The Sorting Table, LLC

Trademark Trial and Appeal Board

Jun 11, 2012

No. 77582484 (T.T.A.B. Jun. 11, 2012)

Mailed:
June 11, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re The Sorting Table, LLC
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Serial No. 77582484
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Robert B. Burlingame, of Pillsbury Winthrop Shaw Pittman
LLP for The Sorting Table, LLC.

John M. Wilke, Trademark Examining Attorney, Law Office 104
(Chris Doninger, Managing Attorney).
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Before Quinn, Kuhlke and Greenbaum, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

The Sorting Table, LLC, applicant, has filed an
application to register THE COLLECTORS TABLE in standard
characters on the Principal Register for services
ultimately identified as:
Business consultation in the field of sales and
marketing of alcoholic beverages; import agency
services for others in the field of alcoholic
beverages; promoting and marketing the alcoholic
beverages of others; alcoholic beverage
procurement services for others; and
distributorships in the field of alcoholic
beverages, in International Class 35.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77582484
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The application was filed on September 30, 2008, under
Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b),
based on an allegation of an intention to use the mark in
commerce. The application published for opposition on
September 1, 2009, and on November 24, 2009, the USPTO
issued a Notice of Allowance. On May 23, 2010, applicant
filed its Statement of Use with supporting specimens of
use.
The examining attorney has refused registration under
Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§1051,
1127, on the ground that “applicant’s specimens fail to
support use of the mark for the identified services.” Br.
p. 2.
The appeal has been fully briefed. We affirm the
refusal to register.
As a specimen of use, applicant submitted printouts
from its website shown below:

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In addition, in response to the examining attorney’s
initial refusal, applicant submitted the following
substitute specimens of use:

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5

Under the Trademark Act, an application must include,
“such number of specimens or facsimiles of the mark as used
as may be required by the Director.” 15 U.S.C.
§1051(a)(1). See also 37 C.F.R. §2.56(b)(2). Specimens
serve to evidence an applicant’s “use in commerce.” “Use
in commerce” is defined, in pertinent part, as follows:
... For purposes of this chapter, a mark shall
be deemed to be in use in commerce- (2) on
services when it is used or displayed in the sale
or advertising of services and the services are
rendered in commerce...
Serial No. 77582484
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Trademark Act Section 45, 15 U.S.C. §1127.
A service mark is defined as any word, name, symbol,
or device used:
... to identify and distinguish the services of
one person, including a unique service, for the
services of others and to the source of the
services...
Id.
The rule implementing the statute provides:
A service mark specimen must show the mark as
actually used in the sale or advertising of the
services.

Trademark Rule 2.56(b)(2), 37 C.F.R. 2.56(b)(2).
When the specimen of use shows the mark in the
rendering of the services, it need not disclose the nature
of the services. For example, in In re Metriplex Inc., 23
UPSQ2d 1315 (TTAB 1992) the computer printouts displaying
the mark without disclosing the services was acceptable
because the printouts showed use of the mark as it appeared
on the computer terminal while in the course of rendering
the services to the actual consumer.
However, when a service mark is used in advertising
the services the specimen must show an association between
the mark and the services for which registration is sought
in order to comply with the statutory requirement that the
mark “identify and distinguish the services.” A specimen
Serial No. 77582484
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that shows only the mark, with no reference to the
services, does not show service mark usage. In re wTe
Corp., 87 USPQ2d 1536 (TTAB 2008); In re Duratech
Industries Inc., 13 USPQ2d 2052 (TTAB 1989). There must be
a “direct association” which “is implicit in the statutory
definition of ‘a mark used ... to identify and distinguish
the services of one person ... from the services of others
and to indicate the source of the services.’” In re
Advertising & Marketing Development Inc., 821 F.2d 614, 2
USPQ2d 2010, 2014 (Fed. Cir. 1987), quoting, Trademark Act
Section 45, 15 U.S.C. §1127.
The examining attorney argues that “[a]lthough the
specimens of record may demonstrate use of the applied-for
mark in connection with online retail store services, wine
tasting services, and club membership services, neither the
original specimens nor the substitute specimens show the
applied-for mark used in connection with any of applicant’s
identified services.” Br. p 4.
Applicant responds that “[o]ne or more of the
specimens of record in this matter clearly show the use of
the mark THE COLLECTORS TABLE as a source-identifier and in
connection with the sale or rendering of at least one of
the Class 35 services covered in the application.” Br. p.
3. We address each specimen in turn.
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Applicant contends that the first webpage in the
original specimens shows the “promotion and marketing of a
wine by ... a third party.” This page simply displays wine
for sale on applicant’s website. As the examining attorney
explains “the fact that the applicant identifies a product
of others which is offered for sale by the applicant ... is
not sufficient to show promotional and marketing services
on behalf of others. Any promotion of goods which results
from applicant’s retail store services is ancillary to the
actual services which are retail store services featuring
wine. Accordingly, while consumers may perceive THE
COLLECTOR’S [sic] TABLE to be the source of retail store
services, consumers would not perceive THE COLLECTOR’S
[sic] TABLE to be the source of promotional and marketing
services, because applicant’s promotion and marketing of
third[-party] products is merely ancillary to applicant’s
own online retail store services. ... Nothing precludes
the applicant from actually offering marketing and
promotional services to vintners, and it very well may do
so. However, this is simply not reflected in the specimens
of record, which are clearly directed to retail consumers
of wine as opposed to businesses that produce wine.” Br
pp. 5-6. See In re Dr. Pepper Co., 836 F.2d 508, 5 USPQ2d
1207, 1208 (Fed. Cir. 1987).
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The wording “The Sorting Table, LLC The Next
Generation in Fine Wine Importing & Distribution” appears
at the top of the second webpage and the middle of the page
contains the statement “The Collectors Table (A Division of
The Sorting Table).” Applicant describes this as “clearly
showing use in connection with the promotion of its ‘import
agency services’ and ‘distributorships’ services covered in
the application.” Br. p. 3. Further, applicant argues
that “if the parent company is a fine wine importing and
distribution company, then a division thereof is also going
to be involved with fine wine importing and distribution.
Again, the overall effect on consumers viewing this page is
that they will understand THE COLLECTORS TABLE to be
associated with the provision of fine wine importing and
distribution services.” Br. pp. 2-3.
We grant the examining attorney’s request that we take
judicial notice of the following definition for the word
“distributor”: “a wholesaler or middleman engaged in the
distribution of a category of goods, esp to retailers in a
specific area.”1 The consumers here are purchasers of wine,
and applicant is selling wine. As the examining attorney

1 The Board may take judicial notice of dictionary definitions.
In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). See also
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).
Serial No. 77582484
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notes, “there is no indication in the specimens that
applicant is offering distribution services as a wholesaler
or middleman to vintners or retailers. Although applicant
may be elsewhere offering distributorship services for
others, this is simply not reflected in the specimens of
record, which are clearly directed to retail consumers of
wine as opposed to businesses that produce and sell wine.”
Br. p. 8. In addition, the fact that applicant does its
own importing in-house without a middleman does not rise to
the level of a service. The service offered here to the
consumer is the sale of wine not wine importation services.
The importation and distribution is simply ancillary to
applicant’s online sales services. In re Television
Digest, Inc., 1 69 USPQ 505 (TTAB 1971).
The substitute specimens also do not serve to support
any of the applied-for services. Two are simply online
displays of wine for sale on applicant’s website. One is a
wine tasting flyer that lists “distributor prices.”
Applicant argues that this is “promotion and marketing of
others’ wines through wine tastings.” While this flyer may
serve to support a wine tasting service, it is otherwise
simply ancillary to applicant’s sales service and offering
wholesale or discounted prices to prospective consumers.
The last offered specimen is a letter inviting a
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prospective consumer to join applicant’s club wherein the
consumer would be offered selected wines presumably prior
to public offering. Applicant characterizes this letter as
“describing the procurement services covered in this
application.” While this letter may serve to support a
buying club membership, it does not support any of the
applied-for services.
In view of the above, we find that the specimens do
not serve to show use of the mark THE COLLECTORS TABLE as a
service mark in connection with the services identified in
the application.
Decision: The refusal to register under Sections 1
and 45 of the Trademark Act is affirmed.