International Association of Certified Home Inspectors

Trademark Trial and Appeal Board

Jan 23, 2020

87357614 (T.T.A.B. Jan. 23, 2020)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: January 23, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re International Association of Certified Home Inspectors
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Serial No. 87357614
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James A. Sheridan of Sheridan Law LLC,
for International Association of Certified Home Inspectors.
Michael Engel, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.
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Before Mermelstein, Lynch, and Pologeorgis,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
I. Background
International Association of Certified Home Inspectors (“Applicant”) seeks
registration on the Principal Register of the standard character mark NAHI for “home
inspection services” in International Class 42.1

1 Application Serial No. 87357614 was filed on March 3, 2017, based on an 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). Applicant filed its Statement of Use on September 11, 2018, claiming July
18, 2018 as both the date of first use and the date of first use in commerce.
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Applicant submitted the following specimen with its Statement of Use that
Applicant describes as “screenshots of websites displaying mark in connection with
home inspection services.”2

2 Applicant’s September 11, 2018 Statement of Use; TSDR pp. 1, 5-6. The TTABVUE and
Trademark Status and Document Retrieval (“TSDR”) citations refer to the docket and
electronic file database for the involved application. All citations to the TSDR database are
to the downloadable .PDF version of the documents.
Serial No. 87357614
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The Examining Attorney refused registration under Sections 1 and 45 of the
Trademark Act, 15 U.S.C. §§ 1051 and 1127, on the ground that the specimen
submitted by Applicant with its Statement of Use is unacceptable because it shows
use of the applied-for mark in connection with trade association services, not the
identified “home inspection services.”3
In response to the Examining Attorney’s office action, Applicant submitted an
additional specimen for its identified services that it describes as a “screen shot of a
website owned by a member of applicant using the mark in connection with the
rendering to others of home inspection services.”4 The screenshot is reproduced below:

3 October 16, 2018 Office Action; TSDR p. 2.
4 October 18, 2018 Response to Office Action, TSDR pp. 3 and 5.
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The Examining Attorney rejected the substitute specimen arguing that this new
specimen shows Applicant’s applied-for NAHI mark as a certification mark used to
certify the home inspection services of another, namely, Holmes Inspection.5 The
Examining Attorney further maintained that Applicant’s mark appears along with
other certification or association marks, and not as a service mark for “home
inspection services.”6 The Examining Attorney advised Applicant that it should refile
its application to seek registration of its mark for “association services” in
International Class 35 or as a certification mark in International Class B.7 In view of
the foregoing, the Examining Attorney maintained and made final the refusal that
none of the specimens of record shows Applicant’s use of the mark in connection with
the identified services.8
After the Examining Attorney issued his final refusal, Applicant appealed and
requested reconsideration. In its request for reconsideration, Applicant submitted yet
another specimen, which Applicant describes as additional screenshots from its
website.9 The additional specimen in its entirety is reproduced below:

5 November 19, 2018 Final Office Action, TSDR p. 2.
6 Id.
7 Id.
8 Id.
9 Applicant’s May 20, 2019 Request for Reconsideration, 4 TTABVUE 7-9.
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Serial No. 87357614
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The Examining Attorney denied Applicant’s request for reconsideration,
essentially repeating his argument that none of the specimens submitted shows
service mark usage for the identified services and, therefore, are unacceptable.10
This appeal resumed after the denial of Applicant’s request for reconsideration.
Both Applicant and the Examining Attorney filed briefs. For the reasons explained
below, we affirm the refusal to register.
II. Failure to Show Use of the Mark for the Identified Services
Section 45 of the Trademark Act specifies 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 … .”

10 June 3, 2019 Denial of Request for Reconsideration, 5 TTABVUE.
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Use as a service mark may be established by: (1) showing the mark used or
displayed as a service mark in the sale of the services, which includes use in the
course of rendering or performing the services, or (2) showing the mark used or
displayed as a service mark in advertising the services, which encompasses
marketing and promotional materials. In re WAY Media, Inc., 118 USPQ2d 1697,
1698 (TTAB 2016); see also In re ICE Futures U.S. Inc., 85 USPQ2d 1664, 1669 (TTAB
2008) (noting that use in the rendition of services is an element of the “sale” of services
under Trademark Act Section 45); In re Metriplex, Inc., 23 USPQ2d 1315, 1316-17
(TTAB 1992) (explaining that an acceptable specimen need not explicitly refer to the
services if it “show[s] use of the mark in the rendering, i.e., sale of the services”).
To show service mark usage, a specimen must display the mark in a manner that
would be perceived by potential purchasers as identifying the applicant’s services and
indicating their source by “direct association.” In re Universal Oil Prods. Co., 476 F.2d
653, 177 USPQ 456 (CCPA 1973); WAY Media, 118 USPQ2d at 1698. Specimens
showing the mark used in rendering the identified services need not explicitly specify
the nature of the services, but “there must be something which creates in the mind of
the purchaser an association between the mark and the service activity.” In re
Johnson Controls, Inc., 33 USPQ2d 1318, 1320 (TTAB 1994). A specimen that shows
the mark with no reference to, or association with, the services does not show service
mark usage. In re DSM Pharms. Inc., 87 USPQ2d 1623, 1624 (TTAB 2008)
(LIQUIDADVANTAGE referred only to software and did not identify and distinguish
custom manufacturing services); see also, e.g., In re HSB Solomon Assocs. LLC, 102
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USPQ2d 1269, 1274 (TTAB 2012) (CEI identified process by which applicant derived
a measurement rather than technical consulting service); In re Osmotica Holdings
Corp., 95 USPQ2d 1666, 1669 (TTAB 2010) (OSMODEX referred only to drug delivery
technology, not consulting services).
Whether a mark sought to be registered as a service mark has been used “to
identify” the services specified in the application is a question of fact to be determined
on the basis of the specimens submitted by the applicant, together with any other
evidence of record. In re Adair, 45 USPQ2d 1211, 1214 (TTAB 1997).
Following a careful review of all the specimens submitted by Applicant, we find
that none of them demonstrates service mark usage of Applicant’s NAHI mark for
“home inspection services.” We address each specimen in turn.
A. Initial Specimen Filed with Applicant’s Statement of Use
Although the specimen displays Applicant’s applied-for mark, the specimen
clearly states that Applicant is “a trade association for the home inspection industry,”
with no indication that Applicant performs home inspections. Additionally, the
specimen indicates that Applicant “provides a wealth of information and resources to
its members such as training, education, and reference materials.” (emphasis
added). Accordingly, this specimen demonstrates use of Applicant’s mark in
connection with association services and not the provision of home inspections.
Applicant contends that the USPTO has accepted multiple specimens (the original
specimen and the specimens filed with the Sections 8 & 15 and the Sections 8 & 9
Declarations) that are similar to the original specimen submitted by Applicant for a
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trademark registration, namely, Registration No. 3791822, which identifies the same
services set forth in Applicant’s involved application.11
Applicant, however, did not submit the record file of the referenced registration
into evidence. Mere argument regarding a registration is just that, mere argument
without any supporting evidence. See In re Vsesoyuzny Oordena Trudovogo Krasnogo
Znameni, 219 USPQ 69, 70 (TTAB 1983) (“Unfortunately we have no evidence of
record to this effect … assertions in briefs are normally not recognized as evidence”)
(citing In re Simulations Publications, Inc., 187 USPQ 147 (CCPA 1975)).
Notwithstanding, even if Applicant had submitted the complete prosecution history
and maintenance documents of the referenced registration, prior decisions made by
different examining attorneys have little evidentiary value and are not binding upon
the Board. See In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1635 (Fed.
Cir. 2016) (regardless of an applicant’s prior registration, “[t]he PTO is required to
examine all trademark applications for compliance with each and every eligibility
requirement”); In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793
n.10 (TTAB 2017); see also TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”)
§ 1207.01(d)(vi) (October 2018). Each case is decided on its own facts, and each mark
stands on its own merits. In re Merrill Lynch, Pierce, Fenner & Smith Inc., 828 F.2d
1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987) (“Each application for registration must
be considered on its own merits.”); In re Eagle Crest Inc., 96 USPQ2d 1127, 1229

11 Applicant’s Appeal Brief, p. 5, 4 TTABVUE 6; Applicant’s May 20, 2019 Request for
Reconsideration, TSDR p. 6.
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(TTAB 2010) (“It has been said many times that each case must be decided on its own
facts.”) (internal citations omitted).
In view of the foregoing, we find that the initial specimen submitted with
Applicant’s Statement of use does not demonstrate service mark usage of Applicant’s
identified services.
B. The Holmes Inspection Website
With its October 18, 2018 Response to Office Action, Applicant submitted a
substitute specimen, which Applicant identified as “screen shot of a website owned
by a member of applicant using the mark in connection with the rendering to others
of home inspection services.” Applicant concedes that this website is owned by a third-
party. As such, Applicant’s mark, as it appears on this third-party website, is not
being used by Applicant but by the third-party to indicate its membership in
Applicant’s trade association or alternatively that its home inspection services have
been certified by Applicant. In order to demonstrate service mark usage, Applicant
itself or through a designated licensee must use the applied-for mark in connection
with its identified services. Inasmuch as this specimen does not demonstrate use of
the mark by Applicant itself in association with Applicant’s identified “home
inspection services” and because there is no evidence of record to demonstrate that
Applicant has licensed the use of its mark to Holmes Inspection, the specimen is
unacceptable to show service mark use for the identified services.12

12 Unlike a service mark, a collective membership mark indicates that the user of the mark
is a member of a particular organization. TMEP § 1304.01. “Thus, membership marks are
not trademarks or service marks in the ordinary sense; they are not used in business or trade,
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C. Additional Screenshots of Applicant’s Website
With its request for reconsideration, Applicant submitted an additional substitute
specimen for its identified services that consists of additional screenshots from its
own website. Applicant maintains that this latest specimen clearly shows the applied-
for NAHI mark with Applicant’s rendering of services, i.e., home inspection news,
home inspection resources, assistance in locating a home inspector, all in connection
with its home inspection services.13 Applicant also argues that a webpage lacking a
reference to the identified services may nonetheless be acceptable if it demonstrates
use of the mark in rendering the services.14 Applicant references Example 14 set forth
in TMEP § 1301.04(i) to support this argument.
We are not persuaded by Applicant’s arguments. The specimen submitted with
Applicant’s Request for Reconsideration shows that Applicant provides news and
other information resources for the home inspection industry, and offers, inter alia,
marketing support and educational courses to home inspectors that are presumably
members of its association. None of these activities constitute home inspection
services. There is nothing in this specimen to suggest that Applicant itself provides

and they do not indicate commercial origin of goods or services.” Id. Moreover, a certification
mark is used by a person other than its owner to certify, among other things, the “material,
mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or
services or that the work or labor on the goods or services was performed by members of a
union or other organization.” TMEP § 1306.01. Here, however, Applicant is not seeking to
register its NAHI mark as either a collective membership mark or a certification mark;
rather, Applicant seeks to register the mark as a service mark to indicate the source of its
own identified home inspection services.
13 Applicant’s May 20, 2019 Request for Reconsideration, 4 TTABVUE 6.
14 Id.
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home inspections, and nothing that suggests that Applicant uses the mark NAHI in
association with home inspection services. Moreover, Applicant’s reliance on TMEP
§ 1301.04(i) (Examples of Acceptable Service-Mark Specimens) and more specifically
Example 14 referenced therein is misplaced. Example 14 concerns the hypothetical
mark OUTERNAUTS for “entertainment services, namely, providing online video
games” in International Class 41. The accompanying hypothetical specimen
discussed in this example is “described as a ‘screenshot of the page on Facebook.com,
an Internet website, from which the services are provided to users’ and appears to
show the mark used in rendering the services.” (emphasis added). TMEP
§ 1301.04(i) and Example 14. The specimen is reproduced below:

As explained, “[t]he screenshot also appears to be of the title or launch screen of
the online video game, where it is common practice in such industry to place the mark
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under which the services are promoted and where such placement is recognized as
the introduction of the online services. The screenshot here implies, and it is generally
known, that access to and performance of the services begins with this screen.” Id.
Unlike the hypothetical specimen discussed in Example 14 of TMEP § 1301.04(i),
Applicant’s specimens, i.e., the additional screenshots of its own website, do not
demonstrate that Applicant’s home inspection services are actually rendered or
provided through its website. As explained above, specimens that do not explicitly
specify the nature of the services may be deemed acceptable but only if the specimens
are used in the course of rendering the service and create in the mind of the purchaser
an association between the mark and the service. In re Johnson Controls, Inc., 33
USPQ2d at 1320. Here, Applicant’s website specimens are not used in the course of
rendering home inspections and do not create such an association between
Applicant’s mark and the rendering of home inspection services.
In view of the above, we find that none of the specimens of record serves to show
use of the mark NAHI as a service mark in connection with Applicant’s identified
“home inspection services.”
Decision: The refusal to register under Sections 1 and 45 of the Trademark Act
on the ground that Applicant has not submitted acceptable specimens of use for its
identified services is affirmed.