Video Plus, L.P.

Trademark Trial and Appeal Board

Aug 21, 2013

No. 78332790 (T.T.A.B. Aug. 21, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
August 21, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Video Plus, L.P.
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Serial No. 78332790
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George R. Schultz of Schultz & Associates PC for Video Plus, L.P.

Ronald E. Aikens, Trademark Examining Attorney, Law Office 112 (Angela Wilson,
Managing Attorney).
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Before Bucher, Kuhlke and Bergsman, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Video Plus, L.P. (“applicant”) filed an intent-to-use application to register the
mark SUCCESS ONLINE, in standard character form, for “educational services,
namely, providing educational information in the fields of professional, personal
and financial achievement and entrepreneurial management over global and world
wide web networks,” in Class 41. Applicant disclaimed the exclusive right to use
the word “Online.” After publication and the issuance of a notice of allowance,
applicant filed a statement of use. The specimen filed with the statement of use is
Serial N

“an adv
below.
o. 783327
ertisement
90
showing use of the
2
mark in association with the services” sh

own
Serial No. 78332790

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The Trademark Examining Attorney refused to register applicant’s mark
because the specimen of use fails to show the mark used in connection with the
activities listed in the recitation of services as required by Sections 1 and 45 of the
Trademark Act of 1946, 15 U.S.C. §§ 1051 and 1127, and Trademark Rules 2.56(a)
and 2.88(b)(2), 37 CFR §§ 2.56(a) and 2.88(b)(2).
A “service” is defined as ‘the performance of labor for the benefit of another.”
In re Canadian Pacific Ltd., 754 F.2d 992, 224 USPQ 971, 973 (Fed. Cir. 1985),
citing Webster’s Collegiate Dictionary (5th ed.). The term “service mark” is defined,
in relevant 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,
including a unique service, from the services of others and to indicate the source of
the services, even if the source is unknown.” Section 45 of the Trademark Act of
1946, 15 U.S.C. § 1127. A service mark is deemed to be in use in commerce “when it
is displayed in the sale or advertising of the services and the services are rendered
in commerce.” Section 45 of the Trademark Act of 1946, 15 U.S.C. § 1127. Service
mark use includes use of the mark in rendering the service. In re Eagle Fence
Rentals, Inc., 231 USPQ 228, 231 (TTAB 1986). Whether a mark sought to be
registered as a service mark has been used “to identify” the services specified in the
application is a question of fact to be determined on the basis of the specimens
submitted by the applicant, together with any other evidence. See In re Adair, 45
USPQ2d 1211, 1214 (TTAB 1997).
Serial No. 78332790

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An applicant for registration must submit a specimen showing the mark as
used in commerce. Section 1(a) of the Trademark Act of 1946, 15 U.S.C. § 1052(a);
Trademark Rule 2.34(a)(1)(iv), 37 CFR § 2.34(a)(1)(iv). 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 CFR § 2.56(b)(2). A service mark specimen must
show an association between the mark and the services for which registration is
sought although the services need not be expressly referenced. In re Adair, 45
USPQ2d at 1214 (the mark must be used in such a manner that it would be readily
perceived as identifying the source of the services); In re Metriplex, Inc., 23 USPQ2d
1315 (TTAB 1992); TMEP § 1301.04(a) (October 2012). Accordingly, we must look
to the specimen to determine how consumers would perceive applicant’s use of
SUCCESS ONLINE. In re The Signal Companies, Inc., 228 USPQ 956, 957 (TTAB
1986); In re Wakefern Food Corp, 222 USPQ 76, 77 (TTAB 1984).
The issue before us is whether SUCCESS ONLINE as displayed on the
specimen of use submitted by applicant is used to identify the following services:
1. Providing educational information in the field of professional and
personal achievement;
2. Providing educational information in the field of financial
achievement; and
3. Providing educational information in the field of entrepreneurial
management
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We find that SUCCESS ONLINE as displayed on the specimen of use will be
perceived as identifying applicant’s online sales of its SUCCESS line of publications
and audio recordings in the fields of professional, personal and financial
achievement and entrepreneurial management. The mark SUCCESS ONLINE as
displayed on the specimen would not be perceived as indicating the activity of
providing information in any particular field. In fact, there is no reason for any
reasonable person to suspect anything other than applicant is advertising the sale
of a digital magazine, ebooks, and downloadable audio recordings.
Applicant argues to the contrary that the mark “is used in the course of
advertising the services” (i.e., providing educational information), that the
“specimen shows that Applicant provides educational information,” and that the use
of applicant’s mark in connection with the online sales of publications is an
essential component of applicant’s service of providing educational information.1
Applicant is arguing, in essence, that selling downloadable publications in the fields
of professional, personal and financial achievement and entrepreneurial
management is the educational service of providing educational information in
those fields. However, based on the specimen of record, applicant is merely selling
educational products, not providing an educational activity (e.g., online lectures,
seminars, courses, etc.).2 If we carry applicant’s logic to the extreme, a book store
renders educational services by selling books and magazines in a variety of fields

1 Applicant’s Brief, pp. 6-7.
2 Providing online nondownloadable publications, white papers, articles, etc. is recognized
as electronic publication service in Class 41.
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(e.g., a book store provides educational services, namely, providing educational
information in the field of automobile mechanics because it sells books and
magazines about automobile mechanics).
The corner newsstand sells publications printed and
bound by publishers, not services offered by a plethora of
persons each purporting to provide a personal service for
every individual reader. Applicant sells goods, not
services for every individual reader.
In re Landmark Communications, Inc., 204 USPQ 692, 696 (TTAB 1979).
Educational services in Class 41 “covers mainly services rendered by persons
or institutions in the development of the mental facilities of persons or animals, as
well as services intended to entertain or to engage the attention,” and includes “all
forms of education of persons.” TMEP § 1401.02(a) (October 2012). While applicant
may be rendering an educational service, and may in fact be rendering an
educational service under the mark SUCCESS ONLINE, the specimen of record
shows only the online sale of publications.3 The specimen does not show that
applicant is rendering any activity related to educational services.
Applicant argues that the facts in this application are analogous to the facts
in In re Metriplex. In Metriplex, the applicant was seeking to register the mark
GLOBAL GATEWAY for the “transmission of data in various fields … to
subscribers.” The mark appeared on a computer screen seen by the user when
applicant rendered the services. Under those circumstances, the Board held that

3 To the extent that applicant’s SUCCESS DIGITAL SUBSCRIPTION may be a
nondownloadable online magazine which would be a service in Class 41, the recitation of
services does not identify providing a nondownloadable magazine.
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“[t]here is no question that purchasers and users of the service would recognize
GLOBAL GATEWAY, as it appears on the computer screen specimens, as a mark
identifying the data transmission services which are accessed via the computer
terminal.” 23 USPQ2d at 1316. In this case, however, applicant’s mark SUCCESS
ONLINE is simply advertising the sale of publications, eBooks and audio
downloads.
Nevertheless, applicant argues that the use of its mark in connection with
the online sales of publications is an essential component of applicant’s educational
services citing In re ICE Futures U.S. Inc., 85 USPQ2d 1664 (TTAB 2008) as
support.4 In ICE Futures U.S., the Board found that the specimens at issue showed
service mark based “on our analysis of the specimens themselves, the context of use
and the history of applicant’s exclusive use in the industry reflected in this record”
because the marks not only identified the contracts and the products subject to the
contract, but also the source of the futures exchange contracts. Id. at 1669. In the
application before us, however, the specimen shows the mark SUCCESS ONLINE
being used to advertise the sale of a monthly digital subscription to SUCCESS,
SUCCESS eBooks, and audio recordings (i.e., goods); but not educational services.
The context in which applicant uses the mark does not link the mark to an
educational activity. Compare In re International Environmental Corporation, 230
USPQ 688, 691 (TTAB 1986) (the questions in the customer survey submitted as a
specimen were “wholly consistent with applicant’s claim that the survey is a means

4 Applicant’s Brief, p. 7.
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by which it offers its distributorship services to the public.”). As indicated above,
applicant’s use of the mark SUCCESS ONLINE to sell publications in the fields of
professional, personal and financial achievement and entrepreneurial management
does not show use of that mark to identify educational services.
Finally, in reaching our decision, we have considered all the evidence made of
record by applicant, including the declaration of Betsy Jones, applicant’s
Trademark Manager, attesting to the renown of applicant’s family of SUCCESS
marks and applicant’s previously registered SUCCESS marks. Nevertheless, the
evidence in the Jones declaration does not persuade us that the mark SUCCESS
ONLINE as it appears in the only specimen of use submitted by applicant, is used
to identify and distinguish the activities set forth in the application at issue.
Decision: The refusal to register is affirmed.
- o O o -
Opinion by Bucher, Administrative Trademark Judge, concurring:
SUCCESS? Not for applicant. And not for the United States Patent and
Trademark Office. The job of this Agency is to ensure that whenever an applicant is
entitled to a registration, we all do our best to provide that applicant with a
registration.
It is not clear from the prosecution record why neither the examining
attorney nor applicant’s counsel initiated a telephone conference to talk through the
real challenges that applicant faced in: (1) drafting a definite
recitation/identification; (2) selecting the proper classification thereof under the
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Nice Classification system; (3) reviewing options for a post-SOU amendment that
reflects the service and/or goods that applicant is actually providing (consistent, of
course, with the limitations of Rule 2.61(b)); and (4) locating the appropriate type of
substitute specimen(s) that would clearly support a corrected
recitation/identification in one or more classes.
Arguably, as recently as the period November 2011 to July 2012, there may
still have been something salvageable in this application. Now, unhappily, absent
justifications for a remand and further examination (carrying risks of more
unproductive litigation), I agree with my colleagues that this Board cannot fix these
problems at this stage.
However, I deeply regret our failure to provide the nudging, coaching, and/or
encouragement that would have delivered to applicant a live registration rather
than an abandoned application – with applicant having lost its filing date
established a decade ago. Coaxing out a registration would have been the model of
cooperation, service, and yes, “Success,” for which the Office deserves to be known.