Fabri Trak Systems, Inc.

Trademark Trial and Appeal Board

Sep 11, 2019

87231753 (T.T.A.B. Sep. 11, 2019)

This Opinion is not a
Precedent of the TTAB

Mailed: September 11, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Fabri Trak Systems, Inc.
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Serial No. 87231753
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Edward F. Behm Jr. of Dilworth Paxson LLP
for Fabri Trak Systems, Inc.
Asmat Khan, Trademark Examining Attorney, Law Office 114,
Laurie Kaufman, Managing Attorney.
_____

Before Ritchie, Goodman and Coggins,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
Fabri Trak Systems, Inc. (“Applicant”) seeks registration on the Principal Register
of the mark FABRITRAK (in standard characters) for “Marketing services; Business
consulting services, namely, business consulting in the field of interior wall
coverings” in International Class 35.1

1 Application Serial No. 87231753. 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.

Serial No. 87231753
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I. Background
As further discussed below, both refusals involve the specimens of use and the
services recited in the application. In the way of background, the application, Serial
No. 87231753, was filed on November 9, 2016, based on Applicant’s assertion 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), with the services identified as “marketing services;
consulting services, namely consulting in the area of interior wall coverings.”2
Although the basis for the Examining Attorney’s requirement that Applicant amend
the originally recited services is unclear, Applicant agreed to amend the identification
by examiner’s amendment on February 16, 2017, amending the original “consulting
services” to “Business consulting services, namely, business consulting in the field of
interior wall coverings.”3
Following publication of the mark for opposition on April 4, 2017 and issuance of
a notice of allowance on May 30, 2017, Applicant filed, on November 30, 2017, a
statement of use together with four distinct specimens of use4, alleging April 23, 2017
as the dates of first use and first use of the mark in commerce.5 The statement of use
further indicated that the mark FABRITRAK was used on “marketing material

2 November 9, 2016 TEAS RF New Application, at TSDR 1.
3 February 16, 2017 Examiner’s Amendment at TSDR 1. Applicant’s counsel was not
obligated to accept the Examining Attorney’s suggested recitation of services. Counsel would
be in the best position to know what Applicant’s services are.

4 November 30, 2017 Statement of Use at TSDR 1.

5 Also on November 30, 2017, Applicant filed a six-month “insurance” extension of time to file
a statement of use that was approved on December 9, 2017.
Serial No. 87231753
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showing the mark as actually used in the sale or advertising of the services.”6 In a
subsequent filing, Applicant submitted three other distinct specimens that it
describes as point of sale materials (“[A] print-out of Applicant’s website showing the
mark used in connection with a description of the goods and services as advertised on
the website. Hard copy images of Applicant’s brochures used at the point of sale in a
distributor setting.”).7
The Trademark Examining Attorney refused registration under Trademark Act
Sections 1 and 45, 15 U.S.C. §§ 1051, 1127, and Trademark Rules 2.34(a)(1)(iv),
2.56(a), 37 C.F.R. §§ 2.34(a)(1)(iv), 2.56(a) on the ground that the specimens and
substitute specimens do not show the applied-for mark in use in commerce in
connection with any of the services specified in the statement of use. The Examining
Attorney also refused registration of Applicant’s mark under Trademark Act Sections
1, 2, 3, and 45, 15 U.S.C. §§ 1051-1053, 1127, on the ground that the activities recited
in the identification of services, when viewed in conjunction with the specimens and
substitute specimens, are not registrable services as contemplated by the Trademark
Act.
In particular, the original specimens were deemed unacceptable by the Examining
Attorney because they did not show the mark in actual use in commerce (“Specifically,
the specimen shows use of the mark on advertising for goods and on an installation
guide for goods but fails to show use of the mark in direct association with the

6 November 30, 2017 Statement of Use at TSDR 1.
7 July 11, 2018 Response to Office Action at TSDR 1.
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identified [services].”).8 The substitute specimens were deemed unacceptable by the
Examining Attorney for the same reasons. (“Specifically, the specimen shows use of
the mark on advertising for an acoustical wall system but fails to show use of the
mark in direct association with the identified [services].”).9
Applicant responded that the substitute specimens (website print-outs and
brochures) show use of the mark in connection with the identified services. Applicant
stated that the specimens “demonstrate the goods are custom and necessitate
consulting with the purchasers on the business case for using such materials in a
particular setting” and that the “point of service materials help promote and market
the goods with the end client of the purchaser.”10
When both refusals were made final, Applicant appealed. Both Applicant and the
Examining Attorney have filed briefs. For the reasons discussed below, we affirm
both refusals.
II. Specimens
Relevant excerpts from the submitted original and substitute specimens are
shown below.11

8 January 11, 2018 Office Action at TSDR 1.
9 July 28, 2018 Office Action at TSDR 1.
10 July 11, 2018 Response to Office Action at TSDR 1.
11 November 30, 2017 Specimen at TSDR 1-10; July 11, 2018 Specimen at TSDR 1-19.
Serial No. 87231753
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A. Original specimens
Contact webpage
The contact webpage includes the following header and links to additional
information:

The contact page also includes a Google map and Applicant’s name, business address,
and phone number.
Sell Sheet
Excerpts from the sell sheet include the following:

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Products Webpage
An excerpt from the products webpage:

Brochure
The brochure includes information about the components of the system (wall
substrate, profiles, acoustical infill, fabric, moldings, and trim), installation
(preparatory and site conditions, installation methods), technical data (application
standards, fire performance, sound performance), cleaning and protection,
availability (local distributor) and cost (pricing information). The brochure also
includes basic information about the product and services offered:

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B. Substitute Specimens
Custom is Standard brochure:
Following are excerpts from the brochure:
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FabriArt brochure
Following are excerpts from the brochure:

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Serial No. 87231753
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Webpage

III. Whether the original or substitute specimens show direct association to
the services.
To be an acceptable specimen of use of the mark in the sale or advertising of the
identified services, there must be a direct association between the mark sought to be
registered and the services identified in the application, and there must be sufficient
Serial No. 87231753
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reference to the services to create this association. In re Universal Oil Prods. Co., 476
F.2d 653, 177 USPQ 456, 457 (CCPA 1973) (term that identified only a process held
not registrable as service mark, even though applicant was rendering services and
the proposed mark appeared in the same brochure in which the services were
advertised); In re Monograms Am. Inc., 51 USPQ2d 1317, 1319 (TTAB 1999)
(letterhead specimen failed to create an association between the mark
MONOGRAMS AMERICA and the consultation services set forth in the application);
In re Restonic Corp., 189 USPQ 248, 249 (TTAB 1975) (phrase used merely to
advertise goods manufactured and sold by applicant’s franchisees did not serve as
mark to identify franchising services); In re Reichhold Chems., Inc., 167 USPQ 376,
377 (TTAB 1970) (technical bulletins and data sheets on which mark was used merely
to advertise chemicals did not show use as service mark for consulting services).
A specimen that shows only the mark with no reference to, or association with,
the services does not show service mark usage. In re wTe Corp., 87 USPQ2d 1536,
1541-42 (TTAB 2008) (specimen comprising a packaging label affixed to boxes being
mailed to customers, on which the proposed mark was used as part of a return
address, held unacceptable because it did not show a connection between the mark
and the services); In re Adair, 45 USPQ2d 1211, 1214-15 (TTAB 1997) (tags affixed
to decorated Christmas tree that bear the mark TREE ARTS CO. (with design) and
the applicant’s location, but make no reference to services, failed to show use for
“design services in the nature of designing handcrafted, permanently decorated
Christmas and designer trees”); In re Riddle, 225 USPQ 630, 631 (TTAB 1985)
Serial No. 87231753
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(cutouts showing mark with no reference to the services held unacceptable for
automotive service center).
Applicant argues that it “submitted numerous examples of its promotional
material that show a direct association between the service and the mark.”12 The
Examining Attorney, on the other hand, submits that none of the specimens show
direct association with the identified services and that “all that the applicant’s
specimens … show, however, is that applicant uses the applied-for mark in connection
with its own acoustical wall panels and systems and promotes them using a wide-
variety of marketing materials.”13
As to the identified marketing services, the original and substitute specimens
contain no reference to those marketing services. The specimens, for the most part,
appear to be advertising the goods themselves (acoustical wall systems) in connection
with the FABRITRAK mark. Applicant even stated this when filing its substitute
specimens, describing the brochures as “point of sale materials in a distributor
setting.”14 But the mere advertising of the goods does not constitute service mark use.
In re Restonic Corp., 189 USPQ at 249 and cases cited therein.
None of the specimens Applicant submitted show a direct association between
marketing services and the FABRITRAK mark. In fact, none of the specimens
mention marketing services at all. Accordingly, we find the original and substitute

12 4 TTABVUE 15.
13 6 TTABVUE 14.
14 July 11, 2018 Response to Office Action at TSDR 1.
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specimens of use lack an association between FABRITRAK and any marketing
service purportedly offered by Applicant.
As to the business consulting services, we take judicial notice of dictionary
definitions that define the services.15 Business is defined as “a commercial or
industrial establishment; store, factory, etc.”16 Consulting (n.) is defined as “the
activity or business of giving expert advice about a particular subject.”17 Consulting
(adj.) also is defined as “consulted for professional or technical advice; advisory.”18
Thus, business consultation is a type of service that provides advice about business
practices of a commercial enterprise and makes recommendations. As the Examining
Attorney points out “applicant does not provide business consultation in the true
nature of those services, normally related to business management, administration,
human resource services and the like. In fact, the specimens do not evidence any
business consultation services at all.”19
We agree that none of the submitted specimens make a direct association to
business consulting services. Although the original specimen includes a reference to

15 The Board may take judicial notice of dictionary definitions, including online dictionaries
that exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB
2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); In re Red Bull GmbH, 78
USPQ2d 1375, 1378 (TTAB 2006).
16 WEBSTERS NEW WORLD COLLEGE DICTIONARY (Fifth Ed. 2014) https://www.yourdictionary.com/
business#websters, accessed September 4, 2019).
17 CAMBRIDGE ACADEMIC CONTENT DICTIONARY (English) (https: //dictionary.cambridge.org/us/
dictionary/english/ consulting, accessed September 4, 2019).
18 WEBSTER’S NEW WORLD COLLEGE DICTIONARY, (Fifth Ed. 2014) (https: //www.yourdictionary.com/
consulting#websters, accessed September 4, 2019).
19 6 TTABVUE 8.
Serial No. 87231753
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“technical services” that “insure your project utilizes the correct components and
meets the intent of the project designer,” it is not clearly characterized as business
consultation services, as identified by Applicant. A specimen that shows only the
mark, with no reference to the services, does not show service mark usage. In re wTe
Corp., 87 USPQ2d at 1541-42. Thus, we conclude that the Applicant’s specimens do
not support the use of the mark in connection with the identified business consulting
services.20
The refusal under Trademark Act Sections 1 and 45, 15 U.S.C. §§ 1051, 1127, and
Trademark Rules 2.34(a)(1)(iv), 2.56(a), 37 C.F.R. §§ 2.34(a)(1)(iv), 2.56(a) is affirmed.
IV. Whether Applicant is offering services in connection with the mark.
To qualify as a “service,” a service must be (1) a real activity; (2) performed to the
order of, or for the benefit of, someone other than the applicant; and (3) the activity
performed must be qualitatively different from anything necessarily done in
connection with the sale of the applicant’s goods or the performance of another
service. In re Can. Pac. Ltd., 754 F.2d 992, 224 USPQ 971, 973-74 (Fed. Cir. 1985); In
re Husqvarna Aktiebolag, 91 USPQ2d 1436, 1437 & n.3 (TTAB 2009); TMEP §§
1301.01(a) and 1301.01(a)(i)-(iii) (October 2018). There is no dispute between the
Examining Attorney and Applicant that the recited services are real activities. But
they disagree as to whether the identified services are being performed for Applicant’s

20 We acknowledge the original identification of consulting services did not mention “business
consulting services,” but Applicant’s later amendment to include “business consulting
services” establishes the parameters of Applicant’s services. Applicant is now bound by the
plain language of the identification as limited by the amendment.
Serial No. 87231753
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benefit, and whether the services are qualitatively different from Applicant’s sale of
goods.
In assessing this refusal, “[w]e must look closely at what is being offered here and
to whom it is being offered.” In re Can. Pac. Ltd., 224 USPQ at 973; see also In re
Landmark Commc’ns., Inc., 204 USPQ 692, 695 (TTAB 1979) (“we should first
ascertain what is an applicant’s principal activity under the mark in question ... and
then determine whether the activity embraced by the description of services or goods
in the application is in any material way a different kind of economic activity than
what any purveyor of the principal service or tangible product necessarily provides”).
Applicant describes its services as marketing and consulting “in the installation
and creation of an interior space with acoustic wall treatments.”21 Applicant states
that its “goods are custom and necessitate consulting with the purchasers on the
business case for using such materials in a particular setting.”22 Applicant explains
that its marketing and consulting services include “consulting as to the type of fabric,
the style of fabric, the combinations of fabric as well as installation of such fabric, or
any other application of such fabric for the purposes of meeting the customer’s
needs.”23 Applicant submits that the “primary beneficiary” of its services “is the
customer who would otherwise not have exposure to the skill and expertise of
Applicant’s staff who are highly knowledgeable as to the details of acoustic-proofing

21 4 TTABVUE 13.
22 Id. at 5.
23 Id. at 9-10.
Serial No. 87231753
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fabric.”24 Applicant argues that while it “may derive an incidental benefit of customer
satisfaction or additional revenue from installation … the primary beneficiary” is the
customer “who benefits from the expertise of the Applicant’s staff, the knowledge of
Applicant’s experts who know the details of the manufacturing and production of the
fabric and know the intricacies of the designs, and the skill of Applicant’s employees
who are comfortable handling and applying such fabric to interior spaces.”25
The Examining Attorney argues that “applicant does not provide marketing
services or promote the goods and services of others for the benefit of someone other
than the applicant” and that Applicant’s “marketing materials inform consumers
about [applicant’s] own product lines and systems.”26 The Examining Attorney argues
that Applicant’s consulting “services are primarily for the direct benefit of the
applicant and not a third-party” because “the expertise provided by the applicant to
its customers is provided in the normal course of the applicant’s business, namely,
the manufacturing of acoustical wall fabrics, and is provided for the express purpose
of enticing customers to purchase applicant’s own customizable product.”27
The Federal Circuit stated in In re Can. Pac. Ltd., 224 USPQ at 973, that a service
is “the performance of labor for the benefit of another.” The primary activity of
Applicant is the sale of acoustic wall treatments. Applicant’s goods are custom, and

24 Id. at 11.
25 Id. at 10, 11.
26 6 TTABVUE 8.
27 Id. at 9.

Serial No. 87231753
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Applicant consults with purchasers regarding type, style, and combinations of fabric
as well as fabric applications.28 As indicated above, one of Applicant’s specimens
mentions that Applicant offers technical services that “insure your project utilizes the
correct components.”29
To the extent these activities could be considered a type of business consultation
service, these activities are not a materially different kind of economic activity that
any purveyor of custom acoustic wall materials necessarily provides. The services
rendered as to selection of fabric and its application are rendered merely as an
accessory to and solely in furtherance of the sale of its custom acoustic wall
treatments. In re Dr. Pepper Co., 836 F.2d 508, 5 USPQ2d 1207, 1209 (Fed. Cir. 1987)
(“activities which are ‘necessarily done’ in connection with the sale of one’s goods are
the quintessential ‘routine or ordinary’ activities associated with the sale of one’s
goods”); Ex parte Handmacher-Vogel, Inc., 98 USPQ 413, 415 (Com’r., 1953) (stainless
steel product supplier that offers to “analyze your requirements” or “to have a mill or
research representative study the needs of customers and prospective customers of
applicant’s stainless steel products” is conducting an activity that “might be expected
of it and which are rendered merely as an accessory to and solely in furtherance of
the sale and offering for sale of its stainless steel products.”). Accordingly, we find
that Applicant’s “business consulting” is an expected activity in connection with the

28 4 TTABVUE 5, 9-10. As noted previously, the Examining Attorney pointed out that
“applicant does not provide business consultation in the true nature of those services.” 6
TTABVUE 8.
29 Specimen at TSDR 10.
Serial No. 87231753
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sale of its custom goods, and not a sufficiently separate activity to constitute a service
rendered for the benefit of others.
As to the identified marketing services, there is nothing in the record that
indicates that Applicant performs marketing services as such for others. The
specimens do not show Applicant markets the products of others, but identifies the
acoustic wall products as Applicant’s own. On the substitute specimen webpage under
the heading “The FabriTRAK Acoustical Wall System,” Applicant includes the
following text:
“Our acoustical wall system is a sound controlling
absorptive fabric panel system that is mounted to a rigid
wall surface. The FabriTrak Wall System is a compilation
of unique patented products that provide method, utilizing
fabric as an architectural finish.”
This same text is used on one of the pages of the brochure from the original specimens
under “Product Description” and “Basic Uses.” Thus, Applicant’s advertising is for its
own benefit, not for others, to increase the sales of the acoustic wall system products
it offers.
We find that Applicant’s marketing activity in this case does not fall within the
definition of a service. Rather, the activity being performed by Applicant is simply
the providing of information about the product to the potential purchaser. The
provision of information about one’s product, however detailed, is an ordinary or
routine activity in connection with the sale of one’s goods. Even if Applicant is
creating this marketing material as point of sale materials for its distributors, this is
the kind of activity that is normally expected. Cf. In re Congoleum Corp., 222 USPQ
452 (TTAB 1984) (awarding prizes to retailers for purchasing applicant’s goods from
Serial No. 87231753
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distributors held to be sufficiently separate from the sale of goods to constitute a
service rendered to distributors, because it confers a benefit on distributors that is
not normally expected by distributors in the relevant industry). Therefore, we find
that Applicant is not entitled to a registration for marketing services because
Applicant does not provide marketing services for others.
The refusal to register under Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§
1051-1053, 1127 is affirmed.
Decision: The refusals to register Applicant’s mark FABRITRAK under
Trademark Act Sections 1 and 45, 15 U.S.C. §§ 1051, 1127, and Trademark Rules
2.34(a)(1)(iv), 2.56(a), 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); and under Trademark Act
Sections 1, 2, 3, and 45, 15 U.S.C. §§ 1051-1053, 1127 are affirmed.