Republic National LLC

Trademark Trial and Appeal Board

Feb 23, 2017

No. 86513101 (T.T.A.B. Feb. 23, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: February 23, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Republic National LLC
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Serial No. 86513101
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Theodore R. Remaklus of Wood Herron & Evans LLP,
for Republic National LLC.
Edward Nelson, Trademark Examining Attorney, Law Office 106,
Mary I. Sparrow, Managing Attorney.
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Before Kuhlke, Gorowitz and Pologeorgis,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
Republic National LLC (“Applicant”) seeks registration on the Principal Register
of the mark REPUBLIC NATIONAL (in standard characters) for the following
services:
Real estate investment and acquisition services, namely,
brokerage and management of retail shopping centers,
strip centers, office buildings, residential buildings, mixed-
use commercial and residential buildings, and hotels;
banking and financing services; investment banking
services; mortgage banking; on-line banking services;
financing and loan services; financing of real estate
development projects, in International Class 36; and
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Real estate development services, in International Class
37.1

The Trademark Examining Attorney refused registration under Sections 1 and 45
of the Trademark Act, 15 U.S.C. §§ 1051 and 1127. The refusal pertains to both
classes of identified services and is based on the failure of the specimens to show use
of the mark in connection with the identified services.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
Failure to Show Use of the Mark for the Identified Services
Section 1(d)(1) of the Trademark Act, 15 U.S.C. § 1051(d)(1), provides that in an
intent-to-use application such as Applicant’s, a timely statement of use must be filed
with the requisite specimen(s) of the mark as used in commerce. According to
Trademark Act Section 45, 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 37 C.F.R.
§ 2.56(b)(2). Such use may be established by: (1) showing the mark used or displayed
as a service mark in the sale of the services, which includes use in the course of
rendering or performing the services, or (2) showing the mark used or displayed as a
service mark in advertising the services, which encompasses marketing and

1 Application Serial No. 86513101, filed on January 23, 2015, based on an allegation of a bona
fide intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15
U.S.C. § 1051(b). Applicant filed its Statement of Use on February 4, 2016, claiming January
2015 as both the date of first use and the date of first use in commerce.
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promotional materials. See In re Way Media, Inc., 118 USPQ2d 1697, 1698 (TTAB
2016). 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
Products Co., 476 F.2d 653, 177 USPQ 456, 457 (CCPA 1973). A specimen that shows
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 Industries Inc., 13 USPQ2d 2052, 2054 (TTAB 1989). “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.”' Way
Media, 118 USPQ2d at 1698 (quoting In re Osmotica Holdings Corp., 95 USPQ2d
1666, 1668 (TTAB 2010)). Specimens showing the mark used in rendering the
identified services need not explicitly refer to those services in order to establish the
requisite direct association between the mark and the services, but “there must be
something which creates in the mind of the purchaser an association between the
mark and the service activity.” In re Johnson Controls, Inc., 33 USPQ2d 1318, 1320
(TTAB 1994).
In its Statement of Use, Applicant submitted, as its specimens of use, the following
two digital photographs, which it states is of the front door of the facility where it
provides and manages its services:
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Applicant contends that the specimens it submitted with its Statement of Use
displays use of its REPUBLIC NATIONAL mark as it appears on the entry door to
Applicant’s offices. Applicant further maintains that “there is no question that
Applicant’s customers would recognize REPUBLIC NATIONAL, as it appears on the
entryway, as a mark identifying the services that are provided by Applicant at that
office” and, therefore, “the photographs of the door to Applicant’s offices constitute a
specimen of the mark as use in the sale of the services.”2 Moreover, Applicant argues
that its submitted specimens demonstrate how its mark is used in connection with
providing its services, rather than advertising its services and, therefore, the
specimens need not include an explicit reference to Applicant’s services.3 In support
of its contentions, Applicant relies on the Board’s decision in In re Metriplex
(“Metriplex”), 23 USPQ2d 1315 (TTAB 1992).
Applicant’s arguments are unavailing and its reliance on the Board’s Metriplex
decision is misplaced.

2 Applicant’s Appeal Brief at p. 7, 4 TTABVUE 11.
3 Applicant’s March 30, 2016, Office Action response.
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Specimens consisting of advertising of the services must disclose the nature of the
services to create an association between the mark and the services. Here, the front
door of Applicant’s business establishment that displays its mark does not reference
or create a direct association with the services. In addition, displaying the mark on
the front door is not using it in the rendering of Applicant’s identified services. The
front door embossed with Applicant’s REPUBLIC NATIONAL mark is not providing
real estate investment and acquisition services, banking and financing services or
real estate development services; rather, the front office door of Applicant’s business
establishment that is imprinted with the REPUBLIC NATIONAL mark, beyond
merely directing an existing client to Applicant’s location, is more similar to
advertising and without some reference to the services. In other words, while it may
indicate the location of a particular entity, it is unconnected to any service, at least
without prior knowledge of an existing client. Therefore, the issue is not resolved by
the statement in Applicant’s Statement of Use because it does not resolve the
question of whether potential consumers associate the mark with the services.
Absent some reference to the nature of the services on the front door, it does not
associate the mark with the applied for services and therefore is not sufficient to
support the application for registration. Upon seeing this mark displayed on the front
door of Applicant’s place of business, a potential consumer could not immediately
identify the services being provided beyond the entryway of Applicant’s offices. In
other words, the fact that services are rendered within Applicant’s offices is not
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sufficient association or “proximity” to consider the REPUBLIC NATIONAL mark,
as shown on the front door, as being displayed in the sale or rending of services.
Contrary to Applicant’s arguments, the circumstances here are unlike those
addressed in the Board’s decision in Metriplex. In Metriplex, the applicant sought to
register the mark GLOBAL GATEWAY for the transmission of data in various fields
(commercial as well as personal) to subscribers to the service by means of information
entry software, radio data transmission and portable terminal interface with such
subscribers. Metriplex, 23 USPQ2d at 1316. As its specimens of use, the applicant
submitted a computer screen display that appeared on a computer terminal in the
course of applicant’s rendering of the service. Id. Registration was refused by the
Examining Attorney on the basis that the specimens submitted by applicant were
unacceptable as evidence of actual service mark use because they did not refer to the
services identified in the application. Id. In reversing the Examining Attorney’s
refusal, the Board found that the applicant’s services were rendered “through a
tangible item, namely, a computer terminal, so that the mark can appear on the
computer screen, and the specimens show such use.” Id. at 1317. The Board further
held that “[b]ecause the specimens show use of the mark in the rendering or selling
of applicant's services, not in the advertising thereof, the requirements specific to
specimens which are advertising are not applicable.” Id.
Thus, the holding in the Metriplex decision is inapposite here where the front door
of Applicant’s business establishment that displays Applicant’s REPUBLIC
NATIONAL mark does not, in and of itself, render Applicant’s services as the
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computer was providing data transmission services at the time that mark was
displayed in Metriplex. Instead, Applicant’s front door more is more similar to an
advertisement of Applicant’s identified services. As such, the requirements for
specimens which are advertisements, i.e., the specimens 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, are applicable here. 4
Moreover, as displayed, Applicant’s mark could also function as Applicant’s trade
name or a source indicator for a myriad of undisclosed services. See In re Advertising
and Marketing Development, 821 F.2d 614, 2 USPQ2d 2010 (Fed. Cir. 1987) (“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.”); see
also TMEP §1202.01 (January 2017) (The name of a business or company name is a
trade name and the Trademark Act does not provide for registration of trade names).
To the extent that Applicant’s existing customers already know that it is Applicant’s
mark does not mean that Applicant’s front door signage itself is what created that

4 In its Request for Reconsideration and in further support of its argument that the specimens
it has submitted demonstrate service mark usage, Applicant also relies on the Board’s
unpublished decision in In Re Ames Department Stores, Inc., 2000 WL 1720157 (TTAB
November 2, 2000). See Applicant’s August 23, 2016, Request for Reconsideration. Although
Board policy allows citation of all Board decisions, a decision designated as not precedential
is not binding upon the TTAB. In re Luxuria s.r.o, 100 USPQ2d 1146, 1151 n.7 (TTAB 2011);
TBMP § 101.03 (January 2017). Since they have no precedential effect, the Board will
generally not discuss them in other decisions. We therefore see no need to discuss that case
in this opinion. We also point out that, although Applicant has quoted the Board's discussion
of the specimens that were submitted in the Ames case, that evidence is not of record herein,
and the quotation of what the Board stated about those specimens has not been given any
evidentiary weight in our determination herein.

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association, or in other words, served as the source identifier. The fact that signage
on an entry door can be a normal commercial use of a mark does not mean that words
used on the front door of a business establishment are a mark associated with certain
services rather than, for example merely a trade name, without, at a minimum,
creating an association with the services.
In view of the above, we find that Applicant’s specimens do not serve to show use
of the mark REPUBLIC NATIONAL as a service mark in connection with the services
identified in the application.
Decision: The refusal to register under Sections 1 and 45 of the Trademark Act is
affirmed.