Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE HOME BUILDERS ASSOCIATION OF GREENVILLE
Serial No. 737,008
December 12, 1990
Hearing: August 29, 1990
Julian W. Dority, Wellington M. Manning, Jr., James M. Bagarazzi and Richard M. Moose for Home Builders Association of Greenville
Trademark Examining Attorney
Law Office 9
(Ronald Wolfington, Managing Attorney)
Before Sams, Cissel and Quinn
An application has been filed by Home Builders Association of Greenville, a South Carolina corporation, to register the mark shown below
for "real estate advertisement services."D' [FN1]
for magazines, maps, guides and directories, [FN2] as to be likely to cause confusion, or to cause mistake, or to deceive under Section 2(d) of the Trademark Act; (ii) that applicant's mark, when applied to its recited services, is merely descriptive under Section 2(e)(1); and (iii) that applicant's mark does not function as a "service mark"D' as contemplated under Sections 2, 3, and 45. After the refusals were made final, applicant filed this appeal. Applicant and the Examining Attorney have submitted briefs on the refusals and an oral hearing was held pursuant to applicant's request.
We will consider first whether or not applicant's mark functions as a "service mark"D', as contemplated under Section 45 of the Act, to identify and distinguish applicant's services from the services of others. The Examining Attorney, in refusing registration, contends that applicant's mark identifies a real estate guide publication. At the same time, however, the Examining Attorney concedes that "[t]here is not a dispute as to whether the applicant is rendering a service in this proceeding....the applicant's mark merely references its principal activity, namely the publication of a real estate guide. Because the activity of 'offering advertising space' in its guide is merely incidental to applicant's principal activity and is an activity commonly provided by publications of this type, for purposes of this analysis, the applicant is not rendering a service within the meaning of the Act"D' [[[citations omitted] (brief, p. 3 at f.n. 1). Applicant, on the other hand, argues that the specimens of record (advertising rate cards) evidence service mark use of the designation sought to be registered.
Section 45 of the Trademark Act, as amended, defines "service mark"D', in pertinent 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 that source is unknown."D' The same 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 and the services are rendered in commerce,...."D' Implicit in this definition is a requirement that there be a direct association between the mark sought to be registered and the services specified in the application, that is, that the mark be used in such a manner that it would be readily perceived as identifying the specified services.
*2 The Act, as amended, has no corresponding definition for "services."D' It has been stated, however, that the word "services"D' was intended to have broad scope and that "no attempt was made to define 'services' simply because of the plethora of services that the human mind is capable of conceiving."D' American Int'l Reinsurance Co. v. Airco, Inc., 570 F.2d 941, 197 USPQ 69, 71 (CCPA1978); In re Canadian Pacific Limited, 754 F.2d 992, 224 USPQ 971, 973 (Fed.Cir.1985).
The Federal Circuit, in considering whether a designation functions as a service mark for advertising services, has pointed to the following factual considerations: (i) whether the advertising services are sufficiently separate from the subject of the advertising; and (ii) whether the mark has been used to identify the advertising services, not merely to identify the subject of the advertising. See: In re Advertising & Marketing Development Inc., 836 F.2d 509, 2 USPQ2d 2010 (Fed.Cir.1987).
Applicant is in the business of advertising the goods and services of others. Applicant provides real estate advertising services by soliciting advertisements and then publishing a guide comprising the advertisements of others, such as home builders, real estate agencies, mortgage lenders and assorted businesses in the home ownership industry. The ads obviously are placed in the hope of increasing sales of the various businesses.
The Examining Attorney acknowledges in her appeal brief, as noted above, that applicant is rendering a service under the mark, but contends that the mark identifies the principal service of publishing a real estate guide and not the incidental advertising service listed in the application. [FN3] To determine what the mark is actually used to identify, we must examine the specimens since they reflect use in commerce of the involved mark. The specimens of record are advertising rate cards for applicant's publication. The front of the four-page rate cards bears applicant's mark and advises that "inside"D' the cards are "new 'money-saving' for '89,"D' "new advertising concepts"D' and "all publication dates and deadlines for '89."D' The advertisements included in applicant's publication, examples of which are shown in the rate cards, can range from those of residential home builders and real estate agencies (showing listings for individual new homes and subdivisions) to listings for mortgage service companies, and other homeowner services such as landscaping and providing alarm systems. More specifically, the different sections (with advertising rates) shown in the rate card include "new home block advertisements"D', "builder mart advertisements"D', the mortgage mart"D', "call for service"D', "the subdivision pages"D', "the front cover"D' and "the back page."D' The back of the rate card advises potential advertisers to contact applicant "for advertising information."D' The finished publication is titled "NEW HOME BUYER'S GUIDE"D' and is published bi-monthly as a supplement in the Sunday newspaper edition of the Greenville News/Piedmont. Applicant itself describes its publication as "a pictorial guide to new homes for upstate home buyers."DD'
*3 Our reviewing court, in Advertising & Marketing, supra, at 2014, found it instructive to view a service as "the performance of labor for the benefit of another."D' As noted above, applicant is in the business of, among other things, providing advertising services for the benefit of others, i.e., for the benefit of home builders and developers, real estate agencies, mortgage lenders and homeowner service businesses. The situation herein is similar to that in The Advertising & Marketing case wherein the court found that "[the] sale of advertising services to banks and automobile dealers is a wholly separate transaction from the banks' and automobile dealers' sale of financial services or automobiles to individuals."D' Advertising & Marketing, supra at 2014. In this case applicant's sale of real estate advertising services to home builders, developers and the like is a wholly separate transaction from, as for example, a home builder's sale of a home or customized building services to individuals. Thus, we find that applicant's advertising services are sufficiently separate from the subject of the advertising, i.e., the sale of homes and services related thereto.
Applicant also must have used the mark to identify the services in connection with which registration of the mark is sought. Applicant's customers, namely home builders, developers, mortgage lenders and the like wishing to advertise their various services would, upon reading the rate card specimens of record, immediately associate the offer of advertising services with the prominently displayed words "NEW HOME BUYER'S GUIDE"D'; those words thereby function to identify the source of the advertising services. That customers for applicant's advertising services are, undoubtedly, aware that applicant effects its advertising services by publishing a guide bearing the mark NEW HOME BUYER'S GUIDE does not gainsay the ability of NEW HOME BUYER'S GUIDE to function, as well, as a service mark for advertising services.
The Examining Attorney relies principally on In re Landmark Communications, Inc., 204 USPQ 692 (TTAB1979) and In re Hartford Courant Co., 231 USPQ 77 (TTAB1986). Those cases are distinguishable on their facts from the present case.
The applicant in Landmark Communications sought to register THE DAILY BREAK as a mark for services described as "educational and entertainment services comprising the collection, printing, presentation and distribution by means of a newspaper section of cultural and leisure information."D' The specimens of record were headings of a section of the applicant's newspaper showing, among other things, THE DAILY BREAK in prominent type. In affirming the refusal to register, the Board found that each of the services described in the application was a kind of feature commonly published in newspapers and that "'these feature articles, stories and columns may be considered to be indispensable components of newspapers which readers expect and without which newspapers would not be sold."D' Landmark Communications at 696. The Board went on to say that a newspaper is a tangible commodity purchased because of the variety of reading material to be found therein and that readers would not consider a newspaper a collection of services. The Board concluded that the applicant sold goods, not services and that there was not significant economic difference between the applicant as a publisher of a periodical and the applicant as a provider of its alleged services.
*4 The crucial distinction between Landmark Communications and the present case is that the customers for the alleged information and entertainment services rendered under the designation THE DAILY BREAK in Landmark Communications were the same customers who purchased the applicant's newspapers, while, in the present case, those who receive the "NEW HOME BUYER'S GUIDE"D' as a supplement to their newspapers are not the customers for the advertising services applicant renders under the mark NEW HOME BUYER'S GUIDE. In Landmark Communications, the Board found that printing the words THE DAILY BREAK across the top of the first page of a section of a newspaper did not amount to use of those words as both a trademark for publications (namely, a section of a newspaper) and a service mark for providing to subscribers and purchasers the news and entertainment contained in that section of the newspaper. In the present case, in soliciting customers, applicant applies its NEW HOME BUYER'S GUIDE to materials (advertising rate cards) that are wholly different from the guides that are distributed to newspaper subscribers, also under the mark NEW HOME BUYER'S GUIDE.
Hartford Courant, supra, is closer on its facts to the present case than is Landmark Communications, but the former case is, nonetheless, distinguishable. In Hartford Courant, the applicant sought to register COURANT for newspaper advertising services, including the design, layout and production of display advertisements for a newspaper. In affirming the refusal to register, the Board found that soliciting advertising for the applicant's own newspaper (The Hartford Courant is a large metropolitan daily newspaper) and the necessary activities of designing, laying out and producing those advertisements were activitives which were part and parcel of the business of selling newspapers and would be expected by advertisers and other readers of the newspaper to be associated with any newspaper. In reaching this conclusion the Board viewed the sale of newspapers as the applicant's principal activity under the mark and found that the solicitation of advertising for one's own newspaper is not an activity qualitatively different from what any newspaper publisher does.
The activity in connection with which the applicant in Hartford Courant sought to register its mark COURANT is substantially different from the activity in connection with which applicant here seeks to register NEW HOME BUYER'S GUIDE. The Hartford Courant, like other daily newspapers, was, as the record showed, devoted to publication of news stories and entertainment features. In this case, by important contrast, applicant's business is advertising; the medium by which it accomplishes its advertising services is a publication, an advertising circular, filled with the advertisements it has solicited from its customers. That it renders its advertising services to its customers by publishing an advertising circular, instead of writing jingles or producing audio or video tapes, does not change the essential nature of its service from advertising to publishing.
*5 In short, applicant uses the mark NEW HOME BUYER'S GUIDE in the offer of advertising services to its customers, and the record demonstrates that applicant's principal business is advertising the goods and services of others. That applicant might also be using NEW HOME BUYER'S GUIDE as a trademark for goods (namely, publications) directed to a wholly different group of persons (namely, newspaper subscribers) changes in no way its use of the term as a service mark for advertising services.
We turn next to the likelihood of confusion refusal under Section 2(d). Applicant essentially argues that the differences between its mark NEW HOME BUYER'S GUIDE and the cited mark, NEW HOMES, as well as the differences between the applicant's real estate advertising services and registrant's magazines, maps, guides and directories, preclude a likelihood of confusion. Applicant particularly points to alleged differences in the classes of purchasers to whom applicant's and registrant's goods and services are directed.
As to the marks, we have not trouble concluding that NEW HOME BUYER'S GUIDE and NEW HOMES, both marks in stylized form, are so similar that, if used in connection with related goods and services, confusion would be likely. The dominant portion of applicant's mark, as depicted in the drawing, clearly is NEW HOME. The words NEW HOME are larger in size and more prominently displayed than the other words, BUYER'S GUIDE. The dominant portion, NEW HOME, is identical to registrant's mark, but for the addition of a plural letter "s"D' in registrant's mark. While we have resolved the issue of likelihood of confusion based on a consideration of the marks in their entireties, as we must, there is nothing improper in according the dominant portion more weight. See: In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed.Cir.1985).
As to the goods and services sold under the respective marks, we find that applicant's services recited in the application are sufficiently related to the goods set forth in the cited registration. As often stated, it is not necessary that the goods or services be identical or even competitive in nature in order to support a finding of likelihood of confusion, it being sufficient that the goods or services are related in some manner and/or that the circumstances surrounding their marketing are such that they would be likely to be encountered by the same persons under circumstances that would give rise, because of the marks employed thereon, to the mistaken belief that they originate from or are in some way associated with the same producer. See: In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB1978). The primary reason for the existence of the guide published by applicant is advertising, that is, the advertising of the products and services of home builders, real estate agencies, mortgage lenders and the like. We thus find that the nature of the advertising services in this case to be closer to registrant's goods than the situation presented in the case cited by applicant, Local Trademarks Inc. v. The Handy Boys Inc., 16 USPQ2d 1156 (TTAB1990). We believe consumers of applicant's NEW HOME BUYER'S GUIDE advertising services, when confronted with registrant's NEW HOMES guide (a publication they would obviously assume was devoted to real estate, as are the NEW HOME BUYER'S GUIDE real estate advertising services), would attribute a common source to the goods and services. Thus, we find that confusion is likely.
*6 With respect to the descriptiveness refusal, we agree with the Examining Attorney's position. While applicant urges that its mark is just suggestive, we find that the mark NEW HOME BUYER'S GUIDE in stylized form immediately conveys the nature of the advertising services offered by applicant.
A mark is considered to be merely descriptive within the meaning of Section 2(e)(1) if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the goods or services to which it is applied. The question of whether or not a mark is merely descriptive is not determined in the abstract, but rather in relation to the goods or services for which registration is sought. See: In re Abcor Development Corp., 616 F.2d 525, 200 USPQ 215 (CCPA1978).
As shown by the specimens of record, applicant's real estate advertisement services involve the placing of advertisements in a buyer's guide of which the subject matter is new homes and associated products and services. The published guide itself is, in essence, a guide comprised of advertisements for goods and services needed by buyers of new homes. We thus find that the mark, when used in connection with the services, immediately conveys the idea of advertising in a new home guide for buyers. See, e.g.: Reese Publishing Co., Inc. v. Hampton Int'l Communications, Inc., et al., 620 F.2d 8, 205 USPQ 585 (2d Cir.1980) [VIDEO BUYERS GUIDE held to be generic for magazines]; In re Kalmbach Publishing Co., 14 USPQ2d 1490 (TTAB1989) [RADIO CONTROL BUYERS GUIDE held to be generic for magazines].
Decision: The refusal grounded on Sections 2, 3 and 45 is reversed; the refusals grounded on Sections 2(d) and 2(e)(1) are affirmed.
J. D. Sams
T. J. Quinn
R. F. Cissel
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 737,008, filed June 27, 1988, alleging a date of first use anywhere of May 6, 1986 and a date of first use in commerce of April 26, 1987.
FN2. Registration No. 1,443,114, registered June 16, 1987 under Section 2(f).
FN3. The Examining Attorney has argued that the advertisement services are merely incidental to applicant's principal service of publishing a real estate guide. But see In re Heavenly Creations, Inc., 168 USPQ 317, 318 (TTAB1971) wherein the Board stated:
Insofar as the service is concerned, the statute makes no distinction between services on the basis of primary, incidental or ancillary. They need only be services. The fact that a service may be incidental to a principal service or to the sale of goods does not make it any less of a service.....
CISSEL, MEMBER, CONCURRING AS TO THE AFFIRMANCE OF THE REFUSALS BASED ON
SECTIONS 2(D) AND 2(E)(1), BUT DISSENTING AS TO THE REVERSAL OF THE REFUSAL
UNDER SECTION 45:
*7 R. F. Cissel
I agree with my colleagues that the refusals to register under Sections 2(d) and 2(e)(1) of the Act should be affirmed for the reasons set forth in the majority opinion. I disagree, however, with the reasoning and the result of their reversal of the refusal to register under Section 45. I would affirm this refusal as well as the other two.
I have no quarrel with the explanation offered concerning the underlying facts presented in this application and the statutory basis for registering service marks. I agree that applicant is in the business of advertising the goods and services of others and that by soliciting advertisements and publishing a guide comprising advertisements for these goods and services applicant provides advertising services. I further agree that this activity meets the standards established under the Lanham Act to constitute a service. If this service were identified by the mark sought to be registered, I would have no problem finding registration to be appropriate.
The problem is that applicant's advertising services are not identified by the mark sought to be registered. Careful examination of the specimen brochures and copies from applicant's publication do not lead me to the conclusion of the majority that applicant's activities of promoting the sale of its clients' goods and services are identified by the stylized presentation of the words "'NEW HOME BUYER'S GUIDE"D' shown in the drawing. I cannot agree with the statement of the majority that "Applicant's customers, namely home builders, developers, mortgage lenders and the like wishing to advertise their various services would, upon reading the rate card specimens of record, immediately associate the offer of advertising services with the prominently displayed words 'NEW HOME BUYER'S GUIDE'; those words thereby function to identify the source of the advertising services."DD'
The words "NEW HOME GUIDE"D' are used throughout these specimens to identify the publication in which the advertisements are printed, referring, for example, to block ads which "appear in the New Home Guide."D' Another reference on the rate card states that the ads appear "in full color in the center spread of The New Home Guide."D' Significantly, neither of these references is to the mark presented for registration in the drawing submitted with the application.
Other than on the cover of the publication itself, which is a clear use of the mark as a trademark for the publication, rather than as a service mark, the only use of the mark sought to be registered, which includes the word "BUYER'S" D' and is presented in stylized form with three different sizes of letters, is on the cover of the four-page brochure promoting advertising in applicant's new home buyer's guide. The mark appears directly above the words "Rate Card-Effective June 1, 1989."D' This is the only use of the mark sought to be registered that prospective customers of applicant's advertising services would see other than on the publication itself, and I cannot agree with the majority's conclusion that these people would perceive of the mark used in this way as something other than a reference to the publication itself. It is simply a rate card for advertising in applicant's New Home Buyer's Guide. Customers would understand that the rates and other information set forth under this heading relate to applicant's publication, which is a new home buyer's guide.
*8 In short, nowhere in this record is the mark sought to be registered used in a way that it would be perceived as identifying the source of any of the activities which make up applicant's advertising services--all it identifies is the publication in which the advertisements appear.