Paul Murad, LTD

Trademark Trial and Appeal Board

Oct 19, 2009

No. 77362077 (T.T.A.B. Oct. 19, 2009)

Mailed: October 19, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Paul Murad, LTD
________

Serial No. 77362077
_______

Dana B. Robinson of Dana Robinson & Associates for Paul Murad,
LTD.

David A. Hoffman, Trademark Examining Attorney, Law Office 107
(J. Leslie Bishop, Managing Attorney).
_______

Before Grendel, Holtzman and Mermelstein, Administrative
Trademark Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Applicant, Paul Murad, LTD, has filed an application to
register the mark MANHATTANIZING in standard characters on the
Principal Register for services ultimately identified as
"publication of book series" in Class 41.1
The trademark examining attorney refused registration of the
mark under Sections 1 and 45 of the Trademark Act on the ground

1 Application Serial No. 77362077, filed December 31, 2007, alleging a
date of first use and first use in commerce of March 20, 2005.

THIS OPINION IS
NOT A PRECEDENT OF
THE TTAB
Serial No. 77362077
2
the specimen submitted with the application fails to show use of
the mark for the identified services as required by Trademark
Rule 2.56. Applicant subsequently provided four additional
specimens, none of which, according to the examining attorney,
show use of the mark in connection with the services.
When the refusal was made final, applicant appealed. Briefs
have been filed.
Before turning to the merits, there are several preliminary
matters we need to address. First, the evidence attached to
applicant's brief and Exhibits A through C attached to its reply
brief are untimely and will not be considered. See Trademark
Rule 2.142(d). Applicant, in addition, submitted a substitute
specimen with its reply brief, which is in effect an amendment
filed in an attempt to overcome the final refusal. This
amendment is not only untimely, but was not properly made by a
separate request for a remand accompanied by a showing of good
cause. See TBMP §§1205 and 1209 (2d ed. rev. 2004). We add,
however, that even if all of these untimely materials, including
the substitute specimen, were considered, they would not affect
the outcome of this case.
We will consider the attachment to applicant's reply brief
identified as "Exhibit D." This document is a clearer copy of
applicant's original specimen which was barely legible. We note,
however, that there is some confusion as to what the original
Serial No. 77362077
3
specimen actually is. A copy of this specimen is reproduced
below.

Although the specimen is identified in the application as
"an advertisement for a book showing the mark as a brand at the
bottom of the flyer," applicant describes the specimen in its
appeal brief as "the back cover of a third party's book."
Applicant argues that the trademark "is prominently featured on
Serial No. 77362077
4
the back cover" and that back covers of books typically display
the publisher's name and mark in this manner. Whether or not
that is the case, however, is not relevant. Based on applicant's
description of the specimen in its application, and moreover as
confirmed by applicant in its reply brief, the specimen is not
the back cover of a book. Applicant "clarifies" in its reply
brief that the specimen "is actually a separate single card
brochure." We accept this as a proper characterization of the
specimen, and we will decide the issue on that basis.
A related problem concerns applicant's request in its appeal
brief "to withdraw any specimens not submitted as part of
Applicant's trademark application" and that "the original
specimen submitted as part of the application be the subject of
this appeal." Because this request may have been based on
applicant's mischaracterization of the specimen as the back cover
of a book and its belief that use of the mark in this manner was
sufficient to show service mark use, we deem the request
withdrawn, and we will evaluate all of the specimens in making
our determination.
As a final matter, applicant in its reply brief requests
that in the event the Board affirms the refusal, applicant be
permitted "to amend its application to the 'Intent-to-Use' basis
and re-file its Statement of Use when it can show another book in
the 'Manhattanizing' series." We cannot entertain applicant's
Serial No. 77362077
5
proposed alternative amendment. If the refusal is affirmed, the
application would have to be reopened in order to enter the
amendment, and Trademark Rule 2.142(g) specifically states that
"[a]n application which has been considered and decided on appeal
will not be reopened except for the entry of a disclaimer." The
proposed amendment is accordingly denied.
We turn then to the question of whether MANHATTANIZING as
used on the specimens of record identifies applicant's recited
publishing services. A "service mark" as defined in Section 45
of the Trademark Act is "used by a person...to identify and
distinguish the services of one person...from the services of
others and to indicate the source of the services." Section 45
further provides that a service mark is used in commerce "when it
is used or displayed in the sale or advertising of services," and
Trademark Rule 2.56(b)(2) in turn requires a specimen showing the
mark as actually used in the sale or advertising of the
identified services. Thus, in order to be perceived as a mark
identifying the source of the services, the specimens must show a
direct association between the services and the mark sought to be
registered. See In re Advertising & Marketing Development, 821
F.2d 614, 2 USPQ2d 2010, 2014 (Fed. Cir. 1987) ("The 'direct
association' test...is implicit in the statutory definition of a
[service mark]."); and In re Universal Oil Products Co., 476 F.2d
653, 177 USPQ 456, 457 (CCPA 1973). The determination of whether
Serial No. 77362077
6
a designation is used in the manner of a mark to identify the
services is made based upon the specimens and other evidence of
record.
The original specimen, shown above, and identified as a
"single card brochure" is an advertisement for a book. The title
of the book "Manhattanizing Las Vegas - How to Profit from the
Second Phase of Vertical Growth" appears at the top of the
brochure and the notation "Second Edition" appears directly below
the title. The card includes instructions for ordering the book
("GET YOUR BOOK TODAY AT www.ManhattanizaingLasVegas.com"),
information about the contents of the book, and comments about
the book and about Paul Murad, the author of the book. The mark
MANHATTANIZING along with a design mark is displayed at the
bottom of the advertisement with the website address
"www.manhattanizing.com" appearing in small lettering below.
Applicant is seeking registration for publishing services,
but nowhere are the publishing services even mentioned on the
brochure. The mark is clearly used in advertising, but that is
not enough. The problem is that the mark is not used in
advertising (or in the sale) of publishing services. We have no
basis to infer merely from the appearance of the mark somewhere
in an advertisement for a book that the mark would be recognized
by purchasers as identifying a book publishing service. We agree
with the examining attorney that it is not entirely clear what
Serial No. 77362077
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the mark is used to identify or how it would be perceived. It
may be perceived by consumers as relating to the subject matter
of the book or perhaps as advertising a series of MANHATTANIZING
books.2 The use of the term "Manhattanizing" as a portion of the
title of the book would likely reinforce this perception.
Indeed, it is applicant's contention that the mark "functions as
a source for a series books."3 Reply Br., p. 3. However, based
on this specimen, the required direct association between the
mark and the identified publishing services cannot be made.
Applicant's four additional specimens consist of screen
shots of various web pages, all of which in one form or another
are promoting the sale of Paul Murad's book "Manhattanizing Las
Vegas: How to profit from the Second Phase of Vertical Growth."
Three of the pages are from the website paulmurad.com. The
"proddetail" page displays the front cover of the book with the
title at the top, a night photograph of the city of Las Vegas in
the middle, and the author's name Paul Murad below the
photograph. The page includes a link for purchasing the book.
The "products" page of the website displays the cover of the
book, offers a discount on the price of the book and includes a

2 This is not to say that the specimen is appropriate to show use of
the mark on a series of books or that applicant actually has a series
of books, which it apparently does not.

3 We note that applicant, at one point during prosecution, sought to
amend its identification from book publishing services to goods, i.e.,
"books," and that the examining attorney rejected this amendment as
outside the scope of the original identification.
Serial No. 77362077
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tab for ordering the book. The "about" Paul Murad page describes
the contents of the book as including "Investment strategies to
take advantage of the Manhattanization of Las Vegas for yourself
and your clients!" The last screen shot is a page from the
website e-mailadvantage.com which, in addition to depicting the
cover of the book, announces an upcoming real estate course
titled "'HIGH-RISE 101 - BECOMING an EXPERT'" presented by "'The
MANHATTANIZING INITIATIVE.'"
None of these documents show use of "MANHATTANIZING" per se,
that is, apart from other wording, and moreover none of the
documents contain any reference to a publishing service. As used
on these specimens, the term MANHATTANIZING may be perceived
simply as part of the title of a book, or as part of the title of
a course, but it would not be recognized as a mark to identify
publishing services. While these specimens may show that source
of the book is applicant, or the source of real estate consulting
or educational services is applicant, they show neither that
applicant is providing a publishing service nor that
MANHATTANIZING identifies any such service. See In re Republic
of Austria Spanische Reitschule, 197 USPQ 494, 499 (TTAB 1977)
("[although a designation] may be demonstrably associated with an
applicant, nevertheless it is not registrable unless it is
recognizably used as a mark, i.e., to identify and distinguish
the goods or services of the applicant.").
Serial No. 77362077
9
The examining attorney questions whether applicant is
actually providing a publishing service, stating that applicant
appears to be merely publishing its own books which would not be
considered a separate service. Applicant, on the other hand,
insists that it is publishing the books of a third party inasmuch
as applicant Paul Murad LTD is a corporate entity and is not the
author of the book, Paul Murad.4
Applicant's attempt to amend the application to "books" and
its assertion that the mark "functions as a source for a series
of books" tends to undermine applicant's claim that
MANHATTANIZING identifies publishing services for third-party
books. Nevertheless, the issue before us is not whether
applicant is in fact providing a publishing service. For
purposes of this appeal, we will assume that it is. But even if
we assume that applicant actually provides a publishing service,

4 At the same time, however, applicant maintains that "the promotion of
publishing services need not only be focused on publishing the work of
third parties, but can be a use that promotes the publisher's brand to
the end user, the ultimate consumer." In this regard applicant argues
that it "intends" "to promote a 'Manhattanizing' series" of books "such
as the DUMMIES; CHICKEN SOUP; IDIOT'S GUIDE; and the like." There are
a number of problems with this argument. First, the law is clear that
publishing services must be rendered to third parties in order to
constitute a registrable service. See, e.g., In re Alaska Northwest
Publishing Co., 212 USPQ 316 (TTAB 1981). Further, there is no
evidence that terms such as "DUMMIES" or "IDIOT'S GUIDE" are used to
identify the services of publishing books rather than the books
themselves as part of a series. In addition, applicant has submitted
no evidence that it has published a series of MANHATTANIZING books, and
we note that the term "Second Edition" refers merely to another edition
of the same book. In any event, the question of whether the mark
identifies a series of books is not relevant inasmuch as applicant is
seeking registration of the mark for services, not goods.
Serial No. 77362077
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the fact remains that the mark is not used on the specimens to
identify such services. See Advertising & Marketing Development,
supra ("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").
For the foregoing reasons, we find that the specimens fail
to show use of applicant's mark to identify the services
specified in the application.
Decision: The refusal to register is affirmed.