Pitney Bowes, Inc.

Trademark Trial and Appeal Board

Jan 10, 2018

No. 86502157 (T.T.A.B. Jan. 10, 2018)

This Opinion Is a
Precedent of the TTAB

Mailed: January 10, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Pitney Bowes, Inc.
_____
Serial No. 86502157
_____

Kathryn Grant Belleau, Esq.
for Pitney Bowes, Inc.

April Roach, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
_____
Before Cataldo, Greenbaum, and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

I. Background
Pitney Bowes, Inc. (“Applicant”) seeks registration on the Principal Register of the
mark for:
Serial No. 86502157
- 2 -
Mailing services, namely, postal delivery services for mail;
postal services, namely, postal delivery services for letters
and packages; parcel delivery; packaging materials for
transportation; delivery of mail to post offices for posting;
shipping of mail, parcels and packages; providing online
shipping information, namely, providing online
information about the shipping of packages; providing
information in the field of residential postal code status
and confirmation; providing an internet portal permitting
users access to shipping and tracking of packages and
managing mail, namely, providing an online portal
featuring information in the field of package and mail
shipping and delivery; global shipping and delivery
services, for cross-border sales, namely, pickup,
transportation, and delivery of freight packages by all
available means in International Class 39.1
Applicant initially based the application on an allegation of its bona fide intent to
use the mark in commerce. After the notice of allowance issued, Applicant filed a
statement of use with a specimen that Applicant described as a webpage. As
reproduced below, the specimen shows the mark next to the wording “pitney bowes”
in the upper left corner of a webpage about the “mail&go Postal Kiosk[, which]
provides self-service access to a broad range of mail and shipping services”:

1 Application Serial No. 86502157 was filed July 1, 2014, 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 mark is described as “a circle containing four partial circles on the left and three partial
circles on the right, divided by the lower case letters ‘p’ and ‘b’, all resembling a series of
concentric circles.” Color is not claimed as a feature of the mark.
Serial No. 86502157
- 3 -

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 mark in use in connection with any of the recited services.2 The

2 TSDR May 18, 2016 Office Action at 1.
Serial No. 86502157
- 4 -
Office Action explained that “the specimen is a webpage describing a self-service
kiosk that consumers use to mail and ship items, but not that applicant itself provides
these services.”3 In the response submitted and signed by Applicant’s in-house
counsel, Applicant traversed the refusal and stated that “[t]hese kiosks are furnished
by Applicant and are placed in different locations for use by consumers. Consumers
use the kiosk to place postage on a letter or package, and then place that [letter or
package] in the receptacle that is part of the kiosk system for Applicant to pick up
the letter or package and place it in the mail stream for delivery.”4
The Examining Attorney then made the refusal final, providing the following
rationale:
The specimen does not show that applicant actually provides the
mailing and shipping services, rather it shows only that applicant
provides a kiosk where a user can perform activities such as
purchase postage, weigh letters and packages and compare rates.
There is no indication on the specimen that applicant provides
any goods or services other than the kiosk itself.5

Applicant requested reconsideration and submitted a substitute specimen identified
as a webpage. The substitute specimen, reproduced below, shows the mark next to
the wording “pitney bowes” in the upper left corner of a webpage about the “SendSuite
Xpress multi-carrier parcel system”:6

3 Id.
4 TSDR November 18, 2016 Response to Office Action at 1 (emphasis added).
5 TSDR November 21, 2016 Office Action at 1.
6 TSDR March 1, 2017 Request for Reconsideration at 2.
Serial No. 86502157
- 5 -

The Examining Attorney denied the request for reconsideration, noting that the
substitute specimen “shows that applicant provides a software product but not that
applicant provides the identified services.”7 Applicant appealed, and the appeal is
fully briefed.

7 TSDR March 8, 2017 Denial of Request for Reconsideration at 1.
Serial No. 86502157
- 6 -
As explained below, we reverse the refusal to register because we find the original
specimen to be acceptable, and find that the explanation submitted by Applicant to
the Examining Attorney corroborates the content of the original specimen.
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). “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). Relevant to Applicant’s specimens in this case,
the webpage must show the mark used or displayed as a service mark in advertising
the services. See In re WAY Media, Inc., 118 USPQ2d 1697, 1698 (TTAB 2016).
Showing only the mark with no reference to, or association with, the services does not
show service mark usage. In re Adair, 45 USPQ2d 1211, 1214-15 (TTAB 1997); In re
Duratech Ind. Inc., 13 USPQ2d 2052, 2054 (TTAB 1989). For advertisement
specimens such as Applicant’s webpages, “[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
Osmotica Holdings Corp., 95 USPQ2d 1666, 1668 (TTAB 2010). Thus, an acceptable
specimen must show “some direct association between the offer of services and the
mark sought to be registered therefor.” In re Universal Oil Prods. Co., 476 F.2d 653,
177 USPQ 456, 457 (CCPA 1973).
Serial No. 86502157
- 7 -
The Examining Attorney takes the position that Applicant does not provide the
identified services, but instead that “[A]pplicant provides a product that a consumer
can use to mail or ship packages and letters….”8 Applicant contends that the
Examining Attorney’s view stems from a misunderstanding of its services. In its
briefing, Applicant asserts that: (1) the original specimen supports postal delivery
services for letters and packages; and global shipping and delivery services, for cross-
border sales, namely, pickup, transportation, and delivery of freight packages by all
available means; and (2) the substitute specimen supports providing online shipping
information, namely, providing online information about the shipping of packages;
and providing an internet portal permitting users access to shipping and tracking of
packages and managing mail.
The original specimen displays the mark directly above the wording “Outsourced
Mailing Services.” The webpage text also states that the postal kiosk pictured and
described on the webpage “allows users to mail bills [and] ship packages.” The
Examining Attorney infers from the webpage reference to third-party services, such
as those of USPS (the U.S. Postal Service), that the only services provided through
the kiosk are not Applicant’s. However, Applicant clarified in its November 18, 2016
Response to Office Action that it provides some of the referenced “Mailing Services,”
in that it picks up letters and packages left by users in the kiosk receptacle and
delivers them “into the mail stream.”9

8 6 TTABVUE 5 (Examining Attorney’s Brief).
9 TSDR November 18, 2016 Response to Office Action at 1 (emphasis added).
Serial No. 86502157
- 8 -
Both precedent and examination guidance make clear that in assessing the
specimens, consideration must be given not only to the information provided by the
specimen itself, but also to any explanations offered by Applicant clarifying the
nature, content, or context of use of the specimen that are consistent with what the
specimen itself shows. See In re DSM Pharm., Inc., 87 USPQ2d 1623, 1626 (TTAB
2008) (“In determining whether a specimen is acceptable evidence of service mark
use, we may consider applicant’s explanations as to how the specimen is used, along
with any other available evidence in the record that shows how the mark is actually
used.”); see also TMEP § 1301.04 (October 2017) (“[A] specimen description submitted
by the applicant typically helps clarify the manner in which the mark is used in
commerce, and the more explanation the applicant provides initially, the more helpful
it is to the examining attorney’s analysis. Thus, applicants are encouraged to provide
a specimen description and explain how the applicant renders or provides the
services….”). Here, the response signed by Applicant’s in-house counsel clarified the
specimen’s direct reference to “Mailing Services.” Cf. In re U.S. Tsubaki, Inc., 109
USPQ2d 2002 (TTAB 2013) (disregarding outside counsel’s conclusory unverified
statements made without proper foundation regarding marketing of goods).
Considering the original specimen, we find that it supports Applicant’s identified
“postal delivery services for letters and packages,” given the proximity of Applicant’s
mark to the reference to “Outsourced Mailing Services,” along with the other
explanatory text on the webpage (e.g., “Kiosk allows users to mail bills [and] ship
packages”). While the Examining Attorney reasonably found the specimen unclear as
Serial No. 86502157
- 9 -
to whether Applicant, rather than a third party, provides the services, Applicant’s
explanation of the specimen and how Applicant provides the outsourced mailing
services referenced on the specimen resolved the ambiguity, and the refusal should
not have been maintained. We find that the original specimen demonstrates use of
the mark in a manner that creates in the minds of potential consumers a direct
association between the mark and at least some of the services in the class, and the
explanation corroborates this in a manner that removes any doubt. See Trademark
Rule 2.56(a), 37 C.F.R. § 2.56(a); see also TMEP § 1301.04(c) (specimen must “show[]
direct association between the mark and at least one of the identified services in each
class”).10
In light of our holding that consumers would perceive Applicant’s mark as shown
on the original specimen as a source indicator for postal delivery services for letters
and packages, we need not address Applicant’s substitute specimen.
III. Conclusion
Decision: We deem Applicant’s original specimen acceptable and therefore
reverse the refusal to register Applicant’s mark.

10 Nonetheless, if the record were to raise doubt regarding an applicant’s use of the mark in
connection with other services identified in a class, and a specimen of record does not support
a finding of such use by that applicant, Trademark Rule 2.61(b), 37 C.F.R. § 2.61(b), permits
an examining attorney to require “such information … and such additional specimens as may
be reasonably necessary to the proper examination of the application.”