. In re Inn at St. Johns, LLC, 126 USPQ2d 1742, 1745 (TTAB 2018).
Applicant’s packaging and price labels may indicate some internal preparation for
shipping wines and spirits, but do they do not show the mark being affixed to the
goods, nor do they show the goods being transported in commerce or offered to the
public under the mark.22 See Sterling Drug v. Knoll, 159 USPQ at 631 (“There was
no such ‘open’ use rather the use can be said to be an ‘internal’ use, which cannot give

21 March 8, 2017 specimens, TSDR pp. 6, 13, 20, 26.
22 Examining Attorney’s brief, 7 TTABVUE 5, 6.
Serial No. 86370278
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rise to trademark rights.”) quoted in Tao, 125 USPQ2d at 1054; see generally TMEP
§ 904.03(a) (affixation requirement).
Applicant’s brokerage agreement with a real estate broker “with respect to the
potential interest of [Applicant] to acquire a leasehold interest or a fee simple interest
in a site or a building within the boundaries of the site of the former World Trade
Center, in Lower Manhattan, New York City … is acknowledged by the Parties to be
speculative and uncertain.” The agreement further provides, in pertinent part: “At
this time, [Applicant] is the owner of prospective trademark rights to Windows On
the World™ subject to provisions of law which may potentially require a unit to be
opened or other business activity within a designated period of time to perfect said
trademark rights, said rights may be renewed by [Applicant], but [Applicant] is under
no obligation to do so. … It is noted that [Applicant] is under no obligation to pursue
a deal.”23 This is the epitome of “early stage” contingent preparations, which, as in
Aycock Eng’g, may never get off the ground. Finally, Applicant’s single-page screen
shot from its website states that:
We are available to consult and assist regarding menu development,
marketing initiatives and financial management of restaurants, and food
and beverage businesses. This encompasses traditional restaurant, bar,
also non-traditional food and beverage businesses. Also, [Applicant] is
interested in acquisition and development opportunities relating to
restaurant and bar services, and also is interested to acquire, and/or
develop, restaurants and bars which can be re-branded to the Windows
brand.24

23 March 8, 2017 specimens, TSDR pp. 3, 10, 17, 23.
24 Id. TSDR pp. 2, 9, 16, 22.
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But as in Couture v. Playdom, Applicant has “merely posted a website advertising
[its] readiness, willingness and ability to render said services….” This specimen does
not demonstrate actual provision of the services in commerce. 113 USPQ2d at 2043.
III. Conclusion

The specimens on which Applicant relies demonstrate, at most, a bona fide intent
to use the mark in connection with the goods and services identified in Classes 33
and 43. They do not demonstrate the required use of the mark in commerce in
connection with those goods and services, within the meaning of 15 U.S.C. § 1127.
Decision: The refusal to register Applicant’s mark WINDOWS ON THE WORLD
as to International Classes 33 and 43 is affirmed.