As stated in section 1301.02 What Is a Service Mark of the Trademark Manual of Examination Procedure:

Not every word, combination of words, or other designation used in the performance or advertising of services is registrable as a service mark. To function as a service mark, the asserted mark must be used in a way that identifies and distinguishes the source of the services recited in the application. Even if it is clear that the applicant is rendering a service (see TMEP §§1301.01 et seq.), the record must show that the asserted mark actually identifies and distinguishes the source of the service recited in the application. In re Advertising and Marketing Development Inc., 821 F.2d 614, 2 USPQ2d 2010 (Fed. Cir. 1987) (stationery specimen showed use of THE NOW GENERATION as a mark for applicant's advertising or promotional services as well as to identify a licensed advertising campaign, where the recited services were specified in a byline appearing immediately beneath the mark).

The fact that the proposed mark appears in an advertisement or brochure in which the services are advertised does not in itself show use as a mark. The record must show that there is a direct association between the mark and the service. See In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456 (C.C.P.A. 1973) (term that identifies only a process does not function as a service mark, even where services are advertised in the same specimen brochure in which the name of the process is used); In re Duratech Industries Inc., 13 USPQ2d 2052 (TTAB 1989) (term used on bumper sticker with no reference to the services does not function as a mark); 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) (proposed mark used only to identify a liquefaction process in brochure advertising the services does not function as a mark, because there is no direct association between the mark and the offering of services). See TMEP §1301.04(b).

The question of whether a designation functions as a mark that identifies and distinguishes the recited services is determined by examining the specimen(s) and any other evidence in the record that shows how the designation is used. In re Morganroth, 208 USPQ 284 (TTAB 1980); In re Republic of Austria Spanische Reitschule, 197 USPQ 494 (TTAB 1977). It is the perception of the ordinary customer that determines whether the asserted mark functions as a service mark, not the applicant's intent, hope, or expectation that it do so. In re Standard Oil Co., 275 F.2d 945, 125 USPQ 227 (C.C.P.A. 1960). Factors that the examining attorney should consider in determining whether the asserted mark functions as a service mark include whether the wording claimed as a mark is physically separate from textual matter, whether a term is displayed in capital letters or enclosed in quotation marks, and the manner in which a term is used in relation to other material on the specimen.

While a service mark does not have to be displayed in any particular size or degree of prominence, it must be used in a way that makes a commercial impression separate and apart from the other elements of the advertising matter or other material upon which it is used, such that the designation will be recognized by prospective purchasers as a source identifier. In re C.R. Anthony Co., 3 USPQ2d 1894 (TTAB 1987); In re Post Properties, Inc., 227 USPQ 334 (TTAB 1985). The proposed mark must not blend so well with other matter on specimen that it is difficult or impossible to discern what the mark is. In re McDonald's Corp., 229 USPQ 555 (TTAB 1985); In re Royal Viking Line A/S, 216 USPQ 795 (TTAB 1982); In re Republic of Austria Spanische Reitschule, supra; Ex parte Nat'l Geographic Society, 83 USPQ 260 (Comm'r Pats. 1949). On the other hand, the fact that the proposed mark is prominently displayed does not in and of itself make it registrable, if it is not used in a manner that would be perceived by consumers as an indicator of source. In re Wakefern Food Corp., 222 USPQ 76 (TTAB 1984). The important question is not how readily a mark will be noticed but whether, when noticed, it will be understood as identifying and indicating the origin of the services. In re Singer Mfg. Co., 255 F.2d 939, 118 USPQ 310 (C.C.P.A. 1958).

The presence of the "SM" symbol is not dispositive of the issue of whether matter sought to be registered is used as a service mark. In re British Caledonian Airways Ltd., 218 USPQ 737 (TTAB 1983).

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  • A term that is used only to identify a product, device or instrument sold or used in the performance of a service rather than to identify the service itself does not function as a service mark.
    • In re ICE Futures U.S., Inc., Serial No. 78199832, 78199843, 78199848 (TTAB 2008).
      • A term that is used only to identify a product, device or instrument sold or used in the performance of a service rather than to identify the service itself does not function as a service mark. See In re Moody's Investors Service Inc., 13 USPQ2d 2043 (TTAB 1989) ("Aaa," as used on the specimen, found to identify the applicant's ratings instead of its rating services).
  • Use in the "rendition" of services should be viewed as an element of the "sale" of services.
    • In re ICE Futures U.S., Inc., Serial No. 78199832, 78199843, 78199848 (TTAB 2008).
      • The Board has observed that use in the "rendition" of services should be viewed as an element of the "sale" of services under Section 45 of the Act. In re Red Robin Enterprises, Inc., 222 USPQ 911, 913 (TTAB 1984). See also In re Metriplex Inc., 23 USPQ2d 1315, 1316 (TTAB 1992); In re Eagle Fence Rentals, Inc., 231 USPQ 228, 230 (TTAB 1986).
  • Whether or not a term functions as a service mark necessarily depends on how that term is used and how it is perceived by potential recipients of the services.
    • In re Ancor Holdings, LLC., Serial No. 76213721, (TTAB 2006).
      • As the Board stated in In re Walker Research, Inc., 228 USPQ 691, 692 (TTAB 1986) (hereinafter "Walker"), "whether or not a term functions as a service mark necessarily depends on how that term is used and how it is perceived by potential recipients of the services."
  • The determination of public perception of the mark is based on the materials submitted as a specimen.
    • In re Ancor Holdings, LLC., Serial No. 76213721, (TTAB 2006).
      • Thus, we must base our determination of public perception of applicant's mark on the manner of use of INFOMINDER in the advertising which has been submitted as a specimen.
  • In addition, a determination of public perception is made within the current commercial context and the Board may consider any other evidence of record "bearing on the question of what impact applicant's use is likely to have on purchasers and potential purchasers.
    • In re Ancor Holdings, LLC., Serial No. 76213721, (TTAB 2006).
      • Further, we must make that determination within the current commercial context, and, in doing so, we may consider any other evidence of record "bearing on the question of what impact applicant's use is likely to have on purchasers and potential purchasers." In re Safariland Hunting Corp., 24 USPQ2d 1380, 1381 (TTAB 1992). See also In re International Environmental Corp., 230 USPQ 688 (TTAB 1986).
  • It is important to review all the information in the record to understand both how the mark is used and how it will be perceived by potential customers, especially with web-based products and services.
    • In re Ancor Holdings, LLC., Serial No. 76213721, (TTAB 2006).
      • Because of the ambiguity of the term "tool," and the blurring between services and products that has occurred with the development and growth of web-based products and services, it is important to review all the information in the record to understand both how the mark is used and how it will be perceived by potential customers.
  • The specimen purporting to show use of a service mark need not explicitly reference the service.
    • In re ICE Futures U.S., Inc., Serial No. 78199832, 78199843, 78199848 (TTAB 2008).
      • Also, the Board has recognized that the service need not be referenced explicitly even in a specimen which purports to show use of a mark in the advertisement or promotion of the services. See In re International Environmental Corp., 230 USPQ 688, 691 (TTAB 1986)(specimen showing use of mark in surveys used to promote service with no mention of "distributorship services" found acceptable). In the case of a specimen intended to show use of the mark in the sale or "rendering" of the service, the specimen need not and often will not include an explicit reference to the service. In re Metriplex Inc., 23 USPQ2d at 1316.
  • The definition of a "service mark" precludes the applicability of the "noncommercial use" exception in an inter partes proceeding.
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • First, the definition of a "service mark" precludes the applicability of the "noncommercial use" exception in an inter partes proceeding.
  • The term "service mark" means any word, name, symbol, or device, or any combination thereof (1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, 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.
    • American Express Marketing & Development Corp. v. Gilad Development Corporation, Opposition No. 91183362 and 91186156 (TTAB 2010)
      • Service mark. The term "service mark" means any word, name, symbol, or device, or any combination thereof (1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, 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." Trademark Act Section 45, 15 U.S.C. §1127.
  • This section further provides that a mark shall be deemed to be in use in commerce on services when it is used or displayed in the sale or advertising of services..
    • In re Vicki Roberts, Serial No. 76649075 (TTAB 2008)
      • This section further provides that a mark shall be deemed to be in use in commerce "on services when it is used or displayed in the sale or advertising of services.." Id.
  • The mark must be used in such a manner that it would readily be perceived as identifying the specified services and distinguishing a single source or origin therefor.
    • In re Vicki Roberts, Serial No. 76649075 (TTAB 2008)
      • Thus, the mark must be used in such a manner that it would readily be perceived as identifying the specified services and distinguishing a single source or origin therefor. See In re Safariland Hunting Corp., 24 USPQ2d 1380 (TTAB 1992); and In re Aerospace Optics, Inc., 78 USPQ2d 1861 (TTAB 2006).
  • "Service mark" is defined 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 that source is unknown.
    • In re Vicki Roberts, Serial No. 76649075 (TTAB 2008)
      • Inasmuch as applicant seeks registration of the designation irestmycase as a service mark to identify her legal services, the starting point for our analysis is Section 45 of the Trademark Act, as amended, where "service mark" is defined 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 that source is unknown." 15 U.S.C. 1127.
In re ICE Futures U.S., Inc., Serial No. 78199832, 78199843, 78199848 (TTAB 2008) In re Vicki Roberts, Serial No. 76649075 (TTAB 2008) re Ancor Holdings, LLC., Serial No. 76213721, (TTAB 2006) Grand Total
In re Aerospace Optics Inc., 78 USPQ2d 1861 (TTAB 2006) 1
In re Metriplex Inc., 23 USPQ2d 1315 (TTAB 1992) 1
In re Safariland Hunting Corp., 24 USPQ2d 1380 (TTAB 1992) 2
In re Moody's Investors Service Inc., 13 USPQ2d 2043 (TTAB 1989) 1
In re Eagle Fence Rentals Inc., 231 USPQ 228 (TTAB 1986) 1
In re International Environmental Corp., 230 USPQ 688 (TTAB 1986) 2
In re Walker Research Inc., 228 USPQ 691 (TTAB 1986) 1
In re Red Robin Enterprises Inc., 222 USPQ 911 (TTAB 1984) 1
Grand Total 5 2 3 10
No Statutes Listed.