Opportunity May Not Knock Without the Right Door

When seeking particular services, consumers are often drawn into a business based on branding and advertising found near the location – whether by signage on or around the establishment, or by glimpses of the services being rendered through windows or through the store front. For many service providers, such as restaurants, retail stores, and health clubs, signs and store fronts count among the most compelling opportunities to convey information about the services and attract business. Because of this, it is easy to conclude that all such signs should suffice as evidence of service mark use for the purposes of filing a Statement of Use with the U.S. Patent and Trademark Office (“PTO”).

However, in the recently-issued non-precedential decision In re Republic National LLC, the PTO’s Trademark Trial and Appeal Board (“TTAB”) distinguished trade name use on a building from service mark use sufficient to support trademark registration. To support registration of the mark REPUBLIC NATIONAL for real estate and financial services, the applicant submitted digital photographs of their office’s entry door, which featured the mark REPUBLIC NATIONAL on the door glass. No other informative wording, designs, or symbols appeared on the door or in close proximity to the mark. The TTAB held that the mark alone, without even a general reference to the nature of the services provided behind that door, could function as a trade name for “a myriad of undisclosed services,” that may not even be remotely related to the Applicant’s services; the specimen thus did not provide potential consumers a way of associating the mark with the type of services offered.

In this decision, the TTAB reasserted the rule that a service mark is used in commerce “when it is used or displayed in the sale or advertising of the services.” According to the TTAB’s 2016 opinion In re Way Media, Inc., 118 USPQ2d 1697, 1698, sale of the services may include use of the mark in the course of rendering or performing the services. For example, a prominent, yet abstract, mark on the glass doors of a clothing store where the clothing is visible to the prospective consumer immediately indicates retail services. In contrast, the REPUBLIC NATIONAL mark on the entry door of an office, even with somewhat visible desks, does not suggest anything about the nature of the services offered. The TTAB distinguished the REPUBLIC NATIONAL use as merely advertising the trade name, versus as an indicator of the source of the services. In other words, there must be some association between the mark and the services that enables those encountering the mark to perceive the mark as a source indicator.

The nature of the mark itself can be sufficient to convey information regarding the nature of the services. For example, the mark XYZ TITLE on an office sign would directly inform potential consumers encountering the mark as to the nature of the services. Similarly, additional informative signage displayed in connection with the service mark – such as an illuminated sign in the window that reads “Open for Dinner 7 Days a Week,” or an entry door for a pharmaceutical research center displaying the mark XYZ somewhere near the wording “research and development laboratory” – should similarly suffice as a specimen, as the nature of the services is clear from the context.

When considering whether to submit photos of building signage to support service mark registration, it may be useful to keep the business goal in mind: enticing potential consumers of the services to come into the business. Potential consumers encountering a mark on a building or a door are not likely to enter if they do not know what is being offered or sold behind the door.

This article appeared in the March 2017 issue of MarkIt to Market. To view our past issues, as well as other firm newsletters, please click here.