The Ride, LLC

Trademark Trial and Appeal Board

Feb 3, 2020

86845550 (T.T.A.B. Feb. 3, 2020)

Mailed: February 3, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re The Ride, LLC
________

Serial No. 86845550
_______

Bryan W. Bockhop of Bockhop Intellectual Property Law LLC
for The Ride, LLC.

Barney L. Charlon, Trademark Examining Attorney, Law Office 104
(Zachary Cromer, Managing Attorney).
_______

Before Cataldo, Bergsman and Ritchie,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, The Ride, LLC, filed an application, amended during prosecution to
seek registration of the image shown as Figure 1 below on the Principal Register as
a mark for “conducting sightseeing travel tours by bus” in International Class 39.1
Figure 1:

1 Application Serial No. 86845550 was filed on December 10, 2015 pursuant to Section 1(a)
of the Trademark Act, 15 U.S.C. § 1051(a), claiming dates of first use anywhere and first use
in commerce as of September 30, 2010. Color is not claimed as a feature of the mark.
Page references to the application record are to the downloadable .pdf version of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the briefs and orders
on appeal are to the Board’s TTABVUE docket system.
This Opinion is a
Precedent of the TTAB
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During prosecution, Applicant submitted a claim in the alternative that the proposed
mark has acquired distinctiveness under Trademark Act Section 2(f), 15 U.S.C.
§ 1052(f).2
The Trademark Examining Attorney finally refused registration on the following
grounds:
(1) under Sections 1, 2, 3, and 45 of the Trademark Act, 15 U.S.C.
§§ 1051, 1052, 1053, and 1127, on the ground that the subject matter
sought to be registered “fails to function as a service mark

2 In its brief, Applicant makes the following statement: “While Applicant asserts that the
Mark is distinctive, Applicant argues in the alternative that the Mark has acquired secondary
meaning and has submitted substantial evidence in support thereof.” 13 TTABVUE 13.
Applicant’s original claim of acquired distinctiveness did not include any indicia that it was
intended to be submitted in the alternative. October 4, 2016 Response to Office Action at
TSDR 5, 8, 17-22. However, in its subsequent communications, Applicant indicated that its
claim of acquired distinctiveness was made in the alternative. July 5, 2017 Response to Office
Action at TSDR 6; February 2, 2018 first Request for Reconsideration at TSDR 6.
Accordingly, we so construe it.
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notwithstanding applicant’s claim of acquired distinctiveness under
Trademark Act Section 2(f), 15 U.S.C. § 1052(f)”;3

(2) under Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051,
1127, on the basis that all of the specimens of record are unacceptable
because they fail to show the proposed mark in use in commerce; and

(3) under Trademark Rule 2.37; 37 C.F.R. § 2.37, on the ground that “the
description of the applied-for motion mark is incomplete.”4

Applicant then appealed. The appeal is fully briefed.
I. Evidence of Record
In support of their positions, Applicant and the Examining Attorney introduced
evidence, of which the following excerpts are most probative of the issues before us.5
The Examining Attorney submitted, inter alia, multiple images from Applicant’s
website displaying various performers, including a rapper, break dancer,
saxophonist, singer and contortionist, in addition to a tap dancing individual wearing
a business suit. (Exhibit A)6
Applicant submitted two surveys conducted by Robert T. Kaiser7 (“Kaiser
Surveys”) (Exhibit B) and Mr. Kaiser’s supporting declarations8 purporting to

3 Examining Attorney’s brief, 15 TTABVUE 3. Because Section 2(f) does not provide a basis
for refusal of registration, we construe the arguments and evidence presented by Applicant
and the Examining Attorney as addressing whether the applied-for matter will be perceived
as a mark, based upon inherent or acquired distinctiveness.
4 15 TTABVUE 3.
5 Representative samples of the most probative evidence discussed but not reproduced in the
body of this decision are included as exhibits in an appendix hereto.
6 March 1, 2008 Office Action at 4-24; April 13, 2018 Office Action at TSDR 4-22.
7 October 4, 2016 Response to Office Action at TSDR 33-60.
8 October 4, 2016 Response to Office Action at TSDR 29-32.
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demonstrate “the degree to which two groups of individuals associate The Ride, LLC
[Applicant] with the live visual and motion elements of the trade dress…”9 Applicant
further introduced into the record screenshots from videos posted to social media of
television news shows discussing Applicant and its services (Exhibit C) and the videos
themselves. (Exhibit D)10 Applicant also introduced into the record copies of five
third-party registrations for non-traditional marks, all issued on the Principal
Register, along with photographs of the specimens submitted therewith. (Exhibit E)11
In addition, Applicant submitted screenshots from its website advertising its services.
(Exhibit F)12 Finally, Applicant submitted the declaration of its Chief Executive
Officer, Mr. Richard Humphrey. (Exhibit G)13
II. Discussion
A. Sufficiency of the Description of the Applied-for Motion Mark
We begin with the Examining Attorney’s refusal of registration on the ground that
“the description of the applied-for motion mark is incomplete,”14 Trademark Rule
2.37, 37 C.F.R. §2.37, provides as follows:

9 October 4, 2016 Response to Office Action at TSDR 29-30.
10 October 4, 2016 Response to Office Action at TSDR 61-64; February 2, 2018 Response to
Office Action, submitted as separate attachments.
11 October 4, 2016 Response to Office Action at TSDR 65-67; July 5, 2017 Response to Office
Action at TSDR 18-27; February 2, 2018 Response to Office Action at TSDR 23-24. In
addition, with its February 2, 2018 Response, Applicant submitted a second supporting
declaration of its CEO, Mr. Richard Humphrey at TSDR 20-22.
12 Applicant’s February 2, 2018 Request for Reconsideration at TSDR 26; Applicant’s March
20, 2018 Second Request for Reconsideration at TSDR 4-5.
13 Applicant’s July 5, 2017 Response to Office Action at 16-17.
14 15 TTABVUE 3.
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A description of the mark must be included if the mark is not in standard
characters. In an application where the mark is in standard characters,
a description may be included and must be included if required by the
trademark examining attorney.

Trademark Rule 2.52(b)(3), 37 C.F.R. § 2.52(b)(3), provides that the requirement for
a description of the mark applies to motion marks. See also TRADEMARK MANUAL OF
EXAMINING PROCEDURE (TMEP) § 807.11. TMEP § 808.02 provides the following
additional guidance (citations omitted):
If a description of a mark is placed in the record, the description should
state clearly and accurately what the mark comprises, and should not
create a misleading impression by either positive statement or omission.
Statements regarding how a mark is used (e.g., that the mark is not
used in a particular color) are not appropriate and, if submitted, must
not be printed on the registration certificate.

The description should describe all significant aspects of the mark,
including both literal elements and design elements. Insignificant
features need not be included in a description.

With regard to trade dress marks, TMEP § 1202.02(c)(ii) provides the following
guidance (citations omitted):
The description must clearly indicate that the mark is “three-
dimensional” and constitutes “product design” or “configuration” of the
goods themselves or product “packaging” or a “container” in which the
goods are sold, or that the trade dress is for services offered (e.g., interior
of a restaurant, exterior of a retail establishment, or point-of-sale-
display such as a costume used in connection with the services).
…
In cases where the drawing depicts a two-dimensional mark that could
be interpreted as three-dimensional in nature, an applicant may clarify
that the mark is two-dimensional in the mark description.

Applicant describes its proposed mark:
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in the involved application as
follows:
The mark consists of the live visual and motion elements of the trade
dress of a guided bus tour in which as the bus approaches at least one
predetermined location on the tour an entertainer who is dressed as a
banker walks normally along the street and then performs a tap dance
routine dancing act when the bus stops at the predetermined location as
viewed from inside of the bus. The drawing shows two sequential freeze-
frames of the mark, in which the top frame shows an entertainer dressed
as a banker walking along the street on the side of the bus and in which
the bottom frame shows the entertainer performing a tap dance routine
at the predetermined location. Dotted lines in the drawing show
placement of the mark and are not part of the mark.

The drawing of the proposed mark appears to depict, in the first panel, an
individual walking along a street or sidewalk while wearing a suit and carrying a
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briefcase who, in the second panel, is engaged in what Applicant describes as a tap
dancing routine. In both panels, the individual is being viewed by an audience
through bus windows that face the street. However, Applicant’s description of the
mark does not describe the bus windows. In that regard, it is not clear from the
description what elements displayed in the drawing are claimed as Applicant’s
proposed mark beyond the image of the suited individual and his briefcase. The
individual further is described as being “dressed as a banker.” We recognize
Applicant’s intention to depict an individual wearing a business suit and carrying a
briefcase as a “banker.” Nonetheless, the description of the mark must reflect what
is displayed in Applicant’s drawing, namely, an individual with a briefcase wearing
a suit. We find, therefore, that the description fails to completely and accurately
describe the proposed mark, as required by TMEP §§ 807.11and 808.02.
In addition, Applicant describes its proposed mark as “the live visual and motion
elements of the trade dress of a guided bus tour.” Applicant’s description fails to
indicate that the trade dress three-dimensional or whether, in the alternative, the
trade dress is a two dimensional mark that could be interpreted as three-dimensional.
We find, as a result, that the description fails to comply with the requirements of
TMEP § 1202.02(c)(ii) for a proposed mark consisting of trade dress.
B. Sufficiency of Applicant’s Specimens
We turn to the Examining Attorney’s refusal of registration on the basis that the
specimens of record are unacceptable because they fail to show the mark in the
drawing in use in commerce in connection with the identified services.
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Specifically, the video specimen displays the proposed motion mark
as a man in a suit seen through portions of bus windows shown in
a wide variety of stationary and dancing poses; however, the
drawing displays the applied-for motion mark as depicting a man
in a suit seen through two full bus windows -- which appear in solid
lines and thus constitute claimed matter in the drawing -- with his
arms at his sides in the first frame and with his arms and one leg
extended in the second frame.15

The Trademark Act “provides for registration of a mark based on use of the mark
in commerce.” In re Siny, 920 F.3d 1331, 2019 USPQ2d 11362, *2 (Fed. Cir. 2019).16
A service mark is “any word, name, symbol, or device, or any combination thereof
... [used] to identify and distinguish the services of one person ... from the services
of others and to indicate the source of the services, even if that source is unknown.”
15 U.S.C. § 1127. The USPTO “requires an applicant to submit a specimen of use
‘showing the mark as used on or in connection with the goods [or services].’” In re
Siny Corp., 2019 USPQ2d 11362, *2 (quoting In re Sones, 590 F.3d 1282, 93 USPQ2d
1118, 1120 (Fed. Cir. 2009)). The specimen of use, which is required by Section 1 of
the Lanham Act and Trademark Rule 2.56, 37 C.F.R. § 2.56, must display the
applied-for mark and show an association between the mark and the services. As the
TMEP states:
To be acceptable, a service-mark specimen must show the mark
sought to be registered used in a manner that demonstrates a
direct association between the mark and the services.
Essentially, the mark must be shown in a manner that would be

15 Examining Attorney’s brief, 15 TTABVUE 17.
16 The Federal Circuit originally issued this opinion as nonprecedential on January 14, 2019,
but subsequently granted the USPTO’s motion to reissue it as a precedential opinion. The
precedential opinion was reissued on April 10, 2019.
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perceived by potential purchasers as identifying the applicant’s
services and indicating their source.

TMEP § 1301.04(f) (October 2018) (citations and internal quotation marks
omitted). See also In re Universal Oil Prods. Co., 476 F.2d 653, 177 USPQ 456, 457
(CCPA 1973) (“The minimum requirement is some direct association between the
offer of services and the mark sought to be registered therefor.”). We have stated
that a service mark must be “used in such a manner that it would be readily
perceived as identifying” the services, which is “determined by examining the
specimens of record in the application.” In re Keep A Breast Foundation, 123
USPQ2d 1869, 1876 (TTAB 2017), (quoting In re Moody’s Investors Svc. Inc., 13
USPQ2d 2043, 2047 (TTAB 1989)); accord In re Osmotica Holdings Corp., 95
USPQ2d 1666, 1668 (TTAB 2010) ( “At a minimum, the specimen must show a
direct association between the services and the mark sought to be registered.”).
“A specimen that shows only the mark with no reference to, or association with,
the services does not show service mark usage.” In re DSM Pharm., Inc., 87 USPQ2d
1623, 1624 (TTAB 2008).
Applicant initially submitted four specimens with the application. These are
reproduced below as Figure 2:17

17 In the original application, Applicant describes the specimens as follows: “Four specimens
are provided, in which: the first specimen includes a photograph of an entertainer dressed as
an ordinary person on street performing a song, as seen from outside of the bus; the second
specimen includes two photographs of an entertainer dressed as a parcel delivery person
initially walking with a package and then performing a break dance routine, as seen from
inside the bus; the third specimen includes two photographs of an entertainer dressed as
banker performing tap dance routine on a street, as seen from inside the bus; the fourth
specimen is a photograph showing a tour guide talking to customers inside the bus.”
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Figure 2:

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None of the four screenshots or photographs submitted as specimens displays the
proposed mark as it appears in the drawing. The third specimen displays two images
of a tap dancing individual wearing a suit, but neither matches the drawing. The
remaining three specimens do not display the proposed mark at all. As a result, the
screenshots and photographs comprising the original four specimens of record all are
unacceptable because they fail to show the proposed mark in use in commerce with
Applicant’s services. Furthermore, because the specimens do not even display the
applied for mark, they cannot show the required association with Applicant’s services.
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As a substitute specimen, Applicant first submitted a .wmv video file purportedly
showing the subject matter sought to be registered.18 However, this first substitute
specimen fails to show the proposed mark in a manner such that consumers would
perceive it as an indicator of source for the identified services. First, we note that this
specimen does not display either of the freeze frames comprising the drawing, as
required by Trademark Rule 2.51, 37 C.F.R. § 2.51(a) (“the drawing of the mark must
be a substantially exact representation of the mark as used on or in connection with
the goods and/or services”). “[A]n acceptable specimen should show the entire
repetitive motion in order to depict the commercial impression conveyed by the
mark.” TMEP § 904.03(l). Applicant’s first substitute specimen displays a tap dancing
routine viewed from the interior of a vehicle but does not display the commercial
impression of a repetitive motion sought to be conveyed by Applicant’s drawing.
Further, the audio commentary accompanying the video suggests that the tap
dancing routine may change depending on the performance, e.g., the number of
“leapfrog” movements varies depending on the performance. The specimen thus
suggests a lack of uniformity in its attempt to display the proposed mark. Because
the specimen fails to depict “a substantially exact representation of the mark,” see
Trademark Rule 2.51, or, for that matter, any display of the images in the drawing,

18 The video file may be viewed in the prosecution history as a separate attachment in TSDR
to Applicant’s October 4, 2016 Response to Office Action. Applicant describes the substitute
specimen as a “.wmv video file showing the mark.”
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it fails to associate the proposed mark depicted in the application with Applicant as
a source of any of the recited services.
Applicant submitted a second substitute specimen, reproduced as Figure 3 below,
with its February 2, 2018 Response to Office Action:19
Figure 3:

The still photograph from Applicant’s website comprising the second substitute
specimen displays a man in a suit, apparently performing a dance routine, with a bus

19 Submitted on February 2, 2018 as a separate attachment in TSDR. Applicant describes the
substitute specimen as a “Digital photograph showing live motion elements of the Mark.”
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displaying Applicant’s trade name “The Ride” in the background. As with the original
and first substitute specimens, this still image fails to display the proposed mark.
Applicant argues that the USPTO has accepted similar specimens of use in
registrations displayed as Exhibit E to the Appendix. However, the file histories of
these registrations are not in the record and we are not privy to the circumstances
resulting in the approval of the underlying applications for registration. Further, we
are not bound by the prior decisions of examining attorneys in cases involving
unrelated marks. The Board must make its own findings of fact, and need not adopt
the conclusions reached by an examining attorney in an unrelated case. In re Nett
Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some
prior registrations had some characteristics similar to Nett Designs’ application, the
PTO’s allowance of such prior registrations does not bind the Board or this court.”);
In re Sunmarks, Inc., 32 USPQ2d 1470, 1472 (TTAB 1994); In re BankAmerica Corp.,
231 USPQ 873, 876 (TTAB 1986). “It has been said many times that each case must
be decided on its own facts.” In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB
2010) (internal citation omitted).
In sum, we conclude that neither the original nor the substitute specimens
displays the proposed motion mark depicted in the drawing.20 As a result, none of

20 We found above that Applicant’s description fails to completely and accurately describe its
proposed motion mark or trade dress. With regard to Applicant’s specimens of use, TMEP §
904.03(l) provides:
To show that a motion mark actually identifies and distinguishes the
goods/services and indicates their source, an applicant must submit a specimen
that depicts the motion sufficiently to show how the mark is used on or in
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Applicant’s proffered specimens are sufficient to support use of the proposed mark to
identify the source of Applicant’s services.
C. Failure to Function as a Service Mark Under Sections 1, 2, 3, & 45
We next turn to the substantive refusal, under Sections 1, 2, 3, and 45 of the
Lanham Act, 15 U.S.C. §§ 1051, 1052, 1053 and 1127, that the applied-for mark does
not serve to “identify and distinguish the services of one person . . . and to indicate
the source of the services.”21 15 U.S.C. § 1127 (definition of “service mark”). “[A]
proposed trademark is registrable only if it functions as an identifier of the source of
the applicant’s goods or services.” In re DePorter, 129 USPQ2d 1298, 1299 (TTAB
2019) (citing 15 U.S.C. §§ 1051, 1052, and 1127). “The Trademark Act is not an act to
register mere words, but rather to register trademarks. Before there can be
registration, there must be a trademark, and unless words [or other designations]
have been so used they cannot qualify.” Id. (quoting In re Bose Corp., 546 F.2d 893,
192 USPQ 213, 215 (CCPA 1976)); see also In re Yarnell Ice Cream, LLC, 2019

connection with the goods/services, and that matches the required description
of the mark. Although the drawing for a motion mark may depict a single point
in the movement, or up to five freeze frames showing various points in the
movement, an acceptable specimen should show the entire repetitive motion
in order to depict the commercial impression conveyed by the mark (e.g., a
video clip, a series of still photos, or a series of screen shots).
In addition to failing to display its proposed mark, Applicant’s original and substitute
specimens also fail to match the description thereof.
21 As discussed above, Applicant describes its proposed mark as “the live visual and motion
elements of the trade dress of a guided bus tour…” We observe that Applicant’s
characterization of the applied-for matter as trade dress is inaccurate and, even if the
proposed mark were considered to be trade dress, it would not change the outcome herein for
the various reasons explained in this decision.
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USPQ2d 265039 [*16] (TTAB 2019); In re Int’l Spike, Inc., 196 USPQ 447, 449 (TTAB
1977) (law pronounced in the Bose case is just as applicable to pictures and
illustrations as it is to words: Trademark Act is for the registration, not the creation,
of trademarks); In re Ratcliff Hoist Co., Inc., 157 USPQ 118, 119 (TTAB 1968) (mere
representation of an article of applicant’s merchandise fails to function as a
trademark for its goods). There are many reasons a proposed mark may fail to
function as one. See generally TMEP § 1202.
Sections 1, 2, 3, and 45 of the Trademark Act provide the statutory basis for
refusal to register subject matter that fails to function as a service mark. 15 U.S.C.
§§ 1051, 1052, 1053, and 1127. Specifically, Sections 1, 2, and 3 provide, inter alia,
for the application and registration on the Principal Register of trademarks “by which
the goods [or services] of the applicant may be distinguished from the goods [or
services] of others” and Section 45 defines a “service mark,” in pertinent part, as “any
word, name, symbol, or device, or any combination thereof used by a person ... to
identify and distinguish the services of one person ... from the services of others and
to indicate the source of the services, even if that source is unknown.” Accordingly,
the Office is statutorily constrained to register matter on the Principal Register if and
only if it functions as a mark.
“[N]ot every designation adopted with the intention that it performs a trademark
function and even labeled as a trademark necessarily accomplishes that purpose….”
Am. Velcro, Inc. v. Charles Mayer Studios, Inc., 177 USPQ 149, 154 (TTAB 1973); see
also Roux Labs., Inc. v. Clairol, Inc., 427 F.2d 823, 166 USPQ 34, 39 (CCPA 1970).
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The critical inquiry in determining whether a designation functions as
a mark is how the designation would be perceived by the relevant public.
To make this determination we look to the specimens and other evidence
of record showing how the designation is actually used in the
marketplace.

In re Eagle Crest Inc., 96 USPQ2d at 1229.
Thus, the central question in determining whether Applicant’s proposed mark
functions as a service mark is the commercial impression it makes on the relevant
public (e.g., whether the term sought to be registered would be perceived as a mark
identifying the source of the services). In re Aerospace Optico, Inc., 78 USPQ2d 1861,
1862 (TTAB 2006) (“the mark must be used in such a manner that it would be readily
perceived as identifying the specified goods [or services]. ... The mere fact that a
designation appears on the specimen of record does not make it a trademark. ... A
critical element in determining whether matter sought to be registered as a
trademark is the impression the matter makes on the relevant public.”22 (citations
omitted)). See also In re Volvo Cars of N. Am. Inc., 46 USPQ2d 1455, 1459 (TTAB
1998); In re Remington Prods. Inc., 3 USPQ2d 1714, 1715 (TTAB 1987); In re
Morganroth, 208 USPQ 284, 287 (TTAB 1980).
In support of its position that the proposed mark is perceived as a source identifier,
Applicant submitted two surveys with supporting declarations conducted by Mr.

22 In this case, Applicant’s proposed mark does not appear on its specimens of record, further
calling into question the extent to which the applied-for matter would be perceived as a source
indicator.
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Robert T. Kaiser (Kaiser surveys).23 To the extent we may consider a properly-
conducted survey as evidence of consumer perception, we note that Mr. Kaiser does
not appear to have conducted any sort of “mini-course” that would include a test of
the understanding of the survey participants as to whether something functions as a
mark. Given the non-traditional nature of Applicant’s proposed motion mark, a
survey intended to test consumer perception may warrant a unique survey
methodology, but the methodology would have been aided by a mini-course. For
example, while the issue of genericness is not before us, we observe Mr. Kaiser’s
surveys are not analogous to “Teflon surveys,” described by Professor McCarthy as
“essentially a mini-course in the generic versus trademark distinction, followed by a
test.”24 In a case involving a genericness determination, the Board “noted that we can
give ‘little weight’ to a survey where a mini-test was not performed and we do not
know whether survey participants actually understood what they were being asked.”
Frito-Lay N. Am., Inc. v. Princeton Vanguard, LLC, 124 USPQ2d 1184, 1198-99
(TTAB 2017), (quoting Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341,
1361-62 (TTAB 2013)), (citing Jacob Zimmerman v. Nat’l Ass’n of Realtors, 70
USPQ2d 1425, 1436-36 n. 15 (TTAB 2004)) (flaws in the design and administration

23 October 4, 2016 Response to Office Action at TSDR 29-60. (Relevant portions reproduced
in Exhibit B to Appendix). Mr. Kaiser identifies himself as “the President of StrateSci Inc., a
seven-member marketing research and analysis firm” and “an expert in the design, execution
and analysis of surveys that quantitively measure how those making purchasing decisions
perceive the trademarks owned by my clients.” Id. at TSDR 29.
24 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION 12:16 (5th
ed.).
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of the survey, including the mini-test, resulted in the survey having limited probative
value). In this case, Mr. Kaiser did not conduct any sort of mini-test or other
evaluation of the participants’ ability to recognize an indicator of source, and we
cannot determine whether the survey respondents understand or can identify a mark.
As a result of this apparent flaw in Mr. Kaiser’s methodology, we discount the value
of his surveys based upon the lack of proper foundation for their introduction. We
nonetheless consider his methodology and results for whatever probative value they
may have.
Mr. Kaiser surveyed the following groups:
• Consumers who had experienced The Ride any time from 2013 to
2016, pulled from The Ride ticket system.

• Travel professionals (travel agents, tour operators, group sales agents,
and hotel concierges) who book tourism packages in New York City.25

With regard to recognition of tour bus companies, Mr. Kaiser asked the
following:26
Recognition of Tour Bus Companies
Questions Asked

• Which Tour Bus Company do you associate with this drawing?
• The Ride
• Gray Line
• CitySights
• Big Bus

25 October 4, 2016 Response to Office Action at TSDR 37.
26 Id. at TSDR 39-42.
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• Circle Line
• Other (specify) _
• Don’t know

From the results of this query, Mr. Kaiser concluded that 96% of consumers
“identified The Ride from its drawing, and do not think any other images are The
Ride.”27 Mr. Kaiser further concluded that 74% of “Travel professionals strongly
recognized The RIDE.”28

27 Id. at TSDR 42.
28 Id. at TSDR 43.
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With regard to association with street performances, Mr. Kaiser asked the
following of consumers who had previously experienced The Ride and travel
professionals:29
Question Asked

• Tour Buses may include random street performances by actors placed
on the street. Which Tour Bus Company do you associate with seeing
random street performances such as depicted in these drawings?
• The Ride
• Gray Line
• CitySights
• Big Bus
• Circle Line
• Other (specify) _
• Don’t know
The order of the answer choices were randomly rotated to control for
order bias.

29 Id. at TSDR 44-46.
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From the results of this query, Mr. Kaiser concluded that 98% of consumers or
“Essentially all of the Consumers associated the depiction of the Street Performance
with The Ride.”30 Mr. Kaiser further concluded that 73% of “Travel professionals
strongly recognized The Ride with street performances as depicted in the drawing.
One in five could not make any association.”31
In addition, 95% of consumers and 68% of travel professionals also associated a
parody of a tour bus on the television show The Simpsons with The Ride,32 and one
in seven consumers indicated that they chose The Ride based upon seeing the bus in
the street.33

30 Id. at TSDR 42.
31 Id. at TSDR 48.
32 Id. at TSDR 49-53.
33 Id. at TSDR 54-56.
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The Kaiser surveys purport to establish three main points, according to Applicant:
First, a very high percentage of consumers, all of whom previously utilized
Applicant’s services, as well as a high percentage of travel professionals who book
tourism packages in New York City, associated The Ride with a photograph of its tour
bus; second, a very high percentage of the same consumers and a high percentage of
travel professionals associated random street performances by actors with The Ride,
assertedly prompted by the drawing of Applicant’s proposed mark; third, a very high
percentage of consumers and a greater than average percentage of travel
professionals associated a spoof on The Simpsons with The Ride.
Based upon the results of these surveys, Mr. Kaiser concludes:34
18. Therefore, in my expert opinion, the Mark has secondary meaning as
designating The Ride as a single source of tour bus services both in the
minds of ordinary purchasers of tour bus services and travel professionals
who are in the business of booking tour bus packages.

19. Based on my extensive experience in conducting and analyzing these
types of surveys, I conclude, in my expert opinion, that the Mark, as shown
in the drawing presented above, is both distinctive and has secondary
meaning as designating The Ride as a source of tour bus services in the
minds of both ordinary purchasers of tour bus services and travel
professionals.

There are several problems with Mr. Kaiser’s interpretation of the results of his
surveys. First, the universe of respondents is biased and underinclusive, as it
specifically includes consumers who have already utilized Applicant’s services, rather
than the relevant consumers who may have in the recent past engaged or will engage

34 Id. at TSDR 32.
Serial No. 86845550

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the services of any tour bus company. Furthermore, the questions are phrased in a
biased and leading manner, and do not include the option for a consumer to indicate
a perceived association with “none” of the listed companies in particular, inasmuch
as there may be an association, if any, with more than one. In addition, the questions
ask about perceived association with a drawing and with a concept of “random street
performances by actors. ” The question fails to capture the actual and exact motion
mark or trade dress that Applicant seeks to register.
A further problem with Mr. Kaiser’s interpretation of the results of his surveys is
that there is no indication in any of the queries or responses that consumers or travel
professionals recognize the proposed mark as an indicator of source for Applicant’s
services, identified as “conducting sightseeing travel tours by bus.” The results
establish a high degree of association among both surveyed groups between
Applicant’s tour bus, random street performers, and a Simpsons parody with
Applicant’s trade name, The Ride. The results further establish a high degree of
association between Applicant and the unique shape and design of its bus. These
associations are irrelevant to the question of whether the surveyed group associates
Applicant with the proposed mark it seeks to register. Mr. Kaiser’s surveys queried
“Which Tour Bus Company do you associate with seeing random street performances
such as depicted in these drawings [of the applied-for mark]?35 Neither this question,
nor any of the other questions offered in the surveys, queried whether the consumers

35 Id. at 45.
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or travel professionals associated the proposed mark with Applicant as a source of
origin of the identified services. Similarly, there was no option to associate the
proposed mark as an answer to any of the survey questions.
Measuring mere association of something with a particular source is insufficient.
To show that that “something” serves as a source-indicator, the questions and
responses must demonstrate that the “primary significance” of the stimulus is as a
brand identifier, not just a type of service or a feature of a service.36 See, e.g., Sturgis
Motorcycle Rally, Inc. v. Rushmore Photo & Gifts, Inc., 908 F.3d 313, 330, 335, 128
USPQ2d 1575, 1590, 1593-94 (8th Cir. 2018); Vornado Air Circulation Sys., Inc. v.
Duracraft Corp., 58 F.3d 1498, 35 USPQ2d 1332, 1334 n.7 (10th Cir. 1995).
The drawing of the proposed mark is used in the surveys to query whether survey
participants associate tour buses featuring random street performances by actors
with Applicant’s trade name, The Ride. Nowhere in the surveys are the participants
asked whether they associate the use of street performances as a mark for Applicant’s
services. Because Mr. Kaiser did not perform a mini-test to determine whether survey
participants understand or can identify a trademark, we cannot determine whether

36 We observe that the applied-for motion mark may not be the type of designation intended
to be registered by the Lanham Act in that it appears to be a pictorial representation of an
aspect of Applicant’s recited services, namely, guided bus tours rendered with various
performers on sidewalks and other locations. Just as the name of a process is not registrable
as a service mark, see In re Universal Oil Prods. Co., 476 F.2d 653, 177 USPQ 456 (CCPA
1973), the pictorial representation of that process or method itself should likewise not be
registrable. See In re Singer Mfg. Co., 255 F.2d 939, 118 USPQ 310, 311-12 (CCPA 1958) (“It
is, of course, true that a design consisting merely or essentially of a pictorial representation
of the goods on which it is used is descriptive, and is not a valid trademark.”) (citation
omitted).

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participants even perceived the intended nature or purpose of the applied-for motion
mark.
Similarly, participants were not given the opportunity to respond in such a
manner that associates the proposed mark with the services. Simply put, even if we
accept Mr. Kaiser’s methodology, his surveys suggest a strong to very strong
association of Applicant’s trade name The Ride with the questions put to the
participants, but are not probative of the association of the applied-for mark with
Applicant as the source of origin of Applicant’s services. We therefore find no basis
for Mr. Kaiser’s conclusion that his surveys support a finding that the proposed mark
is inherently distinctive or has acquired secondary meaning. Cf. Frito-Lay, 124
USPQ2d at 1195-1201 (survey results entitled to only limited probative weight due,
inter alia, to flaws in methodology).
In his declaration, Applicant’s Chief Executive Officer, Mr. Richard Humphrey,
discusses Applicant’s exclusive use of the applied-for designation since 2010, its
efforts to associate the proposed mark with Applicant as a source of its services, the
unique nature of the tap dancing performance among tour bus services, and the
extent of exposure of consumers and potential consumers to its applied-for mark.37

37 Applicant submitted this declaration in support of its claim of acquired distinctiveness.
Nonetheless, we consider this evidence in support of Applicant’s position that the applied-for
designation is registrable as an indicator of source. Cf. In re The Hallicrafters Co., 153 USPQ
376 (TTAB 1967) (reversing refusal to register QUALITY THROUGH CRAFTSMANSHIP
for radio equipment, finding that the wording functioned as a mark as a result of applicant’s
extensive advertisement of the slogan, use of the slogan in the manner of a trademark on the
goods).
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However, as discussed above evidence shows that Applicant displays various images
of a tap dancer among other performers along with other potential identifiers,
principally, The Ride and TheRideNYC.com. We cannot infer from Applicant’s
advertising and other efforts that consumers will perceive the proposed mark, amid
these other more traditional designations, as a source indicator. See, e.g., In re
Bongrain Int’l (Am.) Corp., 894 F.2d 1316, 3 USPQ2d 1727, 1729 (Fed. Cir. 1990)
(sales and advertising figures alone may not suffice where other marks were featured
with the mark at issue or the growth could be attributed to the product’s popularity).
Based on our above review of the specimens of use submitted by Applicant as well
as all other evidence of record, we agree with the Examining Attorney that
Applicant’s proposed mark fails to function as a service mark. As discussed above,
the original specimen, and the first and second substitute specimens, all fail to
display the proposed mark or associate the proposed mark with the recited services,
thus making it unlikely that the relevant consumers will perceive the proposed mark
as indicating source. If anything, the applied-for mark appears to be part of one of
several street performances offered during sightseeing bus tours under Applicant’s
trade name, “The Ride.” The Kaiser surveys similarly suggest that consumers of
Applicant’s services and travel professionals associate Applicant’s services with “The
Ride,” and fail to provide support for Applicant’s argument that the proposed mark
functions as an indicator of source. Rather, the Kaiser surveys and other evidence
appear to establish that consumers view THE RIDE as Applicant’s mark.
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As further stated on Applicant’s website, “The Ride is hosted by two professional
comedians/actors. You will see 5-7 surprise acts on the city streets!”38 These acts
include a hip-hop dancer, a belter, a tap dancer, a saxophonist, a rapper, a ballet
dancer, and an individual celebrating New Year’s Eve.39 It is not clear whether the
tap dancer is always featured among the “5-7 surprise acts” during the bus tour. This
evidence suggests the tap dancing routine that is the subject of Applicant’s proposed
mark is simply one of several performances that may be viewed during Applicant’s
bus tours and thus serves as a feature or aspect – as opposed to indicating the source
– of Applicant’s services. Additional screenshots from Applicant’s website merely
display an individual performing a tap dance viewed by people inside a bus.40 Nothing
in these images suggests the viewers of the tap dance perceive it as an indicator of
source for the bus tour services. Similarly, still images and video clips from NBC’s
Today Show, My Fox 5, and Japanese and Spanish language television shows display
different men performing tap dancing routines as part of Applicant’s services under
its trade name “The Ride.”41 In that regard, the Today Show segment is entitled “Sara
Haines Takes a Ride on ‘The Ride.’”42 Nothing in these clips supports Applicant’s
contention that consumers view a particular tap dancing routine either as displayed

38 Applicant’s February 2, 2018 Request for Reconsideration at TSDR 26. (Exhibit F to
Appendix)
39 Id.
40 Applicant’s March 20, 2018 Second Request for Reconsideration at TSDR 4-5.
41 October 4, 2016 Response to Office Action at TSDR 61-64.
42 Id. at TSDR 61.
Serial No. 86845550

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in the proposed mark or in any of the images thereof in the record as an indicator of
the source of Applicant’s services. The proposed mark is not Applicant’s main
identifier of the source of its services (THE RIDE is), and it represents a tap dancing
routine that varies43 rather than a repetitive motion mark that is always the same,
and consumers would not be pre-disposed to view the tap dance as a mark.
Upon consideration of the entire record, the applied-for matter as it is being used
displays two still images from a tap dancing performance that may occur along with
several other performances during the course of Applicant’s sightseeing bus tours. As
such, the evidence shows that the tap dance will be perceived as part of the services
rather than as a mark designating the source of the services.
D. Acquired Distinctiveness Under Section 2(f)
As discussed above, the applied-for matter fails to function as a mark. As a
consequence, no amount of evidence of acquired distinctiveness can overcome a
failure to function refusal. “It is the source-distinguishing ability of a mark — not its
ontological status as color, shape, fragrance, word, or sign — that permits it to serve”
as a trademark. Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161,
1163 (1995). See also TMEP § 1212.02(i) (“[W]here the examining attorney has
determined that matter sought to be registered is not registrable because it is not a

43 We note once more that the various images and video clips of tap dancing routines pictured
in Applicant’s specimens and evidence differ from one another. This apparent lack of
uniformity further undercuts Applicant’s ability to transform the various images of a
performer tap dancing while dressed in a suit into reliable evidence that such individualized
performances and performers serve as an indicator of source.
Serial No. 86845550

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mark within the meaning of the Trademark Act, a claim that the matter has acquired
distinctiveness under §2(f) as applied to the applicant’s goods or services does not
overcome the refusal.”). In view thereof, Applicant’s claim of acquired distinctiveness
will be given no consideration.
III. Decision:
(1) the refusal to register pursuant to Sections 1, 2, 3 and 45 of the Trademark
Act on the ground that the applied-for designation fails to function as a service mark
is affirmed;
(2) the refusal to register the applied-for matter pursuant to Sections 1 and 45
of the Trademark Act, and related rules, on the ground that the original specimens,
as well as the first and second substitute specimens, do not display the applied-for
mark in connection with the services specified in the application, is affirmed; and
(3) the refusal to register under Trademark Rule 2.37 on the ground that the
description of the applied-for motion mark is incomplete is affirmed.

Serial No. 86845550

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Evidentiary Appendix

Exhibit A – Screenshot Images from Applicant’s Website44

44 March 1, 2008 Office Action at 4-24; April 13, 2018 Office Action at 4-22.
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Exhibit B – Kaiser Surveys45

Methodology

• Surveys were taken online through email invitations to two groups:
• Consumers who had experienced The Ride any time from 2013 to 2016
pulled from The Ride ticket system.
• Travel professionals (travel agents, tour operators, group sales agents,
and hotel concierges) who book tourism packages in New York City.
• Email addresses of individuals surveyed were provided to the researchers
from The Ride, LLC.
• Respondents were blind to the sponsor of this survey.
• The survey was fielded between April 29 and May 3, 2016
• A total of 165 responses were compiled among Consumers

45 October 4, 2016 Response to Office Action at .33-60.
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• Emails sent = 27,800
• Opened email = 495
• Completed survey = 165 (33.3%)
• A total of 62 responses were compiled among travel professionals
• Emails sent = 3,400
• Opened email = 230
• Completed survey = 62 (27.0%)

Sample Validity
The data provide highly valid estimates of the degree of recognition of The
Ride.

For consumers, 96% of respondents recognized The Ride correctly from its
drawing. With a sample size of 165, the margin of error * around this
estimate is +/- 3.0% at the 95% level of confidence. This means that with 95%
confidence, we are certain that the true recognition of The Ride would be
between 93.0% and 99.0% for this population of respondents.

For the travel professionals, 74% of respondents recognized The Ride
correctly. With a sample size of 62, the margin of error a round this estimate
is +/- 10.8% at the 95% level of confidence. This means that if you took an
infinite number of samples of 62 from the population, 95% of the time the
correct recognition of The Ride would be between 63.2% and 84.8%.

Recognition of Tour Bus Companies
Questions Asked

• Which Tour Bus Company do you associate with this drawing?
• The Ride
• Gray Line
• CitySights
• Big Bus
• Circle Line
• Other (specify) _
Serial No. 86845550

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• Don’t know

• The order of the presentation of the drawings and the order of the
answer choices were randomly rotated to control for order bias.

Serial No. 86845550

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Association with Street Performances
Question Asked
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• Tour Buses may include random street performances by actors placed
on the street. Which Tour Bus Company do you associate with seeing
random street performances such as depicted in these drawings?
• The Ride
• Gray Line
• CitySights
• Big Bus
• Circle Line
• Other (specify) _
• Don’t know
• The order of the answer choices were randomly rotated to control for
order bias.

Tested Street Performance Depiction

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Association with The Simpsons Parody
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Question Asked

• Recently, on an episode of The Simpsons television show, a tour bus
was used as a spoof. Below you will see four screen shots from the
TV Show. Which Tour Bus Company, if any, do you associate with
The Simpson Show spoof?
• The Ride
• Gray Line
• CitySights
• Big Bus
• Circle Line
• Other (specify) _
• Don't know

• The order of the answer choices were randomly rotated to control for
order bias.

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Impact on Tour Bus Choices
Serial No. 86845550

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Question Asked

• What was it that made you decide on choosing the Ride?
• I saw the bus
• I saw or heard an ad
• I saw it on Social Media
• It was recommended to me
• The experience
• Something else (Specify)

• The order of the answer choices were randomly rotated to control
for order bias and respondents could choose all the answers that
applied.

Serial No. 86845550

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Exhibit C – Example of Screenshots from videos depicting and discussing
Applicant and its services:46

Exhibit D – Videos depicting and discussing Applicant and its services:47

46 October 4, 2016 Response to Office Action at 61-64.
47 February 2, 2018 Response to Office Action, submitted as separate attachments.
Serial No. 86845550

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86845550 Exhibit Q Feb 2 2018.wmv
86845550 Exhibit R Feb 2 2018.wmv

Exhibit E – Third-Party Registrations48

Reg. No. 2710415 for the mark displayed below, identifying “providing facilities of
business meetings” in Class 35 and “providing facilities for banquets; hotel services;
hotel catering and concierge services” in Class 42.

48 October 4, 2016 Response to Office Action at 65-67; July 5, 2017 Response to Office Action
at 18-27; February 2, 2018 Response to Office Action at 23-24. In addition, with its February
2, 2018 Response, Applicant submitted a second supporting declaration of its CEO, Mr.
Richard Humphrey at 20-22. The third-party registrations included in this appendix are
representative samples of the five submitted by Applicant.
Serial No. 86845550

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The mark consists of the live visual and motion elements of the The Peabody Duck
March as performed at The Peabody Hotels, only one segment of which is depicted in
line art in the drawing. The motion elements include the red carpet being rolled out,
the appearance of the ducks and uniformed Duckmaster at the elevator door, and the
march of the ducks down the red carpet, up the steps, and into the fountain where
they begin swimming. The mark also includes the fanfare in reverse sequence.

Reg. No. 1946170 (2f) for the mark displayed below, identifying “jet propelled water
vehicles” in Class 12
The mark is comprised of a three dimensional spray of water issuing from the rear of
a jet propelled watercraft and is generated during the operation of the watercraft.

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Exhibit F – Screenshots from Applicant’s Website49

49 Applicant’s February 2, 2018 Request for Reconsideration at 26; Applicant’s March 20,
2018 Second Request for Reconsideration at 4-5.
Serial No. 86845550

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Serial No. 86845550

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Exhibit G – Declaration of Applicant’s CEO50

Applicant submitted the declaration of Richard Humphrey, its Chief Executive
Officer, in support of its claim of acquired distinctiveness:
The Ride, LLC has exercised substantially exclusive and continuous use of
the above styled mark in commerce since at least September 30, 2010 and
continues to exercise substantially exclusive and continuous use of the
above-styled mark in commerce.

This use has been in commerce that may lawfully be regulated by the U.S.
Congress.

As a result of this exclusive and continuous use for more than five years
before the date of this Declaration, the mark has become distinctive of
Applicant’ s services of conducting sightseeing travel tours by bus.

The Ride, LLC expends substantial amounts of money, time and effort
building an association between the Mark and The Ride as the single
source of its tour bus-related services in the minds of potential purchasers.
The Ride, LLC works extremely hard to educate the public regarding the
association between the Mark and The Ride because the live visual and
motion elements of the trade dress in which an individual appearing to be
a banker performing a tap dance routine in front of a bus are so different
from all other tour bus services that when potential customers of The Ride
who have been educated to make this association see The Ride’s bus on the
street, they become highly likely to purchase The Ride’s tour bus services.
The Ride, LLC spends $600,000 per year on marketing. Of that, over $250,000
is spent on print advertisements, brochures and video presentations, all of
which prominently display photographs of the Mark in association with The
Ride. Thus, during the almost six years that The Ride, LLC has employed the
Mark, it has spent over $1,500,000 on these advertising materials. As a result
of these advertising expenditures, The Ride, LLC has successfully educated,
and continues to educate the public to associate the Mark directly with The
Ride, LLC as a single source for its tour bus-related services.

As a result of the direct exposure to tens of millions of people each year for
more than five years and the above-mentioned advertising exposure, the
Mark has become widely associated with The Ride as a single source among
purchasers of tour bus-related services in the relevant New York City

50 Applicant’s July 5, 2017 Response to Office Action at 16-17.
Serial No. 86845550

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marketplace and throughout America, and therefore the mark has
secondary meaning in the minds of such purchasers.