Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE JOHNSON CONTROLS, INC.
Serial No. 74/195,251
August 30, 1994
Hearing: February 8, 1994
Geoffrey A. Fosdick
Trademark Examining Attorney
Law Office 14
(R. Ellsworth Williams, Managing Attorney)
Before Rice, Cissel and Quinn
Administrative Trademark Judges
Opinion by Cissel
Administrative Trademark Judge
based on its use in interstate commerce in connection with services which were subsequently clarified by amendment as "manufacture of fluid control products to the order and specification of consumer request." The application stated that the mark is used "by applying it to labels to be affixed to the packaging of the goods provided," through advertising, as well as in other ways. The specimens are adhesive labels showing the mark. The labels are affixed to packaging which contains applicant's products.
Registration was refused under Sections 1, 2 and 45 of the Act on the ground that the specimens are unacceptable as evidence of use of the mark as a service mark "because they are labels attached to goods and do not identify or reference the services offered by the applicant." (May 12, 1992 Office Action).
When this refusal was made final, applicant appealed. Briefs were filed, and an oral hearing was conducted at applicant's request.
The sole issue on appeal is the acceptability of the label specimens as evidence of service mark use. We emphasize that the Examining Attorney has not challenged applicant's statement that it manufactures its fluid control product, which it concedes is known in the industry as an "iron valve" (applicant's June 15, 1992 letter, p. 2), to the order and specification of applicant's customers. [FN1] Nor has the Examining Attorney taken issue with the fact that the customized making of a product to the order and specification of someone else constitutes performance of a service within the meaning of the Lanham Act. Further, the Examining Attorney has not disputed the fact that applicant's reference in the mark to "EXPRESS" and the image of the speeding iron valve are intended to suggest that applicant's service features expedited manufacturing and shipping of these products, such that the time between ordering a valve and receiving it is minimized.
The sole problem the Examining Attorney has with the specimens of record is that the labels make absolutely no reference to the services of applicant. It is the position of the Examining Attorney that these stickers may constitute proper specimens evidencing trademark use for goods, but that in order for them to be acceptable as specimens supporting registration of this mark as a service mark, they must make at least some reference to the services, otherwise the required direct association between the mark sought to be registered and the services specified in the application cannot be made.
*2 Applicant disagrees with this conclusion.
We can all agree that the statutory definition of a service mark is a mark "used in the sale or advertising of services to identify and distinguish the services ..." (Section 45 of the Act). Our primary reviewing court has held that there must be a direct association between the mark and the services specified in the application. In re Advertising and Marketing Development, 821 F.2d 614, 2 USPQ2d 2010 (Fed.Cir.1987). The question in the instant case is whether use of these labels on applicant's products creates such an association.
The Examining Attorney cites Intermed Communications Inc. v. Chaney, 197 USPQ 501 (TTAB 1977), in support of his position that no direct association between the mark and the service is shown by applicant's labels. In that case the Board stated (at 197 USPQ 507) that "[a] specimen which shows the alleged mark but which makes no reference to the services offered or performed thereunder is not evidence of service mark use." The specimen held deficient there was a "report" which did not refer to the service in question. Further, the "report" was mailed, not to prospective customers of the stated services, but instead, to prospective donors whose funding was being solicited in order to allow applicant's parent corporation to offer the services in question, which consisted of providing a variety of medical services to people in foreign countries. Clearly there was nothing directed to prospective customers of the stated services which could have created an association, direct or otherwise, between the mark and the services set forth in the application.
Applicant argues that its position is supported by In re Eagle Fence Rentals, Inc. 231 USPQ 228 (TTAB 1986), and In re Metriplex, 23 USPQ2d 1315 (TTAB 1992). The Metriplex decision held that use of a mark as a logo which is viewed on a computer screen display during the rendering of computer data transmission services is acceptable evidence of use of the mark to identify that service. The Board specifically rejected interpretation of the language quoted from the Intermed case, supra, as requiring specimens to contain a statement as to the nature of the service in order to be acceptable specimens.
The Eagle decision held that photographs of that applicant's uniquely colored fencing were acceptable specimens supporting use of the appearance created by the colored wire in the fencing as a service mark for fence rental services. It was noted that the applicant had submitted a direct-mail advertising brochure which described applicant's fence rental services and specifically touted the colored fencing which applicant provided. We emphasized in that case the need to take a very flexible approach to the question of what constitutes a service mark. We held that those specimens, photos of applicant's fencing, were acceptable because they showed use of the mark in rendering of the services set forth in that application.
*3 When we view the facts presented in the case at hand in the context of the cases cited by both the Examining Attorney and this applicant, we agree with the Examining Attorney that the labels submitted as specimens with this application do not show use of the mark sought to be registered as a service mark for the custom manufacture of valves. If the application sought registration as a trademark for these fluid control products, these specimens would clearly be satisfactory, but that is not the issue here.
The crux of our analysis is that a purchaser or prospective purchaser of applicant's stated service, which is making these goods upon request to the specification of its customers, would view the mark on the labels attached to the packages in which the valves are shipped as simply a trademark for the valves, identifying their source and distinguishing them from similar products manufactured by other businesses. There would be no reason for any reasonable person to suspect that a custom manufacturing service is being identified by the mark as it is used on these labels.
Our position is consistent with the Intermed decision as well as with the Metriplex case, in which we rejected the requirement that the specimens contain a statement as to the nature of the service. While the nature of the services does not need to be specified in the specimens, there must be something which creates in the mind of the purchaser an association between the mark and the service activity.
In the Eagle Fence case, there was evidence that the fence rental services were promoted using a direct reference to the colored fencing wire which constituted the mark. Similarly, in the Metriplex case the mark asserted to identify and distinguish the services in question was used in the promotion and sale of the services.
In the case at hand, the labels make absolutely no reference, not even an indirect one, to the service of custom making iron valves. Moreover, we have no evidence that the mark sought to be registered is used in advertising the custom manufacturing service of applicant, nor is it used during the rendering of the service. Rather, unlike the Metriplex and Eagle Fence cases, the rendering of the applicant's custom manufacturing service in this case is completed before purchasers ever see applicant's mark. We have no basis upon which to conclude that purchasers would regard the mark as anything other than a trademark for applicant's goods.
Because the specimens do not show the mark used to identify and distinguish applicant's manufacturing services, the refusal to register under Sections 1, 2 and 45 of the Act is affirmed.
Administrative Trademark Judges, Trademark Trial and Appeal Board
FN1. In this regard we note that applicant has disclaimed exclusive rights in the term "IRON VALVE."