Paul Murad, LTDDownload PDFTrademark Trial and Appeal BoardOct 19, 2009No. 77362077 (T.T.A.B. Oct. 19, 2009) Copy Citation 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 7 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 8 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 10 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. Copy with citationCopy as parenthetical citation