KFT Fire Trainer, LLC

Trademark Trial and Appeal Board

Sep 26, 2019

86748141 (T.T.A.B. Sep. 26, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 26, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re KFT Fire Trainer, LLC
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Serial No. 86748141
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Janet L. Cullum of Cooley LLP
for KFT Fire Trainer, LLC.

Lief Martin, Trademark Examining Attorney, Law Office 112,
Renee Servance, Managing Attorney.
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Before Lykos, Coggins and Hudis,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
KFT Fire Trainer, LLC (“Applicant”) seeks to register on the Principal Register
the mark displayed below

for “Fire protection services, namely, construction, installation and maintenance for
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others of computer-controlled firefighter training systems, namely, burn buildings,
pits and mock-ups equipped with gas-fueled burners, and temperature, ventilation,
and heat monitors to simulate residential, commercial, or industrial fires; Fire
protection services, namely, installation and maintenance of equipment and
installations for protection against fire” in International Class 37.1
The Trademark Examining Attorney refused registration of Applicant’s mark on
the ground that Applicant’s original specimen and substitute specimens each fail to
show the applied-for mark used in connection with the identified services under
Trademark Act Sections 1 and 45, 15 U.S.C. §§ 1051 and 1127. Applicant and the
Examining Attorney filed briefs. We reverse.
I. Prosecution History
Before discussing the merits of the appeal, we summarize the application
prosecution history. The application originally was filed under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b). After publication in the Official Gazette and
issuance of a notice of allowance, on January 26, 2017 Applicant submitted a
Statement of Use accompanied by a specimen described as an “instruction manual
that is provided with the goods and that shows use of the mark on such goods.” The
cover sheet of the manual is reprinted below:

1 Application Serial No. 86748141, filed September 4, 2015, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b). The description of the mark is as follows: “The mark
consists of the stylized letters ‘KFT’ that appear in red. The color red is claimed as a feature
of the mark.” Applicant’s request to divide the goods and services in International Classes 9
and 41 which were not the subject of the refusal to register was granted on April 6, 2018. The
new “child” application was designated as Serial No. 86983808.
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The Examining Attorney refused registration on the ground that the specimen
failed to show the applied-for mark used in connection with the identified
International Class 37 services. February 23, 2017 Office Action. As the Examining
Attorney explained,
[T]he specimen does not clearly promote or reference any
of the construction, installation or maintenance services
identified in Class 37. The specimen references applicant’s
“solutions,” but such wording is vague and could refer to
various goods and services, such as software or training
services.
An application based on Trademark Act Section 1(a) must
include a specimen showing the applied-for mark in use in
commerce for each international class of goods and/or
services identified in the statement of use. 15 U.S.C.
§1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP
§§904, 904.07(a); see In re Gulf Coast Nutritionals, Inc., 106
USPQ2d 1243, 1247 (TTAB 2013).
Examples of specimens for services include advertising and
marketing materials, brochures, photographs of business
signage and billboards, and webpages that show the mark
used in the actual sale, rendering, or advertising of the
services. See TMEP §1301.04(a), (h)(iv)(C). Specimens
comprising advertising and promotional materials must
show a direct association between the mark and the
services. TMEP §1301.04(f)(ii).
Id. The Examining Attorney advised Applicant that it could submit a substitute
specimen showing the mark in actual use in commerce for the Class 37 services
identified in the Statement of Use.
On March 24, 2017, Applicant responded to the refusal by changing the
description of the original specimen to “a single screenshot from a promotional video
which discusses and which shows use of the mark in connection with the services.”
Applicant also submitted a substitute specimen consisting of a promotional video
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shown at a trade show “provided in two parts to meet the size requirements for
attachments.” Id. For clarity, we shall refer to these as “Promotional Video No. 1” and
“Promotional Video No. 2.” On April 14, 2017, the Examining Attorney issued a final
Office action stating that the substitute specimen failed to show the applied-for mark
used in connection with the identified services. As the Examining Attorney reasoned:
The videos promote various goods and services, including
various training “solutions” provided or sold by the
applicant. However, the referenced goods and services
consist of various training simulators and similar goods,
and potentially Class 41 training services, and not the
identified construction, installation and maint[enance]
services in Class 37. The examiner notes that the second
video includes a depiction of a structure fire simulator
which was installed in a simulated building. However, such
installation activities were performed as part of a trade
show, and the reference in the video merely describes the
ease or speed of installation; it does not promote applicant’s
commercial installation services for third parties.
To traverse the final refusal, with its October 16, 2017 Request for
Reconsideration, Applicant filed a third substitute specimen which Applicant
described as “promotional material discussing and depicting fully constructed
firefighter training systems and facilities:”
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The Examining Attorney denied the Request for Reconsideration, explaining that:
[T]he substitute specimens of use submitted with the
request for reconsideration do not promote or otherwise
reference any of the “construction,” “installation,” or
“maintenance” services identified in Class 37. The
examiner also notes that construction of one’s own goods is
not necessarily a Class 37 “construction service” for others.
See TMEP §1301.01(a)(ii). For this reason, a reference to
the Class 37 services identified in the application cannot be
inferred from description or depiction of the goods or
services shown in the specimens of record. Instead, it is
necessary for applicant’s specimens to clearly reference
“construction,” “installation,” or “maintenance” services for
others.
November 3, 2017 Denial of Request for reconsideration.
Applicant timely filed its notice of appeal.
II. Did the specimens submitted show Applicant’s applied-for mark in use in
commerce in connection with any of the services specified in International
Class 37?
Section 45 of the Trademark Act, 15 U.S.C. § 1127, defines “service mark” as
follows:
The term “service mark” means any word, name, symbol,
or device, or any combination thereof--
(1) used by a person, or
(2) which a person has a bona fide intention to use in
commerce and applies to register on the principal register
established by this [Act], to identify and distinguish the
services of one person, including a unique service, from the
services of others and to indicate the source of the services,
even if that source is unknown….
Section 1(d)(1) of the Trademark Act, 15 U.S.C. § 1051(d)(1), requires that the
applicant file a specimen or facsimile of the mark as used in commerce. Trademark
Rule 2.56(a), 37 C.F.R. § 2.56(a), adds that an applicant filing an intent-to-use
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application file “one specimen . . . showing the mark as used in commerce on or in
connection with the goods or services.” (emphasis added).
A service mark specimen must show a direct association between the mark and
the services for which registration is sought. Trademark Rule 2.56(b)(2); 37 C.F.R. §
2.56(b)(2). See In re Universal Oil Prods. Co., 476 F.2d 653, 177 USPQ 456, 457 (CCPA
1973). A direct association is the minimum the specimen must show, and it may be
established textually, contextually, or logically. Id. A specimen that shows only the
mark with no reference to, or association with, the services (as identified in the
application) does not show service mark usage. See, e.g., In re Adair, 45 USPQ2d 1211
(TTAB 1997) (tags affixed to decorated Christmas trees that bear the mark TREE
ARTS CO. and 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”).
To be clear, for specimens showing the mark in advertising the services, “[i]n order
to create the required ‘direct association,’ the specimen must not only contain a
reference to the service, but also the mark must be used on the specimen to identify
the service and its source.” In re Osmotica Holdings Corp., 95 USPQ2d 1666, 1668
(TTAB 2010).
“[W]hether a mark is used in connection with the services described in the
[application], a key consideration is the perception of the user.” In re JobDiva, Inc.,
843 F.3d 936, 121 USPQ2d 1122, 1126 (Fed. Cir. 2016) (citing Lens.com, Inc. v. 1-800
Contacts, Inc., 686 F.3d 1376, 1381-82 (Fed. Cir. 2012)). While the exact nature of the
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services does not need to be specified in the specimen, there must be something that
creates in the mind of the purchaser an association between the mark and the
services that have been recited in the application. See TRADEMARK MANUAL OF
EXAMINING PROCEDURE (“TMEP”) § 1301.04(f)(ii) (Oct. 2018) (“While the services
need not be stated word for word, a ‘sufficient reference’ to the services themselves or
a general reference to the trade, industry, or field of use is required.”). See also In re
JobDiva, 121 USPQ2d at 1126 (Fed. Cir. 2016); In re Way Media, 118 USPQ2d 1697,
1698 (TTAB 2016).
In determining whether a specimen is acceptable evidence of service mark use,
the examining attorney may consider the applicant’s explanations as to how the
specimen is used, along with any other available evidence in the record that shows
how the mark is actually used. See In re The Cardio Grp., LLC, 2019 USPQ2d 227,
232 (TTAB 2019) (“Both precedent and examination guidance make clear that in
assessing the specimens, consideration must be given not only to the information
provided by the specimen itself, but also to any explanations offered by Applicant
clarifying the nature, content, or context of use of the specimen that are consistent
with what the specimen itself shows.”); In re Int’l Envtl. Corp., 230 USPQ 688 (TTAB
1986).
Upon review of Applicant’s original and substitute specimens, we find that
Promotional Video No. 2, which was shown at an industry trade show, evinces use in
commerce of Applicant’s applied-for mark in connection with the services identified
in the application. Applicant’s mark as it appears on the drawing page in the color
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red is displayed at the bottom right corner for the duration of the video. The video
features Steve Williamson, Applicant’s Director of Applied Engineering, describing
the construction and setup of a fire training system:
Hi, we are here at FDIC 2016 in our outdoor booth. We’re
sharing the space with WHP who have their brand new
designed MODx modular system. We have a fire generation
trainer inside of the system and it was completely pre-
fabricated at WHP’s facility and brought here and set up in
an afternoon. So this is a demonstration of how a complete
system, a building and a fire trainer, can be fully
integrated, set up and ready to go in a day at anyone’s site.
All the quality is very tightly controlled in a factory
environment and put to use as it was here for this
tradeshow.
The video therefore shows a direct association between Applicant’s mark and the
identified services. While “pre-fabrication” is not the same exact word as
“construction,” and “set up” is not the same exact word as “installation,” clearly they
are synonyms thereby creating in the mind of the viewer an association between the
services and mark. See In re JobDiva, 121 USPQ2d at 1126 (Fed. Cir. 2016); TMEP
§ 1301.04(f)(ii).
The Examining Attorney contends that this substitute specimen fails to show
service mark use because the installation was performed as part of a trade show. We
disagree. The video constitutes an advertisement in the form of a demonstration of
the “construction” and “installation” services identified in the application filmed at a
trade show. The Office has long recognized trade show materials as appropriate
specimens. See, e.g., In re Ancha Elecs. Inc., 1 USPQ2d 1318 (TTAB 1986) (holding
that a photograph showing an informational flyer or leaflet clearly depicting the mark
and presented on the goods at a trade show exhibit was an acceptable display
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associated with the goods). That being said, even if the demonstration had been
filmed elsewhere, the result would be the same. In other words, the location of the
filming is not crucial; what is critical is that the video constitutes an advertisement
for the services.
The Examining Attorney also objects to the specimen because he assumes that the
fire training system was installed by the consumer or some other third party, not the
Applicant. We surmise that the Examining Attorney’s concern arises from use of the
passive voice in the video. We are not troubled by this since Applicant clarifies in its
brief that it has constructed and installed fire training systems for the U.S. Navy and
Los Angeles Fire Department. Brief, p. 9; 7 TTABVUE 10. See In re TheCardio Grp.,
2019 USPQ2d at 232.
In sum, we find that the substitute specimen Promotional Video No. 2 shows a
direct association between the applied-for mark and the identified Class 37 services.
In light of our holding that consumers would perceive Applicant’s mark as a source
indicator for those services, we need not address the original and remaining
substitute specimens.
Decision: The refusal to register is reversed.