Advertising & Marketing Development Inc., In re
| Decision Date | 05 June 1987 |
| Docket Number | No. 87-1092,87-1092 |
| Citation | 821 F.2d 614,2 USPQ2d 2010 |
| Parties | , 2 U.S.P.Q.2d 2010 In re ADVERTISING & MARKETING DEVELOPMENT, INC. Appeal |
| Court | U.S. Court of Appeals — Federal Circuit |
Donald A. Kaul, Brownstein Zeidman and Schomer, Washington, D.C., argued for appellant.
Albin F. Drost, Asst. Solicitor, Office of Solicitor, Arlington, Va., argued for appellee. With him on the brief were Joseph F. Nakamura, Solicitor, and Fred E. McKelvey, Deputy Solicitor.
Before MARKEY, Chief Judge, BENNETT, Senior Circuit Judge, and SMITH, Circuit Judge.
Advertising & Marketing Development, Inc. (A & M), appeals from the final decision of the Patent and Trademark Office Trademark Trial and Appeal Board We hold that the standard for service mark registration for advertising or promotional services is the same as that for other services, and that the board clearly erred in finding that A & M had not used THE NOW GENERATION as a mark for its promotional services. The board's decision refusing service mark registration is reversed.
(board), 1 refusing registration of THE NOW GENERATION as a service mark for A & M's promotional services, based on the board's finding that A & M had not actually used the mark to identify such services. This case was previously before this court in appeal No. 85-867, an appeal taken from the board's previous decision, 2 and resulting in a remand to the board for the taking of additional evidence.
The issues are:
1. Whether a service mark may be registered for advertising or promotional services and, if so, what is the standard for registration; and
2. Whether the board clearly erred in finding that A & M had not used THE NOW GENERATION as a mark for A & M's promotional services and, thus, whether the board erred in affirming the examiner's refusal to register THE NOW GENERATION as a service mark.
A & M is in the business of providing sales promotion services by creating and licensing sales promotion campaigns. Sales promotion campaigns are used by various types of merchants, such as grocery stores, gas stations, banks, and automobile dealers, for the purpose of increasing customer traffic and sales.
A & M created the campaign known as THE NOW GENERATION or NOW GENERATION and licensed the campaign to banks for the purpose of advertising the banks' financial services, including NOW accounts, and to automobile dealers for the purpose of advertising automobiles. (A NOW account is a checking account that earns interest.) The license entitles the banks or automobile dealers to use THE NOW GENERATION as a mark for financial services or automobiles.
The NOW GENERATION licenses are individually tailored to include the right to use selected physical components from a total of 5 television commercials, 51 radio commercials, 30 newspaper advertisements, a musical theme, direct mail advertising materials, point of sale materials, and other materials. A & M provides services to its licensees including advice as to which components to select, how to use and benefit from the advertising, and how the campaign could assist in the merchandising of banking services or automobiles to the public.
A & M sought to register THE NOW GENERATION as a service mark for "PROMOTING THE SALE OF GOODS AND/OR SERVICES OF AUTOMOBILE DEALERS, FINANCIAL INSTITUTIONS AND RETAILERS THROUGH THE DISTRIBUTION OF PRINTED PROMOTIONAL MATERIALS AND BY RENDERING MERCHANDISING AND SALES PROMOTION ADVICE" (hereinafter referred to as advertising or promotional services). The board affirmed the examiner's refusal to register the mark, finding that the mark had not been used for A & M's promotional services, but only for the banks' financial services. (In the board decision presently on appeal, the board focused on the bank licensees and not on the automobile dealer licensees.)
The board does not question that A & M provides promotional "services" as opposed to "goods." The board also does not suggest that there is any possibility of confusion or any difficulty in distinguishing between A & M's use of THE NOW GENERATION as a mark for promotional services to banks, on one hand, and the banks' use of the same mark for financial services to
individuals, on the other. The question is whether, in fact, A & M has used THE NOW GENERATION as a mark for its promotional services.
This court considered this case previously in A & M's appeal (No. 85-867) from the board's previous decision. 3 A & M had submitted to the board a letterhead as evidence of its use of THE NOW GENERATION as a mark for promotional services. The board, in a 2-1 decision, affirmed the examiner's refusal to register THE NOW GENERATION as a service mark, stating that the letterhead "does not persuade us that applicant's potential customers are likely to view this term, as used on those letterheads, as a mark which identifies applicant's sales promotion services," rather than as a term which identifies only banking services or automobiles. 4 The dissenting member of the board filed an opinion stating that he would allow service mark registration because the letterhead specimen was sufficient to establish A & M's use of THE NOW GENERATION as a mark for promotional services, and that the mark would be so regarded by A & M's customers, namely, banks and automobile dealers. The letterhead (in reduced size) is reproduced in figure 1. 5
In the previous appeal, at oral argument on May 8, 1985, before Chief Judge Markey and Circuit Judges Kashiwa and Smith, a member of the panel inquired of counsel whether the refusal to register was based upon evidentiary considerations related to the specimens submitted with the application or upon the legal standard applied by the board majority. Counsel were unable to advise the court whether different evidence presented to the examiner would have altered the examiner's or the board's decision.
On May 30, 1985, A & M and the Solicitor filed a joint motion to remand the case for submission of additional evidence. On June 4, 1985, this court entered judgment, without opinion, remanding the case to the board.
On remand to the board, A & M submitted additional evidence relating to A & M's use of THE NOW GENERATION as a mark for promotional services. The board, in turn, remanded the case to the examiner.
The additional evidence included the affidavits of two purchasers of A & M's services, who stated unequivocally that they identified THE NOW GENERATION as On January 2, 1986, the examiner renewed his final refusal to register. He acknowledged receipt of the additional evidence, but nevertheless decided that registration could not be allowed, stating the following reason:
the mark for A & M's promotional services. A & M also submitted the affidavit of its president, who described in detail the nature of A & M's promotional services and its use of THE NOW GENERATION as a mark for those services. A & M further submitted a postcard specimen sent to banks, and an advertising specimen from Bank Marketing magazine, in which specimens THE NOW GENERATION clearly was used to identify A & M's promotional services.
[I]t was held in Admark [214 USPQ 302 (TTAB 1982) ], which contained a similar portfolio of specimens, that an advertising campaign for a client's use made available through license agreements, cannot be said to function as a service mark for the licensor's--applicant's sales promotion services.
A & M again appealed to the board. In the board's second 2-1 decision, it affirmed the examiner's refusal to allow registration of THE NOW GENERATION as a mark for A & M's promotional services. 6 Notwithstanding the additional evidence, the board again found that A & M had not used THE NOW GENERATION as a mark for its promotional services, but that the mark had been used only by banks as a mark for their financial services. The board cited In re Admark, Inc., 7 in support of its decision, although the board did not construe Admark as broadly as the examiner had construed that opinion. The board did not cite any statute, rule, or regulation as authority for its refusal to register the mark. The dissenting member of the board again filed an opinion, stating that the additional evidence made it even more clear that THE NOW GENERATION was registrable because the mark had been used to identify A & M's promotional services.
Section 3 of the Lanham Act 8 provides for the registration of service marks. Section 45 of the Lanham Act 9 defines "service mark" 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."
The Lanham Act, as amended, 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." 10
The board has held that there is "no reason why a particular class of service" should be excluded from service mark registration, as long as the statutory requirements for registration are met. 11 Each application for registration of a mark must be separately evaluated 12 with reference to the manner in which the mark has been used in the specimens of record. 13
In In re Goodwill Advertising Co. 14 and in In re Universal Press Syndicate, 15 the board has allowed registration of service marks for advertising or promotional services. In each case, the board found that the advertising services were sufficiently separate from the subject of the...
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