No. 85227370 (T.T.A.B. Jun. 25, 2013)

Womack Electric & Supply Co., Inc.

Trademark Trial and Appeal BoardJun 25, 2013

No. 85227370 (T.T.A.B. Jun. 25, 2013)

Mailed: June 25, 2013 United States Patent and Trademark Office Trademark Trial and Appeal Board ________ In re Womack Electric & Supply Co., Inc. ________ Serial No. 85227370 _______ Roger Neal Keesee, Jr. of Woods Rodger PLC for Womack Electric & Supply Co. Inc.. Benji Paradewelai, Trademark Examining Attorney, Law Office 101 (Ronald R. Sussman, Managing Attorney). _______ Before Mermelstein, Wolfson and Lykos, Administrative Trademark Judges. Opinion by Lykos, Administrative Trademark Judge: On January 27, 2011, Womack Electric & Supply Co., Inc. (“applicant”) filed an intent-to-use application to register the mark RESSI in standard character format for, as amended, “Retail store and on-line retail store ser- vices for builders and contractors featuring electrical supplies, tools and fix- tures for use in residential construction and remodeling; Distributorship ser- vices for builders and contractors in the field of electrical supplies, tools and fixtures for use in residential construction and remodeling; Marketing ser- vices, namely, promoting or advertising the goods of others” in International Class 35. Following issuance of a notice of allowance, on January 12, 2012, applicant submitted two specimens, consisting of a printed newsletter as well This Opinion is Not a Precedent of the TTAB Serial No. 85227370 - 2 - as an excerpt from applicant’s web site, with its statement of use. The speci- mens are reprinted below: Serial No. 85227370 - 3 - Serial No. 85227370 - 4 - The Trademark Examining Attorney refused registration under Trade- mark Act §§ 1 and 45, on the ground that applicant’s specimens fail to show the applied-for mark used in direct connection with the identified services. See 15 U.S.C. §§ 1051, and 1127; 37 CFR §§ 2.56 and 2.88(b)(2). In response thereto, on August 15, 2012, applicant submitted two substitute specimens consisting of an electronic newsletter and marketing flyer. Applicant de- scribed the substitute specimens as follows: “One specimen is an electronic newsletter covering certain electrical issues and promotes the use of products for safety--the newsletter provides an electronic link to the manufacturer's webpage which shows the product to address the safety concern--in the speci- men the link to Pass & Seymour Tamper-Resistant Devices is shown.1 The other specimen is a flyer promoting Residential Floor Warming products.” The substitutes are as follows: 1 This substitute specimen is identical to the original (printed) newsletter specimen, with the exception that the substitute specimen includes a second page and is an electronic version of the original. Serial No. 85227370 - 5 - Serial No. 85227370 - 6 - Serial No. 85227370 - 7 - Serial No. 85227370 - 8 - Serial No. 85227370 - 9 - Serial No. 85227370 - 10 - Serial No. 85227370 - 11 - Serial No. 85227370 - 12 - Serial No. 85227370 - 13 - In a final Office action dated September 10, 2012, the examining attor- ney refused registration because the substitute specimens also did not evi- dence use of the mark in connection with any of the identified services. On Oc- tober 23, 2012, applicant filed a Request for Reconsideration which the exam- ining attorney denied. For the reasons explained below, we affirm the refusal to register. Applicant contends that each of the original and substitute specimens advertise applicant’s services and promote the products which applicant sells. With regard to the newsletter, applicant maintains that “[t]he newsletter showcases residential product offerings and provides links to websites of the companies that manufacture the products for specifications and other details. The newsletter specifically mentions the products and then the consumer can click on the name of the product to be linked to the manufacturer’s website.” Applicant’s Brief, unnumbered pp. 1-2. As to the specimens consisting of web site excerpts, applicant maintains that they evince service mark usage, point- ing to products offered for sale by other entities. In support of the refusal to register, the examining attorney argues that the specimens do not show the applied-for mark used in connection with ap- plicant’s identified services. More specifically, with regard to the initial spec- imens submitted on January 12, 2012, the examining attorney contends that the newsletter “is not acceptable as evidence of actual service mark use be- cause it does not reference any of the identified services listed in the applica- Serial No. 85227370 - 14 - tion. Rather it appears that applicant is using the mark to identify a newslet- ter that provides information about electrical options available for the home.” Examining Attorney’s Brief, unnumbered p. 2. As to the specimen comprised of excerpts from the applicant’s website, the examining attorney also main- tains that it does not reference any of the identified services but rather de- scribes “an educational program alerting consumers to the kinds of products available to them.” Examining Attorney’s Brief, unnumbered p. 4. Turning now to the substitute specimens submitted on August 15, 2012, the examining attorney maintains that while the electronic newsletter dis- cusses electrical supplies and showcases residential product offerings, con- tains industry news and links to manufacturer websites and provides infor- mation about products generally, it does not reference retail store services, distributorship services, or marketing services. Instead, the examining attor- ney maintains that applicant is using its applied-for RESSI mark to identify an online newsletter. While acknowledging that the newsletter provides an electronic link to the manufacturer's web site, the examining attorney further maintains that this is insufficient to create an association between the mark and the applied-for services. As to the additional specimen submitted on Au- gust 15, 2012, which applicant identified as a “flyer promoting Residential Floor Warming products,” the examining attorney contends that it also is not acceptable as evidence of actual service mark use because it identifies an Serial No. 85227370 - 15 - online subscription web feed as opposed to any of the services identified in the application. For the reasons articulated by the examining attorney, we find that none of the specimens show service mark use for the identified services. Section 1(d)(1) of the Trademark Act, 15 U.S.C. § 1051(d)(1), requires that the appli- cant file a “specimen” or facsimile “of the mark as used in commerce.” Trade- mark Rule 2.56(a), 37 CFR § 2.56(a), adds that an applicant filing an intent- to-use application file “one specimen . . . showing the mark as used in com- merce on or in connection with the goods or services” (emphasis added). The Trademark Manual of Examining Procedure (“TMEP”) § 904.07(a) (April 2013) directs the examining attorney to “review the specimen to determine whether: . . . the specimen shows use for the specific goods/services identified.” (emphasis added). A service mark specimen consisting of advertising or pro- motional materials generally must show a direct association between the mark and the services for which registration is sought. See In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ 456, 457 (C.C.P.A. 1973); In re HSB Solomon Assocs., 102 USPQ2d 1269, 1274 (TTAB 2012). While the exact na- ture of the services does not need to be specified in the specimen, there must be something which creates in the mind of the purchaser an association be- tween the mark and the services that have been recited in the application. In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997), quoting In re Johnson Controls Serial No. 85227370 - 16 - Inc., 33 USPQ2d 1318, 1320 (TTAB 1994). See also In re Osmotica Holdings, Corp., 95 USPQ2d 1666, 1668 (TTAB 2010). The submitted specimens, however, do not show the required corre- spondence between the mark and the identified services being offered for sale in commerce. First, with regard to the specimens consisting of printed and online newsletters, we agree with the examining attorney’s determination that applicant’s applied-for RESSI mark is being used to identify a newsletter as opposed to its identified services. Directly under applicant’s proposed mark RESSI, appears the wording “The Residential Electrical Service Specialist Ini- tiative Newsletter,” thereby reinforcing the perception of the mark as identify- ing a newsletter. A newsletter, whether distributed electronically or in paper form, is a product, not a service. In addition, in this particular case, neither the print nor online newslet- ter refers to applicant’s identified retail, distributorship or marketing ser- vices. While applicant in its brief maintains that the newsletter specimen pro- vides links to two products applicant sells, namely, “PASS & SEYMOUR TAMPER RESISTANT DEVICES and LEVITON TAMPER RESISTENT DEVICES,” the mere provision of such links to third-party manufacturers (the actual producers of the goods), without more, does not engender a direct asso- ciation between applicant’s proposed mark and the identified services. Fur- ther, the specimens do not show that applicant is offering marketing services, i.e., offering to promote or advertise for sale products for third-party manufac- Serial No. 85227370 - 17 - turers. Rather, the newsletters only show the provision of information about products used in residential construction, and will therefore be perceived by prospective consumers as informational in nature. Accordingly, we conclude that the specimens showing use of the proposed mark RESSI in the electronic and print newsletters are not acceptable. With regard to the specimens consisting of excerpts obtained from ap- plicant’s web site, we agree with the examining attorney’s determination that the proposed mark is being used to identify an online subscription web feed designed to educate consumers as to the nature of the energy-efficient prod- ucts available for the home. In relevant part, the specimen states: The RESSI web feed, syndicated to subscribing contractors, does this by organizing products and services into four categories to help homeowners find what they need quickly. The categories are safety & security, comfort & convenience, energy efficiency, and other upgrades and improvements. Show your customers how they can improve and beautify their home, protect their family, and save on energy costs! These services are not included in the recitation of services of the involved ap- plication. Indeed, there is no reference to any of the applied-for services on the website excerpts that create an association between the mark and those ap- plied-for services. A web-page display specimen “must in some way evince that the mark is ‘associated’ with the goods and services as an indicator of source.” In re Sones, 590 F.3d 1282, 1288, 93 USPQ2d 1118, 1123 (Fed. Cir. 2009). Here, the specimens do not evince that applicant provides retail store Serial No. 85227370 - 18 - services, distributorship services, or marketing services under the mark RESSI. Applicant argues in its brief that the website excerpt features infor- mation on a product sold by applicant, “Ferraz Shawmut Power Distribution Blocks” that is manufactured by a third-party. While this may be true, there is no reference on the specimens that applicant actually sells, distributes or promotes this product. Indeed, the specimens are entirely devoid of any refer- ences to retail store, online retail store,2 or distributorship services. Nor does the specimen evince applicant’s sale or advertising of marketing services per- formed for the benefit of others. For example, the specimens make no refer- ence to product manufacturers who would be the purchasers of such market- ing services. Thus, the specimens fail to evidence an association between the mark and any of the retail, distributorship or marketing services listed in the application. Decision: The refusal to register is affirmed. 2 For a detailed discussion regarding acceptable web site specimens for online retail store services, see TMEP § 904.03(i)(B).