Stout Industries, Inc.

Trademark Trial and Appeal Board

Aug 8, 2003

No. 75712594 (T.T.A.B. Aug. 8, 2003)

Mailed:
Aug. 8, 2003
Paper No. 17
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Stout Industries, Inc.
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Serial No. 75/712,594
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Paul M. Denk, Esq. for Stout Industries, Inc.
John Dwyer, Trademark Examining Attorney, Law Office 116
(Meryl Hershkowitz, Managing Attorney).
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Before Simms, Chapman and Holtzman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
On May 24, 1999, Stout Industries, Inc. (a Delaware
corporation) filed an application to register the mark
STOUT.COM on the Principal Register, for services
identified, as amended, as “providing an on-line computer
database providing information in the field of custom
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75/712594
2
design and manufacture of signs and sign bearing fascia” in
International Class 40.1
The application was based on Section 1(b) of the
Trademark Act, 15 U.S.C. §1051(b). It was published for
opposition on May 30, 2000; and a notice of allowance
issued on August 22, 2000. On February 20, 2001 (via
certificate of mailing), applicant filed a statement of
use, alleging use since January 1, 1999, and including a
specimen in the form of a promotional card given out to
customers and potential customers.
The Examining Attorney found the specimen did not show
use of the mark in relation to the specific identified
services; and required that applicant submit substitute
specimens, supported by an affidavit or declaration,
showing use of the mark for the identified services.
Applicant then filed another statement of use, including as
specimens two different photographs of a portion of two
signs bearing the mark STOUT.COM; and applicant also
1 Stout Industries, Inc. filed two other applications (Serial
Nos. 75/713,192 and 75/713,242), both for the mark STOUT.COM, but
for different services on May 24, 1999. Those applications are
also on appeal to the Board. A single decision on those two
applications will issue separately. (In addition, applicant
filed on that date a fourth application, Serial No. 75/712,606,
for the mark STOUT.COM for “non-luminous and non-mechanical metal
signs; metal sign bearing fascia” in International Class 6. It
issued as Registration No. 2,474,220 on July 31, 2001.)
Ser. No. 75/712594
3
submitted a brochure which explains applicant’s business,
but does not include the mark STOUT.COM anywhere thereon.
The Examining Attorney again rejected the specimens,
and made final the refusal on the ground that the specimens
submitted by applicant do not show use of the mark for the
services identified in the application.
Applicant appealed to the Board. Briefs have been
filed, but applicant did not request an oral hearing.
The Examining Attorney’s position is essentially that
the specimens do not show the mark used in the sale or
advertising of the identified services.2 With specific
regard to each specimen, the Examining Attorney contends
that the brochure does not include the mark STOUT.COM
anywhere in the brochure; that the two photographs show the
mark STOUT.COM but they are clearly photographs of portions
of signs (appearing on a vending machine for “7UP”) and
would not be perceived as supporting use of applicant’s
mark for the identified services; and that the card given
2 The Examining Attorney also argued that to be recognized as a
service, the services cannot be ancillary to applicant’s own
business (i.e., applicant’s identified services of providing an
on-line computer database providing information about custom
design of signs could simply be applicant’s web site for its own
goods and services). To be clear, the Examining Attorney has not
refused registration on the ground that applicant is not
performing a separate service. Rather, his refusal to register
is limited to the failure of the specimens to show use of the
mark in association with the identified services.
Ser. No. 75/712594
4
out to potential customers also shows the mark STOUT.COM
but does not reference even indirectly the identified
services, and based on the other wording on the specimen
would be perceived as relating to marketing and sales and
brand building services.
The Examining Attorney concludes that each of the
specimens submitted by applicant fails to demonstrate use
of the mark in association with the identified services,
“providing an on-line computer database providing
information in the field of custom design and manufacture
of signs and sign bearing fascia” as required by Trademark
Rules 2.56(a) and (b)(2) and 2.88(b).
Applicant essentially contends that its extensive
usage of STOUT.COM in applicant’s various materials such as
cards given out to potential customers “is adequate proof
of substantial and continuous usage of applicant’s mark in
this business of providing a custom design of signs and
sign bearing fascia for others” (brief, p. 5); and that
applicant has used the mark in a variety of displays to
indicate source of origin, each of which supports applicant
as the source of these services.3
3 In its arguments, applicant referred to its various uses of the
mark as including use on a web page. The record in this
application does not include a web page, offered either as a
specimen or simply offered for informational purposes.
Ser. No. 75/712594
5
The requirements for specimens of use of a mark in
connection with services differ from the requirements for
specimens of use of a mark in connection with goods.
Although trademarks appear directly on the goods or on the
containers or labels for the goods, service marks are used
in connection with the services. Implicit in the statutory
definitions of a “service mark” is the requirement that
there be some direct association between the mark and the
services, i.e., that the mark be used in such a manner that
it would readily be perceived as identifying the source of
such services. See In re Advertising & Marketing
Development, Inc., 821 F.2d 614, 2 USPQ2d 2010, 2014 (Fed.
Cir. 1987); and In re Adair, 45 USPQ2d 1211, 1215 (TTAB
1997).
That is, specimens must show an association between
the mark and the services for which registration is sought;
and specimens which show the mark, but with “nothing
directed to prospective customers of the stated services
which could have created an association, direct or
otherwise, between the mark and the services set forth in
the application” are insufficient. In re Johnson Controls
Inc., 33 USPQ2d 1318, 1319 (TTAB 1994). See also, In re
Duratech Industries Inc., 13 USPQ2d 2052 (TTAB 1989).
Ser. No. 75/712594
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In this case, we agree with the Examining Attorney
that the specimens submitted by applicant do not show use
of the mark in connection with the services identified in
the application. Rather, one specimen does not include the
mark anywhere thereon and thus cannot support the
application for the mark STOUT.COM. The two specimens
which are portions of a sign (appearing on a vending
machine for “7 UP”) include the following wording:
Manufactured by Stout Sign Co.
St. Louis Mo. Made in U.S.A.-9716127
Authorized by Cadbury Beverages Inc.
Total Production 925
stout.com
This use does not indicate anything which would create in
the mind of the relevant consumers an association between
the mark and the service activity (providing an on-line
computer database). At best, this may support trademark
use for signs, but it does not support service mark use for
applicant’s identified services.
Finally, the card is reproduced below:
Ser. No. 75/712594
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The wording thereon, such as:
“STOUTMARKETING
Building Stronger Brands Worldwide”;
and
“Looking to boost sales and build stronger brands?”
does not create an association in purchasers’ minds with
applicant’s identified services of “providing an on-line
computer database providing information...” on custom
design of signs. These promotional cards may identify or
support a marketing or advertising service, but not that of
providing an on-line information about custom design of
signs.
We find the specimens of record do not support use of
the mark STOUT.COM in connection with the identified
services because they do not show applicant’s use of the
mark in association with the sale or advertising of the
services specified in the application.
Ser. No. 75/712594
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Decision: The refusal to register on the basis that
none of the specimens show use of the mark in connection
with the identified services is affirmed.