Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE FORBES INC.
Serial No. 74/128,801
May 3, 1994
Kenneth Dale Battle
Trademark Examining Attorney
Law Office 14
(R. Ellsworth Williams, Managing Attorney)
Before Sams, Rice & Quinn
Opinion by Quinn
The Trademark Examining Attorney has refused registration on the ground that applicant does not perform a "service" within the meaning of Section 45 of the Trademark Act, as amended, 15 U.S.C. 1127. [FN2]
Applicant is engaged in the business of publishing magazines, of which the most prominent is a business magazine sold under the mark FORBES. [FN3] Not unlike most magazines, Forbes, in addition to articles, editorials, etc., includes advertisements (which in small part, also comprise in the first issue of every month, classified advertisements) placed by others. Applicant solicits these advertisements by placing advertisements of its own in a variety of printed publications published by others. These advertisements do not serve to increase sales of applicant's magazines; rather, the advertisements serve to sell advertising space as they are directed to potential advertisers to persuade them to advertise their products and services in applicant's magazines. Of record are numerous advertisements placed by applicant in publications such as The New York Times, Ad Age, Adweek, Automotive News, LA Style and Spy. Each advertisement includes the applied-for mark, NO GUTS. NO STORY., and encourages others to run their ads in Forbes. One of the advertisements claims that Forbes is "the country's number one magazine in ad pages." The specimens of record are rate cards sent to potential advertisers.
The Examining Attorney contends, in refusing registration, that applicant's principal business is publishing magazines, that, thus, "applicant's magazines are the subject of the advertising and do not constitute separate services," and that applicant's providing advertising space to others in applicant's own publication is not a "service" which is separate from applicant's publishing services. In support of the refusal the Examining Attorney submitted excerpts retrieved from the NEXIS data base, which evidence, in the Examining Attorney's words, "demonstrates that advertising is an integral part of the existence of a magazine." (Office action, April 1, 1992, p. 2). Applicant argues, on the other hand, that providing advertising space for others in a periodical is not absolutely necessary to the publication of a periodical. Applicant emphasizes that its magazines are not the subjects of the advertisements; rather, it is the various goods and services of others that are being advertised in applicant's periodicals. Applicant contends that the Examining Attorney's reliance on earlier Board decisions is misplaced because, according to applicant, those cases no longer represent the current state of the law regarding the registrability of marks for advertising services. Applicant essentially argues that earlier Board precedent in this area is no longer good law in view of the Federal Circuit's subsequent decision in In re Advertising & Marketing Development Inc., 821 F.2d 614, 2 USPQ2d 2010 (Fed.Cir.1987).
*2 In this case, the Board faces, yet again, the hard and often-asked question: what is a "service" as that term is understood under the Trademark Act? And, more specifically here, does applicant's activity of providing advertising space for others in its periodicals constitute a "service" in connection with which a service mark can be registered?
Section 3 of the Trademark Act provides for the registration of service marks. Section 45 of the Act defines, in relevant part, "service mark" 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." The Federal Circuit has observed that
[t]he Act does not define "services," nor does the legislative history provide such a definition. However, our predecessor court stated that the term "services" was intended to have broad scope, reasoning that "no attempt was made to define 'services' simply because of the plethora of services that the human mind is capable of conceiving." [emphasis added].
In re Advertising & Marketing Development Inc., supra at 2013, citing American International Reinsurance Co., Inc. v. Arico, Inc., 570 F.2d 941, 197 USPQ 69, 71 (CCPA1978), cert. denied, 439 U.S. 866 (1978). The Court, on another occasion, opined that the omission of a definition of "services" in the Act "suggest[s] that the term should be liberally construed." American International Reinsurance Co., supra at 71. Indeed, prior case law evidences the wide and diverse range of activities that have been held to be "services" sufficient to support a service mark registration. See: J.T. McCarthy, McCarthy on Trademarks and Unfair Competition, § 19.30 (3d ed. 1992).
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., supra. In that decision the Federal Circuit found it instructive to view a service as "the performance of labor for the benefit of another." Id. at 2014.
The Board, in the past, has grappled with determining whether or not certain activities of a publisher constituted a "service." In the case of In re Landmark Communications, Inc., 204 USPQ 692 (TTAB1979) the applicant 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." 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." Id. at 698. 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 no significant economic difference between the applicant as a publisher of a periodical and the applicant as a provider of its alleged services.
*3 Another case was In re Hartford Courant Co., 231 USPQ 77 (TTAB1986). In that case 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 activities 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.
In the most recently decided Board case in this area of the law, In re Home Builders Association of Greenville, 18 USPQ2d 1313 (TTAB1990), the applicant attempted to register NEW HOME BUYER'S GUIDE for "real estate advertisement services." Registration was refused, in relevant part, under Sections 2, 3 and 45 on the ground that the applied-for designation did not function as a service mark under the Act. The applicant provided its advertising services by soliciting others to place advertisements in a guide published by applicant. The guide essentially was a compilation of these advertisements placed by others (such as home builders, real estate agencies, mortgage lenders and various businesses in the home ownership industry). The Board reversed the refusal of registration, finding that the situation was similar to the one in In re Advertising and Marketing. Moreover, the Board stated as follows:
[A]pplicant'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 jungles or producing audio or video tapes, does not change the essential nature of its service from advertising to publishing.
The case now before us presents yet another variation on the familiar theme. Here, we have an applicant, engaged in publishing periodicals, seeking to register a mark for advertising services where the mark is different from any of the marks used to identify the periodicals, and where the advertising services essentially are rendered by the sale of advertising space in the periodicals.
We find that applicant's advertising services meet the test set out by the Federal Circuit in In re Advertising & Marketing, supra. In that case the Court found that "[applicant's] 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." Id. at 2014. In the present case applicant's sale of advertising space in its periodicals to other businesses is a wholly separate transaction from those businesses' sale of goods and/or services. Although the Examining Attorney states that "the applicant's magazines are the subject of the advertising" (brief, p. 10), this clearly is not the case. The present case does not involve applicant's running an ad to promote sales of its own magazines; rather, it is the goods and/or services of others that are the subjects of the advertising. Cf.: In re Dr Pepper Co., 836 F.2d 508, 5 USPQ2d 1207, 1209 (Fed.Cir.1987) [ordinary promotional activities of one's own goods do not constitute a registrable service].
*4 Applicant also must have used the mark to identify the services in connection with which registration of the mark is sought. Applicant's customers, which undoubtedly are businesses in many diverse fields, wishing to advertise their various goods and/or services would, upon reading the rate card (specimens of record), immediately associate the offer of advertising services with the prominently displayed words NO GUTS. NO STORY. Those words function to identify the source of the advertising services which involve the providing of advertising space in periodicals which are sold under marks different from the one sought to be registered here. The fact that customers for applicant's advertising services are, of course, aware that applicant renders its advertising services by providing space for their advertisements in applicant's FORBES, EGG and FORBES VON BURDA periodicals does not diminish the ability of a different mark, NO GUTS. NO STORY., to function as a service mark for those advertising services.
Underlying our consideration of the facts of this case is the premise enunciated by the Federal Circuit, that is, that a "service" should be viewed as "the performance of labor for the benefit of another." In re Advertising and Marketing Inc., supra at 2014. When examined in that light, one can draw important distinctions between previously decided cases and the present case. We would add that, in any event, the Court's decision in In re Advertising and Marketing makes it dubious that In re Hartford Courant remains good law today. We think that, at the very least, the Court's decision severely undercuts the Board's holding in In re Hartford Courant which placed restrictions on the registrability of marks for advertising services rendered to others by publishers.
The inherent nature of applicant's advertising services makes such activity very different from the activity of publishing magazines. The sale of advertising space in a periodical and the sale of the periodical itself confer different benefits on different purchasers. Applicant, by selling advertising space in its periodicals, is performing labor for the benefit of advertisers. On the other hand, applicant's publishing activities benefit the purchasers/readers of applicant's periodicals. Thus, applicant's advertising services are "rendered to a segment of the public who, ostensibly [are] not even the purchasers of applicant's products." See: American International Reinsurance Co. v. Airco, Inc., supra at 71.
Another factor in this case--and one that distinguishes it, on its facts, from In re Hartford Courant--is the use by applicant of a mark in connection with the advertising activity which is different from the marks used to identify applicant's periodicals. See: In re Congoleum Corp., 222 USPQ 452 (TTAB1984), and In re Universal Press Syndicate, 229 USPQ 638, 640 (TTAB1986) [an important factor in determining whether the activity engaged in is a service for which a service mark registration may issue is the use by applicant of a mark different from that used in connection with applicant's principal product]. Here, a mark different from FORBES, EGG or FORBES VON BURDA, namely, NO GUTS. NO STORY., is used to identify the actual advertising activities in connection with the aforementioned publications. There is nothing in the record to indicate that applicant uses NO GUTS. NO STORY. in conjunction with any goods or services other than its advertising services. This tends to show that applicant's advertising services constitute an activity separate from its principal activity of publishing periodicals. [FN4]
*5 In the present application, the Examining Attorney "readily admit[s] that the solicitation of advertising is not necessary to the publication of a magazine." (brief, p. 11). Be that as it may, the point to be made here is that a determination of whether NO GUTS. NO STORY. functions as a service mark for advertising services turns on whether or not these services being rendered by applicant are separate from applicant's publishing activities. Although advertisers in and readers of applicant's periodicals know and expect that the publications contain advertising, that fact standing alone is of little importance, at least to our way of thinking, in determining whether the advertising services and publishing activities are separate activities or, rather, are integral activities. As we have done in the present case, it is important to look at other facts in making this determination. Here, these facts convince us that applicant is rendering advertising services under the mark it seeks to register because such services are sufficiently independent from applicant's publishing activities. Thus, applicant is rendering advertising services in connection with its mark NO GUTS. NO STORY. within the meaning of the Act.
Decision: The refusal to register is reversed.
Administrative Trademark Judges, Trademark Trial and Appeal Board
FN1. Application Serial No. 74/128,801, filed January 8, 1991, asserting dates of first use of January 1990.
FN2. The Examining Attorney also issued a final refusal on the ground that the recitation of services, which then read "business and advertising services providing advertising space in a periodical", was indefinite. Applicant addressed this issue in its appeal brief, arguing that the recitation of services in the involved application conforms to that in its Registration No. 1,125,852 for the mark CAPITALIST TOOL. In that registration the recitation of services reads "providing advertising space in a periodical." Applicant suggests a remand of the application to the Examining Attorney in the event the Board agrees with the Examining Attorney on this issue, asserting that "the identification of services in this application should be uniform with that in Registration No. 1,125,852." (brief, p. 9). The Examining Attorney states, in a footnote in his brief (p. 3), that assuming the refusal is reversed, he has no objection to resolving the recitation issue by amendment upon remand, and that other than the discussion in the footnote, the recitation issue "will not be addressed in this brief."
In view of the above, our opinion is that an accurate and acceptable recitation would read "advertising services, namely, providing advertising space in a periodical." The application stands amended accordingly, thereby avoiding the delay inherent in a remand situation.
FN3. Applicant also provides advertising space in at least two other magazines it publishes, namely, EGG and FORBES VON BURDA.
FN4. As noted above, applicant also owns Reg. No. 1,125,852 for the mark CAPITALIST TOOL for "providing advertising space in a periodical." The specimen in that file is a copy of an advertisement run by applicant in a newspaper. As is the case with the advertisements of record in the present application, the advertisement is not directed to purchasers of applicant's periodicals. Rather, the advertisement is directed to potential advertisers in an attempt to persuade them to run ads in applicant's FORBES magazine.