Marketsource Agency Network, LLC

Trademark Trial and Appeal Board

Mar 27, 2017

No. 86505567 (T.T.A.B. Mar. 27, 2017)

THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB

Mailed: March 27, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
________

In re Marketsource Agency Network, LLC
________

Serial No. 86505567
_______

Maribeth Meluch of Isaac Wiles Burkholder & Teetor, LLC
for Marketsource Agency Network, LLC.

Andrew Leaser, Trademark Examining Attorney, Law Office 117,
Hellen M. Bryan-Johnson, Managing Attorney.
_______

Before Mermelstein, Bergsman, and Wellington,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Marketsource Agency Network, LLC (“Applicant”) filed an application to register
the standard-character mark indie agents on the Supplemental Register for
“providing insurance services on behalf of insurance carriers for independent agents
of property and casualty insurance, namely, underwriting and issuance of all types
of insurance” in International Class 36.1

1 Application Serial No. 86505567, filed January 16, 2015 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on an allegation of a bona fide intention to use
the mark in commerce and seeking registration on the Principal Register. On July 28, 2015,
Applicant filed an amendment to allege use claiming first use anywhere and in commerce on
March 27, 2015. Applicant also amended the application to seek registration on the
Supplemental Register.
Serial No. 86505567

2

The Examining Attorney has refused registration on the ground that the
specimens do not show use of the applied-for mark in commerce in connection with
the recited services, pursuant to Trademark Act Sections 1 and 45, 15 U.S.C. §§ 1051
and 1127. Registration is also refused on the ground that the applied-for mark, as
used on the specimens of record, does not function as a service mark, pursuant to
Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§ 1051-53, and 1127.
When the refusal was made final, Applicant appealed and requested
reconsideration. The request for reconsideration was denied, and the appeal was
resumed. Applicant and the Examining Attorney filed briefs.
Background – The Recitation of Services and Specimens Submitted
Because the two bases for the refusal to register Applicant’s proposed mark
involve the specimens of use, as well as the services recited in the Application, we
offer some relevant background involving the prosecution of the Application.
With respect to Applicant’s services, they were initially described in the
Application as:
Market access provider offering consulting and product placement services
to independent insurance agents in the industry of Property and Casualty
insurance; namely front-line underwriting, marketing and distributing of
all kinds of insurance products and related insurance services on behalf of
insurance carriers for independent agents to sell and promote to current
and prospective insurance consumers.

In the first Office Action, dated April 25, 2015, the Examining Attorney stated,
inter alia,2 that “the identification of services is so confusingly written that it is

2 The Examining Attorney also refused registration on the basis of the mark being merely
descriptive of the services. Applicant, in response and to obviate the refusal, amended the
Serial No. 86505567

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unclear what services applicant is actually providing, and thus the present wording
could include services in various international classes.” The Examining Attorney
explained in detail the problems with certain wording in the recitation of services. He
also stated:
Given the problems with the present identification, applicant must rewrite
the identification of services in its entirety because of the nature and extent
of the amendments needed to make it conform to USPTO standards. 37
C.F.R. § 2.74(a).

Applicant may adopt the following identifications of services, if accurate:

Class 35: Providing business consulting, marketing, and sales leads to
independent property and casualty insurance agents.

Class 36: Providing insurance services on behalf of insurance carriers for
independent agents of property and casualty insurance, namely,
underwriting and issuance of all types of insurance.

It is also important to note that, at the time of the first Office Action, there were
no specimens of record or any other materials of record to aid the Examining Attorney
in understanding the precise nature of Applicant’s services.
Applicant filed a response, dated July 28, 2015, wherein it amended the
application to adopt the latter recitation of services suggested by the Examining
Attorney. This is the current, operative recitation of services.
With respect to the specimens and for ease of reference, we number and caption
each submission of specimens by date.

application to seek registration on the Supplemental Register. See Note 1.
Serial No. 86505567

4

First – August 24, 2015
With its Amendment to Allege Use (AAU), Applicant submitted the following
specimen consisting of webpage advertising:3

3 Filed on July 28, 2015.
Serial No. 86505567

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The Examining Attorney, in an Office Action dated August 29, 2015, rejected the
above specimen solely on the ground that applied-for mark does not function as a
mark, pursuant to Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§ 1051-1053,
and 1127. In particular, he asserted, inter alia, that the applied-for mark “does not
function as a service mark because it is surrounded by informational wording in the
same font style, color, and size” and that “the commercial impression engendered by
the webpage advertising is that applicant is merely describing the intended users of
its services.”
Second – November 19, 2015
On November 19, 2015, Applicant submitted two substitute specimens that
appear, in relevant part, as follows:

Serial No. 86505567

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[as part of a larger mailer advertisement]
-and-
.

The Examining Attorney, in the Office Action dated December 12, 2015, refused
registration on the additional ground that the substitute specimens do not show a
Serial No. 86505567

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direct association between the applied-for mark and the identified services and “thus,
fail to show the applied-for mark in use in commerce for [the recited services],” under
Trademark Act Sections 1 and 45, 15 U.S.C. §§ 1051 and 1127. Specifically, with
respect to the first substitute specimen, the Examining Attorney states:
[the specimen] indicates that the services applicant provides “giv[e] Indie
AgentsSM an edge now” and “mak[e] Indie Agents and the companies we
partner with, winners.” This specimen does not show that “Indie Agents”
is being used by applicant as a source-identifier for insurance services.
Instead, it merely references the intended users of applicant’s services,
indicating why they should choose applicant’s services.

With respect to the second of the two substitute specimens, he argues:
[the specimen] says that applicant “support[s] Indie AgentsSM like you.”
Again, this specimen merely references the intended users of applicant’s
services; it does not act as a source-identifier for insurance underwriting
services. The second specimen also discusses an “Indie Agent SM Expo.”
Similar to the previous specimen, this specimen indicates that an expo is
being provided for independent agents. It does not show that applicant
uses “Indie Agent” as a service mark for insurance underwriting services.

In the Office Action, the Examining Attorney maintained the refusal based on the
substitute specimens also not showing the applied-for mark functioning as a mark.
Third – February 11, 2016
Applicant, in a response filed on February 11, 2016, attached the following
printouts:
Serial No. 86505567

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and:
Serial No. 86505567

9

In the response, Applicant described the above materials as follows:
The first specimen is a website page promoting the services provided under
the Indie Agent mark to independent insurance agents, namely connecting
them to top industry resources. The second specimen consists of an
advertisement for the Indie Agent Expo, a conference provided for
independent agent services providing services under the Indie Agent mark
to grow their business. Much like Microsoft uses Apple to identify its
products and services, Marketsource uses Indie Agent.

In an Office Action dated March 1, 2016, the Examining Attorney rejected
Applicant’s latest submission of specimens and made final the refusals to
registration.
Fourth – September 1, 2016
With its request for reconsideration, filed on September 1, 2016, Applicant
submitted the following new specimen:
Serial No. 86505567

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In the request for reconsideration, Applicant described the above specimen as
follows:
Serial No. 86505567

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Photo of advertisement for the Indie Agent Expo sponsored by Indium fka
Marketsource which is service of applicant and provides education and
informational services to its members under the mark Indie Agent; website
calling out members to become indie agents by utilizing these services
promoted under the Indie Agent trademark.

In the Office Action dated September 3, 2016, the Examining Attorney denied
Applicant’s request for reconsideration, maintaining the same two refusals to
register, namely, (1) that Applicant’s applied-for mark, as shown in the specimens,
fails to function as a service mark, and (2) the specimens do no show use of the
applied-for mark in connection with the services recited in the Application.4
Specimens Do Not Show Use of Applied-For Mark
in Connection With Services Recited in Application

Section 1(a) of the Trademark Act, 15 U.S.C. § 1051, provides that a use-based
application, such as Applicant’s, must be accompanied by a specimen of the mark as
used in commerce. According to Trademark Act Section 45, 15 U.S.C. § 1127, a service
mark is used in commerce “when it is used or displayed in the sale or advertising of
services.” See also 37 C.F.R. § 2.56(b)(2). The use may be established by: (1) showing
the mark used or displayed as a service mark in the sale of the services, which

4 The Examining Attorney also stated near the end of the Office Action:
Please note that the specimens submitted with the request for reconsideration are not
acceptable in any event because they show the applied-for mark being used as INDIE
AGENT, not INDIE AGENTS. As such, the marks do not match, and therefore the
specimens submitted with the request for reconsideration do not show use of the
applied-for mark in commerce.
This issue was not raised with respect to the first specimen that was submitted with the
amendment to allege use and where the term INDIE AGENT appears singular. Moreover,
the Examining Attorney did not raise this issue as a separate basis for refusal, see TMEP
Section 807.12 involving agreement of mark in drawing with that on specimen, or issue a
second or final refusal based on it. We therefore give this argument no more consideration.
Serial No. 86505567

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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. See In re Way Media, Inc., 118
USPQ2d 1697, 1698 (TTAB 2016). An acceptable specimen must show “some direct
association between the offer of services and the mark sought to be registered
therefor.” In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456, 457 (CCPA
1973). A specimen that shows the mark with no reference to, or association with, the
relevant services does not show service mark usage. In re Adair, 45 USPQ2d 1211,
1214-15 (TTAB 1997); In re Duratech Industries Inc., 13 USPQ2d 2052, 2054 (TTAB
1989). “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.’” Way Media, 118 USPQ2d at 1698 (quoting In re Osmotica
Holdings Corp., 95 USPQ2d 1666, 1668 (TTAB 2010)).
In its brief, Applicant argues:
Applicant’s various specimens provided through this tortured process
adequately describe the services associated with the mark INDIE
AGENTS. Applicant uses the mark INDIE AGENTS to brand its function
as assisting its members, independent insurance agents, in developing and
growing their own insurance agencies. Applicant provides various services
to the members under this brand such as providing them increased access
to highly respected insurance carriers so they can in turn provide those
products to their customers. That is consistent with its identification of
services: Providing insurance services on behalf of insurance carriers for
independent agents of property and casualty insurance, namely,
underwriting and issuance of all types of insurance. Thus, Applicant’s
mark has a direct association with the services provided.

Serial No. 86505567

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We disagree with Applicant’s contention that the services indicated on the
various specimens or those that it claims in its brief to actually render are “consistent
with its identification of services” in the Application. To the contrary, based on the
specimens and Applicant’s description in its brief regarding the services it actually
renders, it becomes clear that Applicant does not provide the services as they are
described in the Application. That is, although the specimens of record indicate that
Applicant’s actual services involve “provid[ing] various services to the members
[independent insurance agents] under this brand such as providing them increased
access to highly respected insurance carriers so they can in turn provide those
products to their customers,”5 these are not the same, or included within, the services
described in the Application, i.e., “underwriting and issuance of all types of
insurance.” The problem is further borne out in email correspondence from
Applicant’s counsel to the Examining Attorney:6
[T]here may be some confusion in the interpretation of the description. The
mark is used for “insurance services” that applicant provides to its
members under the Indie Agent mark. For example, Indium offers
technology and training for its members to enable them to better sell
insurance products through their own agencies. Therefore the proposed
specimen captures exactly what is offered under the INDIE AGENT mark
to members – training on how to better sell and serve their clientele,

5 We note that Applicant’s actual services, as Applicant describes them in its brief and in the
specimens, are more in line with the first possible recitation of services that the Examining
Attorney proposed to Applicant in the first Office Action – “Providing business consulting,
marketing, and sales leads to independent property and casualty insurance agents” in
International Class 35. Although Applicant had the opportunity at one point to adopt this
description of services, Applicant could not do so once it amended the application to adopt the
current recitation of services in Class 36. Unfortunately, this would constitute an
impermissible amendment beyond the scope of the current recitation of services. Trademark
Rule 2.71(a) (allowing amendments to “clarify or limit, but not ... broaden, the identification
of goods and/or services”).
6 “Notation to File,” entered on November 3, 2016.
Serial No. 86505567

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technology and lending to purchase the necessary products to do so. The
mark is not used in the selling of insurance by INDIUM.

The specimens submitted by Applicant are victim to the problem that Applicant’s
actual services are different from the services listed in the Application. The term
INDIE AGENT(S), as shown in the specimens, is being used in connection with a
service that involves Applicant assisting independent insurance agents become more
competitive in the field by giving them “access to the industry’s most respected
carriers so you can grow your business while keeping your independence.”7 Applicant
touts its services as “providing market access like no other provider through the use
of unparalleled service and technology, make Indie Agents and the companies we
partner with, winners.”8 There is no direct or indirect reference in any of the
specimens that Applicant provides insurance underwriting or the issuance of
insurance services, let alone show use of INDIE AGENTS in connection with those
services.
Although in reality it appears that the recitation of services in the application
does not accurately describe Applicant’s actual activities, we must consider the
application in light of the services which are recited, not those services which the
specimens suggest that Applicant actually provides. As presented, the issue is
whether Applicant’s specimens — which we assume to reflect Applicant’s actual
business practices — demonstrate use of the mark in the sale or advertising of the
services recited in the application. We conclude that they do not.

7 Specimen submitted with Applicant’s Request for Reconsideration on September 1, 2016.
8 Id.
Serial No. 86505567

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In sum, none of the specimens serve to show use of the mark INDIE AGENTS as
a service mark in connection with the services identified in the application. Because
we find that the proposed mark should be refused registration on this ground, we
need not address the second ground for refusal on the basis that the applied-for mark,
as used on the specimens of record, is not functioning as a service mark.
Decision: The refusal to register under Sections 1 and 45 of the Trademark Act
the applied-for mark is affirmed.