Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/160093

 

This letter responds to the applicant’s communication filed on February 25, 2003.  The amendments contained in the above-referenced response, with the exceptions cited below, are accepted and entered into the record.  Please note that this application has being reinstated.

 

Registration was refused under Trademark Act Section Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127, because the activities recited in the identification do not constitute services as contemplated by the Trademark Act.

 

The examining attorney has considered the applicant’s arguments carefully but has found them unpersuasive.  For the reasons below, the refusal under Sections 1, 2, 3 and 45 is maintained and made FINAL.

 

The following criteria have evolved for determining what constitutes a service:  (1) a service must be a real activity; (2) a service must be performed to the order of, or for the benefit of, someone other than the applicant; and (3) the activity performed must be qualitatively different from anything necessarily done in connection with the sale of the applicant’s goods or the performance of another service.  In re Canadian Pacific Limited, 754 F.2d 992, 224 USPQ 971 (Fed. Cir. 1985); In re Betz Paperchem, Inc., 222 USPQ 89 (TTAB 1984); In re Integrated Resources, Inc., 218 USPQ 829 (TTAB 1983); In re Landmark Communications, Inc., 204 USPQ 692 (TTAB 1979).  TMEP § 1301.01(a).[1]

 

The applicant asserts that the services “are performed for third parties, including, its content licensors, which are not in the business of software publishing and distribution and therefore require the services of the Applicant in order to exploit such third parties’ intellectual property rights in the channels of commerce in which such party does not have the ability to exploit its intellectual property.” 

 

However, to be a service, an activity must be primarily for the benefit of someone other than the applicant.  While an advertising agency provides a service when it promotes the goods or services of its clients, a company that promotes the sale of its own goods or services is doing so for its own benefit rather than rendering a service for others.  In re Reichhold Chemicals, Inc., 167 USPQ 376 (TTAB 1970).  See TMEP §1301.01(b)(i).  Similarly, a company that sets up a personnel department to employ workers for itself is merely facilitating the conduct of its own business, while a company whose business is to recruit and place workers for other companies is performing employment agency services. 

 

The controlling question is who primarily benefits from the activity for which registration is sought.  If the activity is done primarily for the benefit of others, the fact that applicant derives an incidental benefit is not fatal.  In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).  On the other hand, if the activity primarily benefits applicant, it is not a registrable service even if others derive an incidental benefit.  In re Dr. Pepper Co., 836 F.2d 508, 5 USPQ2d 1207 (Fed. Cir. 1987) (contest promoting applicant’s goods not a service, even though benefits accrue to winners of contest); In re Alaska Northwest Publishing Co., 212 USPQ 316 (TTAB 1981). 

 

In this case, the applicant publishes and sells interactive computer and video game software.  See attached copy of the applicant’s website.  Although the applicant licenses the right to use its licensors’ intellectual property, the resulting software product is the applicant’s product.  In providing “physical delivery of interactive computer and/or video game software for others,” the applicant is merely facilitating the conduct of its own business.  Hence, the applicant is not providing a service that is done primarily for the benefit of someone other than the applicant.

 

Additionally, in determining whether an activity is sufficiently separate from an applicant’s principal activity to constitute a service, the examining attorney should first ascertain what is the applicant’s principal activity under the mark in question (i.e., the sale of a service or the sale of a tangible product).  The examining attorney then determines whether the activity identified in the application is in any material way a different kind of economic activity than what any provider of that particular product or service normally provides.  In re Landmark Communications, Inc., 204 USPQ 692, 695 (TTAB 1979).  

 

For example, operating a grocery store is clearly a service.  Bagging groceries for customers is not considered a separately registrable service, because this activity is normally provided to and expected by grocery store customers, and is therefore merely ancillary to the primary service. 

 

Providing general information or instructions as to the purpose and uses of applicant’s goods is merely incidental to the sale of goods, not a separate consulting service.  See TMEP §1301.01(b)(v).  While the repair of the goods of others is a recognized service, an applicant’s guarantee of repair of its own goods does not normally constitute a separate service because that activity is ancillary to and normally expected in the trade.  See TMEP §1301.01(b)(ii). 

 

The fact that the services for which registration is sought are offered to a different class of purchasers than the purchasers of applicant’s primary product or service is also a factor to be considered.  In re Forbes Inc., 31 USPQ2d 1315 (TTAB 1994); In re Home Builders Association of Greenville, 18 USPQ2d 1313 (TTAB 1990).    Here, “THQ’s retail customers include Wal-Mart, Toys “R” Us, Electronics Boutique, Target, Babbages Etc., Best Buy, Kay Bee Toys, and other national and regional retailers, discount stores chains and specialty retailers.”  Hence, the applicant may provide these physical delivery services to its retail customers and not to a different class of purchasers. 

 

Another factor to be considered in determining whether an activity is a registrable service is the use of a mark different from the mark used on or in connection with the applicant’s principal product or service.  See In re Mitsubishi Motor Sales of America Inc., 11 USPQ2d 1312 (TTAB 1989); In re Universal Press Syndicate, supra; In re Congoleum Corp., supra; In re C.I.T. Financial Corp., supra.  However, an activity that is normally expected or routinely done in connection with sale of a product or another service is not a registrable service even if it is identified by a different mark.  In re Dr. Pepper Co., 836 F.2d 508, 5 USPQ2d 1207 (Fed. Cir. 1987); In re Television Digest, Inc., 169 USPQ 505 (TTAB 1971).  Moreover, the mark identifying the ancillary service does not have to be different from the mark identifying the applicant’s goods or primary service.  Ex parte Handmacher-Vogel, Inc., 98 USPQ 413 (Comm’r Pats. 1953).  TMEP 1301.01(a)(iii).  In this case, the mark THQ is used in connection with the applicant’s goods and its ancillary services.  Thus, the activities for which registration is sought do not constitute services as contemplated by the Trademark Act.

 

According, the registration refusal is hereby made FINAL.

 

Specimen Requirement Made Final

The applicant was advised to submit a substitute specimen showing service mark use for the benefit of others.  The applicant argues that the specimens previously submitted showed service mark use.  However, a service mark specimen must show the mark as actually used in the sale or advertising of the services recited in the application.  37 C.F.R. §2.56(b)(2). 

Acceptable specimens may include newspaper and magazine advertisements, brochures, billboards, handbills, direct-mail leaflets, menus (for restaurants), and the like.  However, printer’s proofs for advertisements, publicity releases to news media, or printed articles resulting from such releases, are not accepted because they do not show use of the mark by the applicant in the sale or advertising of the services.  Business documents such as letterhead and invoices may be acceptable service mark specimens if they show the mark and refer to the relevant services.  See TMEP §1301.04(b). TMEP §1301.04.

To show service mark usage, the specimens must show use of the mark in a manner that would be perceived by potential purchasers as identifying the applicant’s services and indicating their source.  In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456 (C.C.P.A. 1973) (term that identified only a process held not registrable as service mark, even though applicant was rendering services and the services were advertised in the same brochure in which the name of the process was used); In re A La Vieille Russie, Inc., 60 USPQ2d 1895 (TTAB 2001) (RUSSIANART perceived as informational matter rather than as service mark for art dealership services, where the term is displayed inconspicuously in specimen brochure amid other informational matter, in the same size and font of type as the rest of the brochure text); In re Moody’s Investors Service Inc., 13 USPQ2d 2043 (TTAB 1989) (“Aaa,” as used on the specimens, found to identify the applicant’s ratings instead of its rating services); In re McDonald’s Corp., 229 USPQ 555 (TTAB 1985) (APPLE PIE TREE did not function as mark for restaurant services, where the specimens showed use of mark only to identify one character in a procession of characters, and the proposed mark was no more prominent than anything else on specimens); In re Signal Companies, Inc., 228 USPQ 956 (TTAB 1986) (journal advertisement submitted as specimen showed use of ONE OF THE SIGNAL COMPANIES merely as an informational slogan, where the words appeared only in small, subdued typeface underneath the address and telephone number of applicant's subsidiary); In re Republic of Austria Spanische Reitschule, 197 USPQ 494 (TTAB 1977) (use of mark as one of many pictures in applicant’s brochure would not be perceived as an indication of the source of the services); Intermed Communications, Inc. v. Chaney, 197 USPQ 501 (TTAB 1977) (business progress reports directed to potential investors do not show service mark use for medical services); In re Restonic Corp., 189 USPQ 248 (TTAB 1975) (phrase used merely to advertise goods manufactured and sold by applicant’s franchisees does not identify franchising services); In re Reichhold Chemicals, Inc., 167 USPQ 376 (TTAB 1970) (technical bulletins and data sheets on which mark was used merely to advertise chemicals do not show use as a service mark for consulting services).  TMEP 1301.04(a).

In this case, the applicant’s software includes the statement, “Exclusively licensed to and distributed by THQ Inc.”  Potential customers could not ascertain from the specimens of record that the applicant has a separate service of physically delivering computer and video game software and that this activity required fees apart from their normal business activities.  Consumers could not readily discern that they could go to the applicant and have the applicant physically deliver their software products.

According, the specimen requirement is hereby made FINAL.

 

Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. §2.64(a).  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. §2.65(a).

 

 

 

 

 

 

Tracy Cross

/Tracy Cross/

Law Office 103

Phone:   (703) 308-9103 ext. 224

Fax:       (703) 746-8103

E-mail:    ecom103@uspto.gov

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.