Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE DURATECH INDUSTRIES, INC.
Serial No. 672,056
November 17, 1989
Alfred M. Walker for Duratech Industries, Inc.
Trademark Examining Attorney
Law Office 4
(Thomas Lamone, Managing Attorney)
Before Rice, Rooney and Hanak
Opinion by Rice
An application has been filed by Duratech Industries, Inc. to register the design shown below
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
for association services, namely, promoting the interests of individuals who censor the practice of drinking and driving, use since January 20, 1987 being asserted. [FN1] It is stated in the application that the design "is used on bumper stickers and printed matter in connection with" applicant's services. The specimens submitted with the application are bumper stickers bearing the design, which covers their entire face. The only other thing which appears on the bumper stickers is the phrase "COPYRIGHT 1986 DURATECH" (in plain black letters), which is superimposed over the lower right-hand portion of the design's outer outline (the outline being colored red on the bumper stickers).
The Examining Attorney has made final a requirement for the submission of acceptable specimens of service mark use. Specifically, the Examining Attorney maintains that the specimens of record do not show use of applicant's design to identify the services specified in the application. We affirm.
The record indicates that applicant "licenses" the design to organizations, such as local chapters of Students Against Drunk Driving, which promote the interests of individuals who censor the practice of drinking and driving. [FN2] The "licensees" sponsor speaking forums about drunk driving, promote other anti-drunk driving activities, and distribute promotional materials to the general public. The materials which the "licensees" may obtain from applicant include not only the bumper stickers but also sweatshirts, T-shirts, and buttons bearing the design (or a variation thereof in which the design is presented within a circular, rather than oblong, outline). The record includes a copy of an article about a convention (public speaking forum) held by a local chapter of Students Against Drunk Driving. Pictured in the article are a number of student chapter members wearing sweatshirts bearing the circular form of the design.
The term "service mark" is defined in Section 45 of the Trademark Act of 1946, 15 U.S.C. 1127, as "a mark used in the sale or advertising of services 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" (emphasis added). Implicit in this statutory definition is a requirement that there be a direct association between the mark sought to be registered and the services specified in the application. See: In re Advertising and Marketing Development, 821 F.2d 614, 2 USPQ2d 2010 (Fed.Cir.1987). Whether a mark has been used "to identify" a particular service is a question of fact to be determined on the basis of the specimens and other evidence of record.
*2 In the present case, the bumper stickers submitted as specimens bear no reference whatsoever to the services listed in the application. That is, there is not, in the specimens, any association at all between the design on the specimens and the specified services. The mere fact that the bumper stickers are distributed by organizations which perform the services does not in any way persuade us that members of the general public who encounter the services would perceive the design on the bumper stickers as a mark identifying the services. There simply is not, in such a fact situation, the type of association between the design, on the one hand, and the services, on the other, which would lead the public to regard the design as a service mark.
Nor is this case analogous to the cases of In re Red Robin Enterprises, Inc., 222 USPQ 911 (TTAB 1984) and In re Eagle Fence Rentals, Inc., 231 USPQ 228 (TTAB 1986), which were relied upon heavily by applicant. Unlike the present case, both of those cases involved, in essence, the "wearing" of a design mark during the performance, or personification, of the services for which registration was sought. [FN3]
For the foregoing reasons, we wholeheartedly agree with the Examining Attorney's conclusion that the specimens of record do not show use of applicant's design to identify the services specified in the application. Accordingly, we affirm the Examining Attorney's requirement for the submission of acceptable specimens.
The refusal to register is affirmed
Members, Trademark Trial and Appeal Board
FN1. Serial No. 672,056, filed July 14, 1987. Applicant originally sought registration in two classes, namely, Classes 41 and 16, for educational services and educational materials. Subsequently, applicant requested that the original identification of goods and services be cancelled and that the identification recited above be substituted. Thus, applicant dropped the Class 16 goods from its application, but retained services in Class 41. Accordingly, the application now contains but a single class.
FN2. In the "license" agreements made of record by applicant, applicant is referred to as the "Seller" and the "licensee" is referred to as the "Buyer." Each agreement provides that Seller grants to Buyer a non-exclusive, non- transferable, license to sell Seller's Don't Drink and Drive bumper sticker; that Buyer agrees that Seller is the sole owner of all proprietary rights, including the copyright and trademark to said licensed product; that Buyer shall not sell, transfer, publish, disclose, display or otherwise make available the licensed product to others, unless authorized in writing by Seller; that Seller entrusts [a specified number of] Don't Drink and Drive stickers to Buyer for sale on a Commission basis; that Buyer shall sell the licensed product for no less than [a specified price] per unit; that Buyer's commission is [a specified percentage] of the sales price of the licensed product; that Buyer shall pay for all sales and return all unsold stickers within [a specified number of] days from the date of the agreement; and that all unsold bumper stickers in good condition can be returned to the Seller at no cost to the Buyer.
We have serious doubts as to whether this agreement can be regarded as a valid license of the right to use a service mark. The agreement refers to a "licensed product;" includes no reference to any services to be performed under the design, much less any provisions for control over the nature and quality of services; and appears to be a contract for the sale of a product on a commission basis. However, this matter was not raised by the Examining Attorney, and is not before us.
FN3. While applicant submitted, during the prosecution of the application, an article with a picture of SADD chapter members wearing sweatshirts with a variation of the design sought to be registered, the design on the sweatshirts is not the design sought to be registered; the record does not clearly reveal whether the students wearing the sweatshirts participated in the rendering of the identified services; and even if they did, applicant would also have to submit evidence sufficient to show that the design on the sweatshirt is perceived as a service mark, rather than as mere ornamentation or as a trademark for the sweatshirts. Cf. In re Astro-Gods, Inc., 223 USPQ 621 (TTAB 1984); In re Paramount Pictures Corp., 213 USPQ 1111 (TTAB 1982); and In re Olin Corp., 181 USPQ 182 (TTAB 1973).