The SiegelGroup Int’l, Inc.

Trademark Trial and Appeal Board

Jul 20, 2006

No. 76102384 (T.T.A.B. Jul. 20, 2006)

Mailed:
July 20, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re The Siegel Group Int’l, Inc.
________

Serial No. 76102384
_______

Bryan C. Reuter and Jennifer L. Thornton of Stanley,
Flanagan & Reuter, L.L.C. for The Siegel Group Int’l, Inc.

Martha L. Fromm,1 Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Bucher, Grendel and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

On August 3, 2000, The Siegel Group Int’l, Inc.
(applicant) filed an application to register the mark
CHICKEN STOCKS in standard-character form on the Principal
Register for services ultimately identified as “financial
investment in the field of securities.” Applicant has
disclaimed “STOCKS.”

1 A different examining attorney acted on this application prior
to this appeal.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76102384
2
The application was filed based on prior use of the
mark in commerce, but applicant amended to an intent-to-use
basis when the examining attorney rejected applicant’s
specimen of use in the initial examination.
After approval and publication of the application and
issuance of the notice of allowance, applicant filed its
statement of use with new specimens of use. The examining
attorney also found applicant’s new specimens of use
unacceptable and finally refused registration, citing
Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§ 1051,
1052, 1053 and 1127. In particular, the examining attorney
found that CHICKEN STOCKS did not function as a service
mark as used on the specimens and that the specimens did
not show use of CHICKEN STOCKS in the sale or advertising
of the identified services.
This appeal followed.2 Both applicant and the
examining attorney have filed briefs; applicant did not
request an oral hearing. For the reasons indicated below,
we affirm.
Section 1 of The Trademark Act requires that an
applicant submit “specimens or facsimiles of the mark as

2 In its brief applicant asks that we “reverse that refusal and
register the mark or, alternatively, remand the matter to the
district court.” We are not aware of any procedure whereby we
could remand this matter to a district court.

Ser No. 76102384
3
used in commerce.” 15 U.S.C. § 1051. Trademark Act
Section 45 provides further that a mark is “in use in
commerce . . . on services when it is used or displayed in
the sale or advertising of the services.” 15 U.S.C.
§ 1127. The Trademark Rules likewise specify, “A service
mark specimen must show the mark as actually used in the
sale or advertising of the services.” 37 C.F.R.
§ 2.56(b)(2).
Trademark Act Section 45 also sets forth the
fundamental definition of a service mark as a mark used “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.” 15 U.S.C. § 1127. This definition is the
basis for the requirement that the mark, as used in the
specimen, must “function” as a service mark.
When applicant filed its application it submitted two
potential specimens. The first is a copy of an article
entitled “an investment strategy for the timid” by Fred
Siegel explaining a strategy for investment.3 It includes
the following text, “I will show you how to build a
‘chicken stock’ portfolio. No, that has nothing to do with

3 The copy does not indicate where this article may have been
published.
Ser No. 76102384
4
Colonel Sanders or Popeye’s. The term refers to a
portfolio that’s appropriate for people who are ‘chicken’
or afraid of the stock market.”4 Later the article states,
“You can create an entire portfolio of stocks that meet the
‘chicken stock’ criteria.” The term is used twice more in
the article in the same manner. The article ends with the
following biographical note on the author: “Fred Siegel is
a financial-news analyst for WWL-TV and radio and portfolio
manager for an international investment firm.”
The second potential specimen filed with the
application appears to be a form which begins “Proposal
for” followed by a blank space where a client’s name might
be inserted. It includes headings, such as, “Your goals”
and “Your retirement projection has revealed the
following” with what appear to be sample entries following
each. The last paragraph on the page is designated
“Income/Growth” and includes the following statement: “We
recommend the majority of your money (60%) be privately
managed using the ‘Chick Stock’ strategy. It is designed
to provide higher income every year and growth on your
original principal.” (bold type in original)

4 Here and in many other instances “stock” is used in the
singular rather than the plural form shown in the drawing of the
mark. This discrepancy was not noted by the examining attorney,
and therefore, we have not considered this discrepancy in our
analysis.
Ser No. 76102384
5
Applicant furnished additional potential specimens
when it filed its statement of use. First applicant
provided a book jacket for a book entitled Investing for
Cowards by Fred Siegel. “Chicken Stock” appears a number
of times on the jacket, again always as an integral part of
text. For example, the back jacket includes the following
text: “This is a must read for anyone who was ever afraid
of, or burned by, the market. Fred’s innovative ‘Chicken
Stock’ strategy will dramatically change the way you view
investing.” The jacket flap states, “He shows how to use
his ‘Chicken Stock’ strategy to pick an elite group of
conservative growth stocks . . .” The jacket also includes
a biographical sketch of Mr. Siegel including the
following, “FRED SIEGEL personally manages and consults for
over one billion dollars of assets. He has been a
Portfolio Manager since 1981 and is president of The Siegel
Group, Inc., an investment management firm. Executives,
institutions and policy makers around the world consult
with Fred and rely on his advice when making business and
financial decisions.”
When the examining attorney rejected this specimen
applicant provided substitute specimens, including articles
from The Bull & Bear Financial Report, Stock Futures &
Options Magazine, Beverly Hills Times, Investment News,
Ser No. 76102384
6
Bottom/Line/Personal, and an advertisements in Radio-TV
Interview Report. The articles include uses of “Chicken
Stock” either in the article titles, headings or text. For
example, the Bull & Bear article uses the following title,
“Investing for Chickens: Master the Markets with the
Chicken Stock Approach.” It also includes the following
heading within the article, “The Chicken Stock Strategy.”
The Investment News article includes the following text,
“One of the key points is investing in ‘chicken stocks’
which he defines as companies that have produced at least
12 consecutive years of both earnings and increased
dividends.” Two of the articles include short biographical
notes on Mr. Siegel like the one quoted above from “an
investment strategy for the timid.” Each of the articles
talks about Mr. Siegel and his approach to investing.
The advertisement in Radio-TV Interview Report
features Mr. Siegel’s book and refers to “His innovative
‘Chicken Stock Strategy.’” It includes a description of
Mr. Siegel’s “Credentials,” as follows: “Fred Siegel is
the author of INVESTING FOR COWARDS: Proven Market
Strategies for Anyone Afraid of the Market. As President
of the Siegel Group Inc. Fred consults with executives,
institutions and policy makers around the world. His
comments on investing are heard three times daily on WWL,
Ser No. 76102384
7
the CBS affiliate with the highest market penetration in
North America, where he also hosts a two-hour weekly money
talk show.” The advertisement then indicates Mr. Siegel’s
availability for appearances.
The examining attorney also rejected these specimens
and applicant filed two additional specimens with its
request for reconsideration.5 The first of these two
specimens shows “Chicken Stocks” in “HTML Code of
Applicant’s website.” For example, “Chicken Stocks”
appears in a listing of “code” designated as “meta-name”
and “keywords” with over fifty other terms. The
surrounding text appears as follows, “401K, 401K Rollover,
Annuities, Bonds, Chicken Stocks, Dow Jones, Educational
IRA, Estate Planning, Financial Goals, Financial Strategy,
Fred Siegel, Fred’s Comments, . . . Portfolio Management
Services, Retirement Planning, Retirements, Roth IRA,
S&P 500 (sic), Saving, Saving Money, SEP IRA, Siegel,
Siegel Group, Stocks . . .” At that time applicant also
submitted an “e-zine” or “letter to investors.” This
document includes a heading with “Fred Siegel International
Inc.” and a logo to the left and the title “Chicken Stock

5 In each instance applicant provided a statement with its
substitute specimens verifying that the specimens had been used
prior to the expiration of the time for filing the statement of
use.

Ser No. 76102384
8
Report” to the right. The text consists of a general
strategy for use in the selection of stocks concluding with
a list of “Current Chicken Stocks.” Repeating images of
the cover of Mr. Siegel’s book appear along the right side
of the text.
This case presents two distinct but closely related
questions regarding appropriate service mark specimens of
use. Do any of the specimens of use show use of CHICKEN
STOCKS as a mark, that is, does CHICKEN STOCKS “function”
as a mark as used in the specimens? In re Walker Research,
Inc., 228 USPQ 691, 692 (TTAB 1986); In re McDonald’s
Corp., 229 USPQ 555, 556 (TTAB 1985). And, do any of the
specimens associate CHICKEN STOCKS with the identified
services, “financial investment in the field of
securities.” In re Monograms America Inc., 51 USPQ2d 1317,
1318 (TTAB 1999); In re Johnson Controls Inc., 33 USPQ2d
1318, 1320 (TTAB 1994). See generally In re Universal Oil
Producs. Co., 476 F.2d 653, 177 USPQ 456, 457 (CCPA 1973).
To succeed in this appeal applicant must establish that at
least one of the specimens satisfies both criteria.
For purposes of establishing that the designation in
question functions as a mark it must be displayed in a
manner that will distinguish the purported service mark
from surrounding subject matter such that it will be
Ser No. 76102384
9
perceived as a source indicator; applicant’s mere intention
that it serve as a mark is not sufficient. In re
McDonald’s Corp., 229 USPQ at 556. Furthermore, “. . . not
every word, name, symbol, device, etc. which is associated
with an applicant necessarily functions as a trademark or
service mark; to function as a mark, and hence be
registrable, the designation or device must be used as a
mark to identify the applicant’s goods or services.” In re
Moody’s Investors Service Inc., 13 USPQ2d 2043, 2048 (TTAB
1989). See also In re Volvo Cars of North America, 46
USPQ2d 1455, 1459 (TTAB 1998); In re Walker Research, Inc.,
228 USPQ at 692.
With regard to the services, the specimen must show a
direct association between the mark and the services
identified in the application and not some other product or
service. See In re Adair, 45 USPQ2d 1211, 1215 (TTAB
1997); In re Metrotech, 33 USPQ2d 1049, 1051 (TTAB 1993).
After a careful review of each of the specimens, we
conclude that there is no specimen among the many applicant
submitted which shows both use of CHICKEN STOCKS as a mark
and a direct association between CHICKEN STOCKS and the
identified services.
We note that the examining attorney has not questioned
either that applicant is rendering the services it claims,
Ser No. 76102384
10
nor that those services are recognizable services for
purposes of trademark registration. See generally In re
Advertising and Marketing Development Inc., 821 F.2d 614, 2
USPQ2d 2010, 2014 (Fed. Cir. 1987). Accordingly, we need
not address applicant’s discussion of those issues.
In each instance, we must examine the specific use of
CHICKEN STOCKS in the specimen to determine whether the
specimen is acceptable. In re McDonald’s Corp., 229 USPQ
at 555.
First with regard to the “code” specimen, applicant
states, “. . . the key words in a meta tag are used to
index the page by a search engine, so that when a user is
looking for information on ‘Chicken Stocks’ the individual
will likely be directed to the Siegel Group’s website
regarding the financial services it offers. Tellingly, if
a searcher was to enter ‘estate planning’ or ‘investment
management’ the individual might get directed to the same
website.” Applicant then concludes, “The use of the mark
in the meta-tag demonstrates that ‘CHICKERN STOCKS’ is
identified with and used to promote the Siegel Group’s
financial planning and management services over the
internet.”
The examining attorney argues that applicant’s use of
the mark in “the meta-tag specimen” does not show use of
Ser No. 76102384
11
the mark in the sale or advertising of the identified
services. We agree with the examining attorney. In fact,
this specimen fails to show use of CHICK STOCKS either as a
mark or in association with “financial investment in the
field of securities.”
Code associated with a website is not generally
visible to a visitor to a site. If it can be viewed at
all, it is only by resort to a view function intended for
viewing technical details regarding the operation of the
site. Also, as the specimen shows, the metatag portion of
the code consists of a laundry list of terms, as in an
index. The display of terms in this manner does not
satisfy the registration standard. That is, the use of
CHICKEN STOCKS in code is not use of the term as a mark.
Furthermore, contrary to applicant’s argument, this use
does not “associate” the mark with the identified services.
Indeed, the listing of terms in code in no way represents
either use of a mark in the sale/rendering of the service,
nor in the advertising of the service. Likewise, the
potential uses by third-party search-engine operators of
these terms in no way transforms the use into service mark
use sufficient to qualify as a specimen of use.
Ser No. 76102384
12
Accordingly, we conclude that the specimen showing use
of CHICKEN STOCKS in code on applicant’s website is not
acceptable.
Second, CHICKEN STOCKS is used on the jacket of Mr.
Sielgel’s book, and in each of the articles about or by Mr.
Siegel. The record include the article submitted with the
application as well as those submitted as substitute
specimens.
Applicant argues that Mr. Siegel’s book should be
accepted as a specimen because “the book cover states that
the book ‘provides practical time-tested investment
strategies.’” With regard to the articles applicant argues
generally that they show that applicant offers investment
services. For example, applicant states, “. . . one of the
specimen articles, Investment News, states that ‘Mr. Siegel
who manages $1.5 billion for his clients through Siegel
Group, Inc. in New Orleans has started parlaying his
knowledge and experience into the written word.’”
In each of these publications, CHICKEN STOCKS merely
identifies Mr. Siegel’s “strategy” or “approach” to
investing. In re Walker Research, Inc., 228 at 692. For
the record we note and accept applicant’s point that a
designation may both identify a “process” or “strategy” and
function as a mark. In re Lativ Systems, Inc., 223 USPQ
Ser No. 76102384
13
1037, 1038 (TTAB 1984). We simply conclude that CHICKEN
STOCKS, as used here, fails to do the latter.
Furthermore, none of these publications include a
sufficiently prominent use of CHICKEN STOCKS which would
signal to clients for the identified service that it is a
source indicator for that service. Rather, all of the uses
display CHICKEN STOCKS as an integral element within text,
again referring to the “strategy” or “approach” discussed
in the publication.
Nor do any of these publications include a use which
would “associate” CHICKEN STOCKS with “financial investment
in the field of securities.” The only potential references
in any of the publications to an “investment” service are
in the biographical notes regarding Mr. Siegel. These
references are insufficient to create a direct association
between CHICKEN STOCKS and applicant’s “financial
investment in the field of securities” services.6
Accordingly, we conclude that the specimens showing
use of CHICKEN STOCKS in these publications are not
acceptable.
Third, applicant has identified the specimen from
Radio-TV Interview Report as an advertisement. However,

6 Furthermore, the uses in the third-party articles are not uses
by applicant, and as such, would not be proper specimens of use.
Ser No. 76102384
14
CHICKEN STOCKS is not used as a mark in this advertisement.
Here too CHICKEN STOCKS is used only to identify Mr.
Siegel’s investment approach or strategy. In re Walker
Research, Inc., 228 at 692. It is not displayed in a
manner which separates it from the surrounding text as a
source indicator. Also, the advertisement refers only to
Mr. Siegel’s availability for media appearances. It
emphasizes his media experience and concludes by
indicating, “AVAILABILITY: Louisiana, nationwide by
arrangement, and via telephone; available as a last-minute
guest.” Accordingly we conclude that this specimen fails
to show use of CHICKEN STOCKS as mark or use in association
with the identified investment services. In re Monograms
America Inc., 51 USPQ2d at 1318.
Accordingly, we conclude that the specimen showing use
of CHICKEN STOCKS in the advertisement is not acceptable.
Fourth, with regard to the use of CHICKEN STOCKS in
conjunction with the “e-zine” article, Applicant refers to
this specimen as an “electronic newsletter.” Applicant
states further, “The newsletter is circulated to investors
to continue to promote the Siegel Group’s financial
investment services and to continue to generate business
Ser No. 76102384
15
from the clients.” In this case, “CHICKEN STOCK REPORT”7 is
displayed prominently and could conceivably function as a
mark for goods or services. However, the “newsletter” is
just that – a periodic publication which is distributed
electronically. It is a product and not a service.
Accordingly, CHICKEN STOCKS is not used here in association
with the rendering of the identified services as applicant
argues. Cf. In re Metriplex Inc., 23 USPQ2d 1315, 1316
(TTAB 1992); In re Eagle Fence Rentals, Inc., 231 USPQ 228,
230 (TTAB 1986); In re Red Robin Enterprises, Inc., 222
USPQ 911, 913 (TTAB 1984). Furthermore, there is no
reference to identified services to demonstrate use of the
mark in the advertising of the identified services, as
applicant argues.
Accordingly, we conclude that the specimen showing use
of CHICKEN STOCKS in the electronic newsletter is not
acceptable.
Finally, applicant has provided what appears to be a
form which could conceivably be used in the rendering of an
investment service. It includes a space for a client name,
and what could be tailored information and recommendations

7 Here again we note the discrepancy between the use of CHICKEN
STOCK REPORT and CHICKEN STOCKS shown in the drawing. We will
not address this issue because it was not raised by the examining
attorney.

Ser No. 76102384
16
for that client. If CHICKEN STOCKS had been used in this
form in the manner of a mark, the specimen might be
acceptable. However, in this case, as in the case of many
of the other potential specimens, CHICKEN STOCKS is only
used in text to refer to the approach or strategy which Mr.
Siegel has developed for investing. In re Walker Research,
Inc., 228 USPQ at 692.
Accordingly, we conclude that the specimen showing use
of CHICKEN STOCKS in the client form is not acceptable.
In conclusion, after a careful review of all potential
specimens applicant presented, we conclude that there is no
specimen which both shows use of CHICKEN STOCKS as a
service mark and which shows a direct association between
CHICKEN STOCKS and the sale/rendering or advertising of
“financial investment in the field of securities” services.
We note further that our decision here would not bar
applicant from seeking registration in a new application
with different specimens.
Decision: The refusal to register the mark for
failure to provide a proper specimen of use is affirmed.