Zinpro Corporation

Trademark Trial and Appeal Board

Mar 22, 2013

No. 85369372 (T.T.A.B. Mar. 22, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: March 22, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Zinpro Corporation
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Serial No. 85369372
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Edmund J. Sease of McKee Voorhees & Sease PLC,
for Zinpro Corporation.
Brian Pino, Trademark Examining Attorney, Law Office 114,
K. Margaret Le, Managing Attorney.
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Before Bucher, Kuhlke and Hightower,
Administrative Trademark Judges.

Opinion by Bucher, Administrative Trademark Judge:
Zinpro Corporation (“applicant”) seeks registration on the Principal Register of
the mark FOOD FOR FEET (in standard character format) for “retail store services,
featuring mineral supplements to promote healthy feet and/or legs of livestock and
poultry,” in International Class 35.1
The examining attorney has issued a final refusal to register applicant’s mark
on the ground that applicant has failed to comply with the requirement to submit

1 Application Serial No. 85369372 was filed on July 12, 2011, based upon applicant’s claim
of use anywhere and use in commerce since at least as early as October 2008.
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an acceptable specimen demonstrating use of the mark as a service mark for the
recited retail store services.
Applicant has appealed the final refusal, and the appeal has been fully briefed.
We affirm the refusal to register.
The original specimen as filed with the application consisted of scanned images
of the front page of Pig Progress magazine, and the back cover of the same periodical,
showing a full page advertisement applicant placed for Zinpro’s FOOD FOR FEET
products designed to provide healthy feet in livestock animals, such as pigs:
The examining attorney required a new specimen, claiming that the original
specimen was “nothing more than advertising copy.”2

2 See First Office Action, August 31, 2011.
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In its response to the examining attorney’s initial refusal, applicant submitted
(on October 26, 2011) six substitute specimens (dubbed “flyers” or “informational
sheets”) supported by the declaration of Felipe Navarro, the Director of Global
Marketing for applicant, Zinpro Corporation:

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Mr. Navarro’s declaration stated in relevant part, as follows:
3. Attached hereto are a series of FOOD FOR FEET flyers or
informational sheets that are provided by Zinpro Corporation to
its distributors and actual and potential customers that show
FOOD FOR FEET and are intended to promote the primary
benefit of use of the Zinpro products there described, and to help
the animal owners and potential customer decide if he is in need
of the FEET FIRST programs recommended products, such as
AVAILA SOW.
4. The whole purpose of the flyers is to promote and assist our
retail sales services to customers.

According to the examining attorney the substitute specimens are still
unacceptable because the specimens do not show the applied-for mark, FOOD FOR
FEET, in use as a service mark in “direct association” with retail store services.
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). Specimens serve as evidence that applicant has used the
mark 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 …” 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 that a service mark specimen must show the mark as actually used
in the sale or advertising of the services recited in the application. Trademark Rule
2.56(b)(2), 37 C.F.R. § 2.56(b)(2).
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The examining attorney argues that none of the proffered specimens is
acceptable because none shows the applied-for mark, FOOD FOR FEET, used in
connection with the retail store services recited in the application. In fact, in
support of his position that this mark is not being used to indicate the source of the
retail store services recited in the application, the examining attorney uses
applicant’s own statements. Applicant confirms that the wording FOOD FOR
FEET is being used in advertising and promotional materials for the products
that it sells. The examining attorney suggests that applicant is operating “under
the mistaken belief that because the applicant uses the proposed mark FOOD
FOR FEET in advertising and promotional materials for the goods that it sells
that this fact shows use of the mark as a service mark that indicates the source of the
listed retail store services.”
The examining attorney argues that it is immaterial whether or not applicant’s
sales representatives may use the advertising, flyers and/or information sheets to
assist in selling the applicant’s goods, because FOOD FOR FEET as used on the
specimens makes no reference at all to the retail store services. The mere usage of
any of these materials as a sales aid makes no direct association between FOOD
FOR FEET and the retail store services in the application. There is no mention
anywhere in the specimens of retail store services. Consequently, the examining
attorney concludes that none of the specimens shows use of the proposed FOOD
FOR FEET mark as a service mark for the applicant’s retail store services.
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Applicant responds that when one considers any of the substitute specimens
together with the declaration of Felipe Navarro, there is a direct connection
between the mark and Zinpro’s retail store services.
Whether a mark has been used to identify a particular type of service is a
question of fact. We look closely at the specimens and evaluate them in light of the
other evidence of record and the practices of the trade.
Beyond advertisements, the “direct association” test has been applied in a
variety of service mark settings. See, e.g., Peopleware Systems, Inc. v. Peopleware,
Inc., 226 USPQ 320 (TTAB 1985) (term PEOPLEWARE used within a byline on
calling card specimen does not constitute service mark usage of that term, even if
specimen elsewhere shows that applicant provides the recited services); In re J.F.
Pritchard & Co. and Kobe Steel, Ltd., 201 USPQ 951 (TTAB 1979) (the term PRICO
is used only to identify a liquefaction process in brochure advertising the services
and does not function as a mark, because there is no direct association between the
mark and the offering of services); In re Niagara Frontier Services, Inc., 221 USPQ
284, 285 (TTAB 1983) (WE MAKE IT, YOU BAKE IT only identifies pizza, and does not
function as a service mark to identify grocery store services); and In re British
Caledonian Airways Ltd., 218 USPQ 737, 739 (TTAB 1983) (the term SKYLOUNGER
identifies a seat in the first-class section of an airplane but it does not function as
mark for air transportation services).
However, under some fact patterns, even if it is clear that the specimens of use
do not contain a reference to the services, they are still deemed acceptable. For
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example, a computer printout may simply display the mark without disclosing the
services when the printout appeared on a computer terminal as the services are
being rendered to the actual GLOBAL GATEWAY subscribers. In re Metriplex Inc., 23
USPQ2d 1315 (TTAB 1992). This qualifies as a direct association. As to the required
degree of specificity, the involved specimen does not have to spell out the specific
nature and type of services. Rather, a general reference to the industry may be
acceptable to create an association between the mark and the services. See In re
Southwest Petro-Chem, Inc., 183 USPQ 371, 372 (TTAB 1974) (service mark
registration is not refused where record shows that applicant renders services to
specific industries; there is no language in statute or rules which requires that
specimens such as letterheads spell out the type of services
rendered); and In re Ralph Mantia Inc., 54 USPQ2d 1284, 1286
(TTAB 2000) (use on specimens of the word “design” alone is
sufficient to create in minds of purchasers association between
mark and applicant’s commercial art services).
In the case at bar, applicant’s declaration states that the purpose of these flyers
“is to promote and assist our retail sales services to customers.” That is the most
definitive statement anywhere in the record supporting the fact that applicant is
even involved in retail store services. The flyers on which the applied-for mark
appear make absolutely no reference to the “retail store services” recited in the
application. Other than the implications we draw from the declaration, we have no
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evidence of applicant’s retail store services. See, e.g., In re Monograms America Inc.,
51 USPQ2d 1317, 1319 n.2 (TTAB 1999).
However, when a service mark is used in advertising 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 that shows only the mark, with no
reference to the services, does not show service mark usage. In re wTe Corp., 87
USPQ2d 1536, 1541-42 (TTAB 2008) (the specimen suggests that applicant may be
providing some type of goods or services, but it is not at all clear from applicant's
specimen that it is providing the specific service for which it seeks registration). See
also, In re Duratech Industries Inc., 13 USPQ2d 2052 (TTAB 1989) (the bumper
stickers submitted as specimens provide no reference whatsoever to the association
services of promoting the interests of persons who
denounce the practice of drinking and driving).
The “direct association” test does not create an additional or more stringent
requirement for registration. Rather, a direct association “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.
In short, whether we focus on applicant’s magazine advertisement, its flyers
or information sheets, the promotional material must show use of the applied-for
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mark in a manner that would be perceived by purchasers as identifying the source
for the applicant’s services. Essentially, the examining attorney is requiring that
the specimens expressly promote applicant’s retail store service, or some
synonymous terminology.
Based on this record, we cannot be sure applicant even has a retail store where
it offers retail store services. We certainly cannot infer that from the vague
allegations in the declaration of record. There is nothing inherent in the mark itself
that would lead purchasers to view the proposed mark as anything but advertising
copy for applicant’s products. Moreover, as the mark is presented on these
specimens, it does nothing more than identify the goods themselves.
While these specimens may well promote the benefits to potential customers of
applicant’s various mineral supplements for livestock and poultry, they are not
examples of service mark usage. Purchasers would not also directly understand and
perceive the mark, as it appears on the flyer, to be a source-indicator for the retail
store services themselves.
Even if we were to presume that applicant may provide retail store services,
analogizing to the prototypical “product mark” for a particular item in a retail store
(e.g., on a label or tag affixed to the goods, or even on a display associated with the
goods), such trademark usage is not necessarily also a service mark for the retail
store services themselves, merely by virtue of the fact that the mark may be used
and encountered in the store, and that the consumer can purchase the goods
bearing the mark in the store. That is, a generalized association in the purchaser’s
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mind between the product mark and the retail store services does not suffice as the
requisite “direct association” between the mark and the services which would make
the asserted mark a service mark for the retail store services themselves. See In re
Brown & Portillo Inc., 5 USPQ2d 1381, 1383-84 (TTAB 1987) (HEARTY BASKET
from menu board serves only to identify an entree available in the restaurant, but
fails to identify any service, and hence, applicant has not met the statutory
requirements for service mark registration).
Accordingly, we find that applicant has failed to submit an acceptable specimen
establishing that the asserted mark functions as a service mark in connection with
applicant’s retail store services. We have carefully considered all of applicant’s
arguments to the contrary (including those not specifically discussed in this
opinion), but we are not persuaded by them.
Decision: The refusal of registration on the ground that not one of applicant’s
specimens shows use of the mark for the identified services is hereby affirmed.