The Trademark Trial and Appeal Board recently re-designated as precedential its May 12, 2015 decision that affirmed refusal to register a mark because the applicant’s specimens – showing the proposed mark in plural form, rather than in singular form – did not show the mark’s use in connection with any of the services specified in its application.
In In re Graystone Consulting Associates, Inc., Serial No. 85913509, the applicant sought to register the mark “Walk-In Shopper (in standard character form) for ‘business training consultancy services.’” The applicant initially filed the following specimen with its application:
The TTAB found that the Examining Attorney correctly rejected this specimen because it failed to exhibit the applied-for mark – the specimen only identified “shoppers” in the plural form, instead of the singular form depicted in the application drawing page.
The applicant then provided the following substitute specimen:
The TTAB agreed with the Examining Attorney that the substitute specimen was likewise unacceptable because it did “not show the requisite ‘direct association’ between the applied-for mark and Applicant’s ‘business training consultancy services.’”
Further, the TTAB rejected the applicant’s argument that the substitute specimen sufficiently showed its services in the sentence of the body of its flyer reading: “Graystone offers communication training regarding the Walk-In Shopper,” explaining:
Applicant is using “Walk-In-Shopper” to identity a particular customer, i.e., one who “visit[s] a funeral home in advance to determine which firm they will choose.” This is evident from the use of the term in lower cases letters (“targeting the walk-in-shopper”) and from the content of the paragraph which is referring to an individual identified as a walk-in shopper (“Graystone has put together vast scenarios of possible situations and what can affect the buying decisions of a walk-in shopper.”) Nothing in the specimen associates the designation with “business training consultancy services.”
Further, the mere reference to “training and consulting” in the specimen is not sufficient to make the association. Even though this reference is followed by the term WALK-IN-SHOPPER with a “tm” designation, a direct association is not made between the two. The explanations that follow regarding the target customer for one of Applicant’s clients makes clear that the reference is not to any service mark for “business training consultancy services,” but to a particular customer.
The TTAB stressed that “[a] service mark must be used in such a manner that it would be readily perceived as identifying the services” and that this is “determined by examining the specimens of record in the application.”
Trademark applicants should pay particular attention to this decision in filing future specimens, in light of its precedential nature, and the TTAB’s strict application of the specimen requirements. This may also be a departure from exisiting practice on specimens required for renewals.