This Opinion is not a Precedent of the TTAB

Mailed: July 8, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE _____

Trademark Trial and Appeal Board _____

In re Speedway LLC _____

Serial Nos. 85861421 and 85861444 _____

Carl A. Schaffer of Emch, Schaffer, Schaub & Porcello Co., L.P.A. for Speedway LLC.

April E. Reeves, Trademark Examining Attorney, Law Office 102, Mitchell Front, Managing Attorney.

_____

Before Richey, Deputy Chief Administrative Trademark Judge, Lykos and Greenbaum, Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:

On February 27, 2013, Speedway LLC (“Applicant”) filed applications under

to Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), to register on the

Principal Register the marks SPEEDY POP in standard characters for “retail

convenience store services featuring fountain beverage products” in Interna-

tional Class 35,1 and the mark displayed below

1 Application Serial No. 85861421; POP disclaimed apart from the mark as shown.

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for “retail convenience store services featuring fountain dispensed beverage

products” in International Class 35 (emphasis added).2 On October 8, 2013, no-

tices of allowance were issued; statements of use were filed on October 7, 2014.

The Trademark Examining Attorney has refused registration under Trade-

mark Act Sections 1 and 45, 15 U.S.C. §§ 1051 and 1127, on the ground that

Applicant’s specimens fail to show the applied-for marks used in connection

with the identified services.

When the refusals were made final, Applicant appealed and requested re-

consideration. The Trademark Examining Attorney maintained the refusals to

register and denied the requests for reconsideration. Thereafter, the appeals

were resumed and consolidated, and are now fully briefed.

I. Background

Before considering the substantive issues on appeal, a brief summary of the

ex parte examination history for each application is in order.

Following the issuance of notices of allowance, Applicant filed statements of

use in both applications with the identical specimen pictured below:

2 Application Serial No. 85861444; POP disclaimed apart from the mark as shown. The description of the mark is as follows: “The mark consists of the word ‘SPEEDY’ in red and the word ‘POP’ in white, pink and yellow, on a swirl in blue, pink and white.” The colors red, white, pink, blue and yellow are claimed as a feature of the mark.

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Applicant describes the specimen as a backlit sign above a fountain dispenser

in Applicant’s convenience store depicting several cups bearing various marks,

including Applicant’s. In office actions dated November 19, 2014, the Examin-

ing Attorney refused registration of both marks on the ground that the above

point-of-sale display evidenced use of a trademark for beverages as opposed to

a service mark for the identified retail convenience store services.3

3 Applicant notes in its appeal brief that after receiving the initial refusals, Applicant filed Application Serial Nos. 86621984 and 86622047 for goods identified as “car-bonated and non-carbonated soft drinks for consumption on or off the premises” for the same marks at issue here, along with this same specimen. These later-filed applica-tions were assigned to a different examining attorney who rejected the specimens on the ground that they evidenced service mark usage as opposed to trademark use. In an effort to resolve the inconsistency, Applicant followed the Office’s procedures set

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This is where the ex parte examination history of each application presently

on appeal diverges. In an attempt to overcome the refusal, on April 8, 2015,

Applicant submitted in Application Serial No. 85861444 (“the ‘444 Application”)

for the design mark the following specimen:4

On May 6, 2015, the Examining Attorney issued a final office action maintain-

ing the refusal, stating that the newly submitted specimen did not evidence use

forth under the “Consistency Initiative Program” by discussing the issue by telephone with the examining attorney who was assigned to the later-filed applications and filing on August 12, 2015 a “Request for Consistency Review of Two Substantive Issues.” See November 5, 2015 Request for Reconsideration. According to Applicant, the examining attorney assigned to review the later-filed trademark applications ultimately with-drew the refusals and accepted the specimens as showing trademark use. The Exam-ining Attorney concedes this point in her brief. As discussed below, Applicant takes the position that the specimens constitute evi-dence of both trademark and service mark use. However, insofar as the entire ex parte examination history of the later-filed trademark applications was not made of record, we cannot rely on their examination history. Suffice to say, even if they had been made of record, such evidence would not have had an impact on our decision here. 4 During both the ex parte examination and appeal stage, Applicant made clear that it continues to rely on its original specimen of use as well as the additional specimens.

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of the mark in direct association with the identified services. On November 5,

2015, Applicant filed a request for reconsideration and submitted a third spec-

imen for consideration:

The Examining Attorney maintained the final refusal and denied the request

for reconsideration.

In Application Serial No. 86861421 (“the’ ‘421 Application”) for the standard

character mark, following the initial refusal, Applicant submitted a different

specimen depicted below:

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From what the Board can discern, this specimen does not display the applied-

for word mark. Instead of noting this discrepancy and issuing a second non-

final action, the Examining Attorney issued a final office action refusing regis-

tration for the same reasons articulated in the ‘444 Application. Applicant filed

a request for reconsideration on December 5, 2015 which was denied, but did

not submit another specimen for consideration.

On appeal, both Applicant and the Examining Attorney have focused on the

initial specimen submitted in both applications as well as the two additional

specimens filed in the ‘444 Application. For this reason, we exercise our discre-

tion not to remand the ‘421 Application back to the Examining Attorney for

consideration of the second-submitted specimen in the ‘421 application. Accord-

ingly, with regard to the ‘421 application, only the first specimen has been con-

sidered.

II. Refusal to Register

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We now turn to the substantive issue before us, that is whether any of Ap-

plicant’s submitted specimens show Applicant’s applied-for marks in “use in

commerce” in connection with Applicant’s identified services within the mean-

ing of Sections 1 and 45 of the Trademark Act. Trademark Act Section 45 states:

[A] mark shall be deemed to be in use in commerce —… on services when [1] it is used or displayed in the sale or advertising of services and [2] the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in com-merce in connection with the services.

15 U.S.C. § 1127 (emphasis and numbering added). Section 1(d)(1) of the Trade-

mark Act, 15 U.S.C. § 1051(d)(1), requires that an applicant file a “specimen”

or facsimile “of the mark as used in commerce.” Trademark Rule 2.56(a), 37

C.F.R. § 2.56(a), amplifies that an applicant filing an intent-to-use application

must file with its statement of use “one specimen per class showing the mark

as used in commerce on or in connection with the goods or services.” (emphasis

added). Trademark Rule 2.56(a), 37 C.F.R. § 2.56(b)(2) provides further guid-

ance regarding service marks, stating that an acceptable specimen “must show

the mark as used in the sale or advertising of the services.” A service mark

specimen consisting of advertising or promotional materials generally must

show a “direct association” between the mark and the services for which regis-

tration is sought. In re Universal Oil Prods. Co., 476 F.2d 653, 177 USPQ 456,

457 (CCPA 1973). While the exact nature of the services does not need to be

specified in the specimen, there must be something which creates in the mind

of the purchaser an association between the mark and the services that have

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been recited in the application. In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997)

(quoting In re Johnson Controls Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)). See

also In re Osmotica Holdings, Corp., 95 USPQ2d 1666, 1668 (TTAB 2010). In

evaluating whether a specimen is acceptable for a service mark, the Examining

Attorney may consider any of the following properly made of record:

• declarations from persons with firsthand knowledge of the facts, with a sufficiently detailed explanation of how the mark is used in advertising or rendering the services or how the services are advertised or rendered;

• clarification of the specimen of record, such as an explanation of the na-ture, content, or context of use of the specimen (this explanation need not be verified with a declaration);

• evidence, such as declarations or industry-related periodicals, regarding industry practice with respect to how marks and services are promoted in advertising or how the services are rendered;

• additional background materials, such as printouts showing information

on subsequent webpages from the applicant’s website or subsequent screenshots of an electronic device on which the services may be ac-cessed, rendered, and experienced (this matter generally need not be ver-ified with a declaration); and/or

• responses to any Trademark Rule 2.61(b) request for information. Trademark Manual of Examining Procedure (“TMEP”) § 1304.01(g)(1) (April

2016).

In addition, it is settled that a particular designation may, under certain

circumstances, function both as a trademark and as a service mark. See, e.g.,

Ex parte Greyvan Lines, Inc., 99 USPQ 343 (Comm’r Pat. 1953); In re Burger

King of Florida, Inc., 136 USPQ 396 (TTAB 1963); and In re Richhold Chemi-

cals, Inc., 167 USPQ 376 (TTAB 1970). The only restriction on the registration

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of the same term both as a trademark and as a service mark is that specimens

must meet the different “use in commerce” requirements for trademarks and

service marks, both of which are set forth in Section 45 of the Trademark Act.

The Examining Attorney argues that each specimen fails to show either of

the applied-for marks in use in commerce in connection with Applicant’s iden-

tified services. With regard to the initial specimen depicting the soda fountain

dispenser sign (where the mark is displayed on the cup to the left of the cup

bearing the Pepsi logo), the Examining Attorney contends that consumers are

likely to perceive the mark as a source indicator for the beverages dispensed by

the machine, not as an indicator of source for Applicant’s retail convenience

store services. The Examining Attorney emphasizes that the sign shows not

only Applicant’s applied-for mark, but also the marks of other unrelated third-

parties for fountain sodas such as COCA-COLA, DR. PEPPER, and MTN DEW.

To show that it is a common practice in the industry for soda fountain machines

to display the trademarks identifying the dispensed beverages, the Examining

Attorney has submitted the following evidence:

Signs above Taco Bell soda fountain machines show Mountain Dew, Tropicana Fruit Punch, PEPSI, Tropicana Lemonade, Sierra Mist, Diet PEPSI, and Mountain Dew Baja Blast offered as bever-ages. QuikTrip convenience stores have signs above drink dispensers displaying the drink flavors, such as “Melon Berry” and “Black Cherry.” 7-Eleven features a sign above its fountain beverage machine with the Sprite mark and the image of a BiG GULP cup, which is the product packaging for the soda sold.

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Soda Dispenser Depot offers a fountain soda machine with a PEPSI cup displayed on the sign; this machine dispenses PEPSI soda. Jones Soda fountain machines display the JONES CANE SUGAR SODA mark across the top of the machine; these machines and can be found in establishments such as Voodoo Doughnuts, Fuddruck-ers, and Flying Saucer Pizza.

See Denial of Request for Reconsideration dated December 1, 2015.

Turning now to the photographs of the cups filed in the ‘444 Application, the

Examining Attorney maintains that because the cups serve the same function

as product packaging, consumers are likely to perceive the marks displayed on

the cups as a source indicator for the actual beverages themselves, as opposed

to the identified services. To show that it is a common practice in the soda foun-

tain beverage industry to display beverage brand names on cups, the Examin-

ing Attorney has submitted the following:

McDonald’s offers beverages in cups labeled with “Coke.” Subway advertises Coca Cola fountain sodas in a Diet Coke cup, and fresh brewed ice tea in a FUZE Fresh Brewed Iced Tea cup. Firehouse Subs offers fountain beverages in cups labeled with many of the brands of beverages offered, including Coca-Cola Zero, Diet Coke, Minute Maid Light Lemonade, Hi-C, Fanta, and Dasani. Consumers at 7-Eleven can dispense Coca-Cola soda into a Double Gulp cup, the Double Gulp cup indicating that all sodas in such cup were dispensed at the same source.

See id.

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In addition, the Examining Attorney argues that even if the cups were con-

sidered advertisements, they do not show a direct association between the ap-

plied-for mark and the identified services because nothing on the cup mentions

or shows any association with Applicant’s identified “retail convenience store

services.”

Applicant maintains that contrary to the Examining Attorney’s determina-

tion, the original and subsequently filed specimens are acceptable. At the out-

set, Applicant also argues that the Examining Attorney, by focusing solely on

the prefatory “retail convenience store” language in each identification, has not

properly considered the specimens in connection with the identified services,

which feature fountain beverage products. Applicant continues by explaining

that the purchase environment for Applicant’s fountain beverage services in-

volves an area where fountain beverages are dispensed in cups bearing the

SPEEDY POP marks, and that there is no draft arm or head dispenser display-

ing either of Applicant’s applied for marks. Applicant further asserts that con-

venience stores generally do not sell house-branded fountain dispensed bever-

ages, making it more likely the consumers will perceive its marks as service

marks identifying retail convenience stores rather than fountain beverages.

Applicant takes the position that a direct association exists between the cup

and self-service fountain beverage services provided in a retail convenience

store setting. As Applicant contends,

The cup provides the means by which the services are rendered. Therefore the cup is a clear representation of the manner in which

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dispensing occurs and of how the services are provided. Appli-cant’s cups, with the mark thereon, are used during the actual provision of the services (i.e. while the cup is filled). Therefore, the specimens show that Applicant meets the requirement that a service mark be “used or displayed in the sale or advertising of the services.”

Applicant’s Brief, p. 7-8; 10 TTABVUE 9-10. Furthermore, with regard to the

cups, Applicant argues that they also serve as advertising for Applicant’s iden-

tified services:

It is common for convenience store chains, fast food restaurants or coffee shops to place a mark on a beverage cup for take-away. Many, if not most, do not manufacture their own beverages. No-vember 15, TEAS Request for Reconsideration after FOA, TSDR pp. 21-25. The customer leaves the store with the cup, drinks the beverage off-site, and the cup becomes the means for disseminat-ing to the population the knowledge where the beverage was pur-chased, thus indicating the source of such a convenience. A take-out container or cup sleeve is an obvious advertising venue. No-vember 15, TEAS Request for Reconsideration after FOA, TSDR pp. 51-54, 55 (Applicant’s Facebook and Twitter accounts). The cup’s role in advertising and promoting the source of the services is not negated by [the] nature of it also being considered product packaging.

Applicant’s Brief, p. 9; 10 TTABVUE 10.

In addition, Applicant asserts that the Examining Attorney has disre-

garded the principle that a specimen can support both trademark and service

mark usage. Applicant relies on In re Burger King of Florida, Inc., supra, where

the Board reversed a specimen refusal involving “HOME OF THE WHOPPER”

as a service mark for drive-in restaurant services. Applicant also points to the

prosecution history of other marks to support the assertion that cups are com-

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monly accepted as service mark specimens for restaurant services and conven-

ience store services featuring coffee. See Request for Reconsideration dated No-

vember 5, 2015, Exhs. D-Q; 4 TTABVUE 33-57.

Upon careful review of each of Applicant’s proffered specimens and the evi-

dence of record, we find that none of the specimens show service mark use for

the identified services. First, with regard to the specimen showing the mark

depicted on a cup on a sign above a soda fountain machine, we agree with the

Examining Attorney’s determination that Applicant’s applied-for marks are be-

ing used to identify a soda fountain beverage as opposed to retail convenience

store services featuring fountain beverage products. It is well established that

a term that is used only to identify a product, device, or instrument sold or used

in the performance of a service rather than to identify the service itself does not

function as a service mark. See e.g., In re Moody’s Investors Serv. Inc., 13

USPQ2d 2043 (TTAB 1989) (“Aaa,” as used on the specimen, found to identify

the applicant’s ratings instead of its rating services); In re Niagara Frontier

Servs., Inc., 221 USPQ 284 (TTAB 1983) (WE MAKE IT, YOU BAKE IT only

identifies pizza, and does not function as a service mark to identify grocery store

services). Applicant’s proposed marks appear on a cup on a backlit sign above

the beverage dispenser, thereby reinforcing the perception of the mark as iden-

tifying a particular brand name drink item. A fountain beverage, whether dis-

tributed via a self-service station or purchased in bottle or can, is a product, not

a service. And the evidence submitted by the Examining Attorney establishes

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that it is not uncommon for beverage manufacturers to identify their brands in

this manner, thereby bolstering our finding.

Similarly, we find that the specimens showing the mark displayed on a cup

alongside the marks SPEEDY TEA and SPEEDY FREEZE only support trade-

mark, not service mark, use. Such specimens cannot be construed as an adver-

tisements for Applicant’s services. None of the specimens refer to Applicant’s

identified “retail convenience store services featuring fountain dispensed bev-

erage products.” The cup itself, which is the conduit for selling the goods, with-

out more, does not engender a “direct association” between Applicant’s proposed

composite mark and the identified services in the ‘444 Application. And while

multiple marks do appear on different cups, this fact alone does not render the

specimens acceptable.

Furthermore, Applicant’s reliance on In re Burger King of Florida, Inc. is

misplaced. While the Board, in reversing the examining attorney’s specimen

refusal in that case, did reiterate the principle that under certain circumstances

the same mark may serve as both a trademark and service mark, it also based

its decision on the finding that “the slogan ‘HOME OF THE WHOPPER’ refers

to the place where applicant’s goods are sold or services rendered rather than

to the goods themselves” as used on the specimens. In re Burger King of Florida,

Inc., 136 USPQ at 397. Because the applied-for marks in this case do not con-

tain a term or terms that reference a place, we think In re McDonald’s Corp.,

230 USPQ 210 (TTAB 1986) presents a more similar situation. In that case, the

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applicant had applied to register the marks EGG MCMUFFIN and SAUSAGE

MCMUFFIN for restaurant services featuring a breakfast food combination

sandwich. The specimens filed in connection with the EGG MCMUFFIN appli-

cation consisted of copies of newspaper advertisements; the specimens filed

with the SAUSAGE MCMUFFIN application were photographs of a point-of-

purchase display. The Board affirmed the examining attorney’s refusal to reg-

ister the applicant’s marks on the grounds that the specimens failed to show

service mark usage. As the Board explained:

In the present cases, the specimens and advertising materials submitted by applicant show the terms “EGG MCMUFFIN” and “SAUSAGE MCMUFFIN” used as trademarks to identify partic-ular food products sold by applicant. Moreover, the specimens and advertising materials submitted in the “EGG MCMUFFIN” case, and the advertising materials (but not the specimens) submitted in the “SAUSAGE MCMUFFIN” case, clearly advertise and pro-mote applicant’s restaurant services. There is no doubt that pur-chasers who encounter these materials will know that applicant is the source of the “EGG MCMUFFIN” and “SAUSAGE MCMUFFIN” sandwiches, and that applicant offers restaurant services. What is missing, however, is any direct association in the materials between the “EGG MCMUFFIN” and “SAUSAGE MCMUFFIN” marks, on the one hand, and the advertising of ap-plicant’s services, on the other.

Id. at 212-13. Similarly, Applicant’s specimens fail to evidence the “direct asso-

ciation” necessary to establish service mark usage.

Lastly, with regard to Applicant’s argument that other applications for sim-

ilar services marks have been approved, we note that it is well settled that each

case must be decided on its own facts and the Board is not bound by prior deci-

sions involving different records. See In re Nett Designs, Inc., 236 F. 3d 1339,

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57 USPQ2d 1564, 1566 (Fed. Cir. 2001). Moreover, Applicant has provided only

a portion of each of these file histories, making it difficult to ascertain from the

application file histories whether a cup alone would have been an acceptable

specimen for services.

In sum, none of the specimens associated with the ‘421 or ‘444 Applications

show use of the applied-for marks to identify the services set forth therein.

Decision: The refusal to register both applications is affirmed.