Contractor Express

Trademark Trial and Appeal Board

Nov 21, 2008

No. 76682478 (T.T.A.B. Nov. 21, 2008)

Mailed: November 21, 2008
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Contractor Express
________

Serial No. 76682478
_______

Myron Amer, Esq. for Contractor Express.

Mariam Aziz Mahmoudi, Trademark Examining Attorney, Law
Office 112 (Angela Wilson, Managing Attorney).
_______

Before Hairston, Zervas and Kuhlke, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

An application has been filed by Contractor Express to
register the mark DESIGN EXPRESSIONS (in standard character
form with a disclaimer of the word “DESIGN”) for services
identified as “referral to building contractors needing
building materials or sources of supply of building
materials” in International Class 35.1

1 Serial No. 76682478, filed October 1, 2007, alleging dates of
first use of June 18, 2007.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 76682478
2
The trademark examining attorney has refused
registration on the ground that the specimen does not show
use of the mark in connection with the identified services.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed briefs;
applicant filed a reply brief. We affirm the refusal.
A copy of applicant’s specimen is reproduced below:

Ser No. 76682478
3
Applicant indicates that the mark is used on “advertising
and promotional materials.” Applicant’s specimen appears
to be in the nature of an advertisement.2
The examining attorney has not challenged applicant’s
statement that it renders the services of “referral to
building contractors needing building materials or sources
of supply of building materials” or that such services are
registrable. Rather, it is the examining attorney’s
position that prospective purchasers will not perceive the
mark DESIGN EXPRESSIONS as identifying the source of the
identified referral services when the mark is used in an
advertisement which refers to a showroom and design center.
According to the examining attorney, the specimen makes no
mention of referral services; while the specimen informs
prospective purchasers about certain features of
applicant’s showroom and design center, it is silent on the
source of referral services.
Applicant, on the other hand, argues that the specimen
shows a direct association between its mark and the

2 We note that subsequent to filing its main brief, applicant
filed a copy of another advertisement showing use of DESIGN
EXPRESSIONS. Applicant requests that the advertisement be
“enter[ed] of record.” Trademark Rule 2.142(b) provides that the
record in an application should be complete prior to filing of
the appeal. This advertisement was not submitted during the
prosecution of the application and it will not be considered.
Ser No. 76682478
4
identified services. Applicant has submitted the
declaration of its Vice-President, John Lucas, who states,
in pertinent part, that:
2. Our customers are contractors who come to our
facility at which, as noted on the specimen of
record, they consult with our staff in “our Special
Order Department to get [what they] want and how
[they] want it;”
3. Accordingly, it is my experience that in our
facility our contractor customers receive our
DESIGN EXPRESSIONS-identified referral services…”

Trademark Rule 2.56(b)(2) specifies that a “service
mark specimen must show the mark as actually used in the
sale or advertising of the services.” To show service mark
usage, the specimen must show use of the mark in a manner
that would be perceived by potential purchasers as
identifying applicant’s services and indicating their
source. See In re Universal Oil Products Co., 476 F.2d
653, 177 USPQ 456 (CCPA 1973); In re La Vieille Russie,
Inc., 60 USPQ2d 1895 (TTAB 2001). Furthermore, “[w]here
the mark is used in advertising the services the specimen
must show an association between the mark and the services
for which registration is sought.” TMEP §1301.04(b),
citing, In re Adair, 45 USPQ2d 1211 (TTAB 1997); In re
Johnson Controls, Inc., 33 USPQ2d 1318 (TTAB 1994); In re
Duratech Industries, Inc., 13 USPQ2d 2052 (TTAB 1989); and
others.
Ser No. 76682478
5
We find that DESIGN EXPRESSIONS, as it appears on the
specimen, would not be perceived by purchasers as a service
mark for the services of “referral to building contractors
needing building materials or sources of supply of building
materials.” Rather, purchasers are likely to view DESIGN
EXPRESSIONS as referring to applicant’s showroom and design
center. Indeed, the specimen includes the following
statements: “It’s our brand new Design Expressions
Showroom and Design Center” and “With almost triple the
space of our present showroom, Design Expressions will
feature more products, more displays and best of all more
selection.” Additionally, at the bottom of the specimen
there is a reference to “DESIGN EXPRESIONS Showroom and
Design Center.” When used in these ways, DESIGN
EXPRESSIONS clearly refers to applicant’s showroom and
design center.
Furthermore, we are not persuaded that the statement
on the specimen that applicant’s showroom and design center
is staffed by a “Special Order Department to get you what
you want, and how you want it” would create in the mind of
purchasers a direct association between applicant’s mark
DESIGN EXPRESSIONS and the identified referral services. A
special order department is not the same thing as the
services of “referral to building contractors needing
Ser No. 76682478
6
building materials or sources of supply of building
materials.” Purchasers viewing applicant’s specimen would
not perceive DESIGN EXPRESSIONS as a service mark for such
referral services.
In view of the foregoing, we find that the specimen
fails to demonstrate use of DESIGN EXPRESSIONS for the
referral services identified in the application.
Decision: The refusal to register is affirmed.