Likeable, LLC

Trademark Trial and Appeal Board

May 10, 2017

No. 86108366 (T.T.A.B. May. 10, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: May 10, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
_____

In re Likeable, LLC
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Serial No. 86108366
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Robert Clarida of Reitler Kailas & Rosenblatt LLC
for Likeable, LLC.

Jeffrey S. DeFord, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
_____

Before Kuhlke, Ritchie and Shaw, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Likeable, LLC (Applicant) seeks registration on the Principal Register of the
standard character mark LIKEABLE INDEX (INDEX disclaimed) for services
ultimately identified as “Advertising and marketing consultancy; marketing and
branding services, namely, consulting for businesses; social media strategy for
focusing on helping clients create and extend their product and brand strategies by
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building virally engaging marketing solutions and marketing consultancy,” in
International Class 35.1
The Trademark Examining Attorney has refused registration of Applicant’s
mark on the ground that the specimen of use submitted in support of Applicant’s
Statement of Use “does not show the applied-for mark in use in commerce with the
services specified in the application. Trademark Act §§ 1 and 45, 15 U.S.C. §§ 1051
and 1127; 37 C.F.R. §§ 2.34(a)(1)(iv) and 2.56(a).” Ex. Atty. Brief, 6 TTABVUE 2.
When the refusal was made final, Applicant appealed. The Examining Attorney
and Applicant filed briefs. We affirm the refusal to register.
Evidentiary Matter
As a preliminary matter, the Examining Attorney’s objection to new evidence
attached to Applicant’s appeal brief (Exhibits E-M) as untimely, is sustained.
Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d). This material has not been
considered. In re Jimmy Moore LLC, 119 USPQ2d 1764, 1767 (TTAB 2016); In re
Fiat Grp. Mktg. & Corporate Commc’ns S.p.A., 109 USPQ2d 1593, 1596 (TTAB
2014). Applicant’s argument that “the full 21-page Report” (Exhibit E), which
apparently is “the entire document from which the Specimen was excerpted,” was
“within the purview of the Examining Attorney and should have been considered by
the Examining Attorney from the outset” because “the Examining Attorney must
look to the ‘relevant commercial environment’)’,” is not persuasive. Reply Brief, 7

1 Application Serial No. 86108366, filed on November 1, 2013, based upon Applicant’s
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).
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TTABVUE 4. Presumably, Applicant is suggesting that the Examining Attorney
should have looked at the web address on the specimen of use, peruse it, and enter
more web pages from that address into the record while maintaining the refusal. If
Applicant believed that document would support its position, it was incumbent on
Applicant to make it of record during prosecution. See, e.g., In re Ancor Holdings
LLC, 79 USPQ2d 1218, 1220 (TTAB 2006) (“The record also includes applicant’s
brochure and printout from applicant’s website.”). While an Examining Attorney
should conduct his or her analysis based on the “relevant commercial environment,”
that does not mean the burden is on the Examining Attorney to review and enter
into the record matter that supports Applicant’s position, in particular, matter that
is within Applicant’s possession and control.2
Specimen Refusal
Section 1 of the Trademark Act requires that the subject matter presented for
registration be a trademark or service mark. Section 45 defines a service mark as
“any word ... used ... to identify and distinguish the services of one person ....” 15
U.S.C. § 1127. Thus, subject matter that, due to its inherent nature or the manner
in which it is used, does not function as a mark to identify and distinguish an
applicant’s applied-for services cannot be registered. As explained by the Federal
Circuit’s predecessor court:

2 We further note, consideration of this document would not change the result herein. In
addition, in regard to the untimely third-party registrations “it is well settled that neither
the Board nor our primary reviewing court is bound by prior determinations by the Office
and each case must be decided on its own merits.” In re Florists’ Transworld Delivery Inc.,
106 USPQ2d 1784, 1791-92 (TTAB 2013) (citing In re Nett Designs Inc., 236 F.3d 139, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001)).
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The requirement [of the Statute] that a mark must be
“used in the sale or advertising of services” to be
registered as a service mark is clear and specific. We
think it is not met by evidence which only shows use of
the mark as the name of a process and that the company
is in the business of rendering services generally, even
though the advertising of the services appears in the
same brochure in which the name of the process is used.
The minimum requirement is 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). See
also In re HSB Solomon Assocs. LLC, 102 USPQ2d 1269 (TTAB 2012) (CEI only
refers to a metric or index not the applied-for services); In re Osmotica Holdings
Corp., 95 USPQ2d 1666 (TTAB 2010) (OSMODEX only refers to drug delivery
technology not the consulting services); In re DSM Pharmaceuticals, Inc., 87
USPQ2d 1623 (TTAB 2008) (LIQUIDADVANTAGE only refers to software and does
not identify and distinguish the custom manufacturing services); In re Moody’s
Investor’s Service Inc., 13 USPQ2d 2043 (TTAB 1989) (ratings symbols do not
identify and distinguish rating services); In re Hughes Aircraft Co., 222 USPQ 263
(TTAB 1984) (PHOTOX only refers to deposition process and has no direct
association with applicant’s treatment services); and TRADEMARK MANUAL OF
EXAMINING PROCEDURE (TMEP) § 1301.02(e) (Jan. 2017). More recently, the Federal
Circuit reiterated that “[t]o determine whether a mark is used in connection with
the services described in the registration, a key consideration is the perception of
the user.” In re JobDiva, Inc., 843 F.3d 936, 121 USPQ2d 1122, 1126 (Fed. Cir.
2016). Thus, the question is whether the evidence of Applicant’s use of its mark
LIKEABLE INDEX “sufficiently creates in the minds of purchasers an association
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between the mark and [Applicant’s advertising and marketing consultancy;
marketing and branding services, namely, consulting for businesses; social media
strategy for focusing on helping clients create and extend their product and brand
strategies by building virally engaging marketing solutions and marketing
consultancy] services.” JobDiva, Inc., 121 USPQ2d at 1126 (quoting Ancor Holdings,
79 USPQ2d at 1221).
The pertinent portion of the specimen of use is reproduced below:3

The Examining Attorney describes the specimen as “a page from a larger
advertising document [that] discusses how to measure a brands [sic] social media
success and introduces the LIKEABILITY INDEX, a platform tool used to measure
four criteria or metrics to determine a brands [sic] social media success.” Ex. Atty.
Brief, 6 TTABVUE 5. The Examining Attorney correctly frames the analysis as

3 June 17, 2017 Specimen.
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determining whether the specimen of use shows “use of the mark in a manner that
would be perceived by potential purchasers as identifying an applicant’s services
and indicating their source.” Id. at 6. The Examining Attorney concludes based on a
review of the specimen that “[a]n ordinary consumer reading this advertisement
would see that the proposed mark is only used to identify the measurement
platform or tool for providing information regarding social media branding success
which is then used in connection with the rendering of the identified services.” Id.
Applicant argues that “the ‘tool’ to which the Mark refers is part and parcel of
[Applicant’s] Services, it does not stand alone.” App. Brief, 4 TTABVUE 3. Applicant
points to the following language in the specimen “When looking at any social media
metric, it needs to be done in tandem with listening to understand the context
surrounding that number. Listening explains the reasoning behind the metric” and
contends that “[t]he LIKEABLE INDEX tool could not exist, and would be of no use,
without the [Applicant’s] consulting services.” Id. Applicant describes the
LIKEABLE INDEX as a “component” of its services. 4 TTABVUE 4. Applicant
explains that the LIKEABLE INDEX is a means to provide the “full picture” of
several variables to customers that competitors do not provide and Applicant “has
publicized it explicitly for the purpose of advertising and promoting [Applicant’s]
consulting services over those of other consultants.” Id. Thus, Applicant contends
that the specimen of use “shows the mark ‘used in the actual sale, rendering or
advertising of the services.’” Id. (quoting Final Office Action citing TMEP §
1301.04(a), (h)(iv)(C)). In the reply brief, Applicant further explains that:
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[T]he LIKEABLE INDEX is one of the means through
which Appellant provides the Services to its customers
[and] a central element of the Services is Appellant’s
process of “listening” to its customers, in order to better
advise them on social media advertising strategy. The
LIKEABLE INDEX “tool” is one of the means by which
Appellant “listens” and is able to gather the necessary
information to determine what its customers need. Thus,
as in In re: International Environmental Corp., 230 USPQ
688 (TTAB 1986), where an applicant’s specimen
consisted of a survey, the specimen shows a direct
connection to the services because the “sale of services
involved ascertaining the needs of customers serviced”
and the surveys (here the index “tool”) were “directed to
potential customers.” … The tool is a means of expressing
the interaction of many variables considered by Appellant
and its customers in the text of their consultancy
relationship, including audience size, engagement,
sentiment, purchase behavior, community actions and
brand responsiveness.
Reply brief, 7 TTABVUE 3.
Applicant’s reliance on International Environmental Corp. is misplaced. The
question in that case concerned the form of the specimen, i.e., is the mark associated
with the services when used on the survey form. The Board found that the
references to “IEC’s Rep.,” “IEC Catalog” and “Quotation for a Specific Project”
evidenced the survey to be “an integral part of its offer of distributorship services.”
Id. at 691. The situation is distinguishable from this case, where the question
concerns whether use as the name of a tool, platform or index directly associates the
mark with the applied-for services.
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Finally, Applicant argues that LIKEABLE by itself is “a registered trademark of
Appellant for its services.”4 6 TTABVUE 7. Applicant contends that “prospective
purchasers will perceive the term ‘Likeable’ itself, in the context of LIKEABLE
INDEX, to be a reference to Appellant and all its services, and not merely in a
generic sense to an index that measure[s] likeability.” Id.
Upon review of the specimen of use, we find that LIKEABLE INDEX is only
used to identify Applicant’s process by which Applicant derives a particular
measurement. There is no direct association between LIKEABLE INDEX and the
applied-for services. The fact that the index may be used in the performance of its
services does not transform the index into advertising and marketing consulting
services. HSB Solomon Assoc. LLC, 102 USPQ2d at 1274. As stated in In re
Advertising & Marketing Dev., Inc., 821 F.2d 614, 2 USPQ2d 2010, 2014 (Fed. Cir.
1987) (citations omitted):
It is not enough for the applicant to be a provider of
services; the applicant also must have used the mark to
identify the named services for which registration is
sought. In In re Universal Oil Products Co ., the CCPA
affirmed the board’s refusal to register PACOL and
PENEX as marks for engineering services, even though
the applicant was a provider of such services, because the
marks had been used only to identify certain processes
and not to identify the engineering services for which
registration was sought. The CCPA stated that the
applicant had failed to show a “direct association”
between the mark and the services named in the
application. The “direct association” test does not create
an additional or more stringent requirement for

4 Although the registration certificates were untimely submitted, Applicant claims
ownership of these two registrations in its application and we have taken into consideration
the claim and Applicant’s statement regarding those registrations.
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registration; it is implicit in the statutory definition of “a
mark used * * * to identify and distinguish the services of
one person * * * from the services of others and to indicate
the source of the services. … The board may refuse service
mark registration where the mark has not been used to
identify the named services for which registration is
sought.
While providing an index may be, in general terms, part of the overarching
advertising and marketing consulting services, we must determine based on the
record what a consumer’s perception would be under the given circumstances. Here,
it appears that Applicant is providing an index that it calls LIKEABLE INDEX for
evaluating brand success on social media; however, that is not the applied-for
service.5 Moreover, the fact that the mark LIKEABLE is registered for Applicant’s
advertising and marketing services, does not impact whether consumers would view
LIKEABLE INDEX, when used in connection with an index, as another mark for its
advertising and marketing consulting services. Applicant’s prior registration does
not guarantee that any and all uses of the term “likeable” by Applicant will be
perceived as a service mark. In Ancor Holdings, 79 USPQ2d 1218, the Board found
the specimen of use for the mark INFOMINDER sufficient to support use for the
applied-for services despite being referenced as a “tool.” However, the applied-for
services in that case were “reminder services” and the “tool” rendered the “reminder

5 We note the identification of goods and services manual does reference various “indexing”
services such as “compiling indexes of information for commercial or advertising purposes”
(International Class 35), “Creating website based indexes of information for others using
information technology” (International Class 42) and “Providing financial indices of select
securities to enable consumers to evaluate investments and market trends in the securities
market” (International Class 35).
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services.” Here, the “tool” is not rendering advertising and marketing services, at
best it is providing an index.
Decision: The refusal to register LIKEABLE INDEX is affirmed.