The Fitz-Simmons Co.

Trademark Trial and Appeal Board

Feb 27, 2002

No. 75185899 (T.T.A.B. Feb. 27, 2002)

02/27/02

Paper No. 30
Bottorff

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re The FitzSimons Company
________

Serial No. 75/185,899
_______

Joseph H. Taddeo, Esq. for The FitzSimons Company.

Henry Zak, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
_______

Before Seeherman, Bottorff and Rogers, Administrative
Trademark Judges.

Opinion by Bottorff, Administrative Trademark Judge:

Applicant has filed an application1 seeking
registration on the Principal Register of the mark THE
PUPPY CHANNEL (PUPPY is disclaimed), in typed form, for
“production of programming for entertainment media,

1 Serial No. 75/185,899, filed October 23, 1996 on the basis of
intent-to-use under Trademark Act Section 1(b), 15 U.S.C.
§1051(b). The mark was published for opposition on February 17,
1998, and a Notice of Allowance was issued on May 12, 1998.
Applicant filed its Statement of Use on June 11, 1998, alleging
November 6, 1996 as the date of first use of the mark and first
use of the mark in commerce.

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/185,899
2
particularly pre-recorded videotapes and video disks for
television and motion pictures.”2
The Trademark Examining Attorney has refused
registration pursuant to Trademark Act Sections 1, 2, 3 and
45, 15 U.S.C. §§1051, 1052, 1053 and 1127, on the ground
that applicant’s recited services are not “services” for
which service mark registration may be obtained.
Specifically, the Trademark Examining Attorney contends
that applicant is not performing the recited services for
the benefit of, or to the order of, persons other than
applicant, and that the services are merely an ancillary
activity to applicant’s main business, which, according to
the Trademark Examining Attorney, is the creation and
operation of applicant’s own cable channel or network
featuring applicant’s own programming.3

2 Both applicant and the Trademark Examining Attorney, in their
respective appeal briefs, have treated the recitation of services
as it was published, i.e., “production of programming for
entertainment media, particularly pre-recorded videotapes and
video disks for television and motion pictures,” as the operative
recitation of services in the application for purposes of this
appeal. In view thereof, we shall do likewise. To the extent
that the Trademark Examining Attorney’s September 13, 2000 office
action might be construed as having included a requirement for
amendment of the recitation of services, we deem the requirement
to have been withdrawn.

3 The original Trademark Examining Attorney initially refused
registration on the ground of mere descriptiveness under
Trademark Act Section 2(e)(1), but subsequently withdrew that
refusal. After the filing of applicant’s Statement of Use, the
present Trademark Examining Attorney initially refused
registration (in an August 7, 1998 office action) on the ground
Ser. No. 75/185,899
3
Applicant has appealed the Trademark Examining
Attorney’s refusal. Applicant and the Trademark Examining
Attorney filed main briefs; applicant did not file a reply
brief. Applicant initially requested an oral hearing, but
then withdrew that request, and no oral hearing was held.
After careful consideration of the briefs and the evidence
of record, we reverse the refusal to register.
The original specimens submitted with the Statement of
Use provide the following background information about the
nature of applicant’s activities and programming. In an
“Executive Summary” sent to potential investors/venture
partners in 1998, applicant states:

The Puppy ChannelSM is a 24 hour, 7 day cable
television network-in-development featuring

that it appeared from the original specimens submitted with the
Statement of Use that applicant had not used the mark in
connection with the recited services as of the date of the filing
of the Statement of Use. Cf. In re Kronholm, 230 USPQ 136 (TTAB
1986). The applicant responded to that refusal on November 11,
1998 with a supplemental declaration and supporting materials,
whereupon the Trademark Examining Attorney, in his April 7, 1999
office action, withdrew the refusal: “Based on such material [in
applicant’s November 11, 1998 response], it appears that the
applicant was producing programming for various forms of
electronic media on the dates alleged in the Statement of Use.”
However, in the same action, the Trademark Examining Attorney
issued the refusal which is at issue in this appeal. In view of
this history, we deem both of the previous refusals, which were
based, respectively, on mere descriptiveness and on applicant’s
alleged non-use of the mark in commerce as of the Statement of
Use filing deadline, to have been withdrawn, and those issues are
not before us in this appeal.

Ser. No. 75/185,899
4
video of puppies at play, accompanied only by
relaxing, instrumental music...

...

The research-indicated market is an audience
interested in relaxing, short-form
entertainment; diversion between favorite TV
shows; and a “background” for other activities.
Other confirmed viewing occasions include being
with children, entertaining pets, waiting for a
program, and during commercial breaks...

Strategy calls for this network to be a
basic channel. When viewers are offered 150-
plus cable channels – through digital
technology soon to be available – we will offer
cable operators unique programming with
opportunities to sell local sponsorships, and
to build relationships with community
organizations. Community relations are very
important to renewals of cable franchises and
subscribers.

...

The competition is everything else on TV,
which is easily characterized as “talk-TV,” in
that human speech pervades the medium. We are
not especially in competition with other pet
programming currently on TV or in development
(veterinarian shows, pet features, etc.)
because of its “talk” nature. Our advantage is
the “relaxing” feature, which is perceived by
research subjects as a welcome relief from
regular TV fare.

In his March 9, 1998 cover letter accompanying that
Executive Summary, applicant’s president states as follows,
inter alia:

The Puppy ChannelSM is a
cable/satellite/Internet network in
Ser. No. 75/185,899
5
development. The research-validated concept is
to show a variety of scenes of puppies at play,
around the clock, accompanied by relaxing
instrumental music. No talk and virtually no
people are in the video plans, and sponsored
messages are anticipated to appear as integral
to the video programming, as shown on the one
hour videocassette of our test show.

In his declaration in support of applicant’s November
11, 1998 supplemental Statement of Use, applicant’s
president states as follows, inter alia:

THAT beginning in November, 1996 and through
the summer of 1997, your Applicant, The
FitzSimons Company, produced more than twelve
hours of videotape content for THE PUPPY
CHANNEL, which content was identified as THE
PUPPY CHANNEL;

THAT concurrently, The FitzSimons Company
created and/or produced and recorded seven
musical productions to accompany the video,
which we registered separately for copyright;

THAT in March, 1997, THE PUPPY CHANNEL was
introduced to the cable television industry at
the cable television national convention in New
Orleans, by personal representation of THE
PUPPY CHANNEL, distribution of THE PUPPY
CHANNEL business cards, and follow-up
correspondence on the letterhead of THE PUPPY
CHANNEL to solicit opportunities to telecast
THE PUPPY CHANNEL programs that were in
production;

...

THAT...reports of marketing research for THE
PUPPY CHANNEL were distributed at the cable
television industry national convention, that
was held in Anaheim, CA, December 7th to 11th,
1997;
Ser. No. 75/185,899
6

THAT at the same convention, fifty to
seventy-five copies of THE PUPPY CHANNEL
video/audio programming production were
distributed to cable operating companies and
other cable television industry officials.

The record includes additional evidence made of record
by applicant, as well as the arguments of applicant and the
Trademark Examining Attorney as to the relevance and/or
persuasiveness of that additional evidence. We need not
and do not discuss this additional evidence or the
arguments pertaining thereto, because we find that the
excerpts from the original specimens and from applicant’s
supplemental declaration, quoted above, constitute evidence
sufficient to warrant reversal of the Trademark Examining
Attorney’s refusal, and because nothing in the additional
evidentiary materials would affect or detract from that
result.
It is settled that the determination of whether a
particular activity constitutes a service for which service
mark registration may be obtained involves consideration of
three criteria: “(1) a service must be a real activity; (2)
a service must be performed to the order of, or for the
benefit of, someone other than the applicant; and (3) a
service cannot be merely an ancillary activity or one which
is necessary to the applicant’s larger business (i.e., the
Ser. No. 75/185,899
7
activity must be qualitatively different from anything
necessarily done in connection with the sale of the
applicant’s goods or the performance of another service).”
See TMEP §1301.01(a); In re Betz Paperchem, Inc., 222 USPQ
89 (TTAB 1984). In this case, the Trademark Examining
Attorney contends that applicant’s activities undertaken in
connection with the mark sought to be registered fail to
meet the second and third of the above-stated criteria. We
disagree.
With respect to the second criterion, i.e., “a service
must be performed to the order of, or for the benefit of,
someone other than the applicant,” we find that applicant’s
activities in fact are provided for the benefit of others,
i.e., for the benefit of third-party broadcasters and
cablecasters who can obtain applicant’s programming content
to provide to their own subscribers/viewers. Contrary to
the Trademark Examining Attorney’s contention, it is not
necessary, under the second criterion, that applicant be
providing “custom” programming at the specific request of,
or to the specific order of, a particular third party. See
In re U.S. Home Corporation of Texas, 199 USPQ 698 (TTAB
1978). In any event, we must presume that applicant is
able to provide any such custom-tailored programming that
might be specifically requested by a third-party
Ser. No. 75/185,899
8
broadcaster or cablecaster, e.g., two hours and fifteen
minutes of programming depicting only black labrador
retriever puppies.4
We also find that applicant’s activities under the
mark, as evidenced by the record, meet the third “service”
criterion, i.e., “a service cannot be merely an ancillary
activity or one which is necessary to the applicant’s
larger business (i.e., the activity must be qualitatively
different from anything necessarily done in connection with
the sale of the applicant’s goods or the performance of
another service).” In analyzing this factor, it is settled
that:

... we should first ascertain what is an
applicant’s principal activity under the mark
in question, i.e., the sale of a service or the
sale of a tangible product, and then determine
whether the activity embraced by the
description of services or goods in the
application is in any material way a different
kind of economic activity than what any
purveyor of the principal service or tangible
product necessarily provides. In order to
determine when an activity is necessarily

4 At unnumbered page 4 of his brief, the Trademark Examining
Attorney states: “While the applicant, in its brief, states that
the intent is to create custom videos to the order of cable
companies, in certain program specific ways, no material is
currently of record to indicate that such activity has ever
occurred.” (Emphasis added.) To the extent that the Trademark
Examining Attorney, by this argument, is attempting to resurrect
his previously-withdrawn refusal based on applicant’s alleged
failure to have used the mark in commerce in connection with the
recited services as of the Statement of Use filing deadline, see
supra at footnote 3, we reject the attempt.
Ser. No. 75/185,899
9
related to an applicant’s principal business,
consideration should be given to the customs
and practices of the industry or business, the
history of the applicant, any Federal or state
laws or regulations which control the principal
business activity, and possibly other factors.

In re Landmark Communications, Inc., 204 USPQ 692, 695
(TTAB 1979).
The Trademark Examining Attorney contends that
applicant’s “production of programming” is merely ancillary
to, and not separable from, applicant’s primary business
activity which, according to the Trademark Examining
Attorney, is the operation of applicant’s own cable
television channel or network.5 As he argues in his April
7, 1999 office action:

Furthermore, such production activities are
ancillary to the main business of the applicant
– the creation of its own broadcast channel
programming, for use by third party
broadcasting or cable companies, as part of the
entertainment presented by such companies. It
is clear that, before such programming is

5 We note that the Trademark Examining Attorney has never based
his refusal on the ground that applicant’s mark is used only as a
trademark on goods, i.e., videotapes and disks, and not as a
service mark in connection with services. See, e.g., In re
Billfish International Corporation, 229 USPQ 152 (TTAB 1986)(mark
used as a trademark for magazines, not a service mark for
publishing the magazines); In re Landmark Communications, Inc.,
supra (same, with respect to a newspaper section). Rather, the
Trademark Examining Attorney contends that applicant’s main
business is the provision of a service, i.e., operation of a
cable channel or network, and that the activity recited in the
application, i.e., “production of programming,” is merely
ancillary and incidental thereto.
Ser. No. 75/185,899
10
available for broadcast on the applicant’s
channel, it must be produced and marketed. The
material of record clearly shows that such
production, rather than serving as an end in
itself, is merely ancillary to the applicant’s
proposed main business – operation of a
broadcast channel, available for use by other
third party broadcasters or cable operators,
showing puppies and other animals at play in
various humorous situations.

We find that the Trademark Examining Attorney’s
argument is based on an incorrect premise, i.e., that
applicant’s “principal activity” (for purposes of the
Landmark Communications analysis) is the operation of its
own cable channel or network. Applicant does not operate
its own cable channel or network. It appears from the
record, rather, that applicant’s principal activity at this
time is the production and of programming content for
third-party cable operators. Applicant’s services, as
recited in the application and as performed by applicant,
are not ancillary to that principal activity. Whether
those services might be ancillary to the applicant’s
possible future operation of its own cable channel or
network is a hypothetical question which is not before us
in this case.
In summary, we find that applicant’s “production of
programming” activities undertaken in connection with the
mark constitute a “service” for purposes of service mark
Ser. No. 75/185,899
11
registration, under In re Betz Paperchem, Inc., supra.
Applicant’s service is a real activity, it is performed to
the order of or for the benefit of persons other than
applicant (i.e., for third-party broadcasters and
cablecasters), and it is not merely an ancillary or
incidental activity.

Decision: The refusal to register is reversed.