Richard Ferris

Trademark Trial and Appeal Board

Sep 22, 2004

No. 75589448 (T.T.A.B. Sep. 22, 2004)

Mailed: September 22, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Richard Ferris
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Serial No. 75589448
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Richard Ferris, Pro Se.
Scott M. Oslick, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
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Before Walters, Chapman and Bottorff, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Richard Ferris filed an application on the Principal
Register to register the mark TEE-MAIL for, as amended,
“wholesale and retail distributorship featuring golf
equipment, golf and sport clothes, golf books, audio
cassettes, video cassettes, compact disks and CD-ROMs which
may be accessed by way of a global computer network,” in
International Class 35. The application was filed based
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Ser No. 75589448
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upon applicant’s allegation of a bona fide intention to use
the mark in commerce. A notice of allowance issued on June
27, 2000. Applicant filed his statement of use and
specimen of use on June 25, 2002, alleging first use as of
February 27, 1998, and first use in commerce as of January
28, 2002. Applicant subsequently submitted a supplemental
specimen of use with a declaration.
The Examining Attorney has issued a final refusal on
the ground that the specimens do not show use of the mark
for the stated services, citing Trademark Rules 2.56 and
2.88(b)(2), 37 CFR §§2.56 and 2.88(b)(2). The Examining
Attorney contends that the specimens of record show use of
the mark in connection with goods, i.e., golf clubs, not
with the identified services.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested.
The specimens submitted in this case are excerpts from
applicant’s Internet website. The following pages are
representative samples:
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As supportive materials, applicant also submitted the
results of a Google Internet search1 and a letter from a
customer who purchased from applicant the golf putter
advertised on the Internet website.2
The Examining Attorney contends that the specimens do
not show use of the mark in connection with applicant’s

1 The Google search results, including a reference to applicant, consist
of such short excerpts that they are of very little value in
determining any issue herein. Further, the excerpt referencing
applicant is not evidence of use of the mark by applicant.
2 The letter states that the signor purchased a golf putter from
applicant after having first seen it on applicant’s website. This
letter is not probative of whether the mark, which we know is in use on
applicant’s website, is used as a service mark.
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online wholesale and retail distributorship services; that
“[t]he specimens make no mention of such services; nor do
they infer usage of the mark for such services” (brief, p.
6); that, “[a]lthough the original specimen contained the
wording ‘for information call or write Tee-Mail:
handle@teemail.com,’ in the context of the entire specimen,
potential consumers would most likely perceive this
statement to refer to the goods described in the specimen,
but not the applicant’s online retail and wholesale
distributorships” (id.); that the specimen shows only the
mark with no reference to the identified services; that the
mark will be perceived as identifying the golf clubs; that
the Google Internet search results do not show use of the
mark by applicant; and that applicant’s use of a “TM”
symbol rather than a “SM” symbol after the mark support the
conclusion that the mark identifies goods rather than
services.
Applicant contends that the specimen is acceptable
evidence of service mark usage because it advertises the
goods and includes a contact e-mail address that a
prospective customer may use to obtain pricing information
and to purchase the product and, thus, the services are
inferred; that the Examining Attorney’s refusal fails to
understand applicant’s commonly-employed marketing
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strategy, which is considered a “soft” sales protocol
because it invites the viewer to further communication,
thus building a relationship which is crucial to, in
particular, obtaining wholesale customers.
The issue before the Board is whether either specimen
in this application is an acceptable specimen of use of the
mark TEE-MAIL for the identified services. Section 45 of
the Trademark Act, 15 U.S.C. §1127, contains the following
definitions of “service mark” and "use in commerce,"
respectively:
Service mark. The term “service mark” means any
word, name, symbol, or device, or any combination
thereof—
(1) used by a person, or
(2) which a person has a bona fide intention to
use in commerce and applies to register on the
principal register established by this Act, 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. …
. . .
Use in commerce. The term “use in commerce” means
the bona fide use of a mark in the ordinary course
of trade, and not made merely to reserve a right
in a mark. For purposes of this Act, a mark shall
be deemed to be in use in commerce—
. . .
(2) on services when it is used or displayed in
the sale or advertising of services and the
services are rendered in commerce, or the services
are rendered in more than one State or in the
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United States and a foreign country and the person
rendering the services is engaged in commerce in
connection with the services.
Trademark Rule 2.56, 37 CFR §2.56, regarding the
requirements for specimens reads, in pertinent part, as
follows:
(a) An application under section 1(a) of the
Act, an amendment to allege use under §2.76,
and a statement of use under §2.88 must each
include one specimen showing the mark as
used on or in connection with the goods, or
in the sale or advertising of the services
in commerce.
(b) (2) A service mark specimen must show the
mark as actually used in the sale or
advertising of the services.
The courts and the Board have been quite clear that, in
assessing the acceptability of materials which have been
submitted as specimens of use, the facts and surrounding
circumstances must be fully evaluated to determine the
acceptability of preferred specimens. See, e.g., Lands’
End Inc. v. Manbeck, 797 F.Supp. 311, 24 USPQ2d 1314 (E.D.
Va. 1992). While the exact nature of the services does not
need to be specified in the specimens, there must be
something that creates in the mind of the purchaser an
association between the mark and the service activity. See
In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ
456 (CCPA 1973); In re Johnson Controls, Inc., 33 USPQ2d
1318 (TTAB 1994), citing to Intermed Communications Inc. v.
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Chaney, 191 USPQ 501 (TTAB 1977); and In re Metriplex, Inc.
23 USPQ2d 1315 (TTAB 1992). Further, when appropriate, the
Board has been fairly flexible in accepting service mark
specimens. See, e.g., In re Ralph Mantia Inc., 54 USPQ2d
1284 (TTAB 2000); and In re Metriplex Inc., supra.
Contrary to the Examining Attorney’s contentions, we
find that the specimens are acceptable evidence of the use
of the mark herein in connection with the services
identified in the application. The mark appears on the
website above a picture of the goods, where it appears to
be the “title” of the web page. Additionally, in the text,
reference is made to TEE-MAIL as an entity introducing a
new product, not as the name of the product itself. The
use of a “TM” rather than a “SM” is an understandable error
that is likely to be of significance primarily to trademark
law practitioners. The website is, essentially, an
advertisement and it includes an e-mail address that uses
the mark so that prospective wholesale or retail customers
may contact applicant to discuss a distributorship
agreement or to purchase products. Clearly, there is an
association between the mark and the identified services.
We conclude that each of the specimens of record is
adequate to support the use of the mark in connection with
the identified services.
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Decision: The refusal to register on the ground that
the specimens are unacceptable evidence of service mark use
in connection with the identified services is reversed.
The application will be forwarded for issuance of a
registration in due course.