Peabody Manage-ment, Inc.

Trademark Trial and Appeal Board

Jun 30, 2005

No. 76068295 (T.T.A.B. Jun. 30, 2005)

Hearing:
May 5, 2005 Mailed: 6/30/2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Peabody Management, Inc.
________

Serial No. 76068295
_______

Belinda J. Scrimenti and Matthew A. Griffin of Pattishall,
McAuliffe, Newbury, Hilliard and Geraldson for applicant.

Teresa Rupp, Trademark Examining Attorney, Law Office 106
(Mary Sparrow, Managing Attorney).
_______

Before Quinn, Hairston and Chapman, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application was filed by Peabody Management, Inc.
to register the matter shown below (hereinafter primarily
referred to as “THE LEGEND”) for “providing facilities for
business meetings” (in International Class 35); and
“providing facilities for banquets; hotel services; hotel
catering and concierge services” (in International Class
42).1

1 Application Serial No. 76068295, filed June 12, 2000, alleging
dates of first use in each class of 1981.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76068295
2
THE LEGEND OF THE DUCKS HOW DID THE
TRADITION OF THE DUCKS IN THE PEABODY
FOUNTAIN BEGIN? BACK IN THE 1930’S
FRANK SHUTT, GENERAL MANAGER OF THE
PEABODY, AND A FRIEND, CHIP BARWICK,
RETURNED FROM A WEEKEND HUNTING TRIP TO
ARKANSAS. THE MEN HAD A LITTLE TOO
MUCH TENNESSEE SIPPIN’ WHISKEY, AND
THOUGHT IT WOULD BE FUNNY TO PLACE SOME
OF THEIR LIVE DUCK DECOYS (IT WAS LEGAL
THEN FOR HUNTERS TO USE LIVE DECOYS) IN
THE BEAUTIFUL PEABODY FOUNTAIN. THREE
SMALL ENGLISH CALL DUCKS WERE SELECTED
AS “GUINEA PIGS,” AND THE REACTION WAS
NOTHING SHORT OF ENTHUSIASTIC. THUS
BEGAN A PEABODY TRADITION WHICH WAS TO
BECOME INTERNATIONALLY FAMOUS. THE
ORIGINAL DUCKS HAVE LONG SINCE GONE,
BUT AFTER MORE THAN 60 YEARS, THE
MARBLE FOUNTAIN IN THE HOTEL LOBBY IS
STILL GRACED WITH DUCKS. TODAY, THE
MALLARDS ARE RAISED BY A LOCAL FARMER
AND FRIEND OF THE HOTEL. THE DUCKS
LIVE IN THE FOUNTAIN UNTIL THEY ARE
FULL GROWN AND, ON RETIREMENT FROM
THEIR PEABODY DUTIES, ARE RETURNED TO
THE WILD. THE PEABODY DUCKS MARCH AT
11:00 AM AND 5:00 PM DAILY.

The trademark examining attorney refused registration
under Sections 1, 2, 3 and 45 of the Trademark Act on the
ground that the matter sought to be registered does not
function as a service mark for the recited services.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs. An oral
hearing was held before this panel of the Board.
Applicant operates The Peabody Hotels that are,
according to applicant, “famous for the Peabody Duck
Ser No. 76068295
3
March.” Applicant describes the event as follows (Brief,
p. 1):
The Peabody Ducks march daily in the
morning from their “Penthouse Palace”
with the “Duckmaster” down a carpet to
great fanfare to the Hotel lobbies’
fountains, where they spend the day
swimming. At the day’s end, they
repeat the March, in reverse, back from
the fountain. The Duck March is the
centerpiece of the Hotels’ promotions.
As part of that marketing, The Peabody
Hotels promote the Duck March by wide
use of the so-called “LEGEND”--the
promotional, embellished marketing
version of a tale about how the Duck
March tradition began.

Applicant’s website includes the following information:
“For all its history and grand tradition, nothing is more
symbolic of The Peabody than its world-famous ducks, who
spend part of every day swimming in the Grand Lobby
fountain.” Applicant indicates that its hotels are imbued
with a duck theme and that its hotels make extensive use of
“all things Duck,” with registered duck word marks
(including THE LEGEND OF THE DUCKS) and registered design
marks.2 The duck design mark is set forth below.

2 Applicant also asserts that it owns a registration of a
“motion” mark; however, that registration number was never made
part of the record by applicant.
Ser No. 76068295
4

Applicant asserts that the matter it now seeks to
register “has become a part of the Hotel lore itself”; that
the “use of this unusual Mark must be considered in context
of the already famous association of The Peabody Hotels
with Ducks”; and that nothing in the Trademark Act limits
service mark registrations to a set maximum number of
words. Moreover, applicant argues, its proposed mark is no
different than a variety of non-traditional marks that have
been registered, including trade dress, building designs,
colors, sounds, costumes and a fragrance. Applicant also
points to eight third-party lengthy word marks that the
Office has registered or for which notices of allowance
have issued.
Applicant recognizes that its proposed mark is not a
traditional one, but, according to applicant, that in
itself is what makes its mark inherently distinctive and
recognizable to its patrons. In this case, the matter
sought to be registered not only serves to provide
background to a unique event, the Duck March, but it is
also used, applicant contends, in a commercial manner in
Ser No. 76068295
5
promotional and ancillary materials to indicate the source
of applicant’s services. These materials include concierge
brochures, napkins, and presentation literature provided to
travel and meeting planners. Applicant points out that it
is not seeking registration of THE LEGEND as a trademark
for the underlying story itself in connection with books,
educational materials and the like, but rather it seeks
registration as a service mark to distinguish applicant’s
hotel and related services. Applicant goes on to argue
that “[t]hus, while the story of the Legend of the Ducks
cannot function as a trademark for the story itself, it is
capable of achieving service mark significance through its
use in connection with the promotion of Applicant’s hotel
and related services.” (Reply Brief, p. 4).
Applicant distinguishes THE LEGEND from historical
stories about other hotels because applicant’s THE LEGEND
is a “creative, engaging, and very specific, embellished
version of historical information.” Id. Applicant also
distinguishes its actual use from the way other hotels use
historical information in that applicant’s proposed mark is
used on a variety of promotional materials and items that
are distributed directly in connection with its services.
In support of its position, applicant submitted the
declarations of one of its officers, and three of its
Ser No. 76068295
6
customers, all with related exhibits.3 Portions of
applicant’s website are also of record.
The examining attorney contends that while there is no
absolute requirement that a mark be a certain number of
words and/or designs, the length of the matter sought to be
registered, 182 words, is a factor in determining whether
the matter should be granted trademark protection or,
rather, copyright protection. Although a slogan may be a
candidate for both trademark and copyright protection, a
longer collection of words, the examining attorney argues,
is more likely a proper subject for a copyright, and not a
trademark. According to the examining attorney, hotels
commonly use long narratives about their history. In this
connection, the examining attorney submitted materials
distributed by other hotels that tell the history or
folklore of the particular hotel in a story-like fashion.
The examining attorney maintains that applicant is using
the 182 words as a story about its hotels, and not as a
service mark for its services.
The term “service mark” is defined, in pertinent part,

3 There was some discussion in the briefs about whether the
examining attorney had considered all of this evidence. Both in
her brief and at the oral hearing, the examining attorney
indicated that all of the declarations, and the related exhibits
(in color), were considered. Thus, applicant’s request for
remand is denied as moot.
Ser No. 76068295
7
in Section 45 of the Trademark Act, as “any word, name,
symbol, or device, or any combination thereof (1) used by a
person....to identify and distinguish 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.” Implicit in this statutory
definition is a requirement that there be a direct
association between the mark sought to be registered and
the services specified in the application, that is, that it
be used in such a manner that it would be readily perceived
as identifying such services. See In re Advertising &
Marketing Development, 821 F.2d 614, 2 USPQ2d 2010 (Fed.
Cir. 1987); and In re Whataburger Systems, Inc., 209 USPQ
428 (TTAB 1980).
In this regard, the Court of Customs and Patent
Appeals, a predecessor to the Court of Appeals for the
Federal Circuit, stated the following: “The Trademark Act
is not an act to register mere words, but rather to
register trademarks. Before there can be registration,
there must be a trademark, and unless words have been so
used they cannot qualify.” In re Bose Corp., 546 F.2d 893,
192 USPQ 213, 215 (CCPA 1976), citing In re Standard Oil
Co., 275 F.2d 945, 125 USPQ 227 (CCPA 1960). Mere intent
that a designation function as a trademark or service mark
Ser No. 76068295
8
is not enough in and of itself. In re Morganroth, 208 USPQ
284 (TTAB 1980) [“Wishing does not make a trademark or
service mark be.”].
Whether a designation sought to be registered has been
used as a mark for the goods or services recited in an
application must be determined by examining the specimens
and other evidence of use of record. In re Volvo Cars of
North America Inc., 46 USPQ2d 1455 (TTAB 1998). A critical
element in determining whether a designation is a trademark
or service mark is the impression the designation makes on
the relevant public. Accordingly, in this case, the
critical inquiry becomes: Would THE LEGEND mark sought to
be registered be perceived as a source indicator or merely
an informational story? In re Remington Products Inc., 3
USPQ2d 1714 (TTAB 1987).
The specimen is a color photocopy of a glossy brochure
featuring THE LEGEND. The record shows that the brochure
is available in the public areas of applicant’s hotels,
including the concierge desk, for patrons to pick up and
keep. The brochure is also included in some promotional
packets sent to prospective meeting planners and other
potential customers of applicant’s services. The brochure
from The Peabody Memphis is reproduced below.
Ser No. 76068295
9

A smaller version of the brochure may be found at The
Peabody Orlando; that brochure reflects an abbreviated
version of THE LEGEND. The record also includes a
photocopy of a small napkin whereon an abbreviated version
of THE LEGEND appears. Portions of applicant’s website on
the Internet depict the Duck March and set forth a
historical narrative of the Duck March that incorporates
much of THE LEGEND.
Ser No. 76068295
10
Of record are two declarations of Merilyn G. Mangum,
applicant’s assistant secretary and general counsel. Ms.
Mangum states, in pertinent part, the following:
THE LEGEND OF THE DUCKS, in its
entirety, strongly serves to identify
The Peabody Hotels as a source of hotel
and related services of not only high
quality, but of truly unique stature.

Applicant respectfully submits that THE
LEGEND OF THE DUCKS, by virtue of both
its inherent distinctive nature and its
use on numerous materials within the
hotel functions as a service mark to
identify The Peabody Hotels. First, a
glossy brochure featuring THE LEGEND OF
THE DUCKS is distributed at our Peabody
Hotels in connection with the various
services listed in the identification.
For example, the brochure sits in
public areas of the hotel, available
for patrons present in the hotel
facilities (who are partaking of any or
all of our services), to pick up and
keep. Additionally, the brochure is
available at the concierge desk. The
brochure is also included in
promotional packets sent to prospective
meeting planners and other potential
customers of our business meeting
services, hospitality services for
major events, and catering services.

In addition to this brochure, THE
LEGEND OF THE DUCKS is published in
abbreviated form on napkins. These
napkins are used in various contexts in
the hotel, including at business
meetings for use under water glasses
and in connection with banquet and
catering events. In short, patrons of
The Peabody Hotels are exposed
frequently during their visit to THE
LEGEND OF THE DUCKS in connection with
Ser No. 76068295
11
the Hotels’ services, just as they
would see “THE PEABODY” mark, “THE
PEABODY (Stylized)” logo mark, and our
“THREE DUCKS” logo mark.

In addition to these items, THE LEGEND
OF THE DUCKS is published on the
Hotels’ web sites. Each Hotel’s
website outlines the history of The
Duck March and sets forth The LEGEND OF
THE DUCKS. Indeed, THE LEGEND OF THE
DUCKS is part of the lore of The
Peabody Hotels, and its recitation by
Hotel staff and through distribution of
materials in connection with our
services is part of the distinctiveness
of The Peabody Hotels. Hence, it is
respectfully submitted that, not only
does THE LEGEND OF THE DUCKS perform a
service mark function, but it is a very
strong service mark that readily
distinguishes and identifies our Hotels
as a source of hotel and related
services.

Also of record are three declarations of customers of
applicant’s services. The declarants are William C.
Peeper, president of the Orlando/Orange County Convention
and Visitors Bureau, Inc.; Patti Giles, owner of CLT
Meetings International, Inc. (Ms. Giles arranges clients’
conventions and business meetings, and acts as a travel
agent for personal travel); and Debbie Brown, chief
executive officer for Florida Chiropractic Association,
Inc. (Ms. Brown arranges clients’ conventions and business
meetings, and acts as a travel agent for personal travel).
The declarations are identically worded when referring to
Ser No. 76068295
12
the facts surrounding applicant’s activities and to the
declarants’ view that the matter sought to be registered
functions as a service mark for applicant’s services. The
declarations read, in pertinent part, as follows:
I am familiar with the hotels operated
by Peabody Management, Inc. (“The
Peabody Hotels”), which are well known,
not only as hotels of high quality, but
also for the unique nature of The
Peabody Duck March, in which ducks
march to and from the Hotels’ lobby
fountains daily, and spend the day
swimming in The Peabody Hotels’
fountains.

I perceive a strong association between
The Peabody Hotels and a number of Duck
associated marks used by The Peabody
Hotels. These include the Three-Duck
Logo, The Peabody Duck March itself,
and the “story” of how The Peabody Duck
March developed, known as THE LEGEND OF
THE DUCKS.

I am aware of Peabody Hotels’
continuous use of this Mark in
promotional materials sent to meeting
planners and others in the travel trade
since [the specific date that the
declarant first became aware of THE
LEGEND OF THE DUCKS Mark].

Anytime I see use of ducks in
connection with fine hotel and
hospitality services, I think of the
Peabody Hotels. Moreover, having been
provided on multiple occasions with
promotional materials such as that
depicted in Exhibit 1 featuring THE
LEGEND OF THE DUCKS Mark, which tells a
specific, embellished recitation of the
historical information, I recognize
this particular recitation of the story
Ser No. 76068295
13
as promotional “lore” and “Legend” of
The Peabody Hotels that is used as a
mark for marketing purposes.

I do not perceive The Peabody Hotels’
use of THE LEGEND OF THE DUCKS Mark as
mere advertising copy or strict
historical fact, but rather, as part of
The Peabody Hotels’ official trademark
indicia which is associated with the
Hotels themselves as the origin.
Whenever I see the story of THE LEGEND
OF THE DUCKS Mark I think of Peabody
Hotels as the source of this engaging
tale.

Once at the Peabody Hotel guests at The
Peabody Hotel are repeatedly exposed to
the various Duck marks, including uses
of THE LEGEND OF THE DUCKS Mark. These
items are distributed at the concierge
desks, and a portion of the story is
featured on cocktail napkins.

In sum, I perceive Peabody Hotels’ use
of THE LEGEND OF THE DUCKS Mark as a
mark that indicates The Peabody Hotels
as the source of the hotel and related
hospitality services.

It is well settled that when matter imparts an
impression of conveying advertising or promotional
information rather than of distinguishing or identifying
the source of the goods or services, it cannot function as
a trademark or service mark. In re Niagara Frontier
Services Inc., 221 USPQ 284, 285-85 (TTAB 1983). We find
that the length of applicant’s purported mark, although not
dispositive, is a factor to be considered herein. See
Smith v. M & B Sales and Manufacturing, 13 USPQ2d 2002,
Ser No. 76068295
14
2010 (N.D. Cal. 1990). Although the matter sought to be
registered is not a “slogan,” the situation is analogous.
As Professor McCarthy has stated:
[T]he longer the slogan, the less the
probability that it functions as a
trademark, and the greater the
probability that the slogan is merely
advertising copy--protectable, if at
all, by copyright law.

Sometimes, advertising slogans are not
in fact used as trademarks. Slogans
often appear in such a context that
they do not identify and distinguish
the source of the goods or services.
In such cases, they are neither
protectable nor registrable as
trademarks.

While slogans are capable of serving as
trademarks, often they serve a
subsidiary role to the main marks or
house marks.

1 J.T. McCarthy, McCarthy on Trademarks and Unfair
Competition § 7:20 (4th ed. Rev. 2005) Further, Professor
McCarthy states that “[t]he most that can be generalized
about this line between trademark and copyright is that the
more words, the more the creation is in the realm of
copyright. The fewer words, the more the creation is
capable of trademark protection, assuming it is used as a
mark.” Id. at § 6:17.1. We find that these views
pertaining to slogans are applicable to the matter involved
herein.
Ser No. 76068295
15
In the present case, however, it is more than just the
182-word length of THE LEGEND that drives our
determination. As used by applicant, THE LEGEND simply
would not be viewed as a service mark for applicant’s
services. Rather, consumers likely would perceive THE
LEGEND as advertising or promotional information about an
event at applicant’s hotels rather than as a source
identifier for applicant’s services of “providing
facilities for business meetings” and “providing facilities
for banquets” and for “hotel services; and hotel catering
and concierge services.” That is to say, applicant’s
specimen does not show use of THE LEGEND to identify the
services for which applicant seeks registration; to the
contrary, THE LEGEND conveys history and current
information in the nature of an advertisement for the Duck
March. We particularly note that THE LEGEND even sets
forth the time of day of the Duck March (“11:00 AM AND 5:00
PM DAILY”).
As shown by the examining attorney’s evidence,
particular stories and folklore may be associated with a
hotel. The examining attorney submitted five examples of
promotional efforts of third-party hotels. The
advertisements include historical facts or, in the case of
one establishment, a whimsical story about the hotel’s cats
Ser No. 76068295
16
that greet guests. That a story is associated with a hotel
does not mean, however, that the story functions as a
source identifier for hotel and related services. THE
LEGEND in no way serves to function as a service mark to
identify and distinguish applicant’s services. See In re
Moody’s Investors Service, Inc., 13 USPQ2d 2043 (TTAB 1989)
[“Aaa” for “providing ratings of fixed interest rate
obligations” is used in the specimens to identify and
distinguish not applicant’s rating services, but rather the
ratings themselves]. Simply put, THE LEGEND will not be
recognized in and of itself as an indicator of origin for
applicant’s identified services, but rather will be
perceived as historical and promotional information. See
In re National Geographic Society, 83 USPQ 260 (Comm’r
1949) [For a designation to become a trademark, “it must be
used in such a manner that its nature and function [as a
trademark] are readily apparent and recognizable without
extended analysis or research and certainly without legal
opinion.”]. See also 1 McCarthy on Trademarks and Unfair
Competition, supra at § 3:3 [“In other words, if it takes
extended analysis and legalistic argument to attempt to
prove that a designation has been used in a trademark
sense, then it has not. In the ordinary course of
shopping, customers do not spend long periods of time
Ser No. 76068295
17
examining labels and advertising copy with a magnifying
glass. Usually, if when viewed in context, it is not
immediately obvious that a certain designation is being
used as an indication of origin, then it probably is not.
In that case, it is not a trademark.”].
We are not persuaded by the declarations to reach a
different result. What the declarations do tend to suggest
is that at least three individuals recognize THE LEGEND and
associate it with applicant. Although THE LEGEND may be
associated with applicant’s hotel, we cannot conclude,
based on the present record, that the matter sought to be
registered functions as a service mark.
As noted earlier, not every word, name, symbol,
design, etc. that is associated with an applicant
necessarily functions as a trademark or service mark. To
function as a mark, and hence be registrable, the
designation must be used as a mark to identify the
applicant’s goods or services. As stated by the Court of
Customs and Patent Appeals: “Trademarks enable one to
determine the existence of common source; but not
everything that enables one to determine source is a
trademark. A trademark distinguishes one man’s goods from
the goods of others; but not everything that enables goods
to be distinguished will be protected as a trademark.” In
Ser No. 76068295
18
re Deister Concentrator Co., Inc., 289 F.2d 496, 129 USPQ
314, 320 (CCPA 1961). Given the nature of how THE LEGEND
is actually used, some level of recognition by only three
individuals is hardly sufficient to make unregistrable
matter into a service mark.
In urging that its applied-for mark be registered,
applicant relies on three third-party applications and five
third-party registrations.4 Applicant contends that these
third-party marks are “comparable” to its own mark, and
that “[t]hese lengthy marks reflect that a narrative of
text can indeed serve as a mark, particularly where the
text, such as THE LEGEND, has distinctive appeal and
readily distinguishes the services by offering a
captivating and memorable tale.” (Brief, pp. 16-17).
The third-party application/registration evidence is
entitled to little probative value. As to the
applications, they are evidence of nothing more than that
they were filed on particular dates. Although applicant
indicates that a notice of allowance was issued in each of
the three applications, an update of Office records shows
that the three intent-to-use applications were abandoned

4 Although copies of the applications and registrations were not
filed, the examining attorney treated them as if properly
submitted. See TBMP § 1208.02 (2d ed. rev. 2004). Accordingly,
we have considered this evidence in making our decision.
Ser No. 76068295
19
for failure to file a statement of use.5 Further, as
pointed out by the examining attorney, the issue of whether
an applied-for mark functions as a mark is normally not
raised until specimens of actual use are filed with a
statement of use. Insofar as the registrations are
concerned, as the examining attorney highlights, only one
of the marks covers services, and three of the other marks
are labels. Such use is qualitatively different from the
manner of applicant’s actual use. In addition, while
uniform treatment under the statute is an administrative
goal, our task in this appeal is to determine, based on the
record before us, whether applicant’s particular matter
sought to be registered functions as a service mark. See
In re Best Software Inc., 58 USPQ2d 1314 (TTAB 2001).
Simply put, the third-party registrations do not compel a
different result herein. In re Nett Designs Inc., 236 F.3d
1339, 57 USPq2d 1564, 1566 (Fed. Cir. 2001) [“Even if prior
registrations had some characteristics similar to
[applicant’s] application, the PTO’s allowance of such
prior registrations does not bind the Board or this
court.”].

5 The Board may take judicial notice of any changes to an
official record that is introduced into the record. See Time
Warner Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002);
TBMP §704.03(b)(1) (2d ed. rev. 2004).
Ser No. 76068295
20
For the foregoing reasons, we conclude, on this
record, that the matter sought to be registered does not
function as a service mark for the services identified in
the application.
Decision: The refusal to register is affirmed as to
both classes of services.