Joseph Teixeira

Trademark Trial and Appeal Board

Apr 15, 2019

EX (T.T.A.B. Apr. 15, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: April 15, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Teixeira
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Serial No. 87357829
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Glenn Massina of Massina Patent & Trademark Law PLLC,
for Joseph Teixeira.
Alicia Collins Edwards, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
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Before Wellington, Lykos and Greenbaum,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Joseph Teixeira (“Applicant”) seeks registration on the Principal Register of the
mark MERVIN THE CHIHUAHUA (in standard characters) for
Entertainment services, namely, providing, by means of a
global computer network, a non-downloadable, ongoing
series of online photographic, audio, video and prose
presentations in the field of comedy or cultural
commentary in International Class 41.1

1 Application Serial No. 87357829 was filed on March 3, 2017 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and
use in commerce since at least as early as March 31, 2014.
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Applicant’s sole supporting specimen, displayed below, is described in the
application as a “screen shot of Instagram page utilizing mark”:

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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, because the specimen does not show use
of the proposed mark in connection with the identified services, and 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 specimen of record, fails to function as a
service mark.
After the Examining Attorney made the refusals final, Applicant appealed to this
Board.2 We affirm both refusals.
I. Background
Because both refusals involve the specimen of use and the services recited in the
application, we provide some background about the prosecution of the application.
Applicant originally described the services as “Entertainment services, namely,
providing digital content featuring non-downloadable photographic, audio, video and
prose presentations in the field of comedy or cultural commentary” in Class 41. In the
first Office Action, dated June 4, 2017, the Examining Attorney refused registration
under Sections 1 and 45 of the Trademark Act because
The mark is not used in connection with the sale or
advertising of any of the services specified in the
application, namely, non-downloadable digital content in
the field of comedy or cultural commentary. Rather, the
specimen appears to be merely an excerpt from an
Instagram page showing pictures of a Chihuahua named
Mervin.

2 The Board construes the Examining Attorney’s October 12, 2018 Denial of Request for
Reconsideration as her brief on the case. See December 6, 2018 Board Order, 7 TTABVUE.
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She also refused registration under Sections 1, 2, 3 and 45 because
The applied-for mark, as shown on the specimen, does not
function as a service mark because the average consumer,
when viewing the mark on the specimen, would view it as
an excerpt from an Instagram page showing pictures of a
Chihuahua named Mervin, rather than attributing thereto
the special significance of a service mark used to
distinguish applicant’s services from the services of others.
In his December 4, 2017 Response to Office Action, Applicant amended the
recitation of services to the current, operative recitation: “Entertainment services,
namely, providing, by means of a global computer network, a non-downloadable,
ongoing series of online photographic, audio, video and prose presentations in the
field of comedy or cultural commentary” in Class 41.
As for the specimen, Applicant explained that
Applicant’s specimen is a screenshot of applicant’s
Instagram page showing applicant’s mark in large font on
top of the page. Individuals looking to access applicant’s
services, namely, applicant’s ongoing series of
photographic, audio, video and prose presentations in the
field of comedy or cultural commentary, look to applicant’s
mark to confirm they are accessing the desired services.
Additionally, next to the applicant’s mark is a link labeled
“Follow” which allows individuals to follow the applicant’s
specific page and thereby access the specific services
associated with applicant’s mark …. The 77,000 plus
individuals that are following MERVINTHECHIHUAHUA
know they are accessing the desired content due to
applicant’s mark in large font on the top of the page.
Applicant likened his specimen to the Hooplaha specimen displayed as Example
11 in Trademark Manual of Examining Procedure (“TMEP”) § 1301.04(I): Examples
of Acceptable Service-Mark Specimens, arguing that
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the mark-services association is present with the current
mark because it is customary to display service marks near
the top of the webpages on which the services are
advertised or through which they are accessed, rendered,
and experienced. As with the Hooplaha specimen, the
current mark is sufficiently near indicia implying the
services and no other marks appear to negate the mark-
services connection.
Additionally, applicant points to the accepted specimen for
[Registration No.] 4440696 for the mark KYLIE JENNER
for the following services: Entertainment in the nature of
providing information by means of a global computer
network in the fields of entertainment, fashion and pop
culture; entertainment services, namely, personal
appearances by a celebrity, actress and model. As shown in
the attached copy of the specimen submitted and accepted
for the ‘696 registration, the specimen consists of screen
shots of the registrant’s Keek, Tumblr and Facebook pages.
In the Final Office Action, dated January 19, 2018, the Examining Attorney made
final the failure to function refusal under Sections 1, 2, 3 and 45 of the Trademark
Act, because “In this case, the proposed mark MERVIN THE CHIHUAHUA merely
identifies the name of an Instagram account holder and will not be perceived as a
service mark used to distinguish any services from those of others.” She also noted
the well-settled principle that each application must be considered on its own record
in determining registrability, and then specifically rejected the ‘696 registration
evidence as “particularly unhelpful in the instant case because the services registered
therein are different from the services in the instant application.”
In addition, the Examining Attorney made final the refusal under Sections 1 and
45 of the Trademark Act, i.e., that the specimen does not show the applied-for mark
with the specified services. Referencing the amended recitation of services, the
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Examining Attorney pointed to two entries from the Acceptable Identification of
Goods and Services Manual (“ID Manual”) for similar services,3 stating:
It appears that applicant chose this particular
identification from the [ID Manual]. The note
accompanying this particular identification selection
indicates the following: “The use of the term ‘presentations’
in these services is considered analogous to ‘shows’ or
‘programs’ and is thus classified in Class 41 regardless of
the subject matter. However, ‘providing a website featuring
videos’ is ambiguous as it could include the offering of
videos as a good (either downloadable or in tangible form)
via an online retail store.” See attached excerpts retrieved
from the Manual.
In this case, as shown on the specimen, the proposed mark
is not used in connection with the sale or advertising of an
ongoing series of online presentations as contemplated by
the Manual entry. Rather, the specimen appears to be an
excerpt from applicant’s Instagram page wherein applicant
has merely posted a number of photographs of a
Chihuahua named Mervin; however, this display of
multiple photographs does not constitute an ongoing series
of presentations (i.e., shows or programs).
II. Failure to Show Use of the Mark for the Identified Services
A use-based application under Section 1(a) of the Trademark Act, 15 U.S.C.
§ 1051(a), such as Applicant’s, must be supported by a “specimen showing how the
applicant uses the mark in commerce….” Trademark Rule 2.34(a)(1)(iv), 37 C.F.R.
§ 2.34(a)(1)(iv).

3 The entries are: “Entertainment services, namely, providing a web site featuring
photographic and prose presentations featuring {indicate subject matter of presentations}”
and “Entertainment services, namely, providing a web site featuring photographic, video and
prose presentations featuring {indicate subject matter of presentations},” both in Class 41.
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Under Section 45 of the Trademark Act, a service mark is used in commerce “when
it is used or displayed in the sale or advertising of services.” See also Trademark Rule
2.56(b)(2), 37 C.F.R. § 2.56(b)(2) (“A service mark specimen must show the mark as
used in the sale or advertising of the services.”). Such use 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).
An acceptable service mark specimen must show “some direct association between
the offer of services and the mark sought to be registered therefor.” In re Universal
Oil Prods. Co., 476 F.2d 653, 177 USPQ 456, 457 (CCPA 1973); WAY Media, 118
USPQ2d at 1698. 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). “Essentially,
the mark must be shown in a manner that would be perceived by potential purchasers
as identifying the applicant’s services and indicating their source.” In re Keep A
Breast Found., 123 USPQ2d 1869, 1876 (TTAB 2017). 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
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submitted by the applicant, together with any other evidence of record. In re Adair,
45 USPQ2d 1211, 1214 (TTAB 1997).
In his brief, Applicant contends that his specimen is sufficient because it shows
use of the mark in the course of rendering the recited services. 4 TTABVUE 12. A
specimen showing use of the mark in the rendition of the services need not explicitly
refer to the identified services to establish the requisite direct association between
the mark and 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); 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 Section 45 of the
Trademark Act); 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”); In re Red Robin
Enters., 222 USPQ 911, 914 (TTAB 1984) (stating that “rendition” of services is
properly viewed as an element of the “sale” of services).
Applicant’s specimen, reproduced above, displays the name of the account holder,
“mervinthechihuahua,” between a photograph of a Chihuahua (presumably the
account holder) and a blue “follow” button. The line directly below
“mervinthechihuahua” and the blue “follow” button shows “793 posts,” “63.5k
followers,” and “132 following.” The remainder of the page includes the following text:
“Mervin the Chihuahua™” “No Teeth No Problem” “#adoptdontshop” “From stray to
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STAR” “Rescue living large in NYC,” with links to gmail, twitter, and facebook
accounts; and six photographs of the Chihuahua. Nothing on the page indicates, or
even mentions, the recited “Entertainment services, namely, providing, by means of
a global computer network, a non-downloadable, ongoing series of online
photographic, audio, video and prose presentations in the field of comedy or cultural
commentary,” nor does it seek to associate the proposed mark with such services. See
DSM Pharms., 87 USPQ2d at 1624 (“A specimen that shows only the mark with no
reference to, or association with, the services does not show service mark usage.”). In
short, Applicant’s posting of six photographs of a Chihuahua (presumably named
Mervin) on an Instagram page does not constitute an ongoing series of online
photographic presentations. While it is possible that Applicant is providing
information concerning pet adoption and pet rescue services,4 those are not the
services for which Applicant seeks registration. Because the specimen does not
associate the proposed mark with the recited services, such that the proposed mark
would be perceived as a source-identifier, the specimen is not sufficient to support
use of the proposed mark in connection with Applicant’s services.
Accordingly, the Board affirms the refusal to register on the ground that the
specimen of record fails to show use of MERVIN THE CHIHUAHUA as a mark in
connection with the recited services.

4 We make no finding as to whether the specimen would support such services.
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III. Failure to Function as a Service Mark
We next turn to the refusal, under Sections 1, 2, 3 and 45 of the Trademark Act,
that the applied-for mark does not serve to “identify and distinguish the services of
one person … and to indicate the source of the services.” 15 U.S.C. § 1127 (definition
of “service mark”). As has often been stated, “[b]efore there can be registration, there
must be a trademark.” In re Bose Corp., 546 F.2d 893, 192 USPQ 213, 215 (CCPA
1976). Accordingly, the Patent and Trademark Office “is statutorily constrained to
register matter only if it functions as a mark.” In re Keep a Breast Found., 123
USPQ2d 1869, 1879 (TTAB 2017).5
“[N]ot every designation adopted with the intention that it performs a trademark
function and even labeled as a trademark necessarily accomplishes that purpose ….”
Am. Velcro, Inc. v. Charles Mayer Studios, Inc., 177 USPQ 149, 154 (TTAB 1973); see
also Roux Labs., Inc. v. Clairol, Inc., 427 F.2d 823, 166 USPQ 34, 39 (CCPA 1970).
“[T]he central question in determining whether Applicant’s proposed mark functions
as a service mark is the commercial impression it makes on the relevant public (e.g.,
whether the term sought to be registered would be perceived as a mark identifying
the source of the services).” Keep A Breast Found., 123 USPQ2d at 1879. “To make
this determination we look to the specimens and other evidence of record showing

5 For an explanation of the interplay among Sections 1, 2, 3 and 45 of the Trademark Act,
and the reason they collectively “provide the statutory basis for refusal to register subject
matter that fails to function as a service mark,” see Keep A Breast Found., 123 USPQ2d at
1879.
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how the designation is actually used in the marketplace.” In re Eagle Crest Inc., 96
USPQ2d 1227, 1229 (TTAB 2010).
Based on our review of the specimen of use submitted by Applicant, which is the
only evidence of Applicant’s use of the proposed mark, we agree with the Examining
Attorney that MERVIN THE CHIHUAHUA fails to function as a service mark. As
discussed above, the specimen fails to associate the proposed mark with the recited
services, thus making it unlikely that the relevant consumers will perceive MERVIN
THE CHIHUAHUA as a source indicator for those services.6 See, e.g., Keep A Breast
Found., 123 USPQ2d at 1880. Rather, MERVIN THE CHIHUAHUA appears to be
only the name of an Instagram account holder, i.e., a Chihuahua named Mervin. See,
e.g., In re Mancino, 219 USPQ 1047 (TTAB 1983) (holding that consumers would view
BOOM BOOM solely as applicant’s professional boxing nickname and not as an
identifier of the service of conducting professional boxing exhibitions); In re Lee
Trevino Enters., 182 USPQ 253 (TTAB 1974) (LEE TREVINO used merely to identify
a famous professional golfer, not as a mark to identify and distinguish any services
rendered by him).
After careful consideration, we find that the designation MERVIN THE
CHIHUAHUA, as used on the specimen, does not function as a service mark, as it

6 For the reasons explained by the Examining Attorney in the January 19, 2018 Final Office
Action and quoted above, Applicant’s reliance on the ’696 Registration for the mark KYLIE
JENNER is inapposite. In addition, Applicant’s use of the “TM” symbol after “MERVIN THE
CHIHUAHUA” in the text of the specimen is not, by itself, sufficient to establish either a
direct association or service mark use. In re Graystone Consulting Assocs., 115 USPQ2d 1035,
1038 (TTAB 2015); see also TMEP §§ 1301.02(a), 1301.04(e) (October 2018).
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would not be perceived by potential customers as indicating the source of Applicant’s
services.
Decision: The refusal to register Applicant’s proposed mark MERVIN THE
CHIHUAHUA is affirmed on both grounds.