The Artsmiths, LLC

Trademark Trial and Appeal Board

Jun 17, 2019

87151770 (T.T.A.B. Jun. 17, 2019)

This Opinion is Not a
Precedent of the TTAB

Oral Hearing: June 4, 2019 Mailed: June 17, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re The Artsmiths, LLC
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Serial No. 87151770
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Byran H. Opalko of Buchanan, Ingersoll & Rooney PC,
for The Artsmiths, LLC.
April Reeves, Trademark Examining Attorney, Law Office 124,
Lydia Belzer, Managing Attorney.
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Before Cataldo, Wellington, and Dunn,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
The Artsmiths, LLC (“Applicant”) seeks registration on the Principal Register of
the following, proposed stylized mark:

for “retail store services featuring handmade artisan products in the nature of
original artwork in a wide variety of mediums; online retail store services featuring
Serial No. 87151770
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handmade artisan products in the nature of artwork in a wide variety of mediums,”
in International Class 35.1
The Trademark Examining Attorney has refused registration of Applicant’s
proposed mark on the ground that it fails to function as a mark for the services
identified in the application, pursuant to Sections 1, 2, 3, and 45 of the Trademark
Act, 15 U.S.C. §§ 1051, 1052, 1053, and 1127.
When the Examining Attorney made the refusal final, Applicant appealed.
Applicant and the Examining Attorney filed briefs and both sides presented oral
argument during a hearing held on June 4, 2019. We affirm the refusal to register.
I. Failure to Function as a Mark
It is axiomatic that an applied-for mark will be refused registration if it does not
function as a source-identifier because "[b]efore there can be registration, there must
be a trademark." In re Roberts, 87 USPQ2d 1474, 1478 (TTAB 2008) (quoting In re
Bose Corp, 546 F.2d 893 , 192 USPQ 213, 215 (CCPA 1976)); see also D.C. One
Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1716 (TTAB 2016).

1 Application Serial No. 87151770 was filed on August 26, 2016 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), on the basis of Applicant’s claim of a bona fide intent to
use of the proposed mark in commerce. The proposed mark was published for opposition and
Applicant filed its Statement of Use (SOU), under Section 1(d) of the Trademark Act, 15
U.S.C. § 1051(d), on the basis of Applicant’s claim of a first use of the proposed mark
anywhere and in commerce on August 1, 2016. The refusal to register the mark for failure to
function as a mark was raised after the filing of the SOU. See Trademark Manual of
Examining Procedure § 1202 (2018) (“TMEP”) (“Therefore, unless the drawing and
description of the mark are dispositive of the failure to function without the need to consider
a specimen, generally, no refusal on this basis will be issued in an intent-to-use application
under §1(b) of the Trademark Act, 15 U.S.C. §1051(b), until the applicant has submitted a
specimen(s) with an allegation of use (i.e., either an amendment to allege use under 15 U.S.C.
§1051(c) or a statement of use under 15 U.S.C. §1051(d)).”).
Serial No. 87151770
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A "service mark" is defined as any word, name, symbol, or device, or any
combination thereof—
(1) used by a person …

(2) 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. …

Section 45 of the Trademark Act, 15 U.S.C. § 1127.
Section 2 of the Trademark Act, 15 U.S.C. § 1052 provides that, absent a specified
prohibition within the section, any “trademark” may be registered on the Principal
Register so long as it functions as a trademark, i.e., it indicates source:
No trademark by which the goods of the applicant may be distinguished from
the goods of others shall be refused registration on the principal register on
account of its nature unless …

With the above in mind, it is clear that not every word or symbol which appears
in connection with an entity's services functions as a service mark. In re Safariland
Hunting Corp., 24 USPQ2d 1380, 1381 (TTAB 1992); In re Remington Prods. Inc., 3
USPQ2d 1714, 1715 (TTAB 1987). Rather, as we explained in a recent decision:
. . . a threshold issue in some cases (like this one) is whether the phrase in
question in fact functions to identify the source of the services recited in the
application and distinguish them from the services of others or, instead,
would be perceived merely as communicating the ordinary meaning of the
words to consumers.

In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1152 (TTAB 2019). In Wal-Mart, the
Board held that the phrase INVESTING IN AMERICAN JOBS would be perceived
by consumers as “merely an informational statement” because it is one that “would
ordinarily be used in business or industry, or by certain segments of the public
Serial No. 87151770
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generally, to convey support for American-made goods.” Id.; see also In re Remington
Prods., Inc. , 3 USPQ2d 1714, 1715-16 (TTAB 1987) (holding PROUDLY MADE IN
USA not registrable for electric shavers because the mark would be perceived merely
as a common message encouraging the purchase of domestic- made products).
The Examining Attorney, here, asserts that “because consumers are accustomed
to seeing ‘I [heart] PGH’ and ‘PGH ART’ (and minor variations) commonly used in
everyday speech by many different sources, consumers would not perceive [the
proposed mark] as a mark identifying the source of applicant’s services,” and thus
consumers will view the mark as “as only conveying an informational message,
specifically, a message of enthusiasm or support for artists and the arts scene in
Pittsburgh.”2 In support, she submitted evidence showing various third parties using
the expression “I [a heart shape] PGH,” as well as evidence that the city of Pittsburgh
has a known arts scene.3 Some examples include:

2 6 TTABVUE 8.
3 Attached to Office Actions issued on September 10, 2017 and April 10, 2018.
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;4
;5

4 Office Action issued on September 10, 2017, at TSDR p. 3.
5 Office Action issue on April 10, 2018, at TSDR pp. 73.
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;6
The record clearly shows that use of “I [heart-shaped designed] PGH” will be
clearly understood as an expression of support for the city of Pittsburgh. Indeed, a
website called “I[heart]PGH” (www.iheartpgh.com) exists and describes itself as a
blog that “was started as a way to share all of the great stuff happening here in
Pittsburgh.”7
The evidence also reflects that the city of Pittsburgh has a known, thriving arts
community. An article “Study looks at Pgh’s arts ‘ecosystem,’” from the Pittsburgh
Courier discusses the “state of the arts in Allegheny County” and Pittsburgh region;8
and a website expressing the opinion that when it comes to “sports, art, food or music,

6 Id., TSDR p. 84.
7 Id., TSDR p. 61.
8 Id., TSDR p. 17-20.
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Pittsburgh has so much to offer.”9 Third-parties use the term “PGH Art(s)” as a
reference to the Pittsburgh arts community.10
Applicant acknowledges the aforementioned evidence of third-party use of “I
[heart] PGH” and “I [heart] Pittsburgh,” as well as that of “Pgh Art” and “Pittsburgh
Art,” in various formatives.11 However, Applicant points out that the Examining
Attorney “found absolutely no use” of “I [heart] PGH ART” or “I [heart] Pittsburgh
Art.”12 Applicant concludes that this “proves that Applicant’s mark … is not only not
in common use, but it is not used at all in any formative, let alone the specific stylized
logo form applied for by Applicant.”13
The fact that there is no evidence of third-party use of Applicant’s proposed mark
is not determinative as to how the public will perceive the phrase. The evidence shows
that “I [heart] PGH” is a fairly common phrase that will be immediately understood
as merely expressing an affinity for the city of Pittsburgh. The addition of ART to this
phrase merely extends or narrows this expression of support to the Pittsburgh art
scene. The evidence also shows Pittsburgh has a celebrated arts community that is
sometimes referred to as “PGH ART(S)” – thus the phrase “I [heart] PGH ART” will
be perceived as a pronouncement of admiration for that community. In the context of
Applicant’s retail store services featuring the sale of handmade artwork that includes

9 Id., TSDR p. 69.
10 See, e.g., Id., TSDR p. 39.
11 7 TTABVUE 4.
12 Id.
13 Id.
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works from artisans of Pittsburgh, consumers’ previous exposure to “I [heart] PGH”
and “PGH ART(S)” will predispose them to viewing the proposed mark “I [heart] PGH
ARTS” as merely an expression of the store’s support for the Pittsburgh arts
community.
Applicant asserts that it displays its “logo” in a “conspicuous location where it is
readily noticed by consumers … as a source identifier of Applicant’s retail store
services.”14 Applicant’s proposed mark appears in the bottom left corner of the
specimen (described as a “brochure” in Applicant’s statement of use):

14 7 TTABVUE 3.
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.15
However, we agree with the Examining Attorney’s analysis that the “placement
[of “I [heart] PGH ART”] on the specimen enhances the perception of the applied-for
mark as informational because the mark is removed from the description of
applicant’s retail services, and more closely associated with written matter that gives
information about the arts and cultural center as a whole.”16 That is, consumers
viewing the proposed mark and the adjoining wording (“Shop local. Shop Pittsburgh.
Shop Handmade.”) in conjunction with the entirety of specimen are likely to “see the

15 Specimen filed with Statement of Use on July 25, 2017.
16 6 TTABVUE 9.
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applied-for mark as an additional element of informational matter about the arts and
cultural center, namely, as a message of enthusiasm or support for the Pittsburgh art
and Pittsburgh artists featured in the center.”17
Finally, we note Applicant’s reliance on 29 third-party registrations that it
submitted showing registration of marks comprising “I [heart]” and additional
matter.18 Over half these registrations involve the mark “I [heart] NY” and are owned
by the New York State Department of Economic Development, a state governmental
agency, and a small number of those registrations are based on acquired
distinctiveness. We further note that many of the other registrations contain
additional matter, e.g., a design of a hot dog, a design of a pretzel, a fanciful chef, etc.,
that could help distinguish those marks from being viewed as merely informational
slogans of support. In contrast, we hasten to point out that the font or style of lettering
employed in Applicant’s proposed mark is hardly unique, not particularly distinctive,
and certainly does not create a separate commercial impression. In any event, as the
Examining Attorney pointed out, we have long held and it is well settled that each
case must be decided on its own facts and record; when it comes to questions of fact,
the Board cannot be bound by prior decisions that involved different records. See In
re Nett Designs, Inc., 236 F. 3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001);
In re Datapipe, Inc., 111 USPQ2d 1330, 1336 (TTAB 2014).

17 Id.
18 Attached to Applicant’s response filed
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Ultimately, based on the record in this case, Applicant's proposed mark fails to
function as a service mark; it will not act to indicate the source of Applicant's retail
store services and distinguish them from those of others. Rather, it will be perceived
by customers as a merely a slight variation of common phrase expressing support
that, more specifically, indicates an affinity for the city of Pittsburgh arts community.
Decision: The refusal to register is affirmed.