O.M., Inc.

Trademark Trial and Appeal Board

Sep 9, 2014

No. 85630902 (T.T.A.B. Sep. 9, 2014)

Mailed: September 9, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
————
In re O.M., Inc.
————
Application No. 85630902
Filed: May 21, 2012
————
Michael J. Hughes of IPLO Intellectual Property Law Offices for applicant.
Giancarlo Castro, Examining Attorney, Chris A.F. Pedersen, Managing Attorney, Law
Office 110.
————
Before Mermelstein, Wellington, and Masiello, Administrative Trademark
Judges.
Opinion by Mermelstein, Administrative Trademark Judge:
O.M., Inc. filed an application to register the mark INDUSTRIAL STRENGTH
MARGARITAS (MARGARITAS disclaimed) for “Bar services; Restaurant services;
Serving food and drinks,” in International Class 43.1 Following submission of a state-
ment of use, the examining attorney issued a final requirement for an acceptable spec-
imen showing use in commerce in connection with the services identified in the appli-
cation.
We affirm the refusal to register.

1 The application was originally filed under Trademark Act § 1(a), alleging use in commerce.
After the examining attorney found applicant’s originally-filed specimens inadequate, see Ofc.
Action (Sept. 14, 2012), applicant amended the application to seek registration under Trade-
mark Act § 1(b), based on a bona fide intent to use the mark in commerce. See Exm’r Amdt.
(Mar. 26, 2013). Although the specimens now at issue differ from those originally filed with the
application, the examining attorney’s reasons for rejection are similar.
This Opinion is Not a
Precedent of the TTAB
Application No. 85630902

2

I. Applicable Law
After issuance of a Notice of Allowance, an intent-to-use applicant must timely file
a Statement of Use and a “specimen[ ] of the mark as used in commerce.” Trademark
Act § 1(d); Trademark Rule 2.88. “A service mark specimen must show the mark as ac-
tually used in the sale or advertising of the services.” Trademark Rule 2.56(b)(2). The
only question before us is whether either of the specimens submitted with applicant’s
statement of use is acceptable. It is the examining attorney’s contention that the ap-
plied-for mark identifies a drink served in applicant’s restaurant, rather than appli-
cant’s bar and restaurant services.2
The Board has previously had occasion to consider cases arising on similar facts,
and two cases are instructive. In re Brown & Portillo Inc., 5 USPQ2d 1381 (TTAB
1987), was an appeal from the refusal to register HEARTY BASKET on the ground
“that the subject matter for registration identifies a food item sold in applicant’s res-
taurant but does not identify the restaurant services.” Id. at 1382. The Board affirmed
the refusal:
As has often been stated, a term may serve as both a
trademark and a service mark depending on how it is used
as evidenced by the specimens of record.
In the present case, the menu boards, submitted as evi-
dence of use of the mark, show HEARTY BASKET used as
a trademark to identify a particular combination of food
products sold in applicant’s restaurant. ... However, while
the mark clearly identifies the food products, Section 45 of

2 We concern ourselves primarily with applicant’s bar and restaurant services. “Serving food
and drinks” appears to be ancillary to bar and restaurant services. Neither the specimens nor
anything else in the record indicate that applicant is serving food and drinks as a service sepa-
rate from its own bar and restaurant services.
Application No. 85630902

3

the Trademark Act defines “service mark” as “a mark used
in the sale or advertising of services to identify and distin-
guish 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....” We are not per-
suaded from the record before us that HEARTY BASKET
is used to identify the restaurant services of applicant.
While it appears from the record that the mark BROWN’S
serves to identify applicant’s restaurant services, it does not
logically follow that any arbitrary designation used in a
menu to identify a particular food or beverage available in
that restaurant also necessarily performs a service mark
function to identify the restaurant services. We conclude
that, on the record presented, HEARTY BASKET identifies
no service but, rather, serves only to identify an entree
available in the restaurant. Accordingly, we believe appli-
cant has not met the statutory requirements for service
mark registration.
Id. at 1382–83 (citations omitted).3
The Board revisited the issue a year later in In re El Torito Rests. Inc., 9 USPQ2d
2002 (TTAB 1988), which concerned the refusal to register MACHO COMBOS for
“multiple combination plates of food items as a part of restaurant services.” Id. at 2003.
Once again, the examining attorney found that the specimens “show[ed] use of the
term only to refer to the food items called MACHO COMBOS, and not as a service
mark for restaurant services.” Id. (quotation marks omitted). The Board pointed out
that the relevant inquiry is not whether the applicant’s marks are used to identify
goods, but whether they are used to identify the recited services:

3 Brown & Portillo also discussed a prior case, In re McDonald’s Corp., 230 USPQ 210 (TTAB
1986) (en banc). In McDonald’s, the Board affirmed the refusal to register EGG MCMUFFIN
and SAUSAGE MCMUFFIN for “restaurant services featuring a breakfast food combination
sandwich.” Id. at 210. As discussed in Brown & Portillo, the Board’s decision in McDonald’s
was reversed by the U.S. Court of Appeals for the Federal Circuit in a non-precedential, unre-
ported decision. The Board distinguished the record in Brown & Portillo from “the extensive
record in the McDonald’s case.” Brown & Portillo, 5 USPQ2d at 1384.
Application No. 85630902

4

There is no question but that a term may serve as a service
mark as well as a trademark for goods. The issue before us
is not, therefore, whether goods are identified by the words
sought to be registered, but rather whether the term is used
as a service mark to identify and distinguish the source of
applicant’s restaurant services even if it does also identify
the goods. Based on the specimens submitted with the ap-
plication we agree with the Examining Attorney that the
term MACHO COMBOS does not identify the restaurant
services of opposer.
Id. (citations and quotation marks omitted). Affirming the refusal, the Board found
that
[i]n both the Brown & Portillo case and the case at hand
there is no evidence, much less an extensive record which
was present in In re McDonald’s Corp., ... that the activity of
rendering restaurant services has ever been identified by
the term sought to be registered. The only evidence of use
shows the term used to identify the food items which appli-
cant calls MACHO COMBOS. This does not constitute use
as a service mark.
Id. at 2004 (quotation marks omitted).
II. Discussion
Applicant submitted two specimens with its statement of use. The first is a screen-
shot from applicant’s website and the second is a Facebook advertisement. The rele-
vant part of each specimen is reproduced below:
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Application No. 85630902

6

Ofc. Action (Oct. 12, 2013). And from the final Office action:
Registration is refused because the specimen does not show
the applied-for mark in use in commerce. Specifically, the
mark is shown in connection with specific drinks that are of-
fered at the applicant’s restaurants. The mark does not
function as a source identifier for the applicant’s services,
namely, Bar services; Restaurant services; Serving food and
drinks. A consumer would not identify or refer to the appli-
cant’s services as “Industrial Strength Margaritas.”
Ofc. Action (Nov. 19, 2013) (citations and emphasis omitted).
In response, applicant argued that its specimens are acceptable:
The advertisements submitted are clearly for the entire
range of bar and restaurant services and the present mark
is prominently and proudly associated therewith. The mark
INDUSTRIAL STRENGTH MARGARITAS, is much
more than an identity of a single menu item, as asserted by
the Examining Attorney, but refers to a line of signature
adult beverages served at Applicant’s restaurant chain and
is clearly associated with Applicant, thus functioning as a
source indicator for the services. Any person who has ever
been a customer of Applicant’s restaurant chain, upon see-
ing the term INDUSTRIAL STRENGTH MARGARITAS,
will be overwhelmingly likely to associate it with the restau-
rant chain and know that it relates to the entire range of
services, and not just to a single item.
Response to Ofc. Action (Oct. 28, 2013).
An acceptable specimen must show the mark “as actually used in the sale or adver-
tising of the services.” Trademark Rule 2.56(b)(2). Applicant characterizes the examin-
ing attorney’s refusal as a finding that INDUSTRIAL STRENGTH MARGARITAS
“is incapable of being a source indicator for [applicant’s restaurant services] as well as
for” applicant’s beverages. App. Br. at 4 (emphasis supplied). To the contrary, the final
Office action indicated that “[r]egistration [was] refused because the specimen does not
show the applied-for mark in use in commerce.” Ofc. Action (Nov. 19, 2003). There is no
Application No. 85630902

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per se rule which disqualifies a mark from being registered for restaurant services
merely because it also identifies a food or drink item. Indeed, the refusal in this case
was framed as a specimen issue, which could have been overcome by the submission of
substitute specimens (if they existed). In other words, it is not the examining attorney’s
position that INDUSTRIAL STRENGTH MARGARITAS cannot be used as a service
mark for applicant’s restaurant services, but rather that the specimens which applicant
submitted do not show such use.
Applicant’s mark itself connotes an alcoholic drink, namely a strong margarita. In
this context, a “margarita” would be readily recognized by applicant’s customers as the
name of a cocktail, typically featuring tequila, lime juice and orange liqueur. Diction-
ary.com, (based on the RANDOM HOUSE DICTIONARY) “margarita” (visited Sept. 2,
2014).4 Likewise, “industrial strength” is an adjective implying that something is “unu-
sually strong [or] potent.” Id. Therefore, the term INDUSTRIAL STRENGTH
MARGARITAS would readily be perceived as referring to a drink or drinks. Of course,
there is no rule against a particular designation serving as both a trademark and a
service mark, and as noted, the question before us is not whether applicant’s mark
identifies goods, but whether it has been used in Applicant’s advertising in such a way
as to “identify and distinguish” applicant’s recited services. Trademark Act § 45 (defini-
tion of “service mark”); In re El Torito, 9 USPQ2d at 2003. That said, there is nothing
inherent in the mark itself or in the way it is used in the specimens of record which

4 The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v.
J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983), including online dictionaries that exist in printed format or have regular fixed
editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
Application No. 85630902

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would suggest to a prospective customer that it identifies applicant’s services.
Applicant’s mark clearly appears in the specimens of record, and each specimen al-
so includes the name of applicant’s restaurant. But although it is clear that both spec-
imens promote applicant’s bar and restaurant services to some extent, it does not fol-
low that any mark used in or with such an advertisement is itself used to identify and
promote those services. The specimen from applicant’s website shows the name of ap-
plicant’s restaurant (Aqui) flanked by what appear to be links labeled “Experience
Aqui,” “Menus,” “What’s New,” “Saddle Bar,” “Locations,” and “Contact Us,” which pre-
sumably direct potential customers to further information about applicant’s bar and
restaurant. Below that are three relatively large photographs of food and drinks. Final-
ly, below the photographs is a rectangle with a diagonal banner across the upper left
corner reading “HOME OF” and three listed items: “INDUSTRIAL STRENGTH
SWIRLS™;” “INDUSTRIAL STRENGTH MARGARITAS™;” and “INDUSTRIAL
STRENGTH MARTINI SWIRLS™.” The clear message is that the listed drinks are
available at the restaurant called Aqui. But as they are used here, the names of appli-
cant’s drinks are just that, and nothing more. None is used in any way to identify ap-
plicant’s restaurant and bar, and they would not be perceived as referring to anything
other than drinks which can be purchased there.
The Facebook ad fares no better. Under the heading “Click If You Need A Drink,”
the small ad features a picture of three fancy drinks and the text “Aqui Cal-Mex –
Home of the Industrial Strength Margaritas™, Swirls™, & Martini Swirls™.” Alt-
hough this terse advertisement implies that those drinks are available at “Aqui Cal-
Application No. 85630902

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Mex,” the mark is clearly not used to identify and distinguish the restaurant itself.
Even if the unwritten message is “come to Aqui Cal-Mex restaurant and bar because
you can get INDUSTRIAL STRENGTH MARGARITAS there,” the mark still identi-
fies the drink, not applicant’s bar and restaurant services.
Applicant admits “that the primary significance” of the marks as used in the spec-
imens is “to identify a class of drinks,” App. Br. at 7, but nonetheless contends that
“[t]he specimens are advertisements which encompass the entire scope of the business
operation. The framing of the mark in the phrase ‘Home of INDUSTRIAL
STRENGTH MARGARITAS’ clearly invokes that entire scope of services and creates
a very clear association in the minds of the observer between the mark and those ser-
vices.” Reply Br. at 2–3. We disagree. The fact that INDUSTRIAL STRENGTH
MARGARITAS is used with or near other matter which promotes applicant’s services
does not mean that mark would also be perceived as identifying those services.
Applicant also argues that
[i]t cannot be rationally asserted that the public does not
think of McDonald’s restaurants when the term “Big Mac” is
seen or heard. Similarly when the term WHOPPER® is used
(see e.g. US Reg. No. 3,736,954 – TSDR Report in the rec-
ord) the consuming public associates it with the entire ser-
vices of Burger King. Recognition of these menu items and
countless other signature items of restaurant chains have,
through usage and advertisement, attained the levels of
consumer recognition which make them akin to taglines and
slogans associated with the enterprises.
App. Br. at 9–10.
Applicant’s own argument acknowledges that “usage and advertisement” lead to
“consumer recognition” of a mark. The question before us now is whether applicant has
Application No. 85630902

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used and advertised its mark in such a manner as to associate it with its services, not
whether McDonald’s or Burger King have done so. As the examining attorney correctly
notes, Ex. Atty. Br. at 4, we are not bound by the prior decisions of examining attor-
neys. In re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); see In
re Shinnecock Smoke Shop, 571 F.2d 1171, 91 USPQ2d 1218, 1221 (Fed. Cir. 2009) (cit-
ing In re Boulevard Entm’t, 334 F.3d 1336, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003))
(“Even if all of the third-party registrations should have been refused registration . . .,
such errors do not bind the USPTO to improperly register Applicant’s marks.”).5
Similarly, applicant argues that it has used its mark “since 1994, easily long
enough for customers to readily identify the mark as being uniquely associated with
[applicant] and its services.” App. Br. at 7. But even assuming that customers easily
associate the drinks referred to as INDUSTRIAL STRENGTH MARGARITAS with
applicant, the specimens do nothing to show that the mark is associated with some-
thing else applicant offers, namely, bar and restaurant services. It is not enough to
show that the drinks are associated with applicant and applicant is associated with the
services.
Finally, applicant argues that without approval of this application, it has no other
options for protection of its INDUSTRIAL STRENGTH MARGARITAS mark:
Unlike food and beverage items which can be packaged and

5 Even if we were to consider applicant’s examples as some sort of precedent, they would not
help to decide this case. As we have explained, whether a specimen is adequate to demonstrate
use of the mark in connection with services turns on how the mark is actually used, and we
have no evidence in the record of use by these parties.

Application No. 85630902

11

sold to the public off-premises signature menu items, and
particularly beverages, are not readily protectable as stand-
alone goods. Since these are typically sold only as part of the
restaurant or bar services there is no packaging or the like
which could serve as an acceptable specimen of use. Espe-
cially for alcoholic beverages, which cannot legally be sold as
take-out items, no packaging materials or containers will
exist carrying the brand. In this context the owners of the
marks do not have avenues for protection except in the con-
text of the overall services. For this reason as well, it is il-
logical and unfair to deny protection of the mark in associa-
tion with the services and accept broad scope advertising as
proper specimens evidencing the use.
App. Br. at 11.
Some of applicant’s assumptions are puzzling,6 but even if applicant were correct,
the result would be the same. The issue before us is registration, not the protection of
applicant’s mark, and in order to register its mark, applicant must submit a specimen
demonstrating use of the mark in connection with the services set out in the application.
The specimens applicant has submitted show use of INDUSTRIAL STRENGTH
MARGARITAS to identify drinks available in applicant’s establishment, but they do
not show use of the mark to refer to “bar services; restaurant services; serving food and
drinks.”

6 Applicant argues that “drinks are not readily protectable as stand-alone goods.” Yet we have
no doubt that there are at least some registrations for ready-to-drink cocktails sold in bottles or
cans. More importantly, applicant appears to be under the impression that a mark used to
identify drinks sold only in a restaurant or bar could not be registered as such. We need not
address that issue, although it is not clear to us that applicant is correct. Moreover, the absence
of packaging materials or the like is not insurmountable; a trademark for goods may be placed
on “displays associated therewith” or, when “the nature of the goods makes [it] impracticable”
to affix a trademark to the goods themselves or to their packaging, use of the mark “on docu-
ments associated with the goods or their sale” can adequately demonstrate use of the mark in
commerce. Trademark Act § 45(1)(A) (“Use in commerce”).
Application No. 85630902

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III. Conclusion
We have considered all of the evidence of record, including any we have not specifi-
cally discussed. We conclude that the specimens of record are not acceptable evidence
of “use in commerce” (as defined in the Trademark Act) of applicant’s mark in such a
way as to identify and distinguish applicant’s “bar services; restaurant services; serv-
ing food and drinks.”
Decision: The requirement of the examining attorney for acceptable specimens of use
is AFFIRMED.