Outdoorlink, Inc.

Trademark Trial and Appeal Board

Jul 8, 2019

85935503 (T.T.A.B. Jul. 8, 2019)

This Opinion Is Not a
Precedent of the TTAB

Mailed: July 8, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
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In re Outdoorlink, Inc.
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Serial Nos. 85935503 & 859355081
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Jon E. Holland of Maynard Cooper & Gale, PC
for Outdoorlink, Inc.

Tarah Hardy Ludlow, Trademark Examining Attorney, Law Office 110,
Chris A.F. Pedersen, Managing Attorney.
_____
Before Taylor, Adlin, and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

1 Because the cases have common questions of fact and law, the appeals are hereby
consolidated. See, e.g., In re Anderson, 101 USPQ2d 1912, 1915 (TTAB 2012) (The Board sua
sponte consolidated two appeals). Citations to the TSDR and TTABVUE record are the same
in each application, except where indicated as identified by the respective serial numbers of
the applications.
Serial Nos. 85935503 & 85935508
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I. Background
Outdoorlink, Inc. (“Applicant”) seeks registration on the Principal Register of
SMARTLINK in standard characters2 for “Monitoring indoor and outdoor
advertisements for business purposes” in International Class 35, and
3 for:
Monitoring roadside billboards for business purposes,
namely, using images of roadside billboards for assisting
advertisers in confirming compliance with contractual
terms related to advertising dates for roadside billboards
in International Class 35.
Applicant initially based the applications on its allegation of a bona fide intent to
use the mark in commerce. After the notices of allowance issued, Applicant filed
statements of use with the identical specimen in each case,4 described as “a print-out

2 Application Serial No. 85935503 was filed May 17, 2013, based on Applicant’s assertion of
a bona fide intent to use the mark under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b).
3 Application Serial No. 85935508 was filed May 17, 2013, based on Applicant’s assertion of
a bona fide intent to use the mark under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b). The application includes a disclaimer of SMART and SYSTEMS. The mark is
described as “the wording ‘smartlink systems’ where the word ‘link’ is offset vertically from
the word ‘smart’ and where the word ‘systems’ appears in a smaller-size font below the word
‘link.’ The letters ‘n’ and ‘k’ in the word ‘link’ are joined at the base of such letters, and the
letters ‘l,’ ‘i,’ and ‘n’ in the word ‘link’ are joined at the base of such letters. An arrow extends
horizontally above the word ‘link’ from the letter ‘t,’ and the end of such arrow points
downward toward the end of the letter ‘k.’ Another arrow extends horizontally below the word
‘smart’ from the base of the word ‘link’ and points to the left side of the letter ‘s’ in the word
‘smart.’” Color is not claimed as a feature of the mark.
4 April 4, 2017 Statement of Use at 5.
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of a website showing the mark in use.”5 The specimen displayed below refers to the
“new SmartLink View application” which “allows scheduled photo capturing of your
advertisements. Use it to verify content, show proof of performance, and allow
customers to see their ads remotely”:

In each case, the Examining Attorney refused registration under Sections 1 and
45 of the Trademark Act, 15 U.S.C. §§ 1051 and 1127, on the ground that the
specimen does not show Applicant’s marks in use in connection with the recited
services.6 The Office Actions explained that “the specimen shows the mark in

5 April 4, 2017 Statement of Use at 2.
6 April 23, 2017 Office Action at 1.
Serial Nos. 85935503 & 85935508
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connection with an application that ‘allows scheduled photo capturing of your
advertisements.’ The specimen thus shows use in connection with a software
application and now [sic] with a billboard monitoring service.”7 In the responses
submitted and signed by Applicant’s in-house counsel, Applicant submitted the same
substitute specimen identified as “copy of an electronic brochure for advertising a
billboard monitoring service showing the mark in use.”8 The substitute specimen9 is
reproduced below:

7 Id.
8 October 24, 2017 Response to Office Action at 1 (Serial No. 85935503); October 23, 2017
Response to Office Action at 1 (Serial No. 85935508).
9 Id. at 2-3.
Serial Nos. 85935503 & 85935508
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Serial Nos. 85935503 & 85935508
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The Examining Attorney rejected the substitute specimen and maintained the
refusals that the specimens do not show use of the marks in connection with the
services. According to the Examining Attorney, “the [substitute] specimen shows use
in connection with a system and software that allows customers themselves to
Serial Nos. 85935503 & 85935508
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monitor billboards, but it does not show that applicant actually provides monitoring
services.”10
Applicant requested reconsideration, arguing that its software captures and sends
images of billboards, which “is part of a ‘monitoring’ service that is provided to the
user.”11 Applicant also stated that the reference in the substitute specimen to “stored
images” in the system refers to Applicant storing images on its server, arguing that
“the act of capturing and storing images over time is an act of ‘monitoring.’”12
Applicant specifically relied on a definition of “monitor” as “to watch, keep track of,
or check usu. for a special purpose.”13
The Examining Attorney denied the requests for reconsideration, finding that the
substitute specimen “shows use in connection with a digital camera system and
software that allows customers themselves to monitor billboards, but it does not show
that applicant actually provides monitoring services to and for the benefit of others.”14
Applicant appealed, and the appeals are fully briefed.
As explained below, we reverse the refusals to register because we find the
substitute specimen acceptable.15

10 November 15, 2017 Office Action at 1.
11 May 16, 2018 Request for Reconsideration at 1 (Serial No. 85935503); May 15, 2018
Request for Reconsideration at 1 (Serial No. 85935508).
12 Id. at 1.
13 Id. at 4 (Merriam-Webster’s Collegiate Dictionary).
14 August 13, 2018 Denial of Request for Reconsideration at 1 (Serial No. 85935503); May 30,
2018 Denial of Request for Reconsideration at 1 (Serial No. 85935508).
15 The briefing focused on the substitute specimen and because we find it acceptable, there is
no need to address the original specimen.
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II. Use of the Mark for the Services
Under Section 45 of the Trademark Act, 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 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”). “Relevant to
Applicant’s specimens in this case, the webpage [or e-brochure] must show the mark
used or displayed as a service mark in advertising the services. Showing only the
mark with no reference to, or association with, the services does not show service
mark usage.” In re Pitney Bowes, Inc., 125 USPQ2d 1417 (TTAB 2018) (citations
omitted). “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 WAY Media, Inc., 118 USPQ2d 1687 (TTAB 2016)
(quoting In re Osmotica Holdings Corp., 95 USPQ2d 1666, 1668 (TTAB 2010)). “To
determine whether 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). The evidence is reviewed to
determine whether use of the marks “‘sufficiently creates in the minds of purchasers
an association between the mark[s]’” and the applied-for services. Id. (quoting In re
Ancor Holdings LLC, 79 USPQ2d 1218, 1221 (TTAB 2006)).
Applicant’s services give customers the ability to remotely view the billboards they
have contracted to use for their advertisements, to ensure that the billboards display
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the appropriate content at the agreed-upon times. The Examining Attorney contends
the specimen shows use in connection with a digital camera system and software for
customers to monitor billboards, but it does “not support monitoring activities which
involve the applicant actively watching, keeping track of, or checking billboards for
the benefit of third parties.”16 Essentially, she maintains that Applicant provides a
product or system by which customers do their own monitoring. In response to
Applicant’s argument that capturing and sending images of billboards is part of a
monitoring service, the Examining Attorney concedes that the substitute specimen
“does support the sending of images and image storage.”17 However, she contends
that the transmission of images and image storage that Applicant provides are
distinct services in other international classes and do not constitute monitoring, and,
further, that the sending and storing of images “appear to be ancillary and merely
part of the system sold by the applicant.”18 She points to references on the substitute
specimen to a “proven product from OutdoorLink, Inc.” and “the SmartLink
applications” as implying that Applicant provides “cameras, hardware products, and
software applications and not an actual service.”19
Applicant asserts that it performs the recited services of “monitoring roadside
billboards” by facilitating the capture and transmission of billboard images.

16 13 TTABVUE 4 (Examining Attorney’s Brief).
17 Id.
18 Id. at 5; see August 13, 2018 Denial of Request for Reconsideration at 1 (Serial No.
85935503); May 30, 2018 Denial of Request for Reconsideration at 1 (Serial No. 85935508).
19 13 TTABVUE 5 (Examining Attorney’s Brief).
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Applicant points to references on the substitute specimen such as “Stored images in
the SmartLinkTM System” and “send images of the billboard” as a form of watching or
keeping track, in accordance with the definition of monitoring. Applicant emphasizes
that these activities in particular show that “it is clearly Applicant, not Applicant’s
customers, that is providing this service.”20 In its Reply Briefs, Applicant focuses on
image storage, insisting that “Applicant fails to see how creating and maintaining
such a history of stored images is not at least ‘keeping track of’ the billboard
advertisements for the benefit of its customers.”21 Addressing the Examining
Attorney’s assertion that Applicant provides a product rather than a service,
Applicant counters that its use of “products or applications in the course of providing
its service does not change the fact that it is providing a ‘service’ for which it is
entitled to registration.”22 Applicant criticizes the Examining Attorney’s lack of legal
authority supporting the theory that any services are ancillary to the product, and
argues that customers pay a monthly subscription fee for its services.23
Although neither Applicant nor the Examining Attorney cited or discussed the
United States Court of Appeals for the Federal Circuit’s decision in In re JobDiva,
Inc., 843 F.3d 936, 121 USPQ2d 1122 (Fed. Cir. 2016), it provides important guidance
here. In JobDiva, the Court vacated a Board decision holding that JobDiva’s mark

20 11 TTABVUE 5 (Applicant’s Brief).
21 14 TTABVUE 3 (Serial No. 85935503, Applicant’s Reply Brief); 15 TTABVUE 3 (Serial No.
85935508, Applicant’s Reply Brief).
22 11 TTABVUE 6 (Applicant’s Brief).
23 14 TTABVUE 4-5 (Serial No. 85935503, Applicant’s Reply Brief); 15 TTABVUE 3 (Serial
No. 85935508, Applicant’s Reply Brief).
Serial Nos. 85935503 & 85935508
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was not in use for personnel placement and recruitment services. JobDiva, 121
USPQ2d at 1122-23. JobDiva provided software that automatically performed
recruitment and hiring functions such as finding, analyzing, and communicating with
job candidates. Id. at 1124-25. The Board reviewed website screenshots and
concluded that they contained no reference to the services “other than supplying
[JobDiva’s] software.” Id. at 1124. The Board considered this an insufficient showing
of use of the service mark “because JobDiva’s software sales alone could not, in the
Board’s view, constitute personnel and recruitment services.” Id. at 1123.
The Federal Circuit disagreed, holding that:
The proper question is whether JobDiva, through its
software, performed personnel placement and recruitment
services and whether consumers would associate JobDiva’s
registered marks with personnel placement and
recruitment services, regardless of whether the steps of the
service were performed by software.
Id. The Federal Circuit further held that the fact-specific inquiry should include
consideration of the “nature of the user’s interaction with JobDiva when using
JobDiva’s software, as well as the location of the software host,” noting that if a user
perceives interaction with JobDiva during the operation of the software, a user would
be more likely to associate the mark with personnel placement and recruitment
services. Id. at 1126.
Ultimately, the crux of the dispute in the cases at hand centers on whether the
substitute specimen sufficiently refers to the recited services of monitoring roadside
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billboards for business purposes and associates the mark with such services.24 We
find that consumers would associate Applicant’s marks with the recited services. The
substitute specimen displays the marks in connection with wording that in its
entirety indicates that Applicant’s services send images of static billboards to
customers who have wireless access to view them, facilitating “transparency.”
Applicant’s customers may customize the intervals during which images are captured
and sent, and “Notifications will be sent in Real Time.” The graphic on the second
page of the substitute specimen shows that images captured from the billboards are
delivered to users through the “SmartlinkTM Servers” and made available “via app or
web portal.” The references to “Stored images in the SmartLinkTM System,” and
“send[ing] images of the billboard” further amplify the consumer perception of the
marks associated with monitoring services. Applicant’s customers interact with
Applicant on an ongoing basis while using the software to view the images, and would
be aware that billboard images, sent at designated intervals to the customer, are
stored on Applicant’s server and are made available either through Applicant’s app
or Applicant’s website.
In addition, the Examining Attorney has not established that Applicant’s
activities are merely ancillary to hardware or software purchased by customers.
While Applicant’s specimen shows the involvement of some equipment such as

24 Given the guidance in JobDiva, the Examining Attorney could have inquired about the
functioning of Applicant’s system and the nature of customers’ interaction with Applicant
while using the system. See Trademark Rule 2.61(b), 37 C.F.R. § 2.61(b) (“The Office may
require the applicant to furnish such information, exhibits, affidavits or declarations, and
such additional specimens as may be reasonably necessary to the proper examination of the
application.”).
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cameras, and refers at one point to a “proven product,” the specimen does not give the
impression that the marks only – or even primarily – apply to cameras, hardware,
software or other goods. Rather, the crucial inquiry is not whether hardware or
software is used in connection with the services; it is how consumers perceive the
goods or services with which the marks are associated. JobDiva, 121 USPQ2d at
1123.
In view of the above, we find that consumers would perceive Applicant as
providing the recited monitoring services under the marks. See JobDiva, 121 USPQ2d
at 1123.
Decision: Applicant’s substitute specimen demonstrates use of the marks in a
manner that creates in the minds of potential customers a direct association between
the marks and the recited services. We therefore reverse the refusals to register.